CAMBIA, provider of an open-access patent database collating IP data from several national patent offices called CAMBIA Patent Lens, has now added the full text of Australian patents, which can be searched, viewed and printed at no cost, by anyone, thanks to the non-profit international organization.

The full text of over 115,000 Australian granted patents and over 580,000 patent applications have been added to the Patent Lens collection of almost seven million worldwide patent documents. They’ve also seriously upgraded the interface and have many new enhancements coming up, including searching by lapse/expire/revoked and full WIPO PCTs in all classifications.

The patent informatics and analysis component of the BiOS Initiative aims to assist in navigation of the intellectual property landscape, particularly within the life sciences, by making it more transparent.  BIOS is an attempt to establish an open-source technology movement in the biotechnology industry, similar to the computing industry’s open-source software movement.

We recommend you check out this great resource.  See more here.

Posted August 31st, 2007 by Stephen Albainy-Jenei in Cool Tools
| | 4 Comments »

The Federal Circuit has demonstrated once again that it is not afraid to effect a sea change in patent law jurisprudence in a big way.

Twenty-three years ago, in Underwater Devices v. Morrison-Knudsen Co. (Fed. Cir. 1984) the court declared: “Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing. Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”

The consequences in litigation to an accused and then adjudicated infringer for failing to discharge that duty could be a finding of willful infringement, giving the trial court discretion to multiply the damages award (up to 3X) and award the patent owner its attorneys’ fees.

Uncertainty was created as to what constituted “actual notice of another’s patent rights,” and patent attorneys struggled with identifying the circumstances, absent a specific accusation of infringement, that would trigger an affirmative duty. Hoping to provide safe harbor for their clients from such punitive consequences, patent attorneys have been recommending, preparing and billing for formal freedom-to-practice opinions ever since.

In the wake of Underwater Devices and its effects in subsequent cases, the court’s willfulness jurisprudence receded a bit from the apparently unequivocal rule that a person with “actual notice of another’s patent rights” always had to obtain a competent freedom-to-practice opinion in order to have a defense against a charge of willful infringement in subsequent litigation. The test for willful infringement became less centered on whether the accused had obtained a freedom-to-practice opinion, and shifted to a “totality of the circumstances” inquiry. But a duty of “due care” remained.

So until relatively recently, the presence or absence of a freedom-to-practice opinion remained potentially very important in any case in which the adjudicated infringer was on notice of the patent owner’s claim for a substantial period of time prior to commencement of litigation. An accused infringer who for whatever reason would not present one had to sweat out the likelihood that, from the absence of evidence of reliance on advice of patent counsel, the fact finder could be invited to draw an inference that the infringer was a reckless pirate — that despite having notice of the patent owner’s claim, either he had not sought advice of patent counsel, or he had, and patent counsel’s advice was that he was sailing in dangerous waters.

This placed the accused infringer on the horns of a dilemma. “Willfulness” was deemed an issue of the infringer’s state of mind, i.e., whether he had engaged in the infringing activity in “good faith”. Under principles of fundamental fairness, an infringer could not be permitted to assert his good faith reliance on a freedom-to-practice opinion without disclosing all other advice and information he had received on the matter. Thus, assertion of reliance on a freedom-to-practice opinion would effect a subject matter waiver of the attorney-client privilege.

Once an accused infringer asserted his reliance on a freedom-to-practice opinion, he opened the floodgates to intrusive and expensive discovery of all communications with his attorneys on the matter. Recognizing the strain this placed on the attorney-client relationship, in Knorr-Bremse v. Dana Corp. (Fed. Cir. 2004) the court sitting en banc held that it was error to draw the adverse inference against the accused infringer, or to instruct a jury that it could do so.

But the dilemma remained. Even though Knorr-Bremse took the adverse inference weapon away from the patent owner, the accused infringer still had to choose between (a) preserving his privilege and foregoing the right to assert a potentially powerful defense against a willfulness charge, or (b) asserting reliance on a freedom-to-practice opinion and effecting a waiver of his attorney-client privilege (and in some circumstances, attorney work product immunity), of potentially unpredictable scope. If he chose the latter course, intrusive discovery and battles over the scope of the waiver could be expected to lie ahead. Patent litigators appreciate the expense, complexity and burden this collateral litigation can and does create.

Those who have had to give depositions in litigation concerning their freedom-to-practice opinions would probably unanimously agree that this experience is no day at the beach. In In re EchoStar (Fed. Cir. 2006), the court suggested, without expressly holding, that the scope of the waiver might even extend to communications with, and work product of, litigation counsel, regardless of whether opinion counsel and litigation counsel were different people.

Which brings us to the present.

The patent owner in In re Seagate Technology (Fed. Cir. Docket No. 830; 8/20/07) has done accused infringers a favor by trying to push things too far. After accused infringer Seagate asserted reliance on freedom-to-practice opinions, the patent owner aggressively pursued discovery of all communications concerning the matter between Seagate and any counsel, including litigation counsel. The district court ruled that the patent owner was entitled to the discovery. Seagate sought a writ of mandamus from the Federal Circuit, and the court en banc took the opportunity to review and effect a dramatic change of conditions.

After receiving a surge of amicus briefs, considering the original moorings and course of willful infringement jurisprudence, and concluding that it had reached an undesirable place, the Seagate court decided to chart an entirely new course for us. It expressly overruled Underwater Devices. Here is the new course of analysis for willfulness announced in Part I of the court’s opinion:

1) To establish willful infringement, as a threshold matter a patent owner must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent;

2) The state of mind of the accused infringer is not relevant to this objective inquiry; and

3) The patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceedings) was either known or so obvious that it should have been known to the accused infringer.

After announcing this new analytical course, the Court cut us loose, stating, “We leave it to future cases to further develop the application of this standard.”

In Part II of its opinion in Seagate, the court after thoughtful consideration ruled that any waiver effected by assertion of reliance on a freedom-to-practice opinion generally should not extend to communications with litigation counsel. With the caveat that the holding is premised on the facts of the case in which opinion counsel and litigation counsel “operated separately and independently . . . at all times,” this is probably the less remarkable feature of the decision. Based on discomfort with a broader scope of waiver manifest in some district court opinions and the practical implications, the decision was anticipated by litigators in the wake of EchoStar.

The Court based its holding on the substantially differing functions of and issues facing opinion counsel and litigation counsel, and concern that allowing intrusive discovery of attorney-client communications and attorney work product of litigation counsel is of unlikely value since it is usually the infringer’s conduct prior to, not after commencement of litigation that is under scrutiny: When a complaint is first filed alleging willful infringement, it can only be referring to pre-litigation conduct.

Is the freedom-to-practice opinion still important? Try to parse the court’s statements. What appears to matter now are whether the patent owner’s case for infringement of a valid patent was pretty darn strong, viewed in hindsight after final adjudication, and whether the infringer knew or had reason to know of the strength of the case prior to litigation, i.e., without benefit of hindsight (i.e., at the time decisions to proceed or continue with the infringing conduct were being considered, prior to litigation). Hmmm.

The potential role of the freedom-to-practice opinion might now to be to support an argument that the infringer did not know or have reason to know of the risk that the case would be found to be strong after final adjudication. Those who want and are willing to pay for the insurance of a freedom-to-practice opinion when litigation looms on the horizon will probably still want to obtain one.

But the absence of a freedom-to-practice opinion would appear to be far less significant than it was before, unless some meaningful period of time prior to commencing litigation the patent owner presents the accused infringer with a detailed infringement analysis making a well-reasoned and solid demonstration of the strength of the case that proves to be prescient. The Seagate court expressly overruled Underwater Devices. Accordingly, if he wants to maximize his chances of a finding of willful infringement, the patent owner is well-advised to present a well-reasoned case to the accused infringer a meaningful period of time before launching litigation.

Having taken that step, the patent owner would be justified in arguing to the fact finder that he made it “known or so obvious that it should have been known” to the accused infringer that a strong case existed. Without having first taken that step, the patent owner would not seem to be well-situated to charge an accused infringer with willfulness for not obtaining a full-blown freedom-to-practice opinion. In other words, a casual accusation of infringement or general knowledge of potential coverage by a competitor’s patent would not appear to be sufficient to trigger an affirmative duty of care on the part of the accused infringer.

Well-reasoned freedom-to-practice opinions will continue to have their place outside the context and purposes of litigation. Clients need them to help them make decisions whether to invest in technology or engage in an activity, to avoid litigation, or to assess the strength of their positions in litigation — not just to defend themselves against charges of willfulness. Anticipating the possibility that they would be offered as evidence, patent attorneys started routinely making them very formal in organization, analysis and appearance after Underwater Devices. When litigation is anticipated, Seagate should not change that, nor should it change the attention that is paid to issues created when the same firm or attorney proposes to serve as both opinion counsel and litigation counsel.

However, in the event a case for infringement of a valid patent appears very strong, in hindsight after adjudication, any freedom-to-practice opinion asserted may come under even more intense scrutiny for competence and thoroughness before it will be accepted as good proof that a strong case was not known or obvious to the infringer. One wonders whether, absent an intervening change in substantive law, there can be reconcilable coexistence of a strong case for infringement of a valid patent, and a competent and thorough attorney opinion finding otherwise. In other words, opinion counsel and a disagreeing court can’t logically both reach legally sound and correct, substantially certain but disagreeing conclusions.

Regardless, it appears that Seagate signals a receding of the tide of willful infringement litigation. The decision appears to be intended by the court to make a willfulness case substantially more difficult to prove. In view of the complexity and high reversal rate on claim construction issues in patent infringement cases, how can it be argued in any but the simplest and clearest of cases (is there such a thing?) that an accused infringer knew or should have known of a strong case before litigation and adjudication? This would seem to require proof that the infringer was omniscient. Whether this logical conundrum was intended by the court or not, the effect will be to remove risk for accused infringers and shift some of the burden back to patent owners.

The Federal Circuit appears to think this is a good thing. Whether we think so will depend on whether we tend to sympathize with patent owners or with accused infringers.

With apologies for the strained attempt to maintain a nautical theme – Seagate Technology makes computer hard drives.

Today’s post comes from Guest Barista Bill Gallagher, a registered patent attorney in Frost Brown Todd’s Cincinnati office.

Posted August 24th, 2007 by Stephen Albainy-Jenei in IP Litigation
| | 3 Comments »

Dr. Triantafyllos Tafas, represented by Kelley, Frye and Warren LLP filed a declaratory judgment action in the Eastern District of Virginia, arguing that the new continuation rules are null and void, and is also seeking a preliminary and permanent injunction prohibiting the USPTO from putting the new rules changes into effect.

Dr. Tafas is an inventor on more than seventeen (17) patents pending and on eight (8) U.S. issued patents. He is also Chief Technology Officer (CTO) and co-founder at Ikonisys.

The complaint alleges that the USPTO exceeded its Congressionally-delegated rulemaking authority and that the new rule changes specifically violate Section 120, 132, and 365 of the Patent Act. It is further asserted that USPTO failed to comply with the Administrative Procedure Act in promulgating the new rule changes. The suit also alleges that the USPTO has engaged in retroactive rulemaking and has failed to consider USPTO-induced reasons for multiple continuation filings.

From the complaint, Dr. Tafas seeks:

(1) to prevent Defendants from implementing Sections 1.75 and 1.78 of certain new federal regulations published by the USPTO at 72 Fed. Reg. No. 161 on August 21, 2007 (with an effective date of November 1, 2007) entitled “Changes to Practice for Continuing Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications; Final Rule” (to be codified at 37 CFR Part 1 and sometimes collectively referred to herein as the “Revised Rules”);

(2) to have the Revised Rules declared null, void and without legal effect as being beyond the rule making power of the USPTO and inconsistent with various federal statutes and Article I, Section 8, Cl. 8 and the Fifth Amendment to the United States Constitution; and

(3) for the issuance of a Writ of Mandamus requiring Defendants to comply with the requirements of the Administrative Procedure Act, 5 U.S.C. §§1 et seq. (the “APA”) in promulgating any further rules in the future concerning the subject matter of the Revised Rules.

Dr. Tafas is looking for a preliminary injunction preventing the Revised Rules from taking effect because they substantially change the regulatory landscape under which inventors, like Dr. Tafas, have traditionally operated and, once effective, will frustrate the purposes of the U.S. Patent laws by preventing Dr. Tafas and other similarly situated inventors from realizing the full economic potential of their work.

Dr. Tafas believes that the Revised Rules should be preliminarily and permanently enjoined and declared null and void because, among other things, they violate: (1) Sections 2, 120, 131, 132 and 365 of the Patent Act (35 U.S.C. §§ 1 et seq.) by exceeding the rule making authority delegated to the Defendants by Congress; (2) Sections 553(c) and 706(2) of the APA (5 U.S.C. §§ 553(c) and 706(2)) by, among other things, purporting to enact rules with retroactive effect; failing to consider all the relevant matter presented as required by 5 U.S.C. § 553(c); and, by promulgating rules that are arbitrary, capricious, an abuse of discretion, otherwise not in accordance with law, contrary to Plaintiffs constitutional rights and in excess of the USPTO’s statutory jurisdiction and authority; and (3) Article I, Section 8, Cl. 8 and the Takings Clause of the Fifth Amendment of the United States Constitution.

Read a copy of the complaint here (link)

Posted August 23rd, 2007 by Stephen Albainy-Jenei in Patent Reform, IP Laws, USPTO
| | 6 Comments »

Kevin Heller, the Tech Law Advisor and commissioner of the Legal Bloggers Fantasy Football League, is heading up Blawger Bowl IV. The league is made up of draft teams managed by law blawgers. Patent Baristas is participating - and destined to struggle to maintain any sense of dignity.

If you are a law blawger and intent on taking down reigning champ Bizz Bang Buzz, then let Kevin know.

We’ll keep you updated on progress.

Posted August 23rd, 2007 by Stephen Albainy-Jenei in Current Affairs
| | No Comments Yet »

Changes To Patent Practice (Pt. 1)

Seeing applicants as just a bunch of bad boys and girls filing (and paying for, of course) just far too many applications (including both continuing applications and requests for continued examination) the Office is taking everyone to the woodshed for a lesson in not asking the Office to do too much work.

The United States Patent and Trademark Office (Office) is continuing its march towards world domination by revising the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications.

The Office is revising the rules of practice to require that any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted.

The Office is also revising the rules of practice to provide that an applicant must provide an examination support document that covers all of the claims in an application if the application contains more than five independent claims or more than twenty-five total claims and is revising the rules of practice with respect to multiple applications that have the same claimed filing or priority date, substantial overlapping disclosure, a common inventor, and common ownership.

I spoke with Courtenay Brinckerhoff at Foley & Lardner briefly about the new rules and she expressed the concern that the rule changes may be especially problematic for the chemical, pharmaceutical and biotech arts. The concern is more directed to the limitation on requests for continued examination in that in the chem./bio arts, such continuations are used in essentially every application.

This is due to the fact that, in chem/bio applications, it is extremely difficult to either (a) carefully craft claims that adequately describe the full claim scope to which the applicant is entitled to and (b) the difficulty in fully analyzing the prior art such that the claims can be drafted in a manner that does not overlap with the known art.

The Patent Office believes that continued examination filings diverts patent examining resources from the examination of new applications disclosing new technology and innovations, to the examination of applications that are “a repetition of prior applications that have already been examined and have either issued as patents or become abandoned.”

What the ^$^#@! does that snide comment mean?

Even while admitting that while only a small minority of applications are a third or subsequent continuing application, the Patent Office has the misguided opinion that “Applicants should not rely on an unlimited number of continued examination filings to correct deficiencies in the claims and disclosure that applicant or applicant’s representative could have corrected earlier.”

The question becomes whether or not such filings really are inconsistent with an applicant’s and practitioner’s duty under 37 CFR 10.18(b)(2)(i) not to submit an application or other filing to cause unnecessary delay or needless increase in the cost of prosecution before the Office.

Like a paranoid schizophrenic, the Patent Office sees misuse in every continued examination practice letting a few bad apples taint its view of the whole landscape. As Brinckerhoff points out, it is often necessary to add an amendment or to get in a declaration proving therapeutic utility in the course of prosecution – hardly misuse.

In the Continuing Applications Proposed Rule, the Office proposed to change the rules of practice to require that:

(1) Any second or subsequent continued examination filing (continuation or continuation-in-part application or request for continued examination) include a showing that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation or continuation-in-part application or request for continued examination; and

(2) multiple applications that have the same claimed filing or priority date, substantial overlapping disclosure, a common inventor, and a common assignee include either an explanation of how the claims are patentably distinct, or a terminal disclaimer and explanation of why patentably indistinct claims have been filed in multiple applications.

The Office expects that the changes to the rules of practice in this final rule will: (1) Lead to more focused and efficient examination, improve the quality of issued patents, result in patents that issue faster, and give the public earlier notice of what the patent claims cover; and (2) address the growing practice of filing (by a common applicant or assignee) multiple applications containing patentably indistinct claims.

The Office goes on at length describing as much bull about how 35 U.S.C. 111(a) and 120 constitute the real statutory basis for continuing application practice and how the practice of filing continuation applications arose early in Office practice “mainly as a procedural device to effectively permit the applicant to amend an application after a rejection and receive an examination of the ‘amended’ (or new) application.” Conspicuously absent from the discussion is how the only reason there is such a great need for continuing applications is the Patent Office itself.

That is, since the Office automatically gives a Final Office Action on second action and refuse to hear arguments or enter amendments unless a continuation is filed (read: a disposal for the Examiner and yet more fees for the Office), the applicant has no choice but to file continuing applications in order to secure their rightful claims.

With the new rules, the balance of power and right has shifted from a legal “right” to gain a patent to a system where the Patent Office hold the applicant at its mercy – and holds all the cards. The Patent Office can effectively back the applicant up against a wall and the applicant will have to accept the claims the Examiner offers – no matter how much they fall short of the true scope of the invention as allowed by law.

Now, the Patent Office will have you believe that the changes do not set a per se limit on the number of continuing applications but merely require that applicants who file multiple continuing applications from the same initial application show that the third and following applications, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence that could not have been previously submitted.

Nice. Just how can one “prove” a negative like that? A note from your mother? What action could not have been taken earlier if you somehow had the world’s time and resources at your disposal?

One group likely to suffer greatly in all this will be universities (and other research institutes) that often license technology out to third parties. As often is the case, licensees are more interested in particular claims that cover their product or field of use. Traditionally, universities have used continuing applications to pursue claims that were not secured earlier by the licensee. Now, expect greater tension between licensors and licensees as they battle over who gets to use up the very limited right to continuations.

Also expect much, much longer prosecution times for applications – exactly the opposite effect that the Patent Office seems to think will happen under the new rules. Applicants often use continued examination practice to obtain further examination rather than file an appeal to avoid the delays that historically have been associated with the appeal process. While the Patent Office believes that it has taken appropriate steps to eliminate such delays, this will cause a tsunami-like tidal effect of appeals the likes of which have never been seen before. Patent practitioners will not use up such a limited and valuable resource like a continuation and will most certainly appeal cases instead.

These changes will go into effect November 1, 2007. Get ready for a real backlog.
——————————————————————————–

Summary of Changes

The Office is revising the rules of practice for continuation applications, continuation-in-part applications and requests for continued examination. Under these revisions, an applicant may file two continuation applications (or continuation-in-part applications), plus a request for continued examination in the application family, without any justification. An application family includes the initial application and its continuation or continuation-in-part applications. Applicant may file any additional continuation application, continuation-in-part application, or request for continued examination with a justification.

Specifically, the Office is revising the rules of practice to require a justification for any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family. The third or subsequent continuing application or request for continued examination must be filed with a petition showing why the amendment, argument, or evidence sought to be entered could not have been previously submitted.

The Office is also revising the rules of practice for divisional applications. Under these revisions, an applicant is permitted to file a divisional application of an application for the claims to a non-elected invention that has not been examined if the application was subject to a requirement for restriction. The divisional application need not be filed during the pendency of the application subject to a requirement for restriction, as long as the copendency requirement of 35 U.S.C. 120 is met. Thus, applicant may file the divisional application during the pendency of the application that was subject to a requirement for restriction or the pendency of any continuing application of such an application. Applicant may also file two continuation applications of the divisional application plus a request for continued examination in the divisional application family, without any justification. A divisional application family includes the divisional application and its continuation applications. In addition, applicant may file any additional continuation application or request for continued examination in the divisional application family with a petition and adequate justification.

The Office is also revising the rules of practice for the examination of claims in an application to provide that if the number of independent claims is greater than five or the number of total claims is greater than twenty-five, the Office will require the applicant to help focus examination by providing additional information to the Office in an examination support document covering all of the claims (whether in independent or dependent form) in the application.

The Office is also revising the rules of practice with respect to multiple applications that have patentably indistinct claims and a common assignee by either requiring that all patentably indistinct claims in such applications be submitted in a single application or effectively treating the multiple applications as a single application.

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See the Blawg-Storm here:

• Patenly-O
• PHOSITA
• Peter Zura
• Don Zuhn
• Kevin Noonan
• Stephen Albainy-Jenei
• Rand Bateman
• Steve Nipper
• Dane Carlson
• Eagle Robinson
• Patent Hawk
• KC Jones
• Gene Quinn
• USPTO’s Page on the Final Rules

Posted August 22nd, 2007 by Stephen Albainy-Jenei in Patent Reform, USPTO, Current Affairs
| | 2 Comments »

The United States Patent and Trademark Office (USPTO) will publish (tomorrow) in the Federal Register new rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater precision in describing the scope of their inventions. The new rules will be effective on November 1, 2007.

Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.

The USPTO beleives that application quality will be improved, enhancing the quality and timeliness of both the examination process and issued patents. We shall see.

The new rules are available tomorrow, August 21, 2007, no later than noon, in the Federal Register. A webinar on the new rules is scheduled for Thursday, August 23, 2007. See Rule Changes to Focus the Patent Process in the 21st Century.

Previous News:

Another USPTO Rule Package Slowly Boxing In Applicants

OMB Approves Patent Changes, But to What Result?

Patent Holders Express Budget Concerns Over Proposed Patent Rule Changes

USPTO Proposes Limiting Continuations

Posted August 20th, 2007 by Stephen Albainy-Jenei in Patent Reform, USPTO
| | 6 Comments »

I received a note from the USPTO asking if I could post a notice about needing volunteers for a Complex Work Units Pilot Program.  This is mainly for those that deal with complex chemical or mathmatical formulae.

The United States Patent and Trademark Office (USPTO) is seeking participants for a Complex Work Units (CWUs) Pilot Program scheduled for late 2007.  CWUs are chemical structure drawings, mathematical formulae, protein crystal data, and table data, which often add significant complexity and cost to the examination and publication of patent applications in which they are contained.  

The CWU Pilot Program will be conducted in an effort to:

• Investigate filing practice options for CWUs
• Gather information about existing CWU formats and their use in the Intellectual Property community
• Evaluate rule changes to allow applicants to submit CWU files
• Determine other acceptable file types

The pilot will allow applicants to submit original source files for CWUs through EFS-Web or on a CD, supplementing the traditionally-filed application parts.  The CWU source file submissions will not be considered when calculating the application size fee, which will reduce the cost of filing for pilot participants.

The USPTO is requesting participants in an effort to gather more information about CWUs from the intellectual property community.  If you have any questions or would like to participate in CWU Pilot activities, please send an e-mail to cwupilotsupport@uspto.gov today!

It’s nice that they’ve asked for feedback, though.

Posted August 14th, 2007 by Stephen Albainy-Jenei in USPTO, Current Affairs
| | No Comments Yet »

As further evidence that the United States Patent and Trademark Office (Office) hates the chemical/pharma/biotech arts, the Office is proposing to revise the rules of practice pertaining to any claim using alternative language to claim one or more species. That is, if the claims use Markush or other forms of alternative language. This is all part of the Master 21st Century Strategic Plan where the PTO is trying desperately to reduce its workload by any means necessary. According to the USPTO, the search and examination of such claims consume a disproportionate amount of Office resources as compared to other types of claims.

In Ex parte Markush, 1925 Dec. Comm’r Pat. 126, 128 (1924), the Office officially sanctioned a claim drafting technique, already in use for some time, wherein the phrase ‘‘selected from the group consisting of’’ is followed by a closed listing of specific members of the group. Claims including such language became known as ‘‘Markush claims.’’ For example, if a claim to a chemical composition requires a particular alcohol, that alcohol could be defined via Markush language such as ‘‘an alcohol selected from the group consisting of methanol, ethanol, and isopropanol;’’ or ‘‘an alcohol of the formula R-OH, wherein R is selected from the group consisting of CH3-, CH3CH2-, and (CH3)2CH-.’’

In addition to the indefiniteness issue, another factor giving rise to claims using Markush language was the change from claims based on the central type of definition to those based on the peripheral definition. With the peripheral- type claims came the necessity of avoiding invalidity by reason of inoperative species which might be included within the metes and bounds of the claim. In mechanical cases, this problem is overcome by the use of elements defined as ‘‘means’’ but chemical claims do not lend themselves well to such a solution due to the fact that equivalence in chemical cases is difficult to establish. The Markush claim may be regarded as a partial solution to this problem, since it permits an applicant to claim a subgeneric group containing those materials which have been actually tested and known by applicant to be operable.

Most of the court decisions concerning claims that recite alternatives involve Markush practice and reflect problems associated with claiming compounds by their chemical structure. Current Office practice is that compounds that are defined by Markush language are directed to a single invention (i.e., have ‘‘unity of invention’’) when they ‘‘(1) share a common utility, and (2) share a substantial structural feature essential to that utility.’’

Current Office policy requires examination of all species of a claim that recites a Markush group when the alternatives are sufficiently few in number or so closely related that search and examination can be made without serious burden. That is, the Office cannot refuse to examine what applicants regard as their invention unless the subject matter in a claim lacks unity of invention.

In such case, however, the examiner may require applicant to elect a single species under 37 CFR 1.146 for initial search and examination to facilitate examination on the merits. If the elected species is not allowable, examination of the Markush claim will be limited to the elected species and any species not patentably distinct therefrom, and any separate claims to the elected species and any species not patentably distinct therefrom. Claims drawn to species patentably distinct from the elected species are held withdrawn from further consideration. If the elected species is allowable, then the search and examination of the Markush claim will be extended to non-elected species to the extent necessary to determine patentability of the claim. This may require a separate search and examination of each alternative.

The proposed rules are intended to provide a mechanism by which the Office can require a single claim to be limited to a single invention.

1. Each claim must be limited to a single invention.

A claim that is directed to multiple independent and distinct inventions would meet the statutory eligibility requirement for restriction set forth in 35 U.S.C. 121:

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.

Through the use of the word ‘‘may,’’ the statute is permissive, not mandatory, and gives the Director discretion to require restriction.

In addition to proposing a requirement limiting a claim to a single invention, the Office is proposing to specify that when subject matter that reads on multiple species is defined in a single claim using alternative language, the claim is limited to a single invention when at least one of the following two conditions is met: (1) All of the species encompassed by the claim share a substantial feature essential for a common utility, or (2) all of the species are prima facie obvious over each other.

The Office proposes to encourage applicants, when filing a claim that employs alternative language, to provide an explanation as to why the claim is directed to a single invention. (WARNING: Prosecution Estoppel Ahead!)

The Notice claims that when an applicant submits an explanation in a timely manner, the examiner will fully consider it (and then summarily reject it).

The Office also proposes that if an application seeks the benefit under title 35, United States Code, of a prior-filed application and discloses subject matter that was not disclosed in the prior-filed application (a continuation-in-part), the applicant must identify which claim or claims in the application are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application.

2. Claims with alternatives will require a new format.

The Office proposes to require a simplified format for the presentation of such claims and to set forth conditions that must be met by any claim that uses alternative language by adopting language similar to that in the PCT Guidelines, specifically requiring that the number and presentation of alternatives in the claim not make the claim difficult to construe, and requiring that each alternative within a list of alternatives must be substitutable one for another. In addition, to reduce the complexity of determining whether a claim is directed to a single invention, the Office proposes to specify that no alternative may itself be defined as a set of further alternatives.

Finally, the Office proposes to specify that no alternative may be encompassed by any other alternative within a list of alternatives, unless there is no other practical way to define the invention. When alternatives partially overlap in scope, it is more difficult to determine whether a single claim encompasses more than one invention. Thus, a single claim that includes alternatives that either fully overlap (e.g., ‘‘selected from the group consisting of an adhesive agent, tape, and glue’’) or partially overlap (e.g., ‘‘selected from the group consisting of citrus fruits and tropical fruits’’) in scope may be subject to an objection.

The Office states that Applicants should file a series of individual claims from the broadest scope that they feel they are entitled to the narrowest scope they are willing to accept. Put differently, applicant should narrow the scope of protection sought via separate claims and not via nested sets of overlapping alternatives.

Couple this with the proposed rules on claim limits (see Changes to Practice for the Examination of Claims in Patent Applications, 71 Fed. Reg. 61) and this adds up to a skyrocketing increase in costs.

If you want to (try to) make your voice heard, written comments must be received on or before October 9, 2007. No public hearing will be held. Comments should be sent to

markush.comments@uspto.gov.

Comments may also be submitted by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, or by facsimile to (571) 273–7754, marked to the attention of Kathleen Kahler Fonda, Legal Advisor, Office of the Deputy Commissioner for Patent Examination Policy.

In addition to comments on the proposed rules, the Office welcomes further suggestions for changes that would improve the examination of claims that recite Markush or other alternative language while appropriately balancing the interests of the Office with those of applicants and the public.

Posted August 14th, 2007 by Stephen Albainy-Jenei in Patent Reform, USPTO
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