The Puget Patent Blog
Happy Holidays!
Posted Friday, December 23, 2011.
This should really be a Thanksgiving wish, because at this time of year I feel especially fortunate to have worked with some incredibly bright and ambitious folks in the Seattle and Bellevue area to help realize the goal of a patent for their inventions.
Thank you to my clients and colleagues for making 2011 a great year.
My best wishes to all for the holiday season and a terrific 2012.
Regards,
Michael Gibbons
Patent Agent, serving Seattle, Bellevue, the Northwest and Beyond
Commissioner for Patents Leaving the USPTO
Posted Tuesday, December 20, 2011.
Robert Stoll, who has been the Commissioner for Patents for the last two years, is leaving the USPTO. Stoll worked for the Director of the USPTO, David Kappos, who also supervises the Trademark functions at the USPTO.
Stoll spent most of his career at the USPTO. In a farewell message, he noted some achievements during his time as Commissioner for Patents:
- a reduction of the patent backlog to less than 670,000, at a time when patent filings increased by five percent
- a more collaborative environment: supervisors mentoring examiners, examiners helping applicants, and technical support personnel helping move applications through the system
You can read more from Robert Stoll, reflecting on his departure from the USPTO, here.
Secret Prior Art
Posted Sunday, November 13, 2011.
Patents are issued by the USPTO only for inventions that are new. The patent office will not issue a patent for an invention that already exists. It occasionally comes as a surprise to an inventor who earnestly believes they have a new invention when the patent office refuses to issue the patent because another individual has already submitted an application previously, having come up with the idea completely independently.
Investing in a patent search, or an inventor performing a search independently, may prevent that from happening. But not always. An inventor may perform an extremely thorough search of publicly available sources of information, checking to see whether anyone else has applied for a patent on an idea or whether it exists on the Internet or elsewhere. But even when an inventor has searched thoroughly prior to filing, the USPTO can still reject the application where it knows another inventor has invented the same thing and nobody else has that knowledge. This unfortunate result can occur because the USPTO conducts patent proceedings confidentially.
Say, for example, a Seattle inventor named Geoff, who holds other patents, invents a widget in October of 2009. Geoff uses Google Patents (www.google.com/patents) to search patent databases looking for applications for the widget. Geoff also does a basic Google search looking for any web page that displays information about the widget. Then, Geoff engages a Seattle patent attorney to conduct a professional search and render an opinion. Finding nothing, and receiving a favorable patentability opinion from his Seattle patent attorney, Geoff concludes that his widget is brand new, and files an application for a patent in November of 2009.
Some time passes, and then Geoff’s application is examined by the USPTO. The USPTO rejects the application, stating that a different inventor named Sam filed an application for the exact same widget in July of 2009, three months before Geoff’s invention date. (In patent parlance, Geoff’s application is rejected under 35 U.S.C. 102(e) as being anticipated by Sam’s disclosure.) As it relates to Geoff’s application, Sam’s July 2009 disclosure is called “secret prior art.” That’s because of the confidential nature of patent proceedings at the USPTO. Sam’s disclosure did not become public until after Geoff had conducted his search and filed his application. Sam’s application is not just prior art, but because nobody else was aware of it other than the USPTO, it was “secret” prior art.
This might seem like an unfair result, and in fact a disappointed patent applicant sued over this in a case which was eventually heard by the U.S. Supreme Court. And in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), the Court upheld the practice. After all, if Sam and Geoff both received a patent, then one of them would have received a patent for something that wasn’t new. In addition, they would both infringe the other.
The Court also suggested the reason for the situation was merely delay in processing in the patent office. In an ideal-world patent office, an application for a patent would be examined and a patent issued on the day of the filing of the application. And in that ideal-world, there would be no such thing as secret prior art. The second inventor, upon conducting a search, would find the first patent prior to even applying for the patent. But even though we don’t have this ideal-world patent office, the Court still didn’t believe it appropriate to create an exception in our patent laws through which two individuals could hold a patent for the same thing.
So hypothetically, if we had a patent office capable of issuing a patent on the day the office received the application, we would have no secret prior art, no 102(e) problems, and no disappointed inventors who find out someone in fact had “their idea” first. Unfortunately, this hypothetical patent office does not exist, and it actually takes a year and a half or more for most utility patent applications to receive a first examination. Due to secret prior art, it is possible for an inventor to search exhaustively, apply for a patent believing it is the first application that discloses the idea, and still be disappointed by something that was pending in a separate confidential examination process begun when a different inventor applied for the same idea.
The best defense against secret prior art? File your applications early. If you have an idea, don’t wait. Even if you conclude based upon your own searching that you have time because nobody else must be working on your idea, there could be something brewing confidentially in the USPTO. Get your application on file as soon as you can, because your filing date means everything.
Even if you are putting finishing touches on your invention, consider a provisional application for a patent to get your filing date now. A provisional application has fewer formal requirements than the non-provisional application, so it is cheaper to produce and file, but still establishes your filing date as of the day the provisional application is filed.
Continuing Applications
Posted Monday, October 24, 2011.
Once a patent application is pending at the USPTO, additional applications can be filed for consideration of patentability of new patent claims. When the additional application claims the benefit of a priority date which is the filing date of the original application, the additional application is called a “continuing application.”
There are different types of continuing application, including a continuation application, a continuation-in-part (CIP) application, and a divisional application. All can be filed up until the point that you pay the issuance fee in the original application.
A continuation application can be used when you have additional patent claims you want considered that are drawn to the invention disclosed by the original application. For example, while your application is pending, let’s say a competitor begins offering for sale a new product that you believe is close to the invention for which you’ve already filed an application. It may be that your existing patent claims already encompass the competitor’s product, but it might be worth filing a continuation application with new claims that more closely describe the competitor’s product. Since your continuation application gets the filing date of your originally-filed application, which is prior to the availability of your competitor’s new product, the new patent claims might put you in a better condition for enjoining the competitor. This strategy works as long as your new patent claims in the continuation application are supported by the original specification, which must be exactly the same in the continuation application (i.e., no new matter).
Another example of when a continuation application might be appropriate is a situation where an examiner will grant a patent on your original if you make changes to the original claims. You may not agree that the original claims need to be modified and feel like you have a pretty good argument that the original claims are patentable as they stand. Still, as the saying goes, a bird in hand beats two in the bush. A possible tactic is to make the change the examiner requests to get the first patent issued while filing a continuation application with your original claims untouched. That way, you get the patent the examiner is offering, but you still keep your original claims under consideration. It may cost more to do it this way, but it’s worth the added expense.
A continuation-in-part application is used when there is a new idea that comes to light during the pendency of the original application. You can file a continuation-in-part (CIP) application that discloses the original content along with the new idea. Since the new idea constitutes new matter, the filing date for the new idea is the filing date of the CIP, while the filing date for the original content is the filing date of the original application.
A divisional application is a type of continuing application that is used when an examiner has issued a restriction requirement. When you file an application, generally you try to get your money’s worth, so you disclose as much as you possibly can hoping for a very broad patent. If you actually disclose two inventions in your original application, however, the examiner may issue a restriction requirement. The fee you pay the USPTO for examination of an invention for patentability only gets you an examination of one invention. If the examiner sees two inventions in the application, the restriction requirement is basically asking you to choose which of the two inventions you want examined for the fee you paid. You elect an invention for examination in the original application, withdrawing claims drawn to the second invention. But if you still want the second invention examined, you file a divisional application in which you list the second set of patent claims and pay a second examination fee to the USPTO. The divisional application gets the filing date of the original application, and you could potentially get two patents.
Lunch with Judge Rader
Posted Thursday, October 13, 2011.
Yesterday, I had the opportunity attend a luncheon to hear remarks given by Judge Randall R. Rader, who since 2010 has been the Chief Judge at the Court of Appeals for the Federal Circuit (CAFC). The CAFC has exclusive appellate jurisdiction for cases regarding patents. In most federal lawsuits, if a trial court decision is to be appealed, the appeal is heard by a regional circuit court of appeals. But in patent matters, for consistency’s sake, among other reasons, Congress has required all appeals to be heard in the CAFC, located adjacent to the White House in Washington, D.C.
Since the recently enacted America Invents Act (AIA) patent reform law was such a substantial revision to our patent laws, I was very interested to get the perspective of the Chief Judge of the court that will provide very substantial interpretations of the new law in the coming years. Additionally, while I was quite familiar with Judge Rader’s written opinions and his other writings, I had never previously seen or heard him in person.
Clearly, I wasn’t the only Seattle patent practitioner thinking along those lines. The luncheon, which was hosted by three different intellectual property organizations, sold out almost immediately, and seats in an overflow room adjacent to the meeting room where the luncheon was planned were later offered. Attendance was limited to members of the Washington State Patent Law Association (WSPLA), the Washington State Bar Association (WSBA) IP Section and the King County Bar Association (KCBA) IP Section. I am a member of all three, so I was able to participate.
While as a patent agent, I wouldn’t be arguing before Judge Rader, who has been on the CAFC for two decades. But several attendees were Seattle patent lawyers who specialize in litigation, including a couple of colleagues who are among “The World’s Leading Patent Litigation Practitioners” featured recently in the newsletter Intellectual Asset Management. Obviously we were all looking for clues as to how to draft or litigate patents in ways that the CAFC would regard favorably.
The specific details or concepts Judge Rader discussed might be overly technical, or even boring, if you don’t think about patents all day long like I do. But I found Judge Rader to be warm, candid, funny and dynamic. He was quite approachable, walking around the tables to introduce himself to each attendee, shaking hands and slapping backs as he did so. He spoke with candor, acknowledging, for example, the dissonance in recent opinions from the CAFC regarding business method patents, and openly stating that in some respects, how the court would interpret the new America Invents Act was difficult to imagine right now.
I enjoyed a story Judge Rader told about a recent trip of his to Korea. He speaks to groups often, and in this instance, he visited the corporate offices of Samsung and spoke to what seemed to him to be every attorney Samsung employs, whether a patent attorney or not. As a part of his talks, he will often pull a smartphone out of his jacket pocket to ask the crowd whether anyone can guess how many patents actually apply to different elements of the phone. In Seattle, when he did so, I could see the Apple logo reflected by the lights in the room, so I knew his smartphone is an iPhone. Judge Rader said when he performed the same act at the headquarters of Samsung, he was stopped short by a collective gasp among the meeting attendees. Realizing he had perhaps committed a faux pas utilizing an Apple product as a part of a demonstration to Samsung, he was unsure how to recover. That is, until he was bailed out by the Samsung president, who said, “that’s alright, we have technology included in that phone. And at least it’s not an LG phone.”
At a different point, when Judge Rader took questions from the audience, a fellow Seattle patent practitioner walked up to the microphone and began his question with, “Judge Rader, I have had the pleasure of reading the entire AIA from cover to cover.” To which the judge said, “well now I’m worried about you, because you clearly have no life,” which got a healthy laugh from the audience. (My colleague quickly responded that it had been a long plane ride that offered the opportunity.)
I was very pleased to have the opportunity to meet Judge Rader in person, even if only for a minute. And his presentation, followed by the questions and answers, were insightful and helpful for me as I prepare applications for patents for my clients. Even though patents in the U.S. are as old as the Constitution, the law is redefined over time to meet the needs of our new technological era. Keeping up to date with new developments is just part of my job as a patent agent; the fact that doing so yesterday in a forum that was so enjoyable was a bonus.
(By the way, for trivia fans: the number of patents covering technology included in an iPhone is over 300, says Judge Rader. And if you include design patents, that number is probably closer to 1,000. His source for this information is a former law clerk of his who is now an Apple employee that works with Apple’s IP portfolio every day.)
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