Tag Archives: patent

New USPTO fee schedule increases fees for challenging granted patents, adds streamlined reexamination option

The USPTO recently published an adjusted fee schedule for certain patent fees. The new schedule significantly increases the fees for challenging the validity of a patent in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) proceedings. (A comparison of these three types of proceedings is available from the USPTO at this link.)

The new fees for an IPR proceeding (request fee + post-institution fee) total $30,500 — an increase of $7,500. Additional fees apply if the IPR proceeding involves more than 15 claims.

The new fees for a PGR or CBM proceeding (request fee + post-institution fee) total $38,000 — an increase of $8,000. Additional fees also apply if the PGR or CBM petition involves more than 15 claims.

The office also established a new “streamlined reexamination” option for ex parte reexamination requests that do not exceed 40 pages. Line spacing (double-spaced or 1-1/2 spaced), font size (12-pt non-script), and margin requirements apply. The fee for a streamlined reexamination is $6,000, compared to the standard $12,000 ex parte reexamination fee.

The fee hikes also include:

  • a $100 increase (to $1300) in the fee for filing a first request for continued examination (RCE);
  • a $200 increase (to $1900) in the fee for filing a 2nd or subsequent RCE;
  • a $180 increase (to $760) for the search and examination fees required for new design patent applications;
  • a $240 increase (to $2,240) in the cost of moving an appeal of a final rejection from the briefing stage to the Patent Trial and Appeals Board for review; and
  • other fee increases for various petitions, such as petitions to revive an abandoned patent application and petitions to accept a delayed maintenance fee payment.

The costs listed above are the standard fees. Small entities and micro-entities may qualify for 50% or 75% reductions of certain USPTO fees.

The new fee schedule will take effect on January 16, 2018.

USPTO announces plans to include claim constructions in the patent examination process

The USPTO recently announced three new Enhanced Patent Quality Initiative programs that are designed to (i) add more detail and clarity to the public record of each U.S. patent application, and (ii) improve consistency in how USPTO examiners’ work product is reviewed.

Of the new proposals, the Clarity of the Record Pilot could have the most significant effect on patent prosecution, as well as on litigation of the resulting patents. According to a blog post from USPTO Director Michelle Lee, the Clarity of the Record Pilot will require examiners to “include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims.”

The Clarity of the Record Pilot has been under development for several months, after USPTO leaders sought public input at various open forums.  Full details of the program are not yet released. However, the USPTO’s plans to have Examiners place claim constructions and definitions on the record raise an intriguing question as to how much deference the courts will give to the Examiner’s claim constructions when the resulting patents are litigated. If an Examiner places a claim construction on the record in a Notice of Allowability, the applicant should carefully review it to consider whether that is the construction that it would want to advance in litigation.

When announcing the new Clarity of the Record Pilot, Director Lee also stated:

Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights.

In addition to the results described above, these new prosecution procedures could significantly reduce the time devoted to claim construction disputes during litigation.

USPTO Launches Automated Patent Application Alert Service

Patent Application Alert ServiceThe U.S. Patent and Trademark Office has launched a new tool that helps interested parties monitor pending patent applications and receive alerts when applications of interest are published. The Patent Application Alert Service enables registered users to receive notice of published applications using various search criteria, including:

  • applications filed by particular inventors or assignees;
  • applications containing specified keywords in the claims, abstract, title or description, or
  • applications having certain CPC classifications.

The USPTO noted that the new service may help more third parties participate in the “pre-issuance submission” process. In that process, any interested party can submit prior art against a pending patent application for the USPTO Examiner to consider. The time frame for submitting prior art against an application is the later of (i) six months from publication, or (ii) the date of first rejection by the Examiner.

USPTO retires SAWS: will it have an effect on the USPTO’s effort to screen out poor quality patents?

The USPTO sealUSPTO’s recent announcement that it is retiring its Sensitive Application Warning System (SAWS) yielded mixed reactions from the patent community. While many noted that the announcement was a win for transparency and accountability in government, others (including some patent applicants) found little comfort after they incurred substantial time and expenses resulting from the USPTO’s delay of patent applications that were assigned to the secret program.

With roots dating to 1994, SAWS first came to light in 2006 after a leaked memo revealed that the USPTO was flagging certain patent applications that could be considered “controversial or noteworthy.” SAWS applications could not be allowed before the Examiner prepared a memo to the USPTO Deputy Commissioners for Patent Operations and Patent Examination Policy.

Some of the criteria for SAWS designation were straightforward:  applications covering perpetual motion machines, anti-gravity devices, and technologies that violate laws of physics were included in the list. Other criteria were more fuzzy: Continue reading

U.S. patent law needs a definition of “abstract idea”

Recent U.S. Patent and Trademark Office actions relating to software patents have confused and frustrated many patent applicants. After the U.S. Supreme Court published its opinion in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the USPTO’s application of the Court decision to software inventions has been anything but consistent. Does the USPTO’s action signal a need for Congressional action or another Supreme Court decision with more concrete guidelines?

In Alice, and as explained by the recent USPTO Preliminary Examination Instructions in view of the Supreme Court Decision in Alice, the determination of subject matter eligibility involves a two part test:  (1) Is the claim directed to an abstract idea?  (2) If so, are there other elements in the claim sufficient to ensure that the claim amounts to significantly more than the abstract idea itself?

However, rather than a rigorous application of any test, in the past few months the USPTO’s patent-eligibility determinations contain little analysis of any specific claim language. Instead, they primarily consist of a boilerplate paragraph stating that the claimed invention is directed to an abstract idea.

To illustrate this problem, the USPTO recently issued a rejection asserting that the following claim was patent-ineligible because it is directed to a “fundamental economic practice:”

8.   A device for predicting a future occurrence of a transportation system incident, the device comprising:
  a processor; and
  a computer readable medium operably connected to the processor, the computer readable medium containing a set of instructions configured to instruct the processor to perform the following:
          collect historic operating information related to the previous operation of a vehicle along a transportation route,
          determine schedule deviation information for the transportation route based upon the historic operating information and observed schedule adherence for the vehicle along the transportation route, the schedule deviation information comprising at least an identification of a driver and a sequence number for a period of time associated with the historic operating information and the observed schedule adherence,
          construct a plurality of models, each of the plurality of models including at least one combination of factors that contribute to schedule deviation,
          rank each of the plurality of models according to at least one information criterion,
          assess an impact of the driver and the sequence number on a highest ranked model to produce a results set, wherein the results set comprises at least a highest ranked model showing at least one combination of factors that most contributes to schedule deviation, and
          present the results set. Continue reading

Is the predicted “death of hundreds of thousands of patents” coming true?

In May 2013, Judge Moore of the U.S. Court of Appeals for the Federal Circuit predicted that the court’s decision in CLS Bank Int’l v. Alice Corporation Pty Ltd. would result in the “death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”

In the year that followed, not much changed.  The U.S. Patent and Trademark Office continued to issue patents in these areas.  And the Federal Circuit issued other decisions affirming that software was still patentable.  While patents covering financial business methods and purely human activity faced difficulty, patents for non-financial software inventions continued to grant at a fast clip.

Then, in June 2014, the U.S. Supreme Court issued an opinion that affirmed the Federal Circuit’s decision. The Court’s decision in Alice Corporation Pty. Ltd. v CLS Bank Int’l said: “there is no dispute that many computer-implemented claims are formally addressed to patent-eligible subject matter,” and subsequent USPTO guidance suggested that “the basic inquiries to determine subject matter eligibility remain the same.” Soon afterward, however, the practical effect of the Court’s decision became quite different.

In the weeks following the Supreme Court decision, I’ve seen that the USPTO is rejecting nearly every application assigned to its business methods examining unit for failure to meet the post-Alice patent eligibility standard. Other patent attorneys have noted this too, and have commented on it with concern.

District Courts and the Patent Trial and Appeal Board have been similarly critical of software patents in recent weeks. Dennis Crouch of Patently-O recently published a comprehensive summary of District Court and PTAB decisions that overturned software patents after the Alice decision.

In addition, in one of its first published opinions that addressed the Alice decision, the Federal Circuit found an invention for a computer-implemented method and system for playing bingo to be a mere abstract idea and thus not patent-eligible. Although the case (Planet Bingo LLC v. VKGS LLC) is non-precedential, it may serve as a harbinger of things to come in future software patent cases.

The USPTO is continuing to issue patents for software-related inventions that are assigned to it’s non-business-method examining units, so it’s clear that at least some software remains eligible for patenting. However, it’s also clear that new and potentially significant challenges are now in place for those who want to obtain or enforce software patents in the future.

If a patent says something is “essential,” then it must be so

To help a patent attorney prepare a patent application, inventors often provide a copy of a manuscript for an upcoming technical journal, research publication or white paper. The manuscript often goes into great detail to explain what features of the invention are essential, critical, or otherwise important to achieve certain results.

Then the patent attorney guts all of that language and produces a document that describes nothing with certainty, and that suggests everything is an option.

Why does this happen?

recent opinion from the U.S. Court of Appeals for the Federal Circuit helps to explain the reasoning behind this.

A basic tenet of patent law is that the scope of the patent is defined by the patent’s claims. The detailed description serves as an instruction manual for how to make and use the invention, while the claims define the boundaries of the patent rights that cover the invention.  In order to infringe the patent, someone has to make, use or sell a product or process that contains all elements of at least one of the claims.

Ordinarily, when evaluating a patent infringement case, a court is not supposed to read words into the claims that aren’t already there. A court can use the detailed description to understand what the claim terms mean.  However, in most cases a court should not add features to a claim (and thus narrow the scope of the claim) if those features aren’t expressly recited in the claim.

The recent Federal Circuit decision, X2Y Attenuators, LLC v. Int’l Trade Commission, highlights an exception to this rule:  if the detailed description describes an element as “essential,” then the court may interpret it as being so — even if the claims don’t include that element.

In the X2Y Attenuators case the patent covered a structure for Electrodereducing electromagnetic interference in electrical circuits. The claims covered a structure with four electrodes.  The claims also described the positioning of certain electrodes in a way that caused certain pairs of the electrodes to be physically shielded from each other. The detailed description also said that a common conductive pathway electrode was “an essential element of all embodiments or connotations of the invention.” Because of this language, the court concluded that one could only infringe the patent if one were to make, use or sell a product with a common conductive pathway electrode, even though the patent claims did not specifically recite that element. In particular, the court noted:

we have held that labeling an embodiment as “essential” may rise to a disavowal.

One of the first questions I typically ask an inventor when talking about a new invention is whether he or she has been through the patent process before. If the answer is “no,” then I try to prepare the inventor for the fact that the patent application’s description may soften some of the inventor’s absolute statements.

It’s important to recognize that what’s “essential” to achieve the best possible practical implementation of an invention may not always be “essential” for the purpose of patentability.  The X2Y Attenuators case helps illustrate what happens when a patent application confuses the difference between the two.