The inventions at issue (US Patent 7,346,545) are both expressly claimed as methods for distribution of products over the Internet and are clearly and unequivocably limited to use with the Internet, an Internet web site and interactive messages.  Although the claim could be more explicit, it would also be reasonable to interpret many of the steps specified in the claims as Internet-implemented.  Notwithstanding the express limitations tying the invention to an Internet implementation, the Court found that the claims were not "meaningfully" limited to machine implementation and, accordingly, did not pass muster under the machine prong of the machine or transformation test. The claims also failed the transformation test as well according to the Court.

The key take-away from this case is to make sure that your patent attorney carefully limits the claims of advertising methods to machine-implementation and also where possible include a clear "transformation" of data, and also to make sure that the invention is claimed as a "machine" as well as a method.

Here are claims 1 and 8 from the '545 patent (emphasis added):

1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

8.  A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of providing a product list on an Internet website, wherein at least some of the products are media products covered by intellectual property rights protection and are available for purchase, said media products being provided by content providers, wherein each said media product is comprised of at least one of text data, sound data, and video data;

 a second step of selecting a sponsor message to be associated with at least one of said media products, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

 a third step of restricting general public access to said media products;

 a fourth step of offering to a consumer access to a requested media product available for purchase without charge to the consumer on the precondition that the consumer views the sponsor message;

 a fifth step of receiving from the consumer a request to view a sponsor message in response to said step of offering;

 a sixth step of facilitating the display of a sponsor message to the consumer in response to receiving the request;

 a seventh step of, if the sponsor message is not an interactive message, allowing said consumer access to said requested media product after said step of facilitating the display of said sponsor message;

 an eighth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

 a ninth step of recording the transaction event to the activity log, said ninth step including updating the total number of times the sponsor message has been presented; and

 a tenth step of receiving payment from the sponsor of the sponsor message displayed.

For more information on this case visit my blog at www.patents4software.com

Steve

He asserts that small businesses create jobs and that small businesses need patents to get funding.  He is advocating getting the Patent Office the funding it needs to catch up on the patent backlog, plus a tax credit for small businesses that get a patent.

http://www.nytimes.com/2010/08/06/opinion/06nothhaft.html?_r=1

Steve

This legislation will allow the USPTO to immediately take a number of actions that will benefit the entire IP community, including:  hiring additional patent examiners; funding full overtime for patent examiners and support staff; accelerating patent examination process reengineering; and continuing to fully fund PCT contract work.  Mission-critical IT projects to increase the effectiveness of every USPTO function will also be accelerated.

This is unquestionably a important step in the right direction, returning to the USPTO most of the $200M we expect to collect this fiscal year in excess of the amount originally appropriated to us.  And even more importantly, it is a move toward unleashing America’s innovative genius as well as the efforts of our nation’s innovation agency – the USPTO.   Without question, there is widespread understanding that we need full access to all our fee revenues, given the enormous requirements associated with our efforts to effectively address our pendency and backlog challenges.

The passage of this bill would not have happened without the leadership of Congress, as well as the dedication and support of the President, the Department of Commerce, Office of Management and Budget, and the IP Community.  On behalf of the USPTO, thank you to everyone who played a role in making this possible.

We have now observed that the examiner’s manual was amended on August 2^nd. 

Please see: http://www.ipaustralia.gov.au/pdfs/patentsmanual/WebHelp/Patent_Examiners_Manual.htm

According to the APO, an invention will be obvious to try if there is a “reasonable expectation that the solution might well solve the problem”.

This appears to echo the High Court’s decision in Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59, which expressly endorsed the reasoning of the US Court of Appeals for the Federal Circuit in In re O’Farrell (853 F.2d 894) as the better approach under Australian law. 

The Australian Examiner’s Manual now recognises that Australian law includes the requirement that anything suggested as “obvious to try” must carry with it a “reasonable expectation of success” in order to make the invention obvious.  As in US law under O’Farrell, rebuttal of the factual assertion that any anticipated success is “reasonable” may therefore help overcome objections that the invention is obvious because it was “obvious to try”.

In practice, Australian examiners may not be so bold as to assert “obvious to try” as the sole reason for a claim rejection in view of the overarching principle that the skilled person must be “directly led” to the invention for it to be obvious. 

Indeed, recent examination reports are asserting that references “provide motivation to make the invention” and “directly lead the skilled person to the invention” and only then stating as a consequence of those direct leadings that a “reasonable expectation of success” has been established. 

Regards, Bill

PIZZEYS

bbennett@pizzeys.com.au

Hot on the heels of the Bilski decision in the US, the Australian Patent Office has now refined the Australian test for the patentability of business methods. 

The patent application in question relates to a “Method for Commercialising Inventions”.  The main independent claim read as follows:

1. An invention specific commercialization system to facilitate success of inventions, the system including the steps of:

a) applying for patent protection for the invention in a country which is party to the Paris Convention,

b) conducting a review of specific commercialization process required by the invention,

c) preparing a research and development plan, testing the business dynamics of the invention,

d) conducting prototype testing, developing a prototype cost/benefit analysis,

e) determining product positioning and packaging,

f) conducting a manufacturing checklist,

g) entry of the information collected in steps a) to f) into an electronically fillable checklist having a prescribed time limit for each step to form a commercial entry strategy (CES) with a number of sub-steps, the CES prepared on the basis that each of the sub-steps in the CES are to be completed by a corresponding deadline, all deadlines falling within 30 months from the earliest priority date of the patent application, the checklist being computer-implemented and stored in computer or human readable format in data storage means and associated with processing means to allow updating of the checklist; and

h) policing compliance with the deadlines for the completion of the sub-steps through the production of reminders based on the prescribed time limits in the checklist to ensure that all sub-steps are completed within the deadlines. (underlining added)

Prior to the subject decision, the governing precedent was Grant v Commissioner of Patents [2006] FCAFC 120 (“Grant”).  Grant stood for the proposition that a method must produce “a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation”.  Grant went on to say that a change in the state or memory of a computer may be a “physical effect”.

In the subject case, the applicant argued that the entry of information into the electronically fillable checklist, and the storage and updating of same, satisfied the “physical effect” requirement of Grant.  The Australian Patent Office rejected this argument.  At paragraphs 36-38, the Australian Patent Office stated:

36.          In Grant the Court clearly was stating a view that without a physical effect in the sense of a “concrete effect or phenomenon or manifestation or transformation” a claimed method could not be considered to be within the realms of patentability but, as I have indicated, I do not take it to suggest that patentability is merely determined on the presence of a physical effect. Rather it clearly must be an effect of such substance or quality that the method considered as a whole is “proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies".

37.          The decisions in Grant and Catuity both referenced US law and in Bilski I note the Supreme Court confirmed that in the US the “the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant post-solution activity” (Diehr at 191-192). It was said in that decision:

“To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101.”

38.          Insignificant post-solution activity has been taken to include steps such as the inputting, storage or displaying of data. I take from this aspect of US law however only confirmation of the unremarkable conclusion that one must consider whether the subject matter of a claim considered as a whole falls within the scope of patentable subject matter and that this cannot be achieved merely by pointing to some physical effect or transformation that, while present in the claimed method, does not alter its fundamental character. In applying the decision in Grant I therefore consider that the “concrete effect or phenomenon or manifestation or transformation” referred to must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way. Consequently while the step of building a house involves a concrete physical effect it is peripheral to the method of acquiring a house and indeed could hardly be said to characterise the subject matter of the method such that it is considered an artificially created state of affairs. I consider the same to apply to a business scheme implemented in some part by computer and do not believe the patentability of such a method can arise solely from the fact that, in a general sense, it is implemented in or with the assistance of a computer or utilises some part a computer or other physical device in a incidental way. (underlining added)

In summary, the subject case has qualified the “physical effect” requirement by now making it clear that the physical effect must be “central to the purpose or operation of the claimed process or otherwise arises…in a substantial way”.

In addition to qualifying the patentability of business methods, the subject case also had meaningful comments about the ability of the Commissioner to inform herself regarding factual matters.  In particular, the Commissioner rejected arguments and evidence submitted by the applicant in relation to the state of the common general knowledge in the art (see paragraph 55).  Further, the Commissioner rejected arguments submitted by the applicant on the question of whether prior art references would have been considered by the skilled person (see paragraph 67).  We expect that this aspect of the decision will embolden Australian examiners to maintain rejections more often in the future.

The full decision can be viewed here:

http://www.austlii.edu.au/au/cases/cth/APO/2010/10.html

Regards, Bill

PIZZEYS

bbennett@pizzeys.com.au

I have attached a a Powerpoint on patent landscaping if you are looking for more information.

I’m writing today about a major challenge and opportunity for the USPTO—and for the entire IP community.     

In the coming days we will be releasing, for employee and public comment, the Draft 2010-2015 USPTO Strategic Plan.

Today, I’m asking the entire IP community to invest in the formulation of this plan. 

The draft plan sets out the USPTO’s mission-focused strategic goals:  optimize patent quality and timeliness; optimize trademark quality and timeliness; and provide global and domestic leadership to improve IP policy, protection, and enforcement worldwide.

The plan identifies the objectives we believe are necessary to achieve the strategic goals and sets out the projects, initiatives, and programs we’ll use to get there.

The objectives are:

1.  
   1. Provide timely examination of patent applications.  Reduce the time to first office action on the merits for patent applications to 10 months, and average total pendency to 20 months 
   2. Improve quality of patent and trademark examination
   3. Improve/enhance patent appeal and post-grant processes
   4. Optimize trademark quality and maintain pendency
   5. Demonstrate global leadership in all aspects of IP policy development
   6. Improve IT infrastructure and tools
   7. Implement a sustainable funding model for operations 
   8. Improve relations with employees and stakeholders      

In the weeks, months, and years to come, we’re counting on USPTO employees and the IP community to unite around the strategic plan.  We all need to believe in this plan in order to properly execute it.  That’s why I want the plan to reflect the values and knowledge of the entire IP community—that includes the ideas of our employees, public stakeholders, and USPTO management. 

We invite your comments, your questions, and your suggestions for improvement to help us refine our Strategic Plan.    

Our success will ensure that the USPTO and the American IP system continue to fuel the U.S. economy and job growth by spurring innovation, creativity and ingenuity.

Please stay tuned for the release of the draft plan in the coming days.  We look forward to your feedback on it.

The disposition of Bilski rested on a holding that Bilski’s claims were directed to an abstract idea – hedging. (http://www.supremecourt.gov/opinions/09pdf/08-964.pdf)

The root case for “abstract” is Le Roy v. Tatham, 55 U.S. 156, 174-75, 185-86 (1852) (http://supreme.justia.com/us/55/156/case.html).  This case is cited in Bilski on page five of Justice Kennedy’s majority opinion.  Here are a few excerpts:

The word "principle" is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application as to mislead. It is admitted that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery, a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself under the patent laws. The same may be said of electricity and of any other power in nature, which is alike open to all and may be applied to useful purposes by the use of machinery.  Le Roy, 55 U.S. at 174-75.

That the main merit -- the most important part of the invention -- may consist in the conception of the original idea -- in the discovery of the principle in science or of the law of nature stated in the patent, and little or no pains may have been taken in working out the best mode of the application of the principle to the purpose set forth in the patent. But still, if the principle is stated to be applicable to any special purpose, so as to produce any result previously unknown in the way and for the objects described, the patent is good. It is no longer an abstract principle. It becomes to be a principle turned to account, to a practical object, and applied to a special result. It becomes then not an abstract principle, which means a principle considered apart from any special purpose or practical operation, but the discovery and statement of a principle for a special purpose -- that is, a practical invention, a mode of carrying a principle into effect. That such is the law [he observes] if a well known principle is applied for the first time to produce a practical result for a special purpose has never been disputed, and it would be very strange and unjust to refuse the same legal effect when the inventor has the additional merit of discovering the principle as well as its application to a practical object.  Le Roy, 55 U.S. at 185-86.

Considering that the abstract idea in Bilski is hedging, which in view of Le Roy v. Tatham equates an abstract idea to a law of nature or mathematical formula, hedging is essentially viewed by the Court as equal to a law of nature – a basic principle.  Laws of nature and mathematical formulas are actually not abstract in the sense of being loosely defined, which is how I initially read “abstract ideas” in Bilski.  Instead, the opposite is true.  A claim to an abstract idea is actually very specific, such as a claim to the Pythagorean Theorem, addition, electromagnetism, or even gravity.  Those are very specific things just as hedging is very specific – or concrete, but I will get back to that.  A thesaurus is quite helpful in finding a single word with the same meaning as abstract that is more easily understood.  Conceptual.  An abstract idea is accurately considered to be conceptual as in, “The claim of Bilski was directed at the concept of hedging.”  With this definition in mind, the abstract idea holding makes more sense.  But, it turns out that abstract ideas are not actually abstract at all. 

Nevertheless, I still think the Court took a few mental leaps.  For example, hedging didn’t necessarily always exist.  Hedging is a method developed by man to mitigate risk.  Certainly hedging has been around for centuries.  So it must be that when a basic construct created by man becomes so well known and commonly practiced, the concept becomes principle along the same lines as gravity.  But considering the precedent of Chakrabarty where anything under the son made by man is patent eligible, wouldn’t Bilski have been better, or at least more simply decided under § 102 or § 103?  Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)( http://supreme.justia.com/us/447/303/case.html).  Otherwise it seems there is another test missing in the reasoning of Bilski that can be used to tell us when a construct of man becomes so ingrained that the construct is instead conceptual to a level of being a principle.

So it seems that an abstract idea is simply a conceptual process lacking an application that does not preempt all uses thereof.

In view of the June 28, 2010 memo from Robert Bahr (USPTO Acting Associate Commissioner for Patent Examination Policy) providing post-Bilski process claim examination instructions, when a process claim does not meet the Machine or Transformation test, the claim is to be rejected under § 101 unless there is a clear indication that the claim is not directed to an abstract idea.  (http://www.patentbuddy.com/showPublication?pubId=1704)That leads me to my next point – traversal of an assertion that a claim is directed to an abstract idea.

Traversing an Assertion that a Claim is Directed to an Abstract Idea

To traverse a holding that a process claim is directed to an abstract idea, it seems necessary to be able to show how the claim does not preempt all uses of the process involved in the claim.  Under Flook, the showing must be more than a restriction to a particular field of use and involve more than token post-solution components.  Parker v. Flook, 437 U.S.  584, 590 (1978)(see footnote 11)( http://supreme.justia.com/us/437/584/case.html).

Another possible way to traverse an assertion that a process claim is directed to an abstract idea is to attack the grounds upon which the process is considered to be an abstract idea.  For example, the majority in Bilski cited Judge Rader’s dissenting opinion where he asserted that “[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”  The tactic here may be to lodge a demurrer as to the asserted facts and traverse the conclusion that the construct of man has reached the point of being an abstract idea, a.k.a. a principle.

But Wait a Minute…

My investigation into the rightful meaning of “abstract idea” lead me to a thesaurus as previously mentioned.  I noted that “concrete” is an antonym of “abstract.”  That reminded me of the useful, concrete, and tangible (UCT) test from State Street … the same case the Bilski Court refused to endorse.  Could it be that the reason the UCT test didn’t work well is that the concrete portion of the test was not definitionally understood as the opposite of an abstract idea?  Perhaps with the background of Bilski and a proper definitional context for “concrete,” the best way forward would be for the Federal Circuit to take the Supreme Court up on its challenge for “development of other limiting criteria that further the purpose of the Patent Act” by affirming the UCT test pronounce by Judge Rich (whom by the way Justice Stevens was so quick to quote in his contrarian concurring opinion).

Nevertheless, citing Chakrabarty and Thomas Jefferson, the majority acknowledged that Congress plainly contemplated that the patent laws would be given wide scope to ensure that “ingenuity should receive liberal encouragement.”  The majority later continued by acknowledging that “times change” and “[t]echnology and other innovations progress in unexpected ways.”  Importantly, a plurality of the Justices reasserted, citing J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., that “[s]ection 101 is a ‘dynamic provision designed to encompass new and unforeseen inventions.’”  Under this reasoning, the majority did not accept that the “Machine or Transformation” test applied by the Federal Circuit as the only test for patent eligibility, but, the majority failed to articulate any other tests.

In explaining its holding that Bilski’s claims were directed to abstract ideas, a plurality of the Justices realized that “the information age” “puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law.  With ever more people trying to innovate and thus seeking patent protections for their innovations, the patent law faces a great challenge….”  The majority failed to acknowledge that this inventive activity is the type of activity the patent system is intended to promote.  See Constitution, Article 1, § 8, cl. 8.  However it is important to note that the patent examiner of the Bilski patent application was up to the “great challenge.”  The patent examiner rejected Bilski’s application explaining that it merely manipulated an abstract idea – the same grounds upon which the Court unanimously decided the ineligible nature of Bilski’s claims.  This is important to note at a time when the United States Patent and Trademark Office is focused on patent quality.  Here, in a high profile, hotly contested case, the patent examiner made the right decision.

While the Bilski claims to a method of hedging commodities was held to be an abstract idea, the majority did not go so far as to preclude patentability of all business methods.  To the contrary, the majority stated that “[s]ection 101 … precludes the broad contention that the term ‘process’ categorically excludes business methods.”  Thus, in the wake of the Bilski decision, business method patenting still has a breath of life.  However, it is unclear what test(s) for patent eligibility might apply.  It is clear though that a business method claim must be more than an abstract idea, mathematical formula, or law of nature.  Beyond that, there is an abyss of uncertainty.  The majority in Bilski does provide guidance that claims passing the “Machine-or-Transformation” test will pass the threshold question for patent eligibility of Section 101.  This also informs the Patent Bar that method claims of software inventions are still eligible for patent protection under at least the same “Machine-or-Transformation” test being used since the Federal Circuit’s en banc decision in Bilski.  While failing to endorse the “useful, concrete, and tangible” test of the Federal Circuit State Street decision, the majority opinion instructs the Federal Circuit to develop “other limiting criteria that further the purpose of the Patent Act and are not inconsistent with its text.”  Thus, we will anxiously wait to see what other patent eligibility tests applicants will be faced with. 

However, the question in the Mayo petition for certiorari in Mayo v. Prometheus is left unsettled.  In the Prometheus case, the Federal Circuit found compliance with the “Machine-or-Transformation” test inherent in the claims.  But, at times in the Federal Circuit’s Prometheus opinion the inherent compliance with the “Machine-or-Transformation” test seemed tenuous, at best.  Absent compliance with the “Machine-or-Transformation” test, patent eligibility in Prometheus rests on a law of nature – a measured presence of a substance in a patient sample providing insight into patient health – a correlation which is arguably naturally occurring.  Nevertheless, I expect Mayo’s Petition for Cert. to be remanded by the Supreme Court for further consideration in view of today’s decision in Bilski.  (Subsequent to writing this, the Supreme Court granted cert. in Prometheus, vacated, and remanded the case to the Federal Circuit for further consideration).

Also, the USPTO provided the Examining Corps instructions on the Bilski v. Kappos decision on June 28, 2010.  The instructions direct the Examiners to continue use of the Machine or Transformation test with regard to § 101 “using the existing guidance” unless it is clear the claims are directed to more than an abstract idea.  These instructions can be viewed here.

Considering the opinion and the subsequent instructions to the Examining Corps, I don’t think much has been accomplished in the past two or so “Bilski years.”  We have all been modifying our practices, writing claims, and drafting applications differently, and consuming a lot of time all because of Bilski.  However, no real progress has been made.

For example, I believe the majority opinion in Bilski really stand for three principles:

1.     No business method exception;

2.     Claims must positively recite the invention in more than an abstract manner; and

3.     The Machine or Transformation test is an important test, but it is not the exclusive test.

Of these three principles, we already knew there wasn’t a business method exception and that we can’t claim an abstract idea.  Also, most of us knew number three as evidenced by the extensive amicus briefing, but the Federal Circuit was somehow confused.  So yesterday’s opinion really only corrects the confusion at the Federal Circuit, but otherwise seems to restate what we already knew.  So I ask the rhetorical question, “What did this Bilski exercise accomplish?”

Today, I’d like to share some perspectives on the USPTO’s “Three-Track” proposal for patent examination, which was released for public comment earlier this month.  This proposed examination initiative would allow inventors to choose among three different tracks of patent examination and thereby tailor the patent examination process to better suit their business needs.   We are currently seeking public comment on this proposal and will hold a public meeting on July 20^th.

The Three–Track proposal is designed, first and foremost, to help us put Americans to work – that is, to enable applicants to increase their own, and the USPTO’s effectiveness by selecting their most time-critical work for priority processing.  It is also intended to help reduce pendency and enhance work sharing among IP offices. 

Track 1 of the program is prioritized examination aimed at achieving final action within 12 months of the request for prioritized examination and the payment of an accompanying fee.   Track 2 would be today’s examination process, which currently takes on average 34 months to complete.  Track 3 would allow non-continuing applications first filed at the USPTO up to 30 months to decide whether to request examination.  In addition, the proposal would allow applicants to “change tracks” if circumstances warrant it-- either speeding up or slowing down the patent examination process as needed. 

The proposal would enhance worksharing by synchronizing USPTO examination of applicants first filed overseas to follow overseas examination—thereby ensuring the overseas patent office work product is available to the USPTO examiner when she undertakes her work.  Specifically, it would require applicants in any application that claims the priority date benefit of a foreign application to submit a copy of the search report, if any, and the first action on the merits from the foreign office together with arguments explaining why the claims in the U.S. application are patentable in the U.S. given the positions taken by the foreign office. 

An inventor who files first in the United States -- or an inventor who files first in a foreign office and receives a first action on the merits that is in turn submitted along with applicable comments to demonstrate how the claims in the U.S. application are patentable -- may request prioritized examination under Track 1 after paying the relevant fee.   Thus, both applicants who file first in USPTO and applicants who file overseas first can obtain the benefit of accelerated processing at the USPTO.   Track 3 is available to an inventor who files first in the United States provided the applicant does not request non-publication.    

The Three-Track proposal is a win-win for inventors, the Agency and the public.  Patent applicants are allowed to either accelerate or delay patent processing according to their needs or market conditions.  Inventors can opt for Track 1 for inventions that are ready for immediate commercialization.  Or, by taking advantage of Track 3 examination, both small and large entities are able to delay the cost of obtaining a patent until their invention is ready for commercialization and they determine that further investment in the patent process makes sense.

The Agency benefits from the ability to focus resources more effectively on the most important work of the applicant community.  In addition, we expect this will help with the backlog generally, as some percentage of Track 3 applications will be dropped without payment of the search and examination fees. In a turn on an old adage, a sinking tide lowers all boats – in this case, in a good way.

The public would also benefit by the Agency prioritizing its resources toward applications likely to be used in the market much more quickly than is possible under the current process.  By examining the most promising inventions promptly, the USPTO will facilitate investment in commercializing innovation and the creation of new jobs.

One issue left open by the Three-Track proposal is setting of fees for Track 1, especially for small and micro entities.  Unfortunately, the USPTO does not have statutory authority to discount the Track 1 filing fee for small or micro entities.   If such enhanced authority were provided by Congress, we would grant a 50% discount for small entities and a 75% discount for micro-entities. Within the limits of the authority we have at the USPTO to help improve the patent process for our applicant community, we have designed the Three-Track proposal to help all patent filers – small and large.

I am very excited about the many benefits we can derive from a three-track examination process, and look forward to receiving comments from our employees, the IP community and the public. 

A few weeks ago, IPLaw 360 published an article titled, “Five Things Patent Examiners Wish You Would Do.”  The article—aimed at patent practitioners—featured sound suggestions on things attorneys could do to help the examination process advance successfully.  SPEs David Ometz, John Cottingham and Andrew Koenig, who were interviewed for the article, were spot on in their suggestions for examiners and attorneys to find common ground and work together so deserving applicants can get their patents and their innovations to market. 

Here are their five tips:

1.      Set up an interview

As I’ve said in this blog and in other fora, I’m a big believer in the power of interviews.  When people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real time.

David Ometz put it perfectly: “An interview may not always result in the allowance of a case, but it can advance the prosecution, especially if it stalls out,” he said. “An examiner gets to hear firsthand from the attorney or applicant what the crux of the invention is, and that can help an examiner visualize the invention better in his head.”

Or, as John Cottingham said, “Communication allows for a better understanding on both sides and gets cases to move quickly.”

2.      Lay Out Arguments From the Get-Go

Attorneys should be precise in their arguments, pointing out in a concise manner just how the invention is novel and how it is different from prior art. And they should do this at the outset, rather than waiting until after one or more office actions, or on appeal.

In the article, Andrew Koenig said, “I've seen multiple times during prosecution that it is not until the appeal brief that attorneys give me all of their arguments. But if they had showed me those earlier, we might have had a different result.”

Getting precise information about the invention to the examiner early in the process can help advance prosecution and avoid unnecessary back and forth between the examiner and the applicant.

3.      Avoid Filing Excessive Claims

Excessive claims in a patent application can unnecessarily prolong prosecution.

David Ometz rightly pointed out: “Often the claims seem to be repetitive and they are trying to get at the same inventive concept. If an application goes above 30 or 40 claims, an attorney should consider what is in there that may be extra and what each claim is adding to the patent application.”

This is clearly a scenario where more isn’t necessarily better.  In fact, it's frequently worse.  Applicants should consider whether claims beyond 30 or so are really necessary.  In most cases, they probably are not.

4.      Put It in English, Please

Often applications from foreign filers are poorly translated into English, which can frustrate examiners and unnecessarily delay prosecution.

When an application is poorly translated and not in plain English, David Ometz noted: “It can be hard to understand what the invention is, and it could take an office action or two to sort through the claims to get at what they really mean.”

5.      Come Prepared

This sounds simple enough, but sometimes attorneys come to an interview without the information or knowledge needed to have a productive discussion.  Sometimes they seem not to know the case or are unable to articulate the inventive concept.

Andrew Koenig further explained that attorneys who are organized and well-prepared can help move the examination process forward and give examiners the information they need to do their jobs most effectively.  He added: “At the end of the day, it's about helping the applicant and the examiner get on the same page.”

Of course, we all know that patent quality, and timely completion of the examinaton process, is a two way street -- a shared responsibility between the USPTO and patent applicants.  We have lots of challenges on the USPTO side, and we're all working hard to overcome them.  By the same token, these five tips are great best practices to help applicants do their part.  The tips are all great, and I’m sure there are others you as applicants can share.  It would be great to assemble at least five more, so that we can put out a "Top 10" list.  What suggestions would you offer to other practitioners to help their chances of getting a patent?

By now you’ve no doubt heard about the Agency’s “Ombudsman Program” which was announced in early April. 

One of the Agency’s strategic priorities is to improve relations with our stakeholders. The newly initiated Ombudsman Pilot Program has been established to assist in meeting that priority.

At times, when I am speaking with patent practitioners and applicants, they share their frustrations with the patent process. Examples include cases where the examination process has stalled or where applicants are unsure of the appropriate person to contact for assistance. At other times an applicant or attorney may simply need assistance getting connected with the USPTO employee who can assist them with a particular issue.

To put it another way, applicants have asked for a pressure relief valve, and we have implemented it.

To help with the above, and many other issues that may occur during the patent process, the Agency has implemented the Patents Ombudsman Pilot Program. The Program is running across all of our Technology Centers, using TC ombudsman representatives who are Supervisory Patent Examiners (SPEs) and Quality Assurance Specialists (QASs) prepared to field questions and concerns from the public and work with the appropriate PTO employees (SPEs, Directors, Petitions contacts, etc.) to facilitate responses. The ombudsman representative will help ensure that the applicant's issues are addressed quickly – usually within five business days. The ombudsman representative will also ensure confidentiality when requested by the applicant or applicant's representative. 

I look forward to our new Ombudsman Program strengthening the USPTO’s ability to provide our stakeholders with the most efficient and precise service possible. Please give it a try in cases where a pressure relief valve is needed.  More information about the Ombudsman Program can be found on our Web site. I look forward to your feedback on the Program.

Most of the proposed increases are insignificant.

However, there is one new fee which will close off an existing loophole for avoiding excess claims fees.  Those who regularly prosecute applications in Australia will be aware that the APO applies an excess claims fee based on the claim count at the moment of allowance (the official fee is A$100 for each claim beyond the first 20 claims). 

To date, it has been possible to delete claims prior to allowance in order to reduce the claim count, and then add back the deleted claims after allowance.  However, the APO is now proposing a new fee which will apply in circumstances where an applicant adds back claims after allowance (the proposed new fee is A$100 for each added claim beyond the first 20 claims).

If you wish to take advantage of this loophole, then you should expedite prosecution such that the amendment to “add back” excess claims occurs before 1 August 2010.

The official announcement can be seen here (see item 222A):

http://www.ipaustralia.gov.au/pdfs/news/DIISR%20-%20IPAustralia%20-%20Fee%20Review%20Summary%20%20Proposed%20Regulation%20Changes.pdf

PostScript:  After making this post, we discovered from discussions with the APO that the official fees will be levied when the amendment to add back claims is *allowed* (as opposed to the date on which the application to add back the claims is made).  Of course, this means that any application to add back claims should be made well in advance of the deadline.

regards, Bill (bbennett@pizzeys.com.au)

PIZZEYS

In early February I asked for reader ideas about how we might reengineer the MPEP, and I was pleased to see how many thoughtful suggestions you all made.  With this post I want to let you know that your ideas have been heard, and we are acting on them. 

Many people suggested that additional information be provided alongside the current content, including:

·         Examples of cases showing both sides of a rule

·         Examples of reasons to combine that are sufficient to support obviousness

·         Examples with case citations including active links to decisions

·         Guidelines for when requirements are satisfied

·         Definitions

People also suggested that we re-organize content to reduce redundancy, provide links from sections to other related sections, and provide better indexing and search tools.

In terms of wikis and online collaboration with the public, there was broad consensus that the USPTO should be the keeper of the official version of the text, but that it would be useful to have outside contributions to the content, in several different forms.  These included:

·     Encouraging readers to post comments about the current text, on a section-by-section basis, to point out errors, make clarifications, and add examples of interpretations and links to case law and other materials.

·     Posting preliminary content and then encouraging the community to comment on this new content before it becomes official.  This might include a wiki section for adding additional content.

·     Periodically summarizing and following up on the comments on each section, both to ensure those with merit are acted upon, and to keep the comments on each section from becoming too cluttered.

·     Providing a way for the community to discuss and debate topics such as how to interpret recent court decisions.

We are now fully engaged in converting the contents of the MPEP into a more modern set of tools and are looking at collaboration tools to support the suggestions we have received.  Watch this space for further developments. Thank you again for your input, and keep it coming!

Those of you who regularly prosecute patents in Australia will be aware that Australia has a unique approach to inventive step/non-obviousness.  Specifically, Australian law differs from international norms in two fairly notable ways:

(a)   Firstly, not all prior art references are citable.  Rather, in order to be citable, a prior art reference must firstly be shown to be a piece of prior art information that the skilled person could have been reasonably expected to have “ascertained, understood, and regarded as relevant”.  Notably, prior art references have been excluded from consideration because (i) the prior art reference was published a short time before the priority date of claim under consideration and was not widely available (Wrigley), (ii) the prior art reference was not in the English language (Euroceltique), and (iii) the prior art reference was not directed to solving the same problem as the problem solved by the claimed invention (Lockwood);

(b)   Secondly, since the landmark High Court decision in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, “obvious to try” does not make an invention obvious in Australia.  In that High Court decision, the standard for determining inventive step/non-obviousness was stated as follows: “Would the notional research group at the relevant date in all the circumstances…directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result].”  This meant that, in circumstances where a range of alternatives was available (this often being the case in the chemical arts), there must be evidence that the person skilled in the art would go directly to the claimed alternative for inventiveness to be destroyed. 

It is widely known that moves are afoot to better harmonise Australian law with international norms via the elimination of the “ascertained, understood and regarded as relevant” prerequisite for a prior art reference to be citable.  What is perhaps less well known is that the APO is quietly moving to issue rejections based on the “obvious to try” standard.  We will, of course, be on the lookout for any office actions which adopt this improper approach.

regards, Bill (bbennett@pizzeys.com.au)

PIZZEYS