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

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.

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

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.

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

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:

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. "

• 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

This blog entry is directed at people who are not patent practitioners.

People who are not versed in patent law are often confused by terms that patent attorneys and the U.S. Patent and Trademark Office (USPTO) use, and the media is no exception.  For example, a recent CNet article exclaims, "Apple patents headset MP3 player" and points to U.S. Patent Publication No. 20090268921.  However Apple merely has a "patent pending."

In terms of assertable property rights, a patent publication is far from a patent.  A patent publication is merely a publication of a patent application that the USPTO generally publishes 18 months after the earliest "priority date" or filing date of a patent application.  It cannot be asserted against an alleged infringer.  (For the sake of simplicity and to prevent further confusion, I will not discuss "provisional rights" which begin on the patent publication date, but cannot be asserted until the USPTO grants a patent.)

The USPTO grants an assertable patent only after the applicant successfully "prosecutes" the patent application, which requires a USPTO patent examiner to do a prior art search and examine the applicant's patent claims.  This prosecution process may involve several communications between the patent examiner and the inventors or their representative, e.g., to narrow the scope of the claims. In complete contrast, a patent application often publishes as a patent application before it has been examined, as was the case in this Apple application.

Thus, while Apple may have filed a patent application directed to a headset MP3 player, Apple has not yet patented it.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

In an en banc ruling yesterday in Cardiac Pacemaker v. St. Jude, the Federal Circuit decided that method claims do not have extraterritorial reach under 35 USC 271(f). In earlier cases, courts have ruled that some claim types (e.g., system claims reciting one or more components) have some extraterritorial reach, such as when patented components are separately exported and combined abroad to produce the infringing system or device.

When a patent applicant files a patent application, the minimum government fees cover three independent claims and twenty total claims. Patent attorneys sometimes recommend paying "excess claims fees" to file additional claims. Some clients, however, prefer not to pay the excess claims fees and decide to limit their claim coverage. Cardiac Pacemaker serves as another example that having different claim types can be useful.

The law evolves and it can be difficult to predict which claim types will be valuable (or lose value) in the future. Good patent attorneys draft multiple claim types to inoculate their clients' assets against future depreciation. 

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

In Shakespeare's Romeo & Juliet, Juliet says to Romeo:

What's in a name?  That which we call a rose
By any other name would smell as sweet.

(Act II, scene ii.)  

GoDaddy doesn't agree with Juliet.  The company is no stranger to filing patent applications and owns scores of published applications and issued patents.  Some of these patent applications are directed to a market for domain names.  As Domain Name Wire reports, two such applications published today:

• Patent Publication No. 20090171823  claims " A method comprising the step of underwriting a sale of shares of equity in a Domain Name." 
• Patent Publication No. 20090171678 claims "A method comprising the step of protecting a Domain Name from an undesired transfer of ownership during a sale of shares of equity in the Domain Name."

If you know anything about patents or have read my prior blog entry on breadth, you know that these are quite broad claims.  A strategy commonly employed by savvy patent applicants is to initially file broad claims and then narrow them during prosecution of the patent application in view of prior art the patent examiner or the applicant identify.  Doing so can result in broader coverage than starting with narrow claims and then attempting to broaden them during prosecution.

The names Capulet and Montague may have smelled similarly sweetly to Juliet, but to the owners of some desirable domain names that can fetch a princely sum, some domain names smell more sweetly than others.

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

I was a co-chair of a convention for attorneys that recently concluded.  Some panels at the convention related to intellectual property issues, and several legal process outsourcing vendors attended.  I asked one of the vendors what effect the guidance the USPTO published last year on the scope of foreign filing licenses had on the vendor's business. She informed me that while the USPTO's guidance confused some of her clients, her outsourcing business continues to flourish.

In these trying economic times, it is likely that many companies and their counsel are trying to reduce costs wherever possible, including by outsourcing some services to service providers with foreign operations. However, sending information overseas for preparing a patent application that is to be filed in the United States (or for other reasons) is not without risk.

In general, U.S. applicants must first receive a "foreign filing license" from the USPTO before filing a patent application outside the U.S. Sometimes, the applicant is ordered not to file the patent application abroad (this can occur, e.g., when the applicant's technology relates to military use.) When a patent application is filed abroad despite an order not to do so, the applicant can be barred from receiving a patent. (35 U.S.C. §§ 182 and 185.) Moreover, the applicant and anyone involved can be fined and/or imprisoned. (35 U.S.C. § 186.)

As a corollary, it is possible that a patent that issues from an application prepared abroad based on information sent by a U.S.-based applicant without first receiving permission from the Department of Commerce could similarly be invalid, and may even subject the patent applicant and anyone involved to fines and imprisonment. (Because offshoring patent work is a relatively recent activity, there is scant authoritative information on point.)

Some applicants may nevertheless feel that rewards deriving from the use of foreign labor are worthwhile. One way to mitigate the concomitant risks may be to first request and receive permission from the Department of Commerce before transmitting information overseas, as the USPTO's guidance suggests.

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