Greg Aharonian at Internet Patent News Service posted a note about a possible increase in double-patenting rejections as the U.S. Patent Office. In a complaint he received, a reader questions whether this is an orchestrated implementation of “directives to frustrate patent applicants to achieve their misguided purpose.”
As an example, the reader noted that the Patent Office seems to be (undeservedly) dishing out more statutory double patenting rejections. Although the example dealt with claims directed to computer readable storage media and accompanying systems and methods, this can also be a problem in the bio/pharma where drug companies are constantly trying to file patent applications on continued changes and improvements in order to capture or retain market share.
Basically, the law provides that an applicant may only obtain a single patent for an invention. 35 USC 101 provides:
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, subject to the conditions and requirements of this title.
Thus, a statutory double patenting rejection comes up when the applicant tries to claim the exact same invention. The purpose, of course, is to prevent a patentee from receiving multiple patents for the same invention and thus gaining an illegal extension of patent term. Therefore, a pharmaceutical company can only be able to prevent generic entry for a period of 20 years from the filing date of the application (albeit with certain extensions available).
One quick test of whether or not there’s a problem is to ask:
Is there an embodiment that falls within the scope of one claim, but not the other?
Could one claim be literally infringed without literally infringing the other claim?
Since bio & pharma patents seem to be under seige, I’m curious if others have experienced an uptick in statutory-type double patenting rejections?
The United States Patent and Trademark Office (USPTO) has published updated patent examiner training materials regarding the examination of patent applications under the written description requirement (35 U.S.C. § 112, first paragraph). That is, in order to obtain a valid patent, an applicant must include in a description adequately disclosing the invention and how to make and use it.
USPTO Commissioner for Patents John Doll said, “These training materials will improve the quality and consistency of patent examination, as well as provide guidance to practitioners for the drafting of patent applications and responses to examiners.” We’ll see.
As discussed earlier, the examination of patent claims for compliance with the Written Description Requirement should include:
1. A determination as to what the claim as a whole covers. In making this determination, the examiner should consider and discuss the full scope of the claim.
2. A full review of the application to understand how the applicant provides support for the claimed invention including each element and/or step. This review includes comparing the claim scope with the scope of the description.
3. A determination as to whether one skilled in the art would recognize that the applicant was in possession of the claimed invention as a whole at the time of filing. This determination should include the following considerations:
a. Actual reduction to practice,
b. Disclosure of drawings or structural chemical formulas,
c. Sufficient relevant identifying characteristics, such as: i. Complete structure, ii. Partial structure, iii. Physical and/or chemical properties, iv. Functional characteristics when coupled with a known or disclosed correlation between function and structure
d. Method of making the claimed invention,
e. Level of skill and knowledge in the art and
f. Predictability in the art.
4. For each claim drawn to a single embodiment or species, consider the above factors in regard to that embodiment or species to determine whether one of ordinary skill in the art would recognize that the applicant was in possession of the species or embodiment at the time of filing.
5. For each claim drawn to a genus, consider each of the above factors to determine whether there is disclosure of a representative number of species which would lead one skilled in the art to conclude that the applicant was in possession of the claimed invention. The number of species required to represent a genus will vary, depending on the level of skill and knowledge in the art and the variability among the claimed genus. For instance, fewer species will be required where the skill and knowledge in the art is high, and more species will be required where the claimed genus is highly variable.
Since the original decision in Ex Parte Bilski, the fate of application 08/833,892 has been a subject of great interest to the patent law community.Last month, the Federal Circuit, on its own initiative, issued an order granting an en banc hearing to the appeal of Bilski’s rejection by the patent office.
Since then, both the patent law community (see, e.g., here, here and here) and the mainstream media (e.g., here and here) have been all atwitter about the possibility of a major shift in patent law and the possible end of business method or software patents (or both).While the excitement is understandable, in this case I think it’s misplaced.
The Federal Circuit asked whether it should reconsider some of its patentable subject matter cases but I think it is unlikely to make any major changes it its existing jurisprudence.Further, to the extent that the Federal Circuit does make changes to its existing jurisprudence, I think it is unlikely that those changes will have much effect on the day to day business of getting patents.My reasons for this can be seen in the questions included in the Federal Circuit’s en banc order.
Question 1:Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101? This is devoted to the narrow question of what to do with a particular claim in a particular patent.The Federal Circuit could answer this question in the negative by simply agreeing with the BPAI and leaving the broader picture of patent law untouched.While I think that’s unlikely to happen, this first question doesn’t indicate that the Federal Circuit is planning on doing away with business methods in general.
Question 2:What standard should govern in determining whether a process is patent-eligible subject matter under section 101?This question, while broader than question 1, is focused on a particular class of patentable subject matter (processes), and is therefore unlikely to have much effect on the practice of “business method” patents.The BPAI’s original rejection of Bilski’s claims was based on the concept that the decisions which are generally recognized as opening the door to software and business method patents, State St. Bank & Trust Co. v. Signature Fin. Group and AT&T v. Excel Communications were limited to the “‘special case’ of transformation of data by a machine.”
Using that distinction, even if the Federal Circuit (contrary to statute) completely eliminates protection for process patents, clever attorneys can still get their “business method” patents past the 101 hurdle by casting them in the form of machines that manipulate data.Indeed, even Amazon’s notorious “1-Click” patent includes claims directed to machines, rather than being limited to process claims.
Question 3:Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?
Like question 2, the answer to this question (whatever it is) is unlikely to have much practical effect because it is limited to process claims, and, moreover, to process claims which contain both physical and mental steps.However, as the state of the art in programming progresses, more and more steps which are today “mental” will eventually be performed by a machine, thereby allowing their inclusion in claims.Moreover, even if the Federal Circuit rules that any process including a step which could be performed by a human being is unpatentable, it still leaves open the “special case” of writing claims directed to the transformation of data by a machine, which keeps the door for business method and software patents wide open.
Question 4:Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101? Like questions 2 and 3, regardless of the answer to this question, protection for “business method” type inventions will still be available as long as the invention can be described in terms of data processing.Further, even if that was not the case, requiring that a process be tied to a machine, or result in a physical transformation of an article would do no more than throw up formal barriers which would be easy to overcome.
For example, I can easily tie almost any process I write claims for to a computer, and it would be a trivial task to require that the computers make a physical change in an article (e.g., printing an invoice).Thus, I just don’t see the answer to question 4 really having any significant impact on my (or any other patent prosecutor’s) day to day practice.
Question 5:Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?Unlike the previous four questions, this last question in the en banc order could result in a major shift in the landscape of patent law.However, even if the Federal Circuit completely overruled
State Street
and AT&T, at least for software patents, lawyers would be able to continue based on the Supreme Court’s case of Diamond v. Diehr which stated that When a claim containing a mathematical formula implements or applies the formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies 101’s requirements.As long as that case is good law (and the Federal Circuit doesn’t have the power to overturn it) patent attorneys will be able to use it as shield to protect their software (and likely business method) claims from 101 rejections.
Today’s post comes from Guest Barista William Morriss, a registered patent attorney in Frost Brown Todd’s Cincinnati office and a Contributor to Ephemerallaw.
The U.S. Patent and Trademark Office (USPTO) has proposed making changes to the rules regarding when an invention involves biological material. Often, these can’t be adequately described using just words.
As a way to supplement the written description of an invention, courts have sanctioned a procedure in which biological material may be deposited with an appropriate holding facility under conditions which ensure that the sample is properly maintained, and made available to others when appropriate.
For biological inventions, for which providing a description in written form is not practicable, one may nevertheless comply with the written description requirement by publicly depositing the biological material * * *. Such description is the quid pro quo of the patent system; the public must receive meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time. Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 970, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002).
This is a requirement under 35 U.S.C. 112, first paragraph, which requires that an inventor must disclose the invention in such a manner that would allow the public to make and use it without undue experimentation. Internationally, the deposit of biological materials is governed by the Budapest Treaty.
The proposed rules would require:
(1) that any deposit of biological material be made before publication of a patent application; and
(2) that all restrictions on access to the deposited material imposed by the depositor be removed upon publication.
The proposed changes will provide that the public has access to biological materials referenced in the disclosure of a patent application to the same extent that access to the remainder of the disclosure is available. The public policy basis for allowing access to a referenced item is the same whether the item is another patent application or a deposited biological material.
The concern is that under the American Inventors Protection Act of 1999 (AIPA), patent applications publish eighteen months after the earliest priority date. In exchange for this disclosure, the AIPA also provided a provisional right under 35 U.S.C. 154(d) to obtain a reasonable royalty if the invention as claimed in the published patent application is substantially identical to the invention claimed in any patent that might issue and certain other conditions are met.
Only those patent application publications which provide an enabling disclosure of the claimed invention would be entitled to provisional rights under 35 U.S.C. 154(d). Although the AIPA allowed for certain applications to be published in redacted form, any redacted application was nevertheless required to contain a disclosure that would allow a person skilled in the art to make and use the subject matter of the claim.
The USPTO now states:
The proposed rule change brings the Office practice regarding biological deposits in line with the publication of patent applications under AIPA. Courts have consistently recognized that an applicant must have provided the Office with an enabling disclosure no later than the time an invention is disclosed to the public. Prior to publication of patent applications under the AIPA, disclosure occurred simultaneously with patent issuance. Thus, earlier court decisions held that deposits needed to be perfected at the time the patent became public, i.e., at the issue date.
In the era since Hawkins and Argoudelis were decided, Congress changed the law to require that most patent applications be published eighteen months after filing, and to grant provisional rights under certain conditions. Publication of patent applications under the AIPA means that the patent issue date is no longer ‘‘the time [the patent disclosure] is made public,’’ or the time when ‘‘the conditions of Rule 14 are met.’’
In part, Title 37 of the Code of Federal Regulations, is proposed to be amended as follows:
Section 1.804 is proposed to be amended to provide that if a biological material is necessary to preserve the availability of provisional rights under 35 U.S.C. 154(d), the deposit of the biological material must be made prior to filing an application or during the pendency of an application, provided that the deposit is made before technical preparations for publication of the application as a patent application publication have begun (see § 1.215(a)).
Section 1.808(a)(2) is proposed to be amended to provide that all restrictions imposed by the depositor will be irrevocably removed upon the earlier of publication of the application under § 1.211 and 35 U.S.C. 122(b) or grant of the patent, and to indicate that the rule applies regardless of whether the deposit was made to satisfy a statutory provision.
Section 1.808(b) is amended to add ‘‘before the patent is granted or’’ before ‘‘term of the patent.’’
Section 1.808(c) is amended to provide that the Office will, on request, certify that an application referring to the deposit has been filed, that the subject matter of that application involves the deposited biological material or the use thereof, that the application has been published or patented or is otherwise open to public inspection, and that the requesting party has a right to a sample of the biological material. This is the certification called for in Rule 11.3 of the Regulations Under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. A form, BP/12, is provided on the World Intellectual Property Organization’s Internet Web site (http://www.wipo.int) for this purpose.
Section 1.809(e) is proposed to be amended to delete ‘‘before or with the payment of the issue fee (see § 1.312)’’ and to insert ‘‘(1) within a period of sixteen months after the date of filing of the application or, if the benefit of an earlier filing date is sought under 35 U.S.C. 119(e), 120, 121, or 365(c), within the later of four months of the actual filing date of the later-filed application and sixteen months from the filing date of the prior-filed application; and (2) before or with any request for early publication (§ 1.219).’’
Comments should be sent by e-mail addressed to AB99.Comments@uspto.gov. Comments may also be submitted by mail to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, or by fax to (571) 273–7754, marked to the attention of Kathleen Kahler Fonda. Written comments must be received on or before April 21, 2008. No public hearing will be held.
In Teleflex Inc. v. KSR Int’l Co., the Supreme Court reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., but stated that the Federal Circuit had erred by applying the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way.
Specifically, the Supreme Court stated that the Federal Circuit had erred in four ways: (1) ‘‘By holding that courts and patent examiners should look only to the problem the patentee was trying to solve;’’ (2) by assuming ‘‘that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem;’’ (3) by concluding ‘‘that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try;’’’ and (4) by overemphasizing ‘‘the risk of courts and patent examiners falling prey to hindsight bias’’ and as a result applying ‘‘[r]igid preventative rules that deny fact finders recourse to common sense.’’
In KSR, the Supreme Court reaffirmed that ‘‘[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’’ When considering obviousness of a combination of known elements, the operative question is thus ‘‘whether the improvement is more than the predictable use of prior art elements according to their established functions.’’
Graham v. John Deere Co.
An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. As reiterated by the Supreme Court in KSR, obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:
(1) Determining the scope and content of the prior art;
(2) Ascertaining the differences between the claimed invention and the prior art; and
(3) Resolving the level of ordinary skill in the pertinent art.
Objective evidence relevant to the issue of obviousness must be evaluated by examiners. Such evidence, sometimes referred to as ‘‘secondary considerations,’’ may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.
In making a determination of obviousness, the key question factor is what a person of ordinary skill in the pertinent art would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in view of that knowledge.
Other factors will apply
Once the Graham factual inquiries are resolved, examiners must determine whether the claimed invention would have been obvious to one of ordinary skill in the art. KSR noted that:
“The obviousness analysis cannot be confined by … overemphasis on the importance of published articles and the explicit content of issued patents … . In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.”
Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations; however, examiners must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The ‘‘mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.’’
Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap between the prior art and the claimed invention. The USPTO states that in determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.
Rationales To Support Obviousness Rejections
The new Guidelines provide rationales that outline reasoning that may be applied to find obviousness in such cases.
If the USPTO determines that an invention is obvious using the Graham factors show that an obviousness rejection may be made using the familiar teaching-suggestion-motivation (TSM) rationale, then such a rejection using the TSM rationale can still be made.
Examiners are then directed to also consider whether one or more of the other rationales (as set forth below) support a conclusion of obviousness.
Combining prior art elements according to known methods to yield predictable results;
Simple substitution of one known element for another to obtain predictable results;
Use of known technique to improve similar devices (methods, or products) in the same way;
Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
‘‘Obvious to try’’ - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Like all exercises involving determinations of what’s obvious (or not) the guidelines fall short in not providing clear guidance within the “rationales” that can be used. Unfortunately, the guidelines take an amorphous, hard-to-define test and add amorphous, hard-to-define rationales to it.
The Court in KSR rejected the rigid rule that ‘obvious to try’ is per se insufficient to show obviousness stating:
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.
Thus, if the fact that something was obvious to try might be sufficient to prove obviousness, examiners may now be more likely to just take an “I know it when I see it” approach to every invention. There could then be a frightful battle over what was obvious to try and to whom was it obvious.
It remains to be seen how advances with “real innovation” are to be determined.
[P]atent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.
The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it.
However, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.
To help patent examiners make obviousness rejections that are supported by appropriate facts and reasoning, the Guidelines identify a number of rationales suggested by the Supreme Court in the KSR decision. For each rationale, the Guidelines explain the underlying factual findings, and provide guidance about how to reason from the facts to the legal conclusion of obviousness.
USPTO’s assertion of statutory authorization would appear to be insufficient in this case
The question remains whether the USPTO has exceeded its statutory authorization.. The most relevant case on USPTO rule making power under the APA (5 U.S.C. § 500 et seq.) is Animal Legal Defense Fund v. Quigg, (932 F.2d 920 (Fed. Cir. 1991)) upholding the right of the USPTO under 5 U.S.C. § 553 to consider animals as patentable subject matter.
Central to the Federal Circuit’s reasoning in that case was that the USPTO action was merely upholding prior precedent, being consistent both with 35 U.S.C. § 101 and the Supreme Court’s interpretation of that statute in Diamond v. Chakrabarty. (447 US 303 (1980).) In reaching its decision, the court outlined the limits of USPTO rule making authority:
Courts interpreting section 553 generally speak in terms of “substantive” or “legislative” rules requiring notice and comment in contrast to the exempt “interpretative” rules of section 553(b) which do not. []A rule is “substantive” when it “effects a change in existing law or policy” which “affects individual rights and obligations.” see also Chrysler Corp. v. Brown, 441 U.S. 281, 302 (1979) (”affecting individuals’ existing rights and obligations”); Gosman, 573 F.2d at 39 (change existing law or policy). To be “substantive”, a rule must also be promulgated pursuant “‘to statutory authority . . . and implement the statute.’” Cubanski v. Heckler, 781 F.2d at 1426; see also Chrysler Corp., 441 U.S. at 302-03. In contrast, a rule which merely clarifies or explains existing law or regulations is “interpretative.” See American Hosp. Ass’n, 834 F.2d at 1045.
Thus, in Animal Legal Defense Fund the court found that substantive rule making authority must be pursuant to statutory authority. Unlike the specific statutory support and Supreme Court precedent in Animal Legal Defense Fund, the present USPTO proposal to restrict Continuations is supported only by its general rule making authority under 35 U.S.C. § 2(b)(2), which states:
(2) [The Office] may establish regulations, not inconsistent with law, which—
(A) shall govern the conduct of proceedings in the Office;
(B) shall be made in accordance with section 553 of title 5.
35 U.S.C. § 2(b)(2) would appear to be insufficient to allow the USPTO to make the substantive changes to Continuation practice.
First, this law is simply support for general rule making authority, not a specific statutory support for substantive rules that dramatically affect an Applicant’s rights. Moreover, the new rules would appear to contradict, not support, prior interpretations of the law, contrary to Animal Defense Fund. The Federal Circuit has affirmed the plain meaning of 35 U.S.C. § 120 and refused to limit an Applicant’s rights under 35 U.S.C. § 120, except in particular cases of abuse. Recent attempts to limit Continuations via amendments to the statutes have not succeeded in Congress.
The fact that such amendments were considered and then withdrawn from later language indicates that the Congressional intent, at present, does not favor limitations on Continuations. The plain meaning of 35 U.S.C. § 120, its construction in comparison to other sections of Title 35, the Congressional record, and the case law, all point to a more generous interpretation of 35 U.S.C. § 120 than may be applied by the USPTO. If so, USPTO limits on Continuation practice might be held to limit its rule making authority under 35 U.S.C. § 2.
Today’s post comes from Guest Barista Simon Elliott, a patent agent at Foley & Lardner’s Washington D.C office, with a Ph.D. in Microbiology from the University of Western Australia and a J.D. from Georgetown University. His California Bar application is pending. Simon Elliott can be contacted directly at sjelliott@foley.com.
Constraints on the USPTO’s ability to limit continuations
In both the proposed rules and the final rulemaking, the USPTO acknowledges the right to continuations under 35 U.S.C. § 120, but counters that “[n]othing in 35 U.S.C. 120 or its legislative history suggests that the Office must or even should permit an applicant to file an unlimited number of continuing applications without any justification.” The USPTO noted that the changes in the final rules do not set a per se limit on the number of continuing applications, nor are the changes intended to address extreme cases such as Lemelson or Bogese (discussed below).Whether or not one believes that USPTO is constrained by the plain language of 35 U.S.C. § 120 or its legislative history, these are not the only factors to consider. As argued below, the new rules appear to run counter to other factors, including the judicial constructions of 35 U.S.C. § 120.
Attempted Statutory Limitations have not been enacted, or been rejected, by Congress, indicating Congressional intent to preserve current Continuation practice.
35 U.S.C. § 120 provides that “[a]n application for patent for an invention . . . in an application previously filed . . . shall have the same effect, as to such invention, as though filed on the date of the prior application.
Prior to the enactment of 35 U.S.C. § 120, Continuations were not limited. (See In re Henriksen, 399 F.2d 253 (CCPA 1968); Transco Prods, Inc. v Performance Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994) According to the Court of Customs and Patent Appeals (CCPA), the legislative history of 35 U.S.C. § 120 indicated that Congress sought to codify this prior practice. (Henriksen 399 F.2d at 256-258.) Congress has not sought to limit continuations despite other amendments to 35 U.S.C. § 120 (Amended Nov. 14, 1975, Public Law 94-131, § 9, 89 Stat. 691; Nov. 8, 1984, Public Law 98-622, § 104(b), 98 Stat. 3385; Nov. 29, 1999, Public Law 106-113, § 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 § 4503(b)(1))) and other major reforms. (See, e.g., 1994 GATT Uruguay Round implementing legislation, Pub. L. No. 103-465; Pub. L. No. 106-113 (1999); Pub. L. No. 108-453 (2004); codified as various sections of 35 U.S.C.). For example, the “Patent Reform Act of 2005″ (H.R. 2795, 109th Congress (June 8, 2005)) proposed addition of a new section, 35 U.S.C. § 123, which would have provided specific statutory authority for the new continuation rules. This provision was removed from the most recent versions, suggesting that Congress did not support such a limitation. (H.R. 2795, 109th Congress (September 1, 2005)). Thus, while the legislative history of 35 U.S.C. § 120 per se may not constrain the powers of the USPTO, there is a record showing that Congress chose not to grant to the USPTO the power to limit continuation practice.
This conclusion is supported by comparing the language of 35 U.S.C. § 120 with others in Title 35. There are many statutes that expressly grant extensive discretion to the director (e.g. 35 U.S.C. §§ 135, 303). By comparison, 35 U.S.C.§ 120 notably fails to provide the Director the discretion sought here, suggesting that Congress did not intend to provide such discretion.
Prior USPTO attempts to limit Continuation have been rejected by the courts for exceeding statutory authority
The USPTO has repeatedly tried to limit Continuations, but, with the exception of two recent cases which can be distinguished on their facts, these attempts have been rejected by the courts.
The case of In re Henriksen (399 F.2d 253) is relevant to the current Rules. The Patent Office Board of Appeals had upheld an Examiner’s rejection of Henriksen’s Continuation application, ruling that 35 U.S.C. § 120 limited Applicants to three Continuations. The CCPA rebuffed this attempt, stating:
We hold here that under [35 U.S.C. § 120], in view of its long-standing interpretation by the Patent Office and the patent bar, there is no statutory basis for fixing an arbitrary limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of copending applications, provided Applicant meets all the other conditions of the statute.
In reaching its holding, the Court analyzed the language of the statute and the legislative history and found no explicit support for limiting the number of Continuations. Indeed, operating in the previous laws in which term was calculated as 17-year from issuance, it found that the legislature had considered but rejected attempts to even limit the term of the Continuation, and that Congress intended 35 U.S.C. § 120 only to codify prior practice.
In reviewing such prior practice, the CCPA found that the Board of Patent Appeals had previously rejected limitations on Continuation practice, (Id. at 259, citing Ex parte Harris, 55 USPQ 329 (Pat. Off. Bd. App. 1942)) that early patent treatises had recognized unlimited Continuation practice, (Id. at 260) and that Supreme Court case law recognized at least the right of Continuations and did not indicate any limitations. (Id. at 260, citing Godfrey v. Eames, 68 U.S. 317 (1863), Crown Cork & Seal Co. v. Gutmann Co., 304 U.S. 159 (1938), and General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175 (1938)). Finally, the Court noted that any such imitations on Continuations could deny Applicants substantive rights and that such changes should be decided by the Congress, not the Patent Office: (Id. at 262.)
The action of the board is akin to a retroactive rule change which may have the effect of divesting Applicants of valuable rights to which, but for the change in Patent Office position brought about by the board’s decision, they were entitled. Nothing appears in the Patent Office Rules of Practice or the Manual of Patent Examining Procedure which sanctions such a result.
Finally, we would express the postscript to this opinion, as did the dissenting opinion of the board, that it is unfortunate that a patent should be granted on an application depending upon another application filed over 20 years ago. However, as the opinion of the board dissenters states, 154 USPQ at 61:
* * * but the cure for this deplorable state of affairs rests with Congress, not with us. If a restriction is to be imposed, it must be based upon law, legislatively or judicially expressed.
It is our view, as the judiciary, that it is for the Congress to decide, with the usual opportunity for public hearing and debate, whether such a restriction as sought by the board is to be imposed.
Subsequent attempts by the USPTO to limit other substantial rights that flow to a Continuing application have also been rejected. In In re Hogan (559 F.2d 595 (CCPA 1977)) the CCPA affirmed the right of an Applicant to rely on the enablement of a prior-filed application, stating that the Board had, in making its rejection, “[disregarded]entirely the statutory right of appellants under 35 U.S.C. § 120,” (Id. at 603.) and noted that the very substantive statutory rights had been upheld in prior cases. (Id. at 603-604.). In In re Bauman (683 F.2d 405 (CCPA 1982).) the CCPA affirmed the right of an Applicant to rely on the filing date of an abandoned prior application, and that “[a]cceptance of the PTO’s position [that the Applicant was not entitled to the right] would require recognition of a nonstatutory exception to the clear language of section 120.” (Id. at 407.)
Next, in Transco, the Federal Circuit overturned a district court finding that a patent was invalid for failing to update the best mode in a Continuation application. (Transco, 38 F.3d 551.) In doing so, the court expounded upon the statutory and common law support for Continuation practice and its long recognition by the courts. The court further stated that Continuations were often forced upon Applicants for the administrative convenience of the USPTO and that limitations on Continuations would be an unfair burden on Applicants. (Id. at 557-558.)
Accordingly, the Federal Circuit and its predecessor court have long interpreted 35 U.S.C. § 120 as granting broad rights to file Continuations. Two more recent decisions have modified this view, but only have been applied in extreme situations.
In Symbol Technologies (277 F.2d 1361 (2002)) the Federal Circuit found that the dormant doctrine of prosecution laches was available to Symbol Technologies in its defense against an infringement suit brought by assignees of the famous submarine patentee, Jerome Lemmelson, who were seeking to enforce recently issued patents that had claimed priority to applications filed in 1954 and 1956. In doing so, the court was careful to note that the laches doctrine was supported by prior Supreme Court precedent and had not been invalidated by the enactment of 35 U.S.C. § 120. Even so, Judge Newman dissented, arguing that any limitations on Continuation practice should be decided by Congress and not the courts.
In In re Bogese (303 F.3d 1362 (Fed Cir 2002) the Federal Circuit applied the doctrine of prosecution history laches to bar the right to file a Continuation. In that case, the Applicant had filed an application in June 14, 1978, and had continuously filed File Wrapper Continuations (A total of eleven file wrapper Continuations were filed in eight years) rather that narrow his claims, despite two appeals to the Board and two to the Federal Circuit. At the final round of prosecution, the Examiner had warned the Applicant that failure to narrow the claims or otherwise advance prosecution would result in rejection of the application. The next Continuation was rejected accordingly. The Federal Circuit found that this action was not an abuse of discretion under the Administrative Procedures Act, 5 U.S.C. § 706. (Bogese 303 F.3d at 1366-1370.) In construing the prior law, the two judge majority court carefully distinguished Henriksen, noting in a footnote:
In this case the PTO did not adopt a mechanical rule based on a misconstruction of the statutory requirements. Nowhere does Henriksen suggest or imply that the PTO must allow dilatory tactics in the prosecution of applications or that the PTO lacks inherent power to prohibit unreasonable delay in prosecution. (Id. at 1368.)
While these recent cases suggest that some limitations may be placed on Continuations, both Symbol and Bogese involved extreme cases that clearly rose to the level of abuse. The Federal Circuit and it predecessor court have long recognized the statutory right of Applicants to Continuations, have rejected any attempts to limit those rights, have determined that such rights are necessary to avoid unfairness upon the Applicant, and have stated that any change must be sought through the legislature. On balance, therefore, the case law suggests that Continuation limitations are the extremely rare exception, to be decided on a case-by-case basis. That the courts have limited Continuations only in rare cases shows that present laws are sufficient to curb abuse of the system.
Today’s post comes from Guest Barista Simon Elliott, a patent agent at Foley & Lardner’s Washington D.C office, with a Ph.D. in Microbiology from the University of Western Australia and a J.D. from Georgetown University. His California Bar application is pending. Simon Elliott can be contacted directly at sjelliott@foley.com.
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The U.S. Patent and Trademark Office (USPTO) has proposed making changes to the rules regarding when an invention involves biological material. Often, these can’t be adequately described using just words.
