Provisional patent applications: thoughts and suggestions

Ducttape
Provisional patent applications are a bit like duct tape — useful, but temporary.

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures, called “provisional patent applications” (often abbreviated as “provisional patents”, “provisional applications”, or even just “provisional”), represent an excellent opportunity to quickly and inexpensively start the process of obtaining a patent.

Provisional patents are not usually examined. Instead they are merely stored in the USPTO databases for a year.  They are then discarded, unless within that year, the inventor then files a regular utility patent application that references that provisional application.  If this is done, the USPTO keeps the provisional stored forever.

Provisional patents are often useful because later, during examination of the subsequent regular utility patent, the inventor can reference the provisional patent to overcome examiner rejections (e.g. overcome other patent’s priority dates, supply additional detail, and so on).

Regular patents have detailed requirements with respect to format, figures, and claims, and tend to be expensive to file.  By contrast provisional patents have almost no format requirements, and they are inexpensive to file.  Almost anything that can be put onto paper (e.g. a PDF format) can be filed as a provisional application.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch, or as complex a fully developed 100+ page formal patent application.  The USPTO will cheerfully accept either one of these.

The lack of format requirements can be very helpful.  Many a patent application has been saved by the fact that the inventor had earlier filed something, such as a research paper or user manual, essentially as-is, as a provisional.  Although such items would never be accepted as a regular utility patent application, informal provisional patent submissions can be a quick way to put important information on the record.

This is the good news.  The bad news is that many a patent application has been lost because the inventor first filed an inadequate provisional application, and then operated under a false sense of confidence that he or she was protected by that inadequate provisional application.

The dangers of an inadequate provisional application are both delayed and subtle.  At first everything is fine.  Then, typically about 1-3 years after the inadequate provisional has been filed, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (regular utility) patent ahead of the applicant’s regular utility patent.  Under today’s rules, almost the only way to establish that the applicant invented first is to cite the earlier filed provisional patent, and state precisely which parts of the provisional application prove that the inventor was first.

If the examiner reviews the provisional and agrees, then the provisional has been successful and the inventor will hopefully go on to successfully get the patent.  But if the examiner reviews the provisional and says, “I don’t see the invention here”, then the provisional has likely failed, and the inventor may never be able to prove that he or she invented first.

Three different provisional strategies:

Personally, I think that it is useful to think about three different categories of provisional patents.  These categories are: 1) quickly file your existing write ups; 2) file a rough draft of a regular utility patent; and 3) file a complete utility patent, but do so as a provisional patent rather than as a regular utility patent.

Category 1:  quickly file your existing write ups.  These can be existing papers, PowerPoint presentations, handouts, whatever.  The argument in favor of this approach is that this is the quickest way of getting something on the official patent record.  This may also be a quick way of filing a lot of supplemental information.  Worst case, an improperly thought out provisional can later be abandoned.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

Category 2:  file a rough draft of a regular utility patent.  Many provisional applications are filed by inventors and small companies operating on a limited budget.  Here the goal is to try to quickly file something that is relatively decent, but also try to save money while a new idea is being evaluated.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent, following the standard utility patent format, which provides some important structure.  This approach tries to capture a good chunk of the value of a full patent, while keeping costs at about 50% of a standard patent, by focusing time on a few key draft claims, informal but adequate figures, and at least the most important technical aspects of the disclosure.

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue, but the inventor thinks there is a possibility that they will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent can be written, but is instead filed as a provisional patent rather than a regular utility patent.  This provisional application can then be “aged” for up to a year.  If there are no changes, the original provisional can then simply be refiled as a full utility patent.  Otherwise the changes can be dialed in, and an updated version filed as the full utility patent.  An additional advantage of this Category 3 approach is that it can effectively increase the lifetime of the final patent by up to a year.

A few other nuances – if you are interested in foreign patent filings, realize that the 12 month foreign filing deadline starts ticking from the time you file your provisional application.  Thus the 12 month provisional expiration deadline, and the US and foreign patent filing deadlines, all fall on the same day.

Harming the economy with over-aggressive, haphazard Alice-based 101 rejections

madteaparty
Alice in Wonderland – Mad Tea Party

What to do about “Alice”? The US Supreme Court’s “Alice” decision has invited us all to a Mad Tea Party.  What fun! But, as previously discussed, if you like logical coherency, or even just want to keep from crashing the economy, there are a few problems with this decision.

Attorney Louis Hoffman, writing in ipwatchdog.com, sums up some of these recent”Alice” problems nicely.

Damaging the economy: As Louis points out, some of the most important areas of US technology are based on software, business methods, and biotechnology.  The USPTO has recently taken upon itself to reject many patents in this area.  However this loss of patent coverage can impede the economy by making investments difficult, and/or by driving inventions underground in the form of trade secrets.

http://www.ipwatchdog.com/2016/02/07/uspto-harms-over-aggressive-and-haphazard-application-of-alice/id=65810/

What about actual (written) patent law? Article I, Section 8, Clause 8 of the US Constitution has empowered Congress to:  “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Congress has done so, and has determined under 35 USC 101 that:  “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.”

The US Supreme Court has given itself the power to override Congress, however.  In Alice, they chose to exercise this power.  In this regard, Attorney John Duffy writes in Scotusblog:  “The uncertain expansion of judge-made exceptions to patentability” points out some interesting implications of this decision.

If you want to know what’s important about this case, it’s right there: the Court’s acknowledgement that the judge-made “exclusionary principle” has the potential to “swallow all of patent law” because “all patents” are at some level based on the very things that can’t be patented under the judge-made doctrine.

Decisions, decisions: So the Alice decision, read too broadly, produces an unconstitutional result.  At some point, there will be likely corrective action.  However the practical question that some inventors, particularly business method inventors, have to address today is: file a patent and risk an “‘Alice” rejection, or don’t file a patent and be certain that the invention will become public domain?

Alice update — need true neutral party review

Need for impartial judges
Need for impartial judges

In my opinion, part of the “Alice” patent problem is that few true impartial (i.e. neutral) judges have really been involved yet.

Both the USPTO and Federal judges have at least a subconscious incentive to get complex patents off of their respective desks with a minimum of time and effort.  Why fill your head with complex matters — just say the patent is “abstract”, and the problem is gone.  Instant relief!  So perhaps there is an inherent conflict of interest built into the legal system in this regard.

So, as the Supreme Court itself warned, Alice will continue to swallow up more and more patent law until it finally reaches an opposing force.  Given our legal system, this opposing force may have to be formed by group of middle to large sized companies.  Here, any company that doesn’t depend on either advertising, copyrights, or non-innovative technology might be a potential candidate for such a group.

Perhaps some of the presently pending cases will eventually put some boundaries here.

CLS Bank v. Alice Corporation II: more cutting-edge legal confusion

Confused?  So is everyone else!
Confused? So is everyone else!

Legal confusion:  There remains a lot of legal confusion in the US regarding the question, are software inventions patentable? How to answer this question? We could of course look at the letter of the law (e.g. 35 USC 101), which would give us the rather boring answer that software is patentable. But if someone doesn’t want software to be patentable (and a number of large powerful companies do not), that’s not the answer they want.

How else might we get an answer? In ancient Greece we might consult the Oracle at Delphi, or perhaps sacrifice a goat and examine its entrails. However in the modern US, we know that this is silly. As we all know, the modern US way to decide this is to put this question to a small panel of elderly individuals who know nothing about software or patent law. We call this small panel the Supreme Court of the United States (SCOTUS).

To answer questions, the Oracle at Delphi inhaled vapors, fell into a trance, and then spoke in riddles. These were then interpreted by various priests. In much the same way, SCOTUS (hopefully without the aid of vapors) has given us some confusing and inconsistent rulings, such as the CLS Bank v. Alice Corporation decision, that in essence are riddles that must be interpreted by various priests (e.g. lower courts, the USPTO).

So in “Alice”, SCOTUS told us that “abstract ideas” are patent ineligible, and also told us that “In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.

So the ruling in essence is the riddle: “abstract ideas are not allowed“, and “abstract ideas are undefined”. This is a pretty good riddle. So the next step is, now that the Oracle (err… SCOTUS) has spoken, how are the various priests (err… the USPTO and lower courts) going to interpret this riddle?

Some good news on this front. On December 16, 2014, the USPTO issued its “2014 Interim Guidance on Patent Subject Matter Eligibility”, available here:

http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf

Among other things, the USPTO appears to be heading towards the interpretation that when given incoherent rulings, at least try to minimize damage by applying the rulings narrowly. Thus the latest guidance instructs examiners to perform detailed analysis, and look for specific problems such as financial hedging and mitigating settlement risks, rather than generally rejecting everything. The Guidance also advises examiners that even if a patent hits on a “forbidden area” (judicial exemption), so long as the claim does not seek to tie up the judicial exemption so that others cannot practice it, the claim is probably OK.  (Note added 4-26-16 — sadly the USPTO has not followed their own guidance consistently. The official patent examination “MPEP” rules for eligibility are still literally a blank page).

Oracle vs Google Java API case: blurring the distinction between patents and copyrights

Java
Java

Pushing the limits of copyright law:  A recent copyright court case:  Oracle America, Inc. v. Google Inc. is showing that at times, the difference between patents and copyrights is not as distinct as you might think or like.  You can see the court decision here:

https://www.eff.org/files/2014/11/10/oracle_v_google_13-1021.opinion.5-7-2014.1.pdf

As I understand it, Google attempted to reverse engineer Java by using standard “clean room” (e.g. fresh and original code) techniques. However in the case of 37 Java API classes, Google copied some elements on the belief (based on prior case law such as a 1995 Lotus v Borland case) that because these API were functional, such functional elements were therefore not copyright protected.

Oracle, which obtained rights to Java when it acquired Sun Microsystems in 2010, did not agree.

In the May 9, 2014 decision, the Court sided with Oracle.  The Court rejected the Lotus finding, and about 20 years of legal precedent, that menu structures (being essential to operation), were therefore not copyrightable.  Instead, the Court held that elements that can perform a function indeed sometimes can be copyrightable.  Indeed, the Court argued that something that can be patented can potentially be copyrighted as well (page 43).

The Court argued that no deference should be given to findings of operation or function and that copyright should be determined by an “abstraction-filtration-comparison” inquiry.  Perhaps so, but neither this Court nor the previous Trial court actually attempted to perform this test!

In what looks to me to be an important part of the decision, the Court equated the Java language to the English language and concluded that making the API subject to copyright would not restrict Google from using Java any more than a copyrighted paragraph would hinder other authors from using the English language.  “However Google, like any author, cannot employ the precise phrasing or precise structure chosen by Oracle to flesh out the substance of its packages — the details and arrangement of the prose.” (See page 44).

To me, this reasoning appears to be problematic.  API are much more fundamental than standard copyrighted paragraphs.  API are more akin to the functional neural networks in the human brain that are used to understand various short and common English words and phrases.   I can express myself just fine in everyday life without quoting paragraphs from copyrighted novels.  However if, due to copyright restrictions, the underlying brain neural networks (or computer software structure) needed to understand many short and common English phrases are off-limits, then copyright turns standard English into a proprietary language.  In effect, the court is making large chunks of the Java language proprietary as well.

What is more dangerous:  patents go away unless filed within a year of first disclosure, then properly prosecuted, properly maintained, and have a maximum life of 20 years in any event. Trademarks go away unless filed, maintained every 10 years, and efforts are continually expended to protect against the trademark turning generic.  But copyrights automatically attach without effort, and are then good for 95 to 120 years without any need for renewal!

The Court remanded the case to the trial court, where other copyright principles such as “fair use” may then get Google out of hot water.  However in my opinion, the Court’s analysis missed some key points.  We don’t allow short and common English phrases to be subject to copyright because to do so would unduly constrain normal speech.  There appears to have been no consideration as to what extent forcing a rewrite of the 37 Java APIs at issue would constrain the universe of previously written Java code, and prevent use of many short and common phrases in the Java language.

Was the Court in essence telling Google that although standard Java is now off limits, they of course are welcome to create their own unique dialect of Java?   Put this way, then the decision looks off.

Impressions on the new (post AIA) Patent Trial and Appeal Board (PTAB) patent trial format

Gavel
Gavel

PTAB:  The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality by allowing potentially invalid patents to be challenged in new types of post-grant opposition procedures.

The Europeans have had a patent opposition process for years, and having observed it in operation at first hand, I am unimpressed.  The European system lacks legal protections that Americans take for granted (e.g. rules of evidence, protections against unfair surprise).  It is also possible to game the European system by requesting that the opposition be done in a language that (conveniently) the original European examiner or other parties may not speak.   Another problem is that the European opposition review panels operate by making instant verbal “shoot from the hip” decisions, and only “justify” the decisions in writing months later.

The USPTO Patent Trial and Appeal Board (PTAB) has been working to implement an American version of the opposition process.  They have been hosting roundtables to show their progress to date and solicit feedback.  I attended their April 29, 2014 roundtable at Santa Clara University, and came away favorably impressed.

http://www.uspto.gov/ip/boards/bpai/ptab_aia_trial_roundtables_2014.jsp

In my opinion, the real challenge in doing decent post-grant opposition procedures is the delicate balance between trying to bring in more of the legal protections of common law/Federal law rules of evidence and civil procedure (thus improving on the European system), while minimizing the burdens of a conventional trial process.  Here, in addition to the obvious high costs and long times associated with conventional trials; there is also an issue of legal expertise.

Conventional patent trials are so complex that typically they are handled by expert litigation attorneys.  These litigation attorneys have a detailed knowledge of the trial process, but sometimes less knowledge of patent law and the underlying technology.  By contrast, patents are usually prosecuted by patent attorneys who may have very detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.

PTAB appears to be attempting to devise a streamlined review system that retains a number of common law/Federal trial conventions and legal protections, without being overly burdensome.  In my opinion, their approach does improve on the due process of law deficiencies I noticed in European oppositions.  Relative to standard trials, the PTAB approach appears to be relatively simple, and you don’t need to be a litigation expert.

I am hopeful that with some review of the rules of evidence, civil procedure, and of course PTAB procedures, patent attorneys (often most knowledgeable about the patent and related technology) should be able to come up to speed with the new PTAB reviews fairly quickly.

If it’s so obvious, why didn’t anyone think of it sooner?

Shoot the moon
Shoot the moon?

35 USC 103 “obviousness” rejections: The recent Federal Circuit case of Leo Pharmaceutical Products, Ltd. v. Rea, 2013 WL 4054937 suggests that the Federal Circuit may be starting to develop a new set of criteria and arguments that can help protect against hindsight bias in obviousness rejections.  In Leo, the Federal Circuit held that “to avoid the trap of hindsight”, probative evidence of nonobviousness should also be considered.  What was new was that the Leo court held that this can include both evidence of long felt but unsolved needs, and the length of time between the publication dates of the prior art (used in the obviousness rejection) and the claimed invention.  Specifically Leo court held that the existence of a large time gap between the prior art publications, and the invention, can also be used as indicia of non-obviousness.

How long must this time gap be?  The Leo court held that given a longstanding need, if the prior art citations used in the obviousness rejection are on the order of about 14-22 years old, then this is too long.  That is, such an extensive time delay is probative for non-obviousness because if the combination of such long known citations was actually obvious, then the combination would have been disclosed sooner.

An interesting consequence of this ruling is a novel (but risky) “shoot the moon” type of patent prosecution strategy for obviousness rejections.  That is, Leo can be interpreted as a Federal Court suggestion to find out how far back in time the relevant citations actually extend.  For example, if the prior art is actually 30 years old, but the citations used to demonstrate the prior art were only 5 years old, the following could be done:

  • Explore the roots of the 5 year old prior art citation
  • Trace back to the original 30 year old prior art
  • Disclose the 30 year old prior art citations
  • Make a Leo type argument

The logic seems sound – something known 30 years ago was also known 5 years ago.  The fact that the citations were not combined until the invention, despite a long-felt need, is probative that that the combination was not obvious.

This is arguably a “shoot the moon” legal strategy (i.e. a long shot).  So remember that as always, this is not legal advice, and Kids, don’t try this at home!

Cleaning up obsolete case law: time to revisit In re Gorman

Spiderweb
Spiderweb

35 USC 103 rejections: Ever have something rejected as “obvious” in view of a combination of 5+ references?  The re Gorman case is how such absurd rejections are rationalized.

According to MPEP 707 section 7.37.07, arguments that the examiner used an excessive number of citations are presently found to be “unpersuasive”.  Section 7.37.07 is based upon an old case In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).  However Gorman uses reasoning that is now obsolete and unsupported due to patent law developments since 1991.

Some key aspects of the re Gorman decision were:

When it is necessary to select elements of various teachings in order to form the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to make the selection made by the applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985). ” ‘Obviousness can not be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination.’ ” In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)).

The extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention. As in all determinations under 35 U.S.C. Sec. 103, the decisionmaker must bring judgment to bear. It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps. Interconnect Planning, 774 F.2d at 1143, 227 USPQ at 551. The references themselves must provide some teaching whereby the applicant’s combination would have been obvious

However since 2007 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, the “teaching, suggestion or incentive” requirement for combining citations is no longer required (although still allowed).  When this part of the 1991 Gorman court’s reasoning, shown in the first paragraph above, is removed, it becomes clear that the legal and logical underpinning of their 1991 decision no longer apply!

However under present rules, MPEP 707 section 7.37.07, based upon the now obsolete 1991 Gorman legal reasoning, still acts as a roadblock for any applicant who attempts to argue that the examiner did:  “engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps.”

Given that the Gorman court’s assumptions no longer hold, isn’t it time to revisit this case?  At present, there is no upper limit to the number of citations that an examiner can apply, and indeed I personally have seen combinations of eight citations used in obviousness rejections.

CLS Bank v. Alice Corporation

Signpost
Confusing directions

What is patentable? Perhaps I was too optimistic in my earlier “Prometheus bound (or at least distinguished)” post.

The May 10 Federal Circuit court decision, “CLS Bank v. Alice Corporation” shows that the Federal Circuit is unfortunately still spinning its wheels with regards to determining basic questions about what is  patent eligible.

The good news is that the decision’s various logical problems, and the logical problems with the underlying Supreme Court decisions, are being widely publicized.  Indeed interest in this decision was so high that the Federal Circuit Court servers crashed under the load of everyone trying to download the decision at once!

If you are interested in seeing the present state of the art in regards to cutting-edge legal confusion, you can download the Federal Circuit decision at:

https://www.eff.org/files/cls_bank_v_alice_en_banc_ruling.pdf

Prometheus bound (or at least distinguished)

Prometheus
Prometheus having a bad day

Mayo v Prometheus: In an ancient Greek myth, the Titan god Prometheus is chained to a mountain by the god of blacksmiths (Hephaestus/Vulcan). Why talk about ancient Greek myths?  Because the story suggests a way out of the recent (2012) unfortunate “Mayo Collaborative Services vs. Prometheus Laboratories, Inc.” holding.

This case involved two medical diagnostics patents (6,355,623 and 6,680,302), in which SCOTUS held that patents that incorporate “laws of nature” may not be patent eligible “unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations“.

Are there any inventions that don’t operate according to natural law?  What else is a patent claim but a drafting effort designed to monopolize a particular invention?  What exactly are “additional features” and “practical assurance”?  Here the Prometheus decision provides little or no guidance.

The decision’s use of “natural law”, as well as gratuitous citation of various examples from physics as well as medicine, is unfortunate for us scientifically trained types.  This is because the three dimensional nature of the universe, the forward direction of time, and everything else about the world are all based on laws of nature!

Thus unless read narrowly, this decision would produce an unconstitutional result (it would eliminate all patents, hence violating Article 1 section 8 of the constitution).  So the ruling must be read narrowly, because the SCOTUS upholds the constitution and is never wrong, right?

This will eventually get sorted out.  The Federal Circuit (Hephaestus/Vulcan), composed of judges who actually know something about laws of nature and patents, will step in.  Their job is to clean up problems like this.  Eventually they will likely “chain” the overly expansive Prometheus holding by various subsequent lower court holdings.  They can’t totally overturn Prometheus, but they can certainly bring some sense to it by nibbling away at the interpretation.  (Note added 4-10-16 — or maybe not, they are certainly taking their time!)

As one idea, the European Patent office (EPO) makes certain classes of medical methods that are practiced on the human body unpatentable.  Perhaps the Federal Circuit might draw on the EPO for inspiration, and produce rulings that narrow the scope of the Prometheus “natural law” holding to something more akin to present EPO practice.  This would still not be totally great for Biotech, but Biotech manages to survive in Europe nonetheless.

In the meantime, damage control is also underway at the USPTO.  Their July 3, 2012 guidelines state the USPTO’s expectation that Prometheus considerations will primarily impact patents that being examined by Technology Center 1600 – Organic chemistry, drug delivery, molecular biology, biotechnology, and the like. Perhaps they have been reading the EPO rules as well.  They further advise that examiners fully examine all applications, and reject on more than just patent eligibility issues.  This at least gives the applicant a chance to amend patent claims to try to overcome occasional random Prometheus rejections.