Patent Law Insights : Software Patent Lawyer & Attorney : Perkins Coie Law Firm : Intellectual Property & Technology Law

I've always wanted one of these....

Happy Holidays!

 

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There are several ways to increase the value of a patent portfolio.  One is to ensure that patented claims cover  the evolutionary path of the relevant technology.  A second is to be sure to file patent applications (after receiving foreign filing licenses) in jurisdictions where the technology could have competitors or markets.

One market that is seen as being increasingly important is India.  A billion people live there and an increasing number of them are entering the middle class.  The inevitable off-shoring trend, though painful to many in the U.S. and Europe, has been a boon to people there.  They are demanding products and services they could not previously afford and, because of the popularity of American media, their demand for foreign brands is seemingly insatiable.

Although foreign companies have seen India as a source of cheap labor and a potential future market for several years, they have limited their direct investments because of India's rules that restricted royalty payments without prior government approval and lax enforcement of intellectual property rights.  The government of India on Wednesday announced a liberalization of the royalty payment rules. 

With this announcement along with improved enforceability of intellectual property, India is setting itself up for a bright future on the world stage.

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Citing a Federal Circuit decision in Intellectual Science and Technology v. Sony Electronics earlier this week, Dennis Crouch (Patently-O) first says that there is a "a long line of cases warning against the use of means-plus-function claim language," but then notes that "[t]here is nothing 'wrong' with writing means-plus-function claim language -- especially to accompany a well drafted specification." 

I think the second position is probably better than the first.  While means+function claims can be narrowly construed during litigation, they can nevertheless be valuable during licensing and assertion.

However, from a patent prosecution perspective, they can be difficult to appeal to the Board of Patent Appeals and Interferences because of the additional requirements the appeals rules impose on such claims.  As a result, some patent practitioners prefer to avoid such claims, while others add them to broaden out the claims in applications.

The case demonstrates, however, that asserting a means+function claim requires a clear explanation of infringement on the record.

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I've previously written about reducing risks when preparing patent applications abroad.  What happens when inventors are located abroad?  Such occurrences are happening increasingly frequently as research and development (R&D) transcends national boundaries.  Many multinational corporations (or even just U.S. corporations with overseas R&D facilities) have teams that span two or more countries.  When an invention was invented by inventors in multiple countries, employers need to be even more cautious about where and when to file patent applications.

In most cases, the law in each country needs to be considered.  For example, India can impose stiff penalties (including fines and jail time) if a patent application is first filed in any country other than India when even one of the inventors was an Indian resident when the invention was made.  It matters not if the other five inventors are American.  The Indian law specifically says "resident."  A U.S. citizen who is on temporary assignment to India and has lived and worked there for more than 6 months could be a resident.  Unlike similar laws in some other countries, the law does not specify the content of patent applications that is subject to this restriction.  However, my experience is that like other countries, India is concerned about the export of military and other sensitive technology.  An alternative to filing a patent application in India (and waiting six weeks before filing the application in other countries) would be to request a foreign filing license, which is typically granted in a month or less.

Many other countries have requirements that vary slightly, including China, France, Russia, the UK, and others.  It is generally best to seek the advice of patent attorneys in each of those countries (or an attorney experienced in both jurisdictions) before blindly filing an application in the U.S. or elsewhere when inventors are resident in different countries.

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Whenever a patent holder sends a communication to a potential defendant before filing an infringement action, the patent holder risks a declaratory judgment (DJ) action.  A common question is what language must be in the communication?  Must the communication threaten an infringement lawsuit?  The Federal Circuit's decision yesterday in Hewlett-Packard v. Acceleron says no and provides an example of a sequence of communications between the parties.

Continue Reading...

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To be patentable, an invention must meet various legal requirements.  One such requirement is that it must not be obvious.  The law relating to whether an invention is obvious can sometimes be confusing and difficult to apply -- especially in the wake of the KSR v. Teleflex U.S. Supreme Court case.

The Federal Circuit Court of Appeals delivered a precedential decision yesterday in Perfect Web Techs. v. InfoUSA explaining that an invention can be obvious as a matter of common sense.

Claim 1 of U.S. Patent No. 6,631,400 recited:

1. A method for managing bulk e-mail distribution comprising the steps:

(A) matching a target recipient profile with a group of target recipients;

(B) transmitting a set of bulk e-mails to said target recipients in said matched group;

(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,

(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

On appeal, the parties agreed that steps (A) through (C) were known in the prior art.  According to the Federal Circuit's decision, step (D) would have been common sense for one skilled in the art of "e-mail marketing" and so the claim is invalid as being obvious.

A district court can find by summary judgment that an invention is obvious as a matter of common sense, but "must articulate its reasoning with sufficient clarity for review. "

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In late October, the United States Patent and Trademark Office (USPTO) announced a pilot patent ombudsman program and requested comments.  According to the USPTO's notice, the ombudsman's role will be to assist "with application-specific issues including prosecution advancement concerns."

The American Bar Association (ABA) provided its comments last week.  In its comments, the ABA outlined the key requirements for an effective ombudsman.  These include:

1. independence from USPTO interference;
2. impartiality as between the applicant and the USPTO; and
3. ability to keep applicants' communications confidential.

An ombudsman is generally considered to be a trusted intermediary.  It will be interesting to see whether the USPTO's implementation of the program will lead applicants to trust USPTO ombudsmen.

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In the United States, people celebrate Thanksgiving on the fourth Thursday of every November.  According to Wikipedia, the holiday marks a celebration to give thanks to God and to the Native Americans who taught the pilgrims how to harvest food to survive winters. 

In modern times, Thanksgiving is often marked by shopping before the break of dawn and eating nothing but turkey for four consecutive days.  Most of us have long forgotten how to harvest in any way except by purchasing prepackaged foods.  Although every grocer and butcher is stocked with a seemingly endless supply of turkeys, whether ready-to-cook or pre-cooked, some people still prefer to shoot their own.  If you are one of them, you may be interested in the many patents that are directed to turkey calls.  There is even a design patent for a gun-mounted turkey call so that you won't have to fumble with your hands while on the hunt.

Happy thanksgiving!

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Upon receiving a "Final Rejection" from a patent examiner, patent applicants have several options.  One option is to file a Request for Continued Examination (RCE).  The United States Patent and Trademark Office (USPTO) changed how it handles RCEs as of last Monday.  It published the following document (available at the USPTO web site) that provides patent attorneys and agents some useful insight into how the new procedures are implemented.  (Warning: it is dry reading if you are not a patent attorney or agent).  I've quoted the document in its entirety below.

Changing the Patent Examiner Count System: New Rules for Docketing Requests for Continued Examination (RCEs)

The United States Patent and Trademark Office (USPTO) has had the same examiner production (or count) system for over thirty years. The USPTO recently worked with the leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners, to develop a new examiner production system. 

One of the purposes of the new examiner production system is to reduce the instances in which it is necessary for an applicant to file a request for continued examination (RCE) to complete prosecution of his or her application. Although the USPTO recognizes that RCEs are necessary in some cases, the new count system provides incentives to examiners to conduct early interviews with applicants in the hope that RCE filings will become less necessary in many cases.   The USPTO’s current examiner production system provides equal credit for first actions on the merits (FAOMs) in the application and for each first action after the filing of an RCE. The new examiner production system provides a greater amount of credit for the FAOM in the application but provides comparatively less credit for the first action after the filing of the first RCE, and less credit for the first action after the filing of any subsequent RCE. The new examiner production system also provides time-credit for initiating substantive interviews with applicant and/or applicant’s representative.

RCEs are currently placed on the examiner’s Regular Amended docket, which means that examiners have two months from the date the RCE is forwarded to them in order to act on the application. Due to concerns of POPA and USPTO Management regarding examiners having sufficient flexibility to handle such applications, RCEs will no longer be placed on the examiner’s Regular Amended docket. Instead, under the new examiner production system, RCEs will be placed on the examiner’s “Special New” application docket. Examiners must act on the application having the oldest effective filing date on their Special New docket at least every other pay period. Additionally, examiners should take-up applications on their Special New docket that they believe are in condition for allowance and give action to these applications without making them await their turn (MPEP 708.01). When applicant believes that an application on an examiner’s Special New docket is in condition for allowance, applicant can request an interview to explain to the examiner that the application is in condition for allowance, and request that the application be taken up for examination out of turn. Examiners will be encouraged to fairly consider these requests. 

Applicants who file an RCE where the application is clearly in condition for allowance should not experience a change in the time it takes the USPTO to issue a Notice of Allowance responsive to the RCE. Conversely, when an application with an RCE is not clearly in condition for allowance, such as when the RCE submission includes a large number of references or extensive claim amendments adding limitations not previously considered by the examiner, the time between the filing of the RCE and when an examiner acts on it will be influenced by the number of cases on that examiner’s Special New Docket. Therefore, while some applicants will see no change, or possibly a reduction, in the time it takes for the USPTO to issue an Office action in response to an RCE, others may see an increase in this time depending on the number of cases on an examiner’s Special New docket.

Applicants are reminded that it is not always necessary to file an RCE to obtain consideration of an information disclosure statement after allowance of an application. An information disclosure statement in compliance with 37 CFR 1.98 filed on or before payment of the issue fee will be considered if it is accompanied by: (1) the statement set forth in 37 CFR 1.97(e), and (2) the fee set forth in 37 CFR 1.17(p). See 37 CFR 1.97(d). 

The USPTO also has a number of other initiatives, such as training on both compact prosecution and effective interview practice, directed at encouraging a prompt indication of allowable subject matter or reaching of issues in an application. These initiatives dovetail with the new examiner production system by encouraging the indication of allowable subject matter or reaching of issues earlier during prosecution. Despite the placement of RCEs on the examiner’s Special New docket, the USPTO believes these initiatives and the new examiner production system will work together to reduce the overall pendency of applications and the instances in which an RCE is necessary to complete prosecution of an application. Additionally, applicants seeking early allowance of an application can help eliminate the need for the filing of an RCE by addressing all issues in the application early in the prosecution. If an RCE is needed, as is the case with some applications, cooperative efforts between the examiner and the applicant will go a long way toward obtaining early action of the RCE. Of course, for those applicants who do not desire fast action of their applications, the placement of RCEs on the examiner’s Special New docket will afford them the flexibility to better control the rate at which their cases are handled by the USPTO. 

The shifting of production credit towards the FAOM and time-credit for initiating substantive interviews, in combination with the other initiatives, should serve to diminish any incentive for prolonging examination or “churning” applications. These initiatives, coupled with the flexibilities already provided by the USPTO, should permit applicants to prosecute their applications at varying rates based on their business needs. However, the USPTO will monitor the effects of RCE handling under the new production system, and in combination with the other USPTO initiatives, and will reevaluate the program and make any changes needed to ensure it best balances the needs of applicants and operation of the Office. 

 

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