1) CONDUCT INTERVIEWS: Set up interviews when possible. Interviews can help applicants and examiners quickly identify points of agreement as well as points of disagreement. An interview will help advance prosecution and provide an opportunity to facilitate a possible early allowance.
2) KEEP CLAIMS MANAGEABLE: Avoid filing excessive numbers of claims. Filing a manageable number of claims will enable the examiner to enhance prosecution by directing examination efforts at the heart of applicants' invention.
3) PROVIDE GOOD TRANSLATIONS: Do a careful job of translating foreign-language applications into English before filing an application in the United States. Poorly translated applications often result in undesirable lengthy prosecution resulting from lack of clarity arising from indefinite claim language or unclear wording in the specification.
4) CLEARLY IDENTIFY NEW LIMITATIONS: When adding new limitations to claims during prosecution, include a brief section in the remarks citing the location in the specification or drawings that provides support. This will eliminate unwarranted new matter rejections under Section 112 and assist the examiner in better understanding the meaning of the claims.
5) FILE THOROUGH RESPONSES: Take care to ensure that your response addresses the specific issues set forth in the examiner's office action. Responses or amendments that fail to address the issues in the office action unduly extend prosecution.
6) ADVANCE AMENDMENTS/ARGUMENTS EARLY: File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible. Amendments submitted after final are more difficult to deal with procedurally, are not automatically entered, and extend prosecution.
7) COORDINATE US/FOREIGN APPLICATIONS: Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application. Success of the Patent Prosecution Highway (PPH) shows that applications drafted or amended in response to search reports and patentability opinions in corresponding foreign or international applications have a much higher allowance rate and shorter prosecution.
8) DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention. If the claim set is not initially drafted to capture the protection needed or desired by the applicant, the examiner will have difficulty doing a comprehensive search on first action. Furthermore, the examiner will have difficulty anticipating what might be claimed in the future, if the initial claim set is misdirected or overly broad. All of this extends prosecution at everyone's expense.
9) KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL: Submit a focused Information Disclosure Statement (IDS). Include in an IDS only those references material to patentability. The citation of references that are not material to patentability does not promote a focused examination. Also, be careful to avoid the repeated citation of the same reference.
10) DRAFT CLAIM SET FROM BROAD TO NARROW: Draft your claim set beginning with the broadest scope to which you feel you are entitled and concluding with the narrowest scope you feel merits protection. A claim set that is graduated in scope from broad to narrow assists the examiner in performing a complete and focused search on first action and can help the examiner anticipate future amendments. A claim set that is merely broad does not assist the examiner in performing a focused search and often leaves the examiner guessing as to what might be claimed after first action. This can lead to piecemeal prosecution and the citation of new art after amendment.
Again, scheduling an interview is #1 and is notable as part of an overall emphasis Kappos has put on interviews since taking over as director. Kappos is continuing his emphasis on stressing cooperation between examiners and practitioners. Almost all of the tips, in general, refer to advancing prosecution as early as possible, eliminating needless delays and duplicate work. By encouraging the applicant or practitioner to put their best foot forward initially, clear communication between the examiner and applicant/practitioner results earlier and the total prosecution time is reduced.
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It is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection. This age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.
The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.
Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act's text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable "process," beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr. And nothing in today's opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit's development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text. The judgment of the Court of Appeals is affirmed.
The word "method" within the law's definition of "process" may include at least some methods of doing business. Even though the invention in this case would not be categorically barred from eligibility, the Court says that does not mean it qualifies as a process.
We will have much more coverage of Bilski soon, but for now, here is the opinion:
]]>If you read the claims of the Amazon patent, it reads an awful lot like Facebook. For instance, in claim 1:
"providing a user interface for users to establish contact relationships with other users of the service such that each user can have one or more contacts, said user interface enabling a user to identify other users of the service, and to selectively initiate the generation of requests to establish contact relationships with the identified users"
"Generation of requests to establish contact relationships" = "Friending someone" ?
Claim 9:
"9. The method of claim 1, wherein the method comprises providing functionality for the first user to grant different permission levels to different contacts of the first user, such that some contacts of the first user are provided access to different types of personal data of the first user than others contacts of the first user."
Adjustable Facebook privacy settings?
Also, claim 12:
12. The method of claim 1, wherein the personal data of the first user comprises an identification of a school attended by the first user and an associated date range of attendance, and the method further comprises the server computer system using said personal data to identify, and inform the first user of, other users of the service who attended said school in said date range.
"Identification by school with associated date range of attendance" sounds essentially the same as sorting people by college and graduating year.
The whole situation has a sort of "cold war" feel to it. This is clearly a posturing by Amazon, but it is unclear what they have in mind. It will be interesting to see where Amazon goes with the patent. The patent also comes right when Bilski might be on deck, which could invalidate the entire thing altogether.
]]>At this point, it has to be considered a realistic possibility that the Supreme Court will hold the decision over till next term.
]]>This decision could halt the momentum qui tam suits have been gaining since the Forest Group decision, holding that the false marking penalty accessed is assessed per item marked. While merely denying knowledge of the false marking is not sufficient to rebut the presumption of deceptive intent, Solo Cup's showing here was fairly unremarkable and, thus, it looks like the bar has been lowered for rebutting the presumption with this decision.
In the absence of legislation reforming false marking suits, it also seems that this decision is indicative of a tough line being drawn by the Federal Circuit. It will be interesting to observe subsequent decisions by the CAFC on false marking and see if this tougher stance continues.
]]>The battle between HTC and Apple is part of a larger war between Apple and Google. Phones utilizing Google's Android operating system compete with the iPhone, which is one of the largest, if not the largest, revenue streams for Apple. HTC makes a variety of phones that run the Android operating system and, consequently, Apple likely wants to squeeze them out the market and make potential market entrants more hesitant to enter.
HTC, as well as other players in the smart phone market, will increasingly have the strength of the patents, as well as their "design-arounds", tested as Apple continues to aggressively defend their intellectual property. We will continue to monitor developments in the litigation between Apple and HTC.
]]>Maybe this Thursday? According to SCOTUSBlog, more opinions may be released then. For the next few days, however, we will just have to continue waiting.
]]>McNamara v. Country Life, LLC et. al.
McNamara v. Natural Organics, Inc. et. al.
McNamara v. Vitamin Shoppe, Inc.
McNamara v. Elizabeth Arden, Inc.
We mentioned in a previous blog post the rise of qui tam suits that has occurred since the Forest Group decision (we also discuss the issue more in-depth here). It looks qui tam marking suits are here to stay until reform legislation cuts them off.
]]>TiVo's stock dropped from $7.74 per share to $7.22 per share at the closing bell, a drop of 6.7% during Wednesday trading. As mentioned before, the enormous value of IP cannot be more apparent than here, where reexamination proceedings can cause such dramatic fluctuations in the stock price. We will continue to monitor any further developments in the case.
]]>Many commentators are seemingly urging the Supreme Court to "just go ahead and make a decision already." At this point, the uncertainty has certainly reached the point of hampering productivity. An entire branch of technology is in somewhat of a "holding pattern" while awaiting the decision of the Supreme Court. However, it is important to be mindful of how important this decision actually is. Technological progress in these fields could be severely impeded without a well thought out opinion here.
When a decision finally comes down, we will make sure to follow up with reaction.
]]>Reexamination proceedings grew every single year in the period from 2000-2004 and the period from 2006-2009. This is in part due to numerous developments, including the Central Reexamination Unit and the decision in KSR v. Teleflex (lowering the standard for obviousness), which have made reexamination a more effective tool for challenging the validity or scope of patents or using it as a defense in an infringement case.
Kappos also provided a link to the "Best Practices" for reexamination.
]]> According to a Wall Street Journal article, a potential new fast track system for expedited examination of patents was proposed by David Kappos. The new system would have three different tracks available to applicants. One track would be the expedited route, allowing applicants to "jump to the front of the line," and would cost extra on top of the normal filing fee. Another track would essentially be a standard speed examination with standard fees, although the average time for an application to be reviewed could be affected (either positively or negatively) by the existence of the other two tracks. The last track would be a slower track with reduced fees and a 30 month wait. Small entities would still pay half of all fees.
Like the majority of Kappos's initiatives (First Action Interview Pilot Program, Project Exchange, etc.) since taking over as Director, this system would have the goal of reducing the backlog at the patent office. Kappos predicts that the standard route would additionally be sped up by some applications moving into the third, slower track. This would be a major change from the existing system and even the proposal demonstrates Kappos' willingness to think "outside the box" and retool the mechanics of how the PTO operates.