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

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!

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Patent attorneys often attempt to get the broadest possible coverage for a client's invention because that can usually make the patent quite lucrative.  Patenting broad claims can be expensive during the patent procurement process because patent examiners are reluctant to let broad claims issue and so there may be multiple back-and-forth communications between the patent examiners and patent attorneys.  However, patents with overbroad claims can be expensive to keep enforceable, e.g., when a third party requests the U.S. Patent & Trademark Office (USPTO) to reexamine an issued patent in view of prior art. 

For example, the Electronic Frontier Foundation (EFF) has apparently requested the USPTO to reexamine U.S. Patent No. 7,568,213.  According to the EFF, this patent is purportedly directed to "podcasting."  When a patent is under reexamination, the patent holder must expend resources (e.g., patent attorney fees) to work with the USPTO to define the appropriate scope of the patent's claims in view of the newly identified asserted prior art.

During prosecution, patent attorneys, inventors, and anyone involved in a patent application have a duty to cite all pertinent prior art they are aware of.  However, it is nearly impossible in most fields of human endeavor for the patent attorney, patent examiner, or even the inventor to be aware of all pertinent prior art.  Thus, it is quite easy for overbroad patent claims to issue.  Sometimes, the best prior art is not even found until the patent is asserted in an infringement lawsuit because the alleged infringer is motivated to prove that it is not infringing a valid patent. 

Thus, smart patent attorneys attempt to patent claims of varying scope -- from broadly encompassing the subject matter of the invention without crossing into the known prior art down to narrowly encompassing a specific implementation that is reflective of the client's commercializable product.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Apple Computer has filed a patent application directed to disruptive advertising in an operating system that a New York Times article published today refers to as a gimmick. 

The first claim in the published patent application, which names Steve Jobs as the first inventor, recites:

1. A computer-implemented method for operating a device, the method comprising:

• disabling a function of an operating system in a device;

• presenting an advertisement in the device while the function is disabled; and

• enabling the function in response to the advertisement ending.

While most of us probably cringe at the thought of having to view advertisements every time we request an operating system to perform a function (e.g., view an ad about the latest printer before being able to print a document using an outdated printer or select another song on our handheld music player), some people could benefit from adoption of the technology.  For example, many people in emerging markets cannot afford an Apple computer (or any other computer, for that matter) or an iPod.  They may not mind being forced to acknowledge that they have viewed or heard advertisements in exchange for a free or cheap device.

Although its author may not realize it, the New York Times article provides some great examples of advertising-related prior art that Apple may face in obviousness rejections by the U.S. Patent and Trademark Office (USPTO).  Other prior art that the USPTO may apply include Microsoft's technology in the Vista operating system that prevents something from happening without the user's approval.  For example, when one application launches another application, Vista can prevent that operation unless the user first permits it. 

Although the concept of advertising-based subsidies is not new and there is lots of prior art in this space, a clever patent attorney may still be able to obtain a patent for Apple, though with narrower patent claims than the broad claims presently published.  This patent application has not yet been examined by a patent examiner.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

USPTO Director David Kappos started a blog this past week:  http://www.uspto.gov/blog/director/entry/director_s_forum_david_kappos.  In his first blog posting, he explains his reasons for preferring a first-to-file patent system:

The truth is that only .01 percent of all patent applications could be affected by a change to first inventor to file. The interference system is already biased in favor of the first inventor to file and 70 percent of the extremely small number of cases that get into the interference process are decided in favor of the first inventor to file. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Supreme Court will hear oral arguments tomorrow (Monday) in the Bilski case.  Many amicus briefs have been filed in the case, including briefs from Accenture, AIPLA, Borland Software, the Free Software Foundation, Intellectual Property Owners Association,  IBM, Microsoft, and Red Hat. 

Although the Bilski case is mostly about business methods (e.g., risk hedging), many have turned the case into a question of whether software is patentable.  I have my doubts that there are sufficient facts on the record in the Bilski case for the Supreme Court to opine on that particular issue (even the Federal Circuit deferred the issue as footnoted in their Bilski decision), but I have been surprised before.

• Email This
• Print
• Comments
• Trackbacks
• Share Link