Prometheus bound (or at least distinguished)

Mayo v. Prometheus patent eligibility, 35-USC-101
Prometheus having a bad day

Before Alice, there was 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 is not unlike the present patent eligibility mess created by the Supreme Court’s unfortunate, 2012, “Mayo Collaborative Services vs. Prometheus Laboratories, Inc.” holding. Unfortunately, the high-tech industry is Prometheus.

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 Mayo v. 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?

What is worse, the Supreme Court then cited Mayo as a precedent for its later Alice ruling. Why be partially off the rails, when one can be totally off the rails?

I had hoped that this would get sorted out.  The Federal Circuit is composed of judges, some of whom actually know something about laws of nature and patents.  Their job is to clean up problems like this.  I had hoped that they would “chain” the overly expansive Mayo v. Prometheus holding by various subsequent lower court holdings.  They can’t totally overturn Mayo v. Prometheus, but they could have certainly brought some sense to it by nibbling away at the interpretation.

The Federal Circuit indeed made some attempts to do this, such as in the Rapid Litigation v. Cellzdirect case. However, taken as a whole, the various Federal Circuit decisions have been very mixed, and indeed self-contradictory.  In short, the Federal Circut has not really done its job here.

The USPTO has also attempted to do some damage control, again with mixed results. The underlying problem is that they do not have enough legal clout.

A similar case, Athena Diagnostics, Inc. v. Mayo Collaborative Services, is presently pending at the Supreme Court.  Let us hope that SCOTUS takes it, and gets it right this time.

Rospatent – International PCT patent applications just got much cheaper

Rospatent cheap PCT ISR patent examinations
Rospatent – Russian patent agency

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.  Their ISA fees are a jaw-dropping $217.  That’s right, this is not a typo.  They are about 10 times cheaper than the US!  They do accept English, and also correspond in English.

What is the catch?  They are new to this, and the quality of their searches is uncertain.  Additionally, the USPTO information sheet 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 they 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.

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.

Track 1 Prioritized Examination

Track-1 patent applications
High speed Track-1 patent applications

In a rush to get your patent? Consider Track-1 filings.

It is not uncommon for the average patent application to sit for 1-2+ years at the patent office before the examiner even begins to start examining the patent application.  The examiner then usually sends a first office action, which often rejects all claims, and upon receiving a response will then wait for several more months before replying.  So this is usually a slow, multi-year, process.

However, a few years back, the USPTO realized that patent applicants were willing to pay more money to go faster. The USPTO obtains its funding from patent fees.  A light went on, and they started offering a faster, Track-1 examination service, at a higher price.

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.  This method vastly outperforms other speed-up methods (Accelerated Exam, Patent Prosecution Highway, and Petition to Make Special).  In fact, many of these 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 $2070 in 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.