The Puget Patent Blog

Provisional Applications for a Patent and Their Cost

Posted Saturday, June 2, 2012.

The USPTO permits inventors to file a special type of application for a patent which is called a provisional application. Many inventors are aware of the provisional application, primarily because of its lower cost. A provisional application might possibly be filed less expensively than the regular (“non-provisional”) application. However, it is crucial to understand exactly what you are getting when a provisional application is filed. The old adage “you get what you pay for” applies.

What many do not realize is that the formal requirements for a provisional requirement are virtually the same as for a non-provisional application. By the letter of the law, the provisional application lacks the patent claims, but all other aspects of a non-provisional application are required to be present in the provisional application.

The thing is, when a provisional application is filed at the USPTO, it goes into storage and is almost never examined. The only time a provisional application is considered by a patent examiner is when there is another invention disclosure of which the examiner is aware that was filed between the filing of the provisional application and the filing of the non-provisional application.

Knowing that there is a possibility that a provisional application will never be examined, some may be tempted to file a very thin disclosure that is very inexpensive to prepare to acquire the early filing date a provisional application provides. I have heard stories of an inventor scribbling an idea on a cocktail napkin, sticking a provisional application coversheet on it, and filing that to get a filing date. It’s cheap to prepare, right? And after all, you have a year from the time you do that to get the non-provisional on file, so you could save the money for the non-provisional to be drafted in the meantime.

The problem is that if your provisional application is actually needed once your non-provisional is on file and examined, and what you have filed for a provisional application is inadequate in one way or another, you lose the priority date from your provisional application.

How likely is it that a provisional application will actually be considered? It depends on so many factors that it is impossible to provide a rule of thumb. The absolute safest route for a provisional application is to go into it prepared to offer as complete a disclosure as you can, almost to the point that it is a non-provisional application.

Now, the patent claims are one of the more difficult (if not the most difficult) elements of the application to prepare, so it is true that by not being required to draft patent claims, a provisional may be less expensive than a non-provisional to have prepared. But for those who are tempted to file a very thin disclosure for a provisional application because they are attracted by a very low rate for preparation, do so at your own peril. Understand the risk, which is that if that provisional application does get looked at and the aspect of your invention is not described sufficiently in the provisional application for the examiner’s taste, your provisional application will not be of any value.

So, you get what you pay for. A cut-rate price for preparation of a provisional application might seem attractive. Understanding what you are actually getting for that rate, though, is critical. The process of acquiring a patent is long, and you don’t want to find out four years from now that the rock-bottom priced provisional application you had filed is being removed from consideration by a patent examiner because it was inadequate.

One quick additional thought: a strategy I sometimes recommend to my clients is to file two provisional applications. You might do this where time is of the essence. For example, you got started on the patent process too late, and are meeting with the patent attorney or patent agent for the first time the day before the product is about to be announced. In that case, you absolutely want some protection of your intellectual property before the announcement (particularly if you are considering patents in countries in addition to the US).

In that situation, I’ll take whatever you have in writing about the invention and stick a cover sheet on it and file it as a provisional application, because there’s no time to do the job correctly but it’s better than nothing (in fact, it’s essential). Then, I would follow this up with a proper application that is more fully compliant with the requirements for a provisional app. That way, you hopefully have the filing date from the first application, but if the examiner refuses to consider it, at least you have the filing date from the second one to claim as your priority date.

Also, if you filed a provisional application on your own but weren’t aware of the formal requirements for a provisional, it is a good idea to have a registered patent professional follow up your filing with a second provisional application. If you overlooked something in your own filing, the second provisional prepared by a professional is good insurance.

In short, many are aware of the provisional application for a patent. However, most are focused on their lower-cost without understanding the nuances or what one actually gets with a provisional filing. It’s critical to understand the bigger picture. What should come as no surprise to anyone, however, is that you get exactly what you pay for (and sometimes even less than what you paid for).

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Supreme Court Grants Cert in Ultramercial v. WildTangent

Posted Tuesday, May 29, 2012.

In March, the U.S. Supreme Court issued a decision regarding patent-eligibility in Mayo v. Prometheus. The patent in question related to a method of conducting a medical test. The Court invalidated the patent, holding that the test merely leveraged a law of nature.

Laws of nature have long been held to be not patent-eligible. However, in the Prometheus case, the patent claim which was invalidated recited steps related to administering and interpreting the test. Holding that these steps were well-known, Justice Breyer (writing for a unanimous court) essentially said that adding well-known steps to a law of nature made the invention not patent-eligible.

Since that time, commentators have suggested that the Court conflated patent-eligibility (an inquiry under 35 U.S.C. §101) with novelty and nonobviousness (inquiries under 35 U.S.C. §§102 and 103, respectively). After all, if the steps are well-known, then they aren’t novel. The steps themselves are patent-eligible under §101, however. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor…” (emphasis is mine).

You can read more about that court decision here, in a blog post in which I wondered whether this might apply to other types of claims other than medical tests that invoked a law of nature. Again, commentators have been worried about the Supreme Court’s approach to Prometheus, but the thinking is that the Court of Appeals for the Federal Circuit - the appellate court that issues many more precedential patent law decisions than SCOTUS - would limit its application to cases with claims similar to those of Mayo v. Prometheus.

Last week, however, the Supreme Court granted certiorari in Ultramercial v. WildTangent (formerly Ultramercial v. Hulu, but Hulu was dismissed from the case, leaving WildTangent as the sole defendant-appellant). I wrote about Ultramercial v. Hulu here, but it was another patent-eligibility case.

The patent-in-suit in Ultramercial was a business method patent regarding a way of doing business on the Internet. I wouldn’t have thought the Prometheus holding would be applied to Ultramercial. However, after granting cert in Ultramercial, the Supreme Court remanded the case to the Federal Circuit for further consideration in light of Prometheus. In other words, what is at stake is a possible expansion of the rationale behind Prometheus to business method patents in general.

Business method patents have been on quite a ride the past few years when it comes to patent eligibility. Many software patents are articulated as business methods too. The Federal Circuit’s reconsideration of the Ultramercial case will be watched very carefully in the Seattle area. One of the parties is local, after all (WildTangent, of Redmond, WA, located just down the road from my office in Bellevue), but Seattle-area firms in general pay particularly close attention to court holdings regarding software patents and business method patents. Seattle patent attorneys and patent agents will obviously be monitoring the situation too.

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Office Actions

Posted Tuesday, May 1, 2012.

Once an application for a patent is filed, it goes into the queue at the USPTO awaiting an examination by a patent examiner.

If the examiner finds that the invention described in the patent claims is patent-eligible, useful, novel and nonobvious, among other requirements, the fortunate patent applicant will receive a Notice of Allowance, meaning the patent office will issue the patent upon payment by the applicant of the issuance and publication fees.

Unfortunately, it is rare for the first communication from the USPTO following the filing of an application to be a Notice of Allowance. 89% of the time, the patent claims are initially rejected. The news of that rejection comes to the inventor in the form of an Office Action.

In the Office Action, the patent examiner will communicate the roadblocks to patentability of the invention. It may be that the claim language is overly vague or imprecise. Or, it may be that someone else invented the same thing previously. It could be that the opinion of the patent examiner is that the invention is a trivial advance over what is known. Or, frequently, there is some combination of all of those.

In all cases, following the first Office Action, the applicant gets an opportunity to dispute the PTO’s assertions, amend claim language to make the claims more distinct from what is already known, or some combination of those. Usually, the applicant will file a response to the Office Action. The PTO does not charge a fee to receive and consider this first response. An applicant has three months to submit the response, although this time period may be extended up to three additional months by paying a surcharge.

The examiner, usually a couple of weeks to a couple of months after receiving the response, will consider the arguments and/or claim amendments contained within the response. If the examiner does not find the arguments and/or amendments persuasive, the examiner may reject the claims a second time. Or, the examiner may do additional searching and find new grounds of rejections. This unhappy news usually comes from the PTO in the form of a Final Office Action.

A Final Office Action essentially means that the PTO has finished the examination paid for by the applicant at the time of filing the application. The applicant has more options available, many of which involve additional fees to the PTO. For example, the applicant may dispute the findings in the Final Office Action and/or further amend the claims, and submit a response to the Final Office Action concurrent with a Request for Continued Examination and the corresponding fee. Another avenue is to appeal the final rejection to the Board of Patent Appeals and Interferences at the USPTO.

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Another Supreme Court Patent-Related Opinion

Posted Tuesday, May 1, 2012.

Earlier this year, I wrote that the U.S. Supreme Court takes about one patent case a year. Last month, the Court made a liar out of me, having earlier taken a second patent case and subsequently issuing an opinion in the case of Kappos v. Hyatt.

“Kappos,” is David Kappos, the current Director of the United States Patent and Trademark Office. “Hyatt” is Gilbert Hyatt, a significant figure in the patent world. Mostly, I like this case because of the complicated procedural history.

Mr. Hyatt had applied for a patent, been rejected, and appealed to the USPTO Board of Patent Appeals and Interferences (BPAI). The BPAI affirmed the rejection. At that point, Hyatt had two choices, as all inventors who lose at the BPAI do. He could have appealed the rejection to the Court of Appeals for the Federal Circuit, but instead, he chose Option Two.

Option Two for a disappointed applicant is to file a suit against the Director of the USPTO, asking the court to require the Director to issue the patent. Applicant’s may go this route if they want a judicial proceeding where they can present new evidence that wasn’t already in the record of the patent prosecution. At the CAFC, the appeal (like all appeals) is limited to consideration of the facts already in the record, so if an applicant wants consideration of new evidence the proper route is to sue in the district court in which the USPTO resides.

The D.C. District Court ruled against Mr. Hyatt, refusing to hear new evidence. Hyatt appealed yet again, asking the CAFC (the court with exclusive jurisdiction to hear patent matters) to remand the case to the DDC with instructions to consider Hyatt’s new evidence. An en banc panel of the CAFC agreed with Hyatt, at which point the USPTO appealed to the Supreme Court.

You can read more about the ruling here, but the bottom line is that the Supreme Court affirmed the en banc panel of the CAFC. Disappointed patent applicants who bring suit in the district court to compel the USPTO to issue the patent will continue to be able to introduce new evidence and have it be considered by the court as any new evidence would be.

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Supreme Court Addresses Patent Eligibility Again in Mayo v. Prometheus

Posted Saturday, March 24, 2012.

The U.S. Supreme Court issued a patent opinion earlier this week in the case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. Supreme Court decisions on patent law are relatively rare, with the Court accepting about one case a year.

In this opinion, the Court addressed subject matter eligibility for the first time since the 2010 Bilski v. Kappos decision. You can read my summary of the Mayo v. Prometheus opinion here.

What Justice Breyer, writing for a unanimous court, ruled was that the Prometheus patent recited a law of nature among its process steps. Laws of nature are a category of “invention” long held ineligible for a patent. However, the Prometheus patent claims disclosed more than just the relationship of a particular drug in the bloodstream which would be efficacious. The claims included the steps of “administering” the drug and “determining” the level of the drug in the blood stream.

“Administering” and “determining” are process steps which, standing alone, are unquestionably patent eligible. Previously, when dealing with subject matter that might be construed as not patent eligible, the technique has been to tie that element to an element that is patent eligible, thus rendering the entire claim patent eligible.

A Beauregard claim is a good example. You can read more about Beauregard claims here, but in brief the concept is that for software claims which recite an algorithm which might otherwise be held patent-ineligible, embodying that algorithm in a non-transitory computer readable medium in the claim language takes the subject matter into the patent eligible category. An example of a non-transitory computer readable medium is a USB key. A USB key containing instructions implementing the algorithm is a physical object, and physical objects are patent eligible, therefore the claim would be patent eligible.

Prometheus did something similar, in taking a law of nature and embodying it in a process. But what Justice Breyer had to say about this was that we should look to whether “the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?”

(As a side note, purely as a patent practitioner who often works with patent examiners, it was interesting to read Justice Breyer’s opinion, looking at the opinion as a hypothetical Final Rejection Office Action from the examiner-in-chief. After all, the claim rejections of the Prometheus claims in this opinion are utterly final, so Justice Breyer in some sense is acting here as a patent examiner.)

In regards to the Prometheus steps surrounding the law of nature of “administering” and “determining,” Justice Breyer wrote, “any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.”

Ok, but “well understood, routine, conventional activity” sounds to me like the issue with the claims is novelty and non-obviousness, not patent eligibility. Indeed, upon looking at the prosecution history of the example claim at issue from the opinion (Claim 1 of 6,355,623), the examiner rejected the claim as obvious.

I wonder whether future decisions will hold that encoding an algorithm in a USB key will constitute “well understood, routine, conventional activity,” exposing a bevy of process claims reciting algorithms to subject matter eligibility questions that do not exist today.

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