The Puget Patent Blog

Fast Route to a Patent

Posted Saturday, August 30, 2014.

The normal timetable for issuance of a utility patent can be three years or more. Examination statistics show the average period of pendency improving as the office hires more examiners. However, a pendency of three years may be too long for some applicants.

The United States Patent and Trademark Office has a variety of programs for accelerating issuance of a patent. For utility patent applications, the office recently began a program called “Track One” examination, in which the applicant pays a surcharge and the application is advanced to a priority position in line to be examined. The objective of Track One is for the application to receive either an issued patent or a Final Rejection within a year of the application being filed.

However, an even faster route to issuance of a patent is to consider a design patent. I previously wrote about design patents here. By submitting a request for expedited examination of a design application and paying the appropriate fee, an applicant for a design patent can sometimes receive it in as little as three months. This is the fastest way to a patent I know of.

For example, on June 30th of 2014, I filed a design application on behalf of a client (Intriguing Ideas, LLC, of Seattle), requested expedited examination, and submitted the surcharge advanced to me by the client. The resulting patent is D713285, having an issue date of September 16, 2014. The total pendency for that application is 78 days, well under three months.

In an expedited examination, a pre-examination search is conducted by the applicant or the applicant’s representative. The results of the search are provided to the patent office and considered during the expedited examination. This is in contrast to other types of applications where a patent search is not required. In the expedited examination for a design application, the patent search conducted by the applicant prior to submitting the application is a requirement. That search permits the office to more quickly examine the application, resulting in the shorter pendency.

As I previously wrote, I frequently counsel clients seeking a patent to consider both a utility patent and a design patent. By filing the expedited examination request for the design application, when that application matures into a design patent the inventor can sometimes say that the invention is patented in as little as three months, even while waiting for a utility application to be processed. Consequently, a complete strategy for fast patenting can include a utility application on the normal timetable, complemented with a design application that has been expedited.

In short – want a U.S. patent really fast? Consider a design patent application with expedited application. You may obtain the issued patent in as little as three months.

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Design Patents

Posted Friday, July 25, 2014.

When inventors think about obtaining a patent, generally the inventor is considering a “utility patent.” There is a separate category of patent which may be obtained called a “design patent” however. While a utility patent protects functional aspects of an invention, the design patent covers visual ornamental characteristics embodied in, or applied to, an article of manufacture. Put more simply by the USPTO in their “Guide To Filing A Design Patent Application”, a utility patent protects the way an article is used and works, while a design patent protects the way an article looks.

In contrast to a utility patent, design patents have a term that is 14 years from the date of issuance. Design patents are infringed when, in the eyes of an ordinary observer, the accused article resembles the patent article such that the observer would be deceived into believing that the two are the same.

With that understanding, one can see that a utility patent offers better protection than a design patent. After all, to circumvent a design patent, one must merely alter the visual appearance of the article. Circumventing a utility patent may be a much more difficult exercise, depending on the coverage of the utility patent claims.

Design patents offer some advantages over utility patents, however. Since the patent covers strictly the visual appearance, an application for a design patent is substantially less detailed than that of a utility application. That means the design application will require less time to prepare and therefore be less expensive. Patent office filing fees are also less for a design application. One expense which may be higher for a design patent is in the cost of the patent drawings, which are extremely important to the success of a design application since there is nothing else that is examined.

An additional advantage is that examination of a design application is generally quicker than for a utility application. It is even possible to request an expedited examination of a design patent. It costs a little more, but a design patent may issue in as few as four months from the filing of the application when expedited.

When the invention involves a tangible object, I often counsel clients to have both a utility application and a design application filed on their behalf. A design application does not add that much more to the expense of the utility application, and in certain circumstances is much more likely to actually mature into a patent than the corresponding utility application (and more quickly, too).

In that light, a design application can almost be an insurance policy. Upon issuance of the design patent, even while still waiting for a utility patent application to be examined, an inventor can immediately say that they have a patented article. Other than marking the item with the patent number (which begins with “D” for a design patent), there is no requirement to expressly point out in marketing or other communications that the item is covered with a design patent instead of a utility patent.

For example, a well-known inventor and entrepreneur is Lori Greiner, who is an occasional “shark” on the ABC TV show “Shark Tank.” Lori’s Wikipedia page says that she holds over 120 US and international patents. A search of the USPTO’s patent database shows, however, that of the 88 US patents issued in her name, 75 of them are design patents.

Obtaining a utility patent with well-written patent claims is a superior means of protecting intellectual property. However, design patents should not be overlooked. In certain circumstances, one or more design patent applications can play an important role in an overall patent strategy for an invention.

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USPTO Issues Guidance to Examiners Following Alice v. CLS

Posted Thursday, June 26, 2014.

Last week, the U.S. Supreme Court issued its opinion in Alice Corporation v. CLS Bank, in which patent claims to a computer-implemented invention directed to the financial application of mitigating settlement risk were invalidated. (Read my blog about the decision here.) Leading up to the decision, commentators expressed concern that the Court could rule that software was not a patent-eligible category. But the actual opinion, as I mentioned in my previous blog post, left room for software and other computer-implemented inventions to be patented.

Subsequently, the U.S. Patent and Trademark Office is now issuing preliminary instructions to its patent examiners to help them decide whether claims proposed by applicants are in fact patent-eligible, based on the Alice v. CLS decision. (Read the memo written by Andrew Hirshfeld, the Deputy Commissioner for Patent Examination Policy at the USPTO, here.) That guidance confirms the USPTO also believes that the Court did not take away patenting of software as a rule. The USPTO wrote, “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”

The memo continues by providing an analytical framework for patent examiners for determining whether a computer-implemented invention of the kind in dispute during Alice v. CLS is patent-eligible. There is a two-part test first set out by the Supreme Court in Mayo v. Prometheus in 2012 (Read my blog post about Mayo v. Prometheus here.) The test involves determining whether the claimed invention is directed to an abstract idea (example: fundamental economic practices) and if so, determining whether the claim adds “significantly more” (example: meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment). If the claimed invention recites an abstract idea, and the remainder of the claim does not add significantly more, then the claim may be deemed patent-ineligible (i.e. rejected under 35 U.S.C. §101).

The memo concludes by instructing examiners to follow the determination of patent-eligibility with examination of the application’s patent claims for novelty and non-obviousness.

In short, patenting of computer-implemented inventions, and software particularly, has not been eliminated by the Supreme Court. In Alice v. CLS, the Court has merely reaffirmed that inventions directed to an abstract idea, whether they be medical tests that rely on known relationships between a drug and a concentration of a substance in blood (Mayo v. Prometheus), or computer-implemented software or systems which carry out escrow-like transactions, are not patent-eligible.

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Alice v. CLS Decided by Supreme Court

Posted Saturday, June 21, 2014.

On June 19, the Supreme Court decided the case of Alice Corporation v. CLS Bank, in which a patent held by Alice Corp. for a computer-implemented invention was invalidated.

In a unanimous decision, the Court held that the patent claims did not meet the test for patent eligibility under Title 35 U.S.C, section 101. Eligibility is a threshold test in patent law, and section 101 describes the categories of inventions for which a patent may be sought (See the statute here). Patent eligibility and patentability are two different concepts (Read my blog on patent eligibility versus patentability here).

Courts have long held that abstract ideas and laws of nature are not patent eligible. In 2012, the Supreme Court invalidated a patent in Mayo v. Prometheus (Read my blog on the Mayo v. Prometheus decision here), where the patentee had been issued a patent for a medical test in which a level of a particular substance in a blood was determined and a test result was reported based partially on that level. The Court held that the patent was an attempt to monopolize a law of nature - the relationship between the substance in the blood and the need to administer more or less of the drug. There, the Court essentially held that taking a law of nature and applying well-known and understood steps in the particular field to the law of nature did not arrive at an invention meriting a patent.

So in Mayo v. Prometheus, the Court essentially said that to take a law of nature and add “apply it” to the patent claims did not result in a patent eligible invention. Following a similar tack in Alice v. CLS, Justice Thomas noted that the computer-implemented invention was drawn to mitigating settlement risk in financial transactions. The concept of mitigating settlement risk via exchanging financial obligations among parties to the transaction is well-known. Alice had incorporated a way of doing so into a computer program and/or a computer system. Justice Thomas deemed the scheme for mitigating settlement risk an “abstract idea” (not patent eligible) and then, as in Mayo v. Prometheus, said that to take an abstract idea and add “apply it” to the patent claims also did not result in a patent eligible invention.

The holding leaves room for patent eligibility of computer-implemented inventions. Going forward, what we know is that a patent application on a computerized-version of an abstract idea, or law of nature, will not likely issue as a patent. The opinion does not discuss computer-implemented inventions which aren’t implementations of abstract ideas or laws of nature, however. Arguably, previous Federal Circuit holdings which give guidance on patent eligibility of computer-implemented inventions will hold up. In one example, the CAFC wrote that where a computer-implemented version of a process executes faster than the steps could be completed in the human mind, such as calculating a changing GPS position many times a second, the resulting computer-implemented invention remains patent eligible.

On the other hand, the logic behind the CAFC 2011 CyberSource v. Retail Decisions holding seems to have been confirmed by the Supreme Court’s Alice v. CLS decision. Interestingly, the Chief Judge of the Federal Circuit at the time, Judge Randall Rader (who has recently announced his retirement), had spoken out against the CyberSource decision (Read my blog about Judge Rader’s CyberSource comments here), arguing that where the claims included a computer system itself, that made the claim patent eligible. Section 101 recites “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” as patent eligible subject matter, and a computer system is clearly a machine. When Alice v. CLS was at the Federal Circuit, Chief Judge Rader had participated in an opinion which said the system claims in suit would be patent eligible, for essentially the same reason. The Supreme Court has now discarded that rationale.

The Alice v. CLS decision marks the end of a very-busy Supreme Court term for patent-related cases. I previously noted that the Court takes about one patent case a year (Read my blog on this here, but this year we have had a higher than average number of patent-related decisions. We’ve also had opinions relating to infringement (Akamai) and indefiniteness (Nautilus) for example.

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Gross Income Limit for Micro Entity Qualification Changed for 2014

Posted Wednesday, January 8, 2014.

Those doing business with the USPTO may be eligible for a discount on many USPTO fees, depending on the size of the entity behind the transaction. Small businesses and individual inventors usually qualify for “Small Entity” status, which results in a 50% discount in fees. However, there is also a “Micro Entity” status, for which a 75% discount on USPTO fees is given.

To qualify for Micro Entity status, the applicant, inventor, or other party must usually meet two qualifications. The first is that the entity must have previously had no more than five patent applications (not including provisional applications) filed. The second is a gross income limit, which is set annually at three times the U.S. median household income.

For 2014, the gross income limit for Micro Entity status is $153,051. This is up from approximately $150,000 for 2013. This income limit does not relate to household income, but rather, the income of the individual (or each of the individuals, if, for example, there are co-inventors). The income limit also applies to companies or other business entities that apply for a patent.

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