USPTO office actions are used to reject most patent applications by using “done before”, “obvious”, “vague”, or “not patent eligible” type arguments.
Although we all hope that a patent application will sail through the USPTO patent examination process and be allowed “as is”, this usually doesn’t occur. As a practical matter, examiners work on a quota system. The net effect of this quota or “count” system is that the average successful patent is usually rejected several times before it is allowed.
Typically an examiner will first read the patent claims, and search for various citations (often earlier filed patent applications) that match certain claim key-words. The examiner will then write a 20-40+ page “office action” document that rejects your various claims for various reasons, and send it to the correspondence contact of record. The examiner expects you to respond within three months by submitting a written “office action response” that rebuts these various rejections.
The most “popular” USPTO rejections are:
Done before – 35 USC 102: The examiner thinks he has found another single citation that teaches everything in your particular claim. However absent actual copying, no two patents are usually totally alike. This type of rejection can often be rebutted by explaining where the citation is different, or amending the claims to add additional detail that differs from the citation.
Obvious – 35 USC 103: The examiner (sometimes impermissibly guided by your disclosure) is attempting to reject your claim by combining features from multiple citations. The examiner may often create a Frankenstein concept that may or may not be plausible. Fortunately, there are examination rules here. Often this type of rejection can be rebutted by any of 1) showing that the examiner is misquoting the citations, 2) amending your claims, 3) showing which “103” examination rules were broken.
Vague – 35 USC 112: This “vagueness” or “indefinite” type rejection is used for different things. Sometimes it is harmless and easily corrected, such as when the claim’s grammar is off. Sometimes it is deadly, such as when your underlying patent application doesn’t teach how your invention works in adequate detail. This is more likely to happen if the original application lacks specific examples. Although this can often be rebutted or fixed by changing the claims, sometimes the only way to attempt to fix this is to file a “continuation in part” application that adds the missing detail.
Not eligible – 35 USC 101: In the old days (i.e. before 2015), this was a rarely used rejection because the 35 USC 101 law was written to be very expansive. However, recent court decisions have made this area quite a swamp, and this is still being sorted out. In the meantime, realize that business methods and financial methods have a higher than average rejection risk.
Don’t like having your own inventions used against you? Before your patent issues, consider filing a continuation application.
Just got your US patent application allowed? Congratulations! Now before it issues (usually about 2-4 months after you pay the issue fee), you need to decide if you ever will want to file any improvements or variations of that invention in the future.
If you do have some improvements or variations in mind, now is the time to start working on filing a “continuation-in-part” (or CIP). In a CIP, you are basically telling the USPTO that you have added some new concepts to your original patent application. This is OK – worst case the examiner may determine that the new concepts have a later filing date, but in any event, the examiner won’t hold your original patent application against you.
In contrast to a CIP, patent continuation applications are essentially a repeat of the original application. Any differences to the claims had better be fully disclosed in the original application.
Why file a continuation? One common reason is that you think that you may be able to get stronger claims the second time around, perhaps by making the claims shorter and hence stronger. Or perhaps there was something in the original application that you forgot to put into your original claims. Both types of claim changes are fine so long as you can show that the newer claims were fully disclosed in the original application.
A second common reason is a nagging fear that although you might not have thought of any improvements or variations yet, you can’t rule out the possibility that you might do so in the near future. Here, if you don’t file a continuation, after your patent issues, your own patent will be used against your later patent applications as if someone else had invented it.
However if you do file a continuation, it essentially keeps your original patent “alive” a while longer (usually at least another year or so). Then, if you do come up with an improvement, you can then file a CIP to your continuation application. When you use this strategy, the USPTO will allow you to claim your later improvement without using your original application against you.
Prior art searches: Before investing a lot of time, effort, and money in trying to patent a potential new invention, it is always good to spend at least a few hours doing patent searches to see if there is any prior art (earlier patent or non-patent publications) that might cause problems. As a rule of thumb, if you haven’t found any prior art that concerns you at least a bit, then you probably haven’t looked enough yet!
Why do this? Because eventually, skeptical USPTO examiners will be going through your patent application, looking for ways to reject on the basis that the application is either not novel or obvious in view of prior art.
Patent examination is an adversarial process. Patent examiners have, in effect, quotas which require them to initially reject most patent applications. It is a bit of a game, like tennis, where the examiner initially rejects by citing some combination of prior art. The examiner then hits the ball back onto the applicant’s side of the court. The examiner is expecting the applicant to hit the ball back onto the examiner’s side of the court by submitting convincing arguments pointing out where the examiner was wrong. If the applicant can convincingly argue that the examiner is wrong, usually (often after a few additional volleys), the examiner allows the patent, and the applicant wins. But if the applicant cannot argue back convincingly, it is like dropping the ball or hitting the ball back out of bounds. The applicant loses, and that patent application is going nowhere.
The patent examiner typically starts by doing computer searches for prior art using search terms that the examiner thinks will work best. This computer search will come up with unexpected citations, which the examiner may in turn combine in unexpected ways to try to show that the invention is “obvious”. Because of the quota to initially reject almost everything, often these initial rejections are unreasonable. Unreasonable rejections are “good news” in disguise, because the applicant can then rebut these by reasonable arguments. It is the reasonable rejections that are the real “bad news”, because these are harder to argue against. So before putting a lot of time and money into an invention, it is a good idea to do at least some initial checking to see what the examiner (or for that matter, a competitor) might try to use against you later. This is the idea behind a “feasibility study” type prior art search.
Sometimes, particularly when the inventor or inventors are experts, the inventors themselves may decide that they are sufficiently familiar with their field so that the search-time expense/benefit ratio is low, and no additional prior art searches are worthwhile. Here, since the USPTO will do an independent search anyway, the only obligation that the inventors have is to inform USPTO of the most important prior art that they are aware of.
Other times, particularly when the inventor or inventors are working in an area that is new to them, prior art searches have a better search-time expense/benefit ratio. Here many good sources are available over the Internet, including Google, Google patents, Google Scholar, the USPTO patent database, the WIPO patent database, and the like.
Some common mistakes that inventors make is to underestimate the amount of prior art that a patent examiner can use against their invention. Although pretty much everyone understands the problem of prior patent applications by others, this is only part of the prior art problem.
For example, for the US, anything published more than a year ago can be used against your invention, including your own publications. This includes that “cool” YouTube video, that “cool” social media posting, or that research paper/thesis that you may have published last year. Foreign patent offices are even worse in this regard. Patent examiners know that often the inventor’s own worst enemy is the inventor’s own earlier publications. As a result, patent examiners often specifically search for the inventor’s own publications and internet postings to use against them.
Another problem that inventors sometimes have is that they are a bit too emotionally attached to their cool new idea. This problem can result in sub-optimal prior art searches. The inventor may, perhaps subconsciously, avoid search strategies that may kill that shiny new idea.
Here, there are several advantages to having a patent attorney do a quick feasibility prior art search for you. One is that the patent attorney does prior art searches all the time. Another is that the patent attorney, being both less emotionally invested in the idea, and being expert in finding prior art, may have an easier time thinking of thorough search strategies. The third is that often doing the search helps the patent attorney understand variants of your idea better, which can translate into a better patent application.
For example, if something highly relevant comes up (and often something does come up), then the new idea can be better evaluated in the context of this new-found prior art. The scope of the initial idea may be altered or expanded, and a better patent application can result. Worst case, if it becomes clear that the idea has been done before, then time and money can be saved. Alternative ideas can be explored instead.
In conclusion, “feasibility study” type prior art searches are a good a way to get at least a rough estimate of the legal feasibility of a new idea. Although the prior art search may uncover what looks at a first glance to be a tough obstacle, often this initial obstacle may encourage further thinking and improvements to the initial idea, resulting in a better patent down the road.
Note that in addition to “feasibility study” type prior art searches, there are other types of patent searches called “freedom to operate” searches or opinions as well. These represent a different and more extensive type of search, and this is a different topic.
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.
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.
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.
Low cost PCT applications? Individual inventors and small firms on a budget may be happy to know that as of January 10, 2013, Rospatent offers a new way of filing international PCT patent applications that can save on PCT filing costs.
By treaty, all PCT patent applications must undergo international preliminary examination by an International Searching Authority (ISA). These preliminary examinations, however, are only advisory in nature, and the resulting international search reports (ISR) generally recommend rejection of almost all patent applications anyway. Unfortunately, ISA fees are a mandatory part of the initial PCT filing payment.
The USPTO is a recognized ISA, and charges $2080 for this service. Other ISA that the USPTO cooperates with have included Europe (even more expensive), Australia (also a bit more expensive), and Korea (cheaper – only $1167). As of January 10, 2013, the USPTO will also cooperate with the Russian patent office (Rospatent) as an ISA. Rospatent’s ISA fees are a jaw dropping $217. That’s right, this is not a typo. They are about 10 times cheaper than the US! Rospatent does accept English, and also corresponds in English.
What is the catch? Rospatent is new to this, and the quality of their searches is uncertain. Additionally, the USPTO information sheet on Rospatent states that Rospatent sends correspondence to applicants via snail mail, rather than electronically, although they do accept faxes.
Probably the biggest potential issue relates to the later national stage patent application filings. There appears to be a higher risk that Rospatent will use non-English (e.g. Russian) citations in their search report. Thus the applicant may in essence be trading off present lower initial PCT filing costs vs. the possibility of future higher national phase citation translation costs. The same issues apply to using Korea and Europe as an ISA, of course.
However, for small entity applicants, who are uncertain about future national phase filings, but who wish to preserve their international options as long and as inexpensively as possible, Rospatent appears to be a viable alternative to consider. Rospatent essentially cuts initial PCT application costs in half. For some small entities, where the financial decision may be to use Rospatent or do no PCT fling at all, Rospatent may be quite useful.
A screenshot showing the various non-US ISA options that the USPTO now allows you to select is shown below:
Recent Note: alas, crazy Ivan’s house of bargains is no more. As of 2014, Rospatent raised their prices. At the same time, the USPTO significantly dropped their PCT filing prices for small companies and individual inventors. Thus for many US based filers, the USPTO is now quite competitive on pricing, and there is no compelling need to use Rospatent.
In a rush to get your patent? Based on an analysis of statistics, the website patentlyo.com reports that the Track 1 prioritized examination method is far and away the best way to go. Track 1 vastly outperforms other speed-up methods (Accelerated Exam, Patent Prosecution Highway, and Petition to Make Special). In fact, most of the Track 1 prioritized patent applications are through the process in less than a year.
Track 1 is easy to do, if expensive. There is no requirement to do extra patent searching, and no requirement to work with foreign patent offices. If you are an independent inventor or your company is under 500 people in size, it is simply a matter of electing Track 1 at the time of initial filing, and in addition to the regular patent application fees, paying an additional $2830 in Track 1 exam fees, processing fees, and publication fees. It is also possible to elect Track 1 for an RCE filing as well.
The main other requirements are that the patent application have less than 4 independent claims and no more than 30 claims, which is not generally a problem for most purposes. There are a few other rules as well – a complete application must be submitted at the time of filing, and no extensions of time on replies are allowed. All in all, however, if you are in a rush and are willing to pay extra, it is a good option to consider.
European software patent laws are different from the US software patent laws. In the United States, at least before “Alice” all that you had to do to overcome a “not patentable” (35 USC 101) rejection for a software patent application was to include, in the claim language, words to the effect that the invention is running on a computer processor. The actual rules and court decisions are more complex, of course, but the fact remains that including the claim limitation “processor” used to go a long way.
What about Europe? Although European Patent Convention Article 52 states that “programs for computers” are not patentable, this does not mean that an invention that uses software is not patentable. Here European Patent Office (EPO) case law shows that what the EPO looks for is proof that the invention has a “technical effect” and/or has a “technical character”. If you can show that your invention solves a technical problem, then the fact that your invention uses software does not exclude it from EPO patentability.
Of course, just as in the US, the invention will still have to satisfy a number of other stringent tests (e.g. novelty, non-obviousness) as well, but at least in Europe the “technical effect” standard gets you in the door.
Since most software based inventions have a “technical effect”, for most software applications, the “we don’t do software” hurdle will thus be relatively easy to overcome. Perhaps just as “processor” used to be the magic word for US software patent applications, “producing the technical effect of” may be the magic words for European software patent applications.