Machine-or-Transformation Test | Factor-Based Inquiry

Overall, the guidelines rely primarily upon the Machine-or-Transformation test.  Although the guidelines state that the Supreme Court indicated in Bilski v. Kappos that the machine-or-transformation test is not the sole test for determining patent subject matter eligibility and that “Bilski held open the possibility that some claims that do not meet the machine-or-transformation test might nevertheless be patent-eligible,” the guidelines also state: “to date, no court presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible.” (43924)  The present guidelines also indicate that “this additional guidance, which builds upon the 2009 Interim Instructions, is a factor-based inquiry.”

Prior USPTO Guidance

The Federal Register notice indicates that the present patent subject matter eligibility guidelines are effective July 27, 2010 and supplement the prior patent subject matter eligibility guidelines that were released on August 24, 2009 (“Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101”).  However, the Federal Register notice also indicates that the present guidelines “supersede previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.”  It should be noted that this blog examined at length the previously released subject matter eligibility guidelines (“35 USC 101 | Patent Prosecution after Bilski v. Kappos“) and the Supreme Court’s Bilski v. Kappos decision (“Bilski v. Kappos | Supreme Court | 35 USC 101 | Business Methods.)”

Present USPTO Guidance | Highlights

• “Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to the patent-eligibility requirement of 35 U.S.C. 101.  Thus, Office Personnel should state all non-cumulative reasons and bases for rejecting claims in the first Office Action.” (43923)
• “The Bilski Court underscored that the text of §101 is expansive … (‘In choosing such expansive terms … modified by the comprehensive ‘any’, Congress plainly contemplated that the patent laws would be given wide scope.’)(quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980))” (43923)
• “The Court also made clear that business methods are not ‘categorically outside of §101′s scope..” (43923)
• “Examiner’s are reminded that §101 is not the sole test for determining patentability” (43923)
• “The §101 patent-eligibility inquiry is only a threshold test.   Even if an invention qualifies … the claimed invention must also satisfy ‘the conditions and requirements of this title.’ §101 Those requirements include that the invention be novel, see §102, nonobviousness, see §103, and fully and particularly described. see §112 … therefore, Examiners should avoid focusing on issues of patent-eligibility under §101 to the detriment of considering an application for compliance with the requirements of §102, §103, and §112, and should avoid treating an application solely on the basis of patent-eligibility under §101 except in the most extreme cases. ” (43923-43924)
• “The recitation of some structure, such as a machine, or the recitation of some transformative component will in most cases limit the claim to such an application.   However, not all such recitations necessarily save the claim” (see Flook) (43924)
• “The fact that the steps of a claim might occur in the ‘real world‘ does not necessarily save it form a section §101 rejection.  Thus, the Bilski claims were said to be drawn to an “abstract idea” despite the fact that they included steps drawn to initiating transactions.” (43924)
• “Bilski also held that the additional, narrowing, limitations in the dependent claims were mere field of use limitations or insignificant postolution components, and that adding these limitations did not make the claims patent-eligible.” (43924)
• “Prior to the adoption of the machine-or-transformation test, the Office had used the ‘abstract idea’ exception in cases where a claimed ‘method’ did not sufficiently recite a physical instantiation.   See, e.g., Ex parte Bilski, No. 2002-2257, slip op. at 46-49 (B.P.A.I. Sept. 26, 2006)(informative), http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd022257.pdf. Following Bilski, such an approach remains proper.” (43924)
• “Each of the factors relevant to the particular patent application should be weighed to determine whether the method is claiming an abstract idea by covering a general concept, or combination of concepts, or whether the method is limited to a particular practical application of the concept.” (43926)
• “Sections 102, 103, and 112 are typically the primary tools for evaluating patentability unless the claim is truly abstract.”  (43926)
• “If the factors indicate that the method claim is attempting to cover an abstract idea, the examiner will reject the claim under §101, providing clear rationale supporting the determination that an abstract idea has been claimed, such that the examiner establishes a prima facie case of patent-ineligibility.   The conclusion made by the examiner must be based on the evidence as a whole.”  (43926)

Evaluating Method Claims for Subject Matter Eligibility | Factors to be Considered

The following document (“101 Method Eligibility Quick Reference Sheet“) which was generated by the USPTO summarizes the primary factors that should be considered in furthering a subject matter eligibility inquiry.  More specifically, this document includes: factors weighing toward eligibility, factors weighing against eligibility, examples of general concepts, and indicates that the prior USPTO subject matter eligibility guidance should be reviewed for a “detailed explanation of the terms machine, transformation, article, particular, extrasolution activity, and field-of-use.”  Additionally, please note that this “Quick Reference Sheet” is a summation of the items that are included in the Federal Register notice at 43925 and 43926.

Public Comments | Deadline

The Federal Register notice indicates that any member of the public may submit written comments regarding these guidelines; however, said comments must be received on or before September 27, 2010 and no public hearing will be held.   Additionally, the Notice states “the office is especially interested in receiving comments regarding the scope and extent of the holding in bilski” and includes a number of specific questions for public comment:

“1.  What are examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible because they do not recite an abstract idea?

2.  What are examples of claims that meet the machine-or-transformation test but nevertheless are not patent-eligible because they recite an abstract idea?

3.  The decision in Bilski suggested that it might be possible to ‘defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted,’ such that the category itself would be unpatentable as ‘an attempt to patent abstract ideas’  Bilski slip op. at 12.  Do any such ‘categories’ exist?  If so, how does the category itself represent an ‘attempt to patent abstract ideas?’”

Comments should be sent by email/facsimile (bilski_guidance@uspto.gov | 571.273.0125) or by mail (Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450), with email being the preferred delivery means.

USPTO Documents

Memo from Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy (this document includes the below listed documents): http://www.uspto.gov/patents/law/exam/bilski_guidance_27jul2010.pdf

101 Method Eligibility Quick Reference Sheet:  http://www.uspto.gov/patents/announce/bilski_qrs.pdf

Federal Register Notice:   http://edocket.access.gpo.gov/2010/pdf/2010-18424.pdf

Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 (released August 24, 2009): http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_instructions.pdf

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

Patent Prosecution | USPTO has Initial Burden in furthering a Prima Facie Case of Unpatentability

One of the initial items that should be considered when analyzing the propriety of a rejection(s) included in an Office Action (irrelevant of whether its a 35 USC 101/35 USC 102/35 USC 103/35 USC 112 rejection) should be: Has the Examiner Satisfied their Initial Burden?.

The Examiner bears the initial burden in providing factual support for a rejection included within the Office Action.  For example, regarding Obviousness rejections (35 USC 103), MPEP 2142 – Legal Concept of Prima Facie Obviousness states: “The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.”

For subject matter rejections under 35 USC 101, MPEP 2106 indicates that it is the Examiner who bears the initial burden in furthering a prima facie showing under 35 USC 101 (see MPEP 2106 – Patent Subject Matter Eligibility).  Accordingly, if a practitioner receives a 35 USC 101 rejection which only states that the claim is not patent eligible because it does not satisfy the “machine-or-transformation” test without anything further, such a rejection would not appear to satisfy the requirements included in MPEP 2106.

MPEP 2106:

“D.  Establish on the Record a Prima Facie Case

USPTO personnel should review the totality of the evidence (e.g., the specification, claims, relevant prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter. USPTO personnel must weigh the determinations made above to reach a conclusion as to whether it is more likely than not that the claimed invention as a whole either falls outside of one of the enumerated statutory classes or within one of the exceptions to statutory subject matter. ‘The examiner bears the initial burden of presenting a prima facie case of unpatentability.’ In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If the record as a whole suggests that it is more likely than not that the claimed invention would be considered a practical application of an abstract idea, natural phenomenon, or law of nature, then USPTO personnel should not reject the claim.

After USPTO personnel identify and explain in the record the reasons why a claim is for an abstract idea with no practical application, then the burden shifts to the applicant to either amend the claim or make a showing of why the claim is eligible for patent protection. See, e.g., In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995); see generally MPEP § 2107 (Utility Guidelines).”

Patent Subject Matter Eligibility Guidelines | USPTO

Although the Supreme Court held in Bilski v. Kappos that the “Machine-or-Transformation” (M-or-T) test is not the sole test for determining patent subject matter eligibility, it still spoke positively of the test (e.g., “the test may be a useful and important clue or investigative tool” – my prior post which reviews Bilski v. Kappos is available: here.)

It should be stressed that a claim may be patent-eligible (as long as its not an “abstract idea”) even if it does not satisfy the M-or-T test as the Supreme Court held that: “the Federal Circuit incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test.”  Until additional guidance is developed (CAFC/USPTO/Congress) and in the interest of time/cost, a patent practitioner may consider continuing to implement the existing guidance that has been provided by the USPTO regarding patent subject matter eligibility.

To help accomplish the foregoing task, the practitioner may want to revisit the interim instructions that were released last summer (August 2009) by the USPTO: “Interim Patent Subject Matter Eligibility Examination Instructions” which provide guidance for evaluating subject matter eligibility under 35 USC 101.

The following USPTO document includes: 1) the aforementioned instructions; 2) multiple subject matter eligibility test flowcharts for evaluating product and process claims; and 3) a USPTO training presentation entitled “Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 USC 101″ which includes a detailed analysis of a number of exemplary product and process claims.   The following discussion reviews key items from the aforementioned USPTO document.

Machine, Manufacture, and Composition of Matter (Product) Claims | Patent Subject Matter Eligibility Guidelines | USPTO

If a claim is directed to one of the three product categories, it is patent eligible.  However, if a judicial exception is recited in the claim, it must be determined if the “judicially excepted subject matter has been practically applied in the product.”

Product Claim | Primary Inquiries:

#1)  Is the claim directed to a product (machine, manufacture (computer-readable medium or “beauregard” claim), or composition of matter)?
#2)  Is a judicial exception recited in the claim? (e.g., mathematical algorithm)  (if answer is “NO” than claim is patent eligible under 35 USC 101, else must additionally satisfy inquiries #3 and #4 for claim to be patent eligible).
#3)  Is the claim as a whole directed to a practical application of the judicially excepted material?

This prong is satisfied when: “a claim that includes judicially excepted subject matter and whose broadest reasonable interpretation is directed to a man-made tangible embodiment (i.e., structure) with a real world use is limited to a practical application (the subject matter has been practically applied….” (page 4)   Additionally, a practical application: “relates to how a judicially recognized exception is applied in a real world product or a process, and not merely the result achieved by the invention”; and “is often self-evident based on the claim limitations that define the tangible embodiment.” (page 4)

The aforementioned requirements are satisfied in one of exemplary product claim examples: (“a machine for evaluating search results, comprising: a microprocessor coupled to a memory, wherein the microprocessor is programmed to evaluate search results by: sorting the results … ranking the results … comparing the ranked results…”) as the claim recites: 1) a tangible embodiment (microprocessor); and a real-world use (microprocessor evaluates search results).  (page 20)

In another one of the exemplary product claim examples, a Beauregard claim (or computer-readable medium claim) additionally satisfies this inquiry due to its recitation of a computer-readable medium (tangible embodiment) and real-world use (sorting search results): “a non-transitory computer-readable storage medium with an executable program stored thereon, wherein the program instructs a microprocessor to perform the following steps…”) (page 21)  Additionally, it should be noted that the reasoning for the aforementioned “non-transitory” language is provided below in the section entitled “Subject Matter Eligibility of Computer Readable Media.”

#4)  Is the claim directed to substantially all practical applications of the exception?

If an algorithm can be used with “different programming steps”, (page 20) than the claim is likely not directed to substantially all practical applications of the exception.   Conversely, the claim is likely directed to substantially all practical applications of the exception if use of the mathematical subject matter is foreclosed beyond the claim (preemption).

In addition to the above items, the following flowchart is included in the USPTO document.

Product Claim | Patent Eligible Subject Matter

Process Claims | Patent Subject Matter Eligibility Guidelines | USPTO

Process Claim | Primary Inquiries:

#1)  Is the “Machine-or-Transformation” (M-or-T) test satisfied (“tied to a particular machine or apparatus (machine-implemented)” or “particularly transform a particular article to a different state or thing.” (page 6)  An”article” is defined as “a physical object or substance” or “electronic data that represents a physical object or substance … data should be more than an abstract value….” (page 6) Further, for computer-implemented processes, the “machine” is usually a general purpose computer.   However, once this general purpose computer is programmed to perform process steps, it in effect may become a “special purpose computer” (or “particular”). (page 7)
#2)   If a “particular machine” is present, does use of it impose a meaningful limit on the claim (more than field of use) OR if a “transformation” is present, does the transformation impose a meaningful limit on the claim?
#3)   If a “particular machine” is present, does use of it involve more than insignificant “extra-solution” activity OR if a “transformation” is present, does the transformation involve more than insignificant “extra-solution” activity?

#4)   Confirm: a) “real world application” is present; and b)”substantially all practical uses of a judicial exception” are not pre-empted.

In addition to the above inquiries which are described in the guidelines, two different exemplary process claims are included which are examined below.

Process Claim | Tied to a Particular Machine

It should be noted that the first exemplary process claim (“Claim Tied to a Particular Machine” – page 26) included in the USPTO document does not recite within the preamble a “machine;” however, one of the steps includes a machine: “comparing, using a microprocessor, the ranked results to….”  This claim is patent eligible as said step is considered “central to the method invented by the applicant”(imposes a meaningful limit) and not “a mere field-of-use or insignificant extra-solution activity” (satisfying inquiries #2 & #3 noted above).

Process Claim | Extra-Solution Activity

Contrastingly, in the second exemplary process claim (“Extra-Solution Activity” – page 27), even though the claim inherently recites a “particular machine” (e.g., “the step of obtaining the search results inherently requires a programmed microprocessor to download data from a database…”), the claim is not patent eligible as the aforementioned step is “not central to the purpose of the method … and is insignificant extra-solution activity.”).

In addition to the above items, the following flowchart is included in the USPTO document.

Process Claims | Patent Eligible Subject Matter

“Transformation” Prong of M-or-T Test | Patent Subject Matter Eligibility Guidelines | USPTO

On pages 5 and 6 of the guidelines, “transformation” is defined as an article that has “changed to a different state or thing” (please note that an”article” is defined as “a physical object or substance” or “electronic data that represents a physical object or substance … data should be more than an abstract value….” (page 6)).  A change of location, purely mental processes such as thoughts or human based actions, and mathematical manipulations of data do not constitute a transformation.

Contrastingly, the transformation prong of the M-or-T test is satisfied with regard to electronic data when “the nature of the data has been changed such that it has a different function or is suitable for a different use.” (page 6)

Subject Matter Eligibility of Computer Readable Media | USPTO

Earlier this year, the USPTO released a document entitled “Subject Matter Eligibility of Computer Readable Media” (signed January, 2010 by Director Kappos) in which guidance is provided regarding “computer readable medium” / “machine readable medium” claims (or Beauregard claims).

The document states, “the broadest reasonable interpretation of a claim drawn to a computer readable medium … typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of a computer readable media, particularly when the specification is silent. See MPEP 2111.01.”  The document further states that if a claim is drawn to a computer readable medium which covers both transitory and non-transitory embodiments, the claim may be amended (to cover only statutory embodiments) with the recitation “non-transitory.”  Further, the document states that such an amendment will normally not trigger a new matter issue even if the specification is silent unless the specification “does not support a non-transitory embodiment because a signal per se is the only viable embodiment….”

Concluding Thoughts | USPTO Practice

The following “thoughts” are a final recap/derived from the USPTO resources described above:

• Initial Burden: The Examiner bears the initial burden in furthering a prima facie showing under 35 USC 101 prior to the burden shifting to the Applicant. This prima facie showing requires the Examiner to “identify and explain in the record the reasons why a claim is for an abstract idea.”
• Product Claims: Simply reciting a “machine” or other product in the preamble without further inclusion of a tangible recitation (e.g., a “microprocessor”) in the main body of the claim will likely not satisfy the aforementioned USPTO guidelines (see exemplary method claim on page 20 of the Patent Subject Matter Guidelines document).  Further, it should be noted that a “machine” is described in said document as “a concrete thing, consisting of parts.” Simply stated: an apparatus claim recites structural components (physical), while a method claim recites a series of steps or acts.  Additionally, inquiries #3 and #4 (particular practical application/no preemption) described above for “Product” claims must additionally be satisfied for the claim to be patent eligible under 35 USC 101.
• Beauregard Claims: Ensure that a “computer readable medium” (or Beauregard) claim recites the verbiage “non-transitory” (e.g. “a non-transitory computer-readable storage medium….”) to avoid having the claim construed in “the broadest reasonable interpretation” as a transitory embodiment (signal) which is non-statutory.  Further, ensure that the Specification does not indicate that the storage medium or other “tangible” product (machine) may be software-based, etc. as such a description may result in the claim being construed as directed to a non-statutory category.  Page 3 of said document includes a listing of “non-limiting examples of claims that are not directed to one of the statutory categories: “1) transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se); 2) a naturally occurring organism; 3) a human per se; 4) a legal contractual agreement between two parties; 5) a game defined as a set of rules; 6) a computer program per se; 7) a company.”
• Process Claims: Even though a “particular machine” is recited within a process claim, unless the machine imposes a meaningful limit (and is central to the purpose of the process claim), the involvement of the particular machine may be considered extra-solution activity.  Additionally, inquiry #4 (real-world application/no preemption) described above for “Process” claims must additionally be satisfied for the claim to be patent eligible under 35 USC 101.

[Please disregard the following: Technorati Verification EVGE9CTK3G5Z]

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

Holding

The Supreme Court held: 1) Bilski’s patent claims were “an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook“; 2) the Federal Circuit’s “machine-or-transformation test” is NOT the sole test for determining patentability under 35 USC 101; 3) Section 101 “precludes a reading of the term ‘process’ that would categorically exclude business methods”; and 4) the “useful, concrete, tangible result” test of State Street is likely no longer applicable.

Background

The claimed subject matter in the Bilski patent application related to a method of hedging against risk created by price changes in the field of commodities trading.  The United States Patent and Trademark Office (USPTO) Board of Patent Appeals and Interferences(BPAI) affirmed the Patent Examiners rejection of the claims under 35 USC 101 concluding that:

“Applicants’ claims do not involve any patent-eligible transformation, holding that transformation of “non-physical financial risks and legal liabilities of the commodity provider, the consumer, and the market participants” is not patent-eligible subject matter. Id. at 43. The Board also held that Applicants’ claims “preempt[] any and every possible way of performing the steps of the [claimed process], by human or by any kind of machine or by any combination thereof,” and thus concluded that they only claim an abstract idea ineligible for patent protection. Id. at 46-47. Finally, the Board held that Applicants’ process as claimed did not produce a “useful, concrete and tangible result,” and for this reason as well was not drawn to patent-eligible subject matter. Id. at 49-50.”

Similarly, the Court of Appeals for the Federal Circuit (CAFC), sitting en banc, also held that Bilksi’s claims were not patentable.  To determine whether a claimed process met the initial patentability requirement of 35 USC 101, the CAFC in essence rejected its prior “State Street” patentability test (claimed process is patentable under 35 USC 101 if it produces a “useful, concrete, and tangible result”) and introduced a new (and arguably more restrictive) “machine-or-transformation” test (claimed process is patentable under 35 USC 101 if: “1) it is tied to a particular machine or apparatus; or 2) it transforms an article into a different state or thing.”)

Guidance for Determining Patent Eligible Subject Matter

Although the Court did not annunciate an explicit test for determining when a process claim may satisfy 35 USC 101, the following items highlight the opinion:

• Congressional Intent | “Wide Scope” for Patent Laws | Three Exceptions to 35 USC 101

The Court states that Congress intended for the patent laws to have a “wide scope” with the exception of three specific items:

“Section 101 thus specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter. ‘In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.’ Diamond v. Chakrabarty, 447 U. S. 303, 308 (1980). Congress took this permissive approach to patent eligibility to ensure that “‘ingenuity should receive a liberal encouragement.’” Id., at 308–309 (quoting 5 Writings of Thomas Jefferson 75–76 (H. Washington ed. 1871)).  The Court’s precedents provide three specific exceptions to §101’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’ Chakrabarty, supra, at 309.”

• 35 USC 101 | “Threshold Test”

The Court confirmed that 35 USC 101 is only a threshold test in determining patent-eligible subject matter.   Overcoming this initial patentability hurdle does not automatically result in a patent grant as an Applicant must still overcome the additional patentability requirements of 35 USC 102 and 35 USC 103 (anticipation and obviousness, respectively) in addition to 35 USC 112 (invention which is fully & particularly described).   The Court stated:

“The §101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine,manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy ‘the conditions and requirements of this title.’ §101. Those requirements include that the invention be novel, see §102, nonobvious, see §103, and fully and particularly described, see §112.”

• Machine-or-Transformation Test | “Not the Sole Test” | Useful & Important Clue or Investigative Tool | Industrial Age vs. Information Age (non-precedential)

The Supreme Court stated that “the Federal Circuit incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test.”   Instead, “the court’s precedents establish that although that test may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent-eligible “process” under 101.”

Although Parts II-B-2 and II-C-2 are non-precedential (Justice Scalia did not join these parts), the court therein cites the uncertainty that would be created with a sole machine-or-transformation test with regard to Information Age products such as “software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals.”  Accordingly, a disconnect between a test rooted in the Industrial Age vs. our current Information Age Economy is realized herein: “the machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age-for example, inventions grounded in a physical or other tangible form … there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age.”  However, the Court is careful in stating that they are not opining on whether the aforementioned list of technologies should or should not receive patent protection. Additionally, it is stated here that “section 101′s terms suggest that new technologies may call for new inquiries.”

• Patentable “Business Method” Process |  1) Definition of “Process” found in 35 USC 100(b); and 2) Guideposts in Benson, Flook, and Diehr

The Court held that because the Bilski patent application can be rejected as an abstract idea, it “need not define further what constitutes a patent ‘process,’ beyond pointing to the statutory definition of that term in 100(b) and looking to the guideposts in Benson, Flook, and Diehr.”

1.  Statutory Definition: the Court states that at least some methods of doing business are likely covered by 35 USC 100(b) purely from a textual perspective as the term ”method” is within 35 USC 100(b)’s definition of “process.”  Accordingly, the Court requires that the “ordinary, contemporary, common meaning” of 35 USC 100(b) be utilized in determining whether a process satisfies the threshold test of 35 USC 101.   The Court rejects a judicially created definition by asserting that:

“this court has ‘more than once cautioned that court’s should not read into the patent laws limitations and conditions which the legislature has not expressed.’ Diamond v. Diehr, 450 U.S. 175, 182 (1981) … in patent law, as in all statutory construction, ‘[u]nless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning.’ Diehr, supra at 182.”

However, the Court states that “nor is it clear how far a prohibition on business method patents would reach, and whether it would exclude technologies for conducting a business more efficiently.”

To provide support for the assertion that business methods are not categorically excluded from 35 USC 101, the Court points to Federal Law (35 USC 273) :

“For purposes of this defense alone, ‘method’ is defined as ‘a method of doing or conducting business.’ 273(a)(3) … by allowing this defense the statute itself acknowledges that there may be business method patents ... while 273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.”

2.  Trilogy of Prior Supreme Court Cases:  The Court states that in addition to reviewing the text of 35 USC 100(b), the trilogy of Supreme Court cases (Benson, Flook, and Diehr) provide a “guidepost” (or guidance) in determining whether a process satisfies the initial threshold of 35 USC 101.    Part III of the opinion details each of these cases briefly.

• “Useful, Concrete, and Tangible Result” Test | Other Federal Circuit “Limiting Critera” Possible

It is likely that the “useful, concrete, and tangible result” test of State Street is game over as the Court states that “nothing in today’s opinion should be read as endorsing interpretations of 101 that the Court of Appeals for the Federal Circuit has used in the past.  See e.g., State Street, 149 F. 3d at 1373; AT&T Corp., 172 F.3d. at 1357.” Additionally, the aforementioned assertion is furthered by item #4 listed below.

However, the Court does indicate to the Federal Circuit that “we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with the text.”

• Four Points of “Substantial Agreeement”

Justice Breyer’s concurring opinion with whom Justice Scalia joins provides four items which “highlight the substantial agreement among many Members of the Court on many of the fundamental issues of patent law raised by this case.”   The four items are as follows:

1.  ”Although the text of 35 USC 101 is broad, it is not without limit.”

2.  ”In a series of cases that extend back over a century, the Court has stated that ‘[t]ransformation and reduction of an article to a different state or thing is the clue to to the patentability of a process claim that does not include particular machines.”

3.   “While the machine-or-transformation test has always been a ‘useful and important clue,’ it has never been the ‘sole test for determining patentability.’”

4.  ”Although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a ‘useful, concrete, and tangible result’ … is patentable.”

Conclusion

A possible “take away” from this decision is that a more centrist position for 35 USC 101 is to be developed in line with the statutory definition of “process” and the Supreme Court Trilogy (Benson, Flook, and Diehr).  This “centrist position” would fall somewhere in between the two ends of the spectrum, namely the broad “useful, concrete, and tangible result” test of State Street on one end and the more restrictive sole “machine-or-transformation” test on the other end.

Another possible “take away” from the case is that by keeping the door open for “at least some methods of doing business,” some may assert that the Court recognized that the tools and products of our knowledge economy will not always conform to rigid constructs (e.g., sole “machine-or-transformation” test).  Such a belief is not surprising as the Supreme Court in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l. stated that that 35 USC 101 is a “dynamic provision designed to encompass new and unforeseen inventions,” while in Chakrabarty it stated that “Congress employed broad general language in drafting 101 precisely because [new types of] inventions are often unforseeable.”   Such an assertion may be compatible with the aforementioned “centrist position” as 35 USC 101 (a “threshold test”) could be tempered by 35 USC 102/103/112.

In conclusion, business method patents have not been wiped off the map, and the Federal Circuit (or Congress) is now tasked with providing further guidance regarding 35 USC 101.

Text of Bilski v. Kappos is available here.

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

Overview

Anytime an Examiner utilizes terms such as “Well Known“,  “Common Knowledge“, or some variant thereof within an Office Action, it is likely that the Examiner is taking Official Notice of some fact (or feature) of a patent claim.    Official Notice is typically employed in Obviousness rejections (35 USC 103) as a “factual gap filler” when the cited art does not explicitly describe a fact.  Further, the Office Action will not necessarily use the terms “Official Notice” therein to describe the taking of Official Notice; but instead, will many times utilize the aforementioned terms (well known/common knowledge).

Legal

The legal standard for applying Official Notice was heightened by the CAFC in In re. Zurko due to the Supreme Court’s holding in Dickinson v. Zurko (CAFC should utilize the “substantial evidence” standard of review for factual determinations rendered by the USPTO rather than the “clearly erroneous” standard).  The CAFC stated in Zurko that:

“The deficiencies of the cited references cannot be remedied by the Board’s general conclusions about what is “basic knowledge” or “common sense” to one of ordinary skill in the art … We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject  matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience — or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.”

In view of the foregoing, a Patent Examiner is required to provide documentary evidence as indicated in MPEP 2144.03 – Reliance on Common Knowledge in the Art or “Well Known” Prior Art which states:

“Official notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances … Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.”

It should be noted that MPEP 2144.03 describes instances where documentary evidence will not be required necessarily (“desirable to make something faster, cheaper, better, or stronger” or “in a first Office action to take official notice of facts by asserting that certain limitations in a dependent claim are old and well known expedients in the art without the support of documentary evidence provided the facts so noticed are of notorious character and serve only to ‘fill in the gaps’”).

Conversely, “assertions of technical facts in the areas of esoteric technology or specific knowledge of the prior art must always be supported by citation to some reference work recognized as standard in the pertinent art.” (MPEP 2144.03)  Furthermore, other instances where the Examiner is required to provide documentary evidence include references to a chemical theory or the state of the art.

The USPTO has provided further guidance regarding Official Notice in a memo entitled, “Procedures for Relying on Facts Which are Not of Record as Common Knowledge or for Taking Official Notice.“   This memo furthers the requirement for an Examiner to provide documentary evidence when requested by an Applicant.

The USPTO memo specifically states:

“Ordinarily, there must be some form of evidence in the record to support an assertion of common knowledge.9 In certain older cases, official notice has been taken of a fact that is asserted to be “common knowledge” without specific reliance on documentary evidence where the fact noticed was readily verifiable, such as when other references of record supported the noticed fact, or where there was nothing of record to contradict it.10 If such notice is taken, the basis for such reasoning must be set forth explicitly. The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge.11 The applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice and be allowed to challenge the assertion in the next reply after the Office action in which the common knowledge statement was made.”

Timing

The timing of the receipt of Official Notice is also a critical factor in determining whether the Examiner’s taking of Official Notice is proper.  As indicated above, MPEP 2144.03 states that a first office action may include an Examiner’s taking of Official Notice.  Contrastingly, Official Notice is “rare when an application is under final rejection or action under 37 CFR 1.113.” (MPEP 2144.03)

Applicant Traversal | Examiner Response to the Traversal

To properly traverse an improper taking of Official Notice, MPEP 2144.03 states that an Applicant must “specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b).”  Further, failing to reference the Examiner’s taking of Official Notice while including general patentability arguments will not be considered an adequate traversal.

Once an Applicant has properly traversed the Examiner’s taking of Official Notice as stated above, the Examiner must provide support for their assertion in the next Office Action if the rejection is to be maintained.   More specifically, the Examiner must provide the Applicant with concrete “documentary evidence” (technical publication/patent publication/etc.), else the Examiner must provide “an affidavit or declaration setting forth specific factual statements and explanation” supporting their assertion if the Examiner is relying upon personal knowledge.

As a final point, a subsequent Office Action may be made Final if another reference is included therein for the sole purpose of responding to the Applicant’s request for documentary evidence, and further, the additional reference may not be utilized by the Examiner for formulating a new art rejection; else, the Office Action may not be made Final.

Conclusion

In view of the heightened evidentiary standards required for a proper taking of Official Notice, the Examiner should (in a majority of instances) provide “documentary evidence” when requested in response to their assertion of Official Notice.

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

Background

Director Kappos of the USPTO has indicated that, “this program is a direct response to feedback we’ve received from members of the patent community who have told us that they need a dedicated resource they can turn to when they have concerns about the prosecution of their application….”

Prior to utilizing this program, the Applicant should first contact the Examiner and Supervisory Patent Examiner (SPE) ( “normal channels”).   Furthermore,  the program is not intended to supersede the authority of the Examiner or SPE as it was created to ensure that a patent application moves through the established process in a timely manner

The Ombudsman should not be contacted regarding:  general questions not related to a specific pending patent application or for matters which are routine (e.g., status inquiries).   For the aforementioned scenarios, the Applicant should utilize PAIR or other USPTO help desks.   Finally, this program is not intended to be an alternative forum for resolving a dispute which is being presently resolved via appeal, petition or other procedure (e.g., pre-appeal).

The program is open to Applicants, Attorneys, and Agents who have application-processing concerns regarding specific patent applications.   However, if an Applicant is represented by an Attorney or Agent, they cannot separately contact the Ombudsman as dual correspondence is not allowed.

Each Technology Center (TC) is assigned an Ombudsman representative (and a backup) which is primarily tasked with addressing Applicants concerns related to the advancement of patent prosecution.  The Federal Registrar Notice states (in a single specific example) that the Ombudsman may be contacted when the Examiner does not appear to address a new amendment or argument and the Applicant cannot reach the Examiner/SPE after a reasonable amount of time.   Further, the Notice states that other instances when the Ombudsman may be contacted will be provided at:  http://www.uspto.gov/patents/ombudsman.jsp

Process

To utilize the program, the Applicant must first complete an Electronic Form on the USPTO website (http://www.uspto.gov/patents/ombudsman.jsp) which requires their name, contact phone number, and selection of the appropriate TC Ombudsman.   After submitting the Electronic Form, the Applicant will receive a call within one business day from the Ombudsman to discuss the issue more extensively.

During this phone call, the Applicant may request that their issue be kept confidential so that it is not forwarded to the deciding Official (e.g., the Examiner, etc.).   However, if a confidentiality request is made, the Ombudsman will take no further action regarding the Applicant’s issue and will only log the complaint into a database.   The database will be reviewed periodically to observe trends, issues, etc.

If the Applicant does not request confidentiality, then the Ombudsman may take action on the Applicant’s issue by forwarding the issue to the appropriate Official (e.g., SPE, TC Director, etc.) for resolution.   At the conclusion of the phone call, the Ombudsman will enter the complaint information into the database for review purposes (as indicated previously).

It should be noted that any written communication between the Official in the appropriate patent organization and the Applicant will be made of record in the file, and additionally, “any written communication received by the ombudsman regarding the merits of an application will be placed in the application file.”

Finally, the program is intended to resolve all issues within ten business days.

Conclusion

The Federal Registrar indicates that the program is effective for one-year; however, may be extended with appropriate modification based upon participant feedback and overall effectiveness.

Further Information:

USPTO Press Release:                      http://www.uspto.gov/news/pr/2010/10_11.jsp

USPTO:                                                   http://www.uspto.gov/patents/ombudsman.jsp

USPTO FAQS:                                       http://www.uspto.gov/patents/ombudsman_faqs.jsp

USPTO Phone Numbers/
Ombudsman TC Contact Page:       http://www.uspto.gov/patents/ombudsman.jsp

Federal Registrar Notice:                  http://www.uspto.gov/patents/law/notices/75fr17380.pdf

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

“The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking public comment on a proposed change that would effectively provide a 12‑month extension to the existing 12-month provisional application period. This change would be implemented through the missing parts practice in nonprovisional applications.

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period.  The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination. “

At first glance, the aforementioned press release is a bit misleading as it seems to imply that the provisional patent application period will be extended to 24 months through the proposal.   However, the proposal only modifies the missing parts practice as it relates to Non-provisional patent applications which claim benefit to provisional patent applications.

The proposal does not modify the rules requiring an Applicant to file a non-provisional patent application within 12-months of the provisional patent application filing date.

Regarding Provisional Patent Applications generally, the Federal Registrar notice importantly states “Applicants are reminded that the disclosure of an invention in a provisional application should be as complete as possible because the claimed subject matter in the later-filed nonprovisional application must have support in the provisional application in order for the applicant to obtain the benefit of the filing date of the provisional application.”   As an aside, I have provided my general thoughts regarding the benefits/pitfalls of Provisional Patent applications in a separate blog post which is available here.

Accordingly, further to the proposal, the Applicant would file a non-provisional patent application (with at least one claim),  along with the basic filing fee ($330) and a submitted oath or declaration.  Further, the Applicant would be unable to file a non-publication request through this proposal.

As indicated in the USPTO Press Release, this 12-month period will allow an Applicant to defer some costs (a surcharge, search and examination fees ($445 for small entities and $890 for other Applicants) in addition to any excess claim fees) associated with the filing of a non-provisional patent application to determine whether commercial opportunities exist for the invention.

The Federal Registrar notice indicates that once a timely reply is made to the notice to file missing parts (within 12 months from the non-provisional filing date), the application will be placed in the examination queue based on the actual filing date of the non-provisional patent application.  Accordingly, there would be no change in the order in which an application is examined which utilizes the proposal.   However, any patent term adjustment (PTA) accrued by an Applicant due to certain USPTO delays would be reduced by an amount equal to an Applicant’s response beyond three months of the mailing of the notice to file missing parts(e.g., PTA could be reduced by up to 9 months).

It should be noted that the proposal does not modify a number of items : patent term is still measured from the non-provisional patent application filing date; publication of the patent application will still occur at 18-months; and any foreign applications (PCT) which utilize a provisional patent application for establishing priority must still be filed within 12 months of the filing date of the provisional patent application (the 12-month priority period provided by the Paris Convention is not modified by this proposal).

The Federal Registrar notice also indicates that the USPTO is considering to offer Applicants an optional International style search report prepared during the extended 12-month missing parts period.  The report would include details regarding the current state of the prior art and would be similar to the report that is prepared for International applications.

Overall, as the proposal allows an Applicant to defer some costs for an additional period of time, I believe that it will indeed be beneficial in certain situations, and additionally, will likely help reduce the patent application backlog at the USPTO.

For further information regarding the proposal:

USPTO Press Release:  http://www.uspto.gov/news/pr/2010/10_10.jsp

Federal Registrar Notice: http://edocket.access.gpo.gov/2010/2010-7520.htm

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

Overview

As annunciated by the USPTO, “the program is intended to spare applicants the added time and expense of preparing an appeal brief if a panel review determines an application is not in condition for appeal.”   The PABR may be utilized to review appealable issues (e.g., 35 USC 102/35 USC 103/35 USC 112 rejections | rejections involve substance) but not petitionable issues (e.g., claim objections: see 1.181 – Petition to the Director | objections involve form).

It is proper to utilize the pre-appeal brief process when clear error or factual deficiencies are present in one or more of the rejections of the outstanding Office Action.  Conversely, the Applicant should file an appeal brief and not request review through the PABR if the Applicant’s arguments will require an interpretation of the claims or prior art teachings.

Applicant Submission

1)    Notice of Appeal:   A notice of appeal (compliant with 37 CFR 41.31) must be filed concurrently with the PABR submission.

2)    USPTO PABR Request Form:   USPTO Form PTO/SB/33.

3)    Arguments:    The Applicant’s arguments detailing why review is being requested should be no longer then five pages (excluding the PABR Request Form).   Additionally, no claim amendments may be included therewith (including any claim amendments will result in the PABR submission being dismissed).   Further, the Applicant should refer to arguments already of record by particularly referring to the previously submitted arguments (e.g., “The arguments presented in Applicants response of January 1, 2010 at page 4, line 15 to page 5, line 5 ….”).

USPTO Post-PABR Filing Process

Once the pre-appeal brief request for review has been received by the USPTO, a Technology Center Art Unit supervisor will designate a panel of examiners who are experienced in the subject technology to review the PABR submission.  The panel of examiners will include “at least” a supervisor and the Examiner of record.

After the panel reviews the rejection(s)/Applicant arguments (without any further interaction with the Applicant), the panel will either: 1) allow the application; 2) reopen patent prosecution; 3) keep the application under appeal because at least one issue remains; or 4) dismiss the request due to a submission error (e.g., claim amendment included therewith, failing to submit notice of appeal, etc.).

Effective Use of PABR

Filing a pre-appeal brief request for review makes sense in many instances, especially when an Applicant’s arguments are being found unpersuasive by an Examiner and the Applicant believes that claim amendments are not required to overcome the rejection(s).   In such a scenario, the pre-appeal brief provides the Applicant with an opportunity to place their patentability arguments before a panel of examiners (which include at least one supervisor) prior to filing a full appeal brief.

Filing a full appeal brief is costly as its preparation requires a substantial amount of time.   Additionally, in view of the current backlog at the BPAI, an Applicant who files an Appeal Brief may incur a substantial wait prior to receiving an answer.   Such an extended wait may be detrimental for an Applicant who requires an expedient patent grant to achieve a specific business objective (e.g., securing additional venture capital, etc.).

Conversely, the time and cost required for the pre-appeal brief submission is minimal as a majority of the Applicant’s former arguments may be essentially re-asserted in the PABR (although new patentability arguments may be asserted as long as no claim amendments are included therein).   Additionally, if former arguments are indeed re-asserted in the PABR,  minimal (or possibly no) prosecution history is generated by such a filing.

Many patent practitioners that I know who utilize the PABR feel generally positively about it.   In many instances, the filing of the PABR may result in the rejection(s) being withdrawn and prosecution being re-opened.  If the PABR results in a rejection being withdrawn, such a result is positive as prosecution is able to move forward without the Applicant having to either file an appeal brief or amend the claims.

Generally, anticipation rejections included in an Office Action are easier to overcome during patent prosecution than obviousness rejections.  The aforementioned assertion is generally maintained in the Pre-Appeal Brief Review context, as arguments directed toward anticipation rejections usually enjoy greater success than arguments directed toward obviousness rejections.

As stated previously, the Pre-Appeal Brief request may be utilized only when clear error or factual deficiencies are present in one or more of the rejections of the outstanding Office Action.   The following items illustrate a few situations where the Pre-Appeal Brief Request for Review may be successfully utilized.

Anticipation/Obviousness – Fail to Consider Claim Recitation | Improper Correlated Claim Feature

For anticipation rejections, the Applicant will likely succeed if it is shown that the Office Action failed to entirely consider a claim recitation in the subject application (e.g., the office action does not correlate a claim feature in the subject application with that of a corresponding feature in the cited art or fails to consider all of the claim recitations).   Additionally, if a claim feature in the subject application is not met by a correlated feature in the cited art, the Applicant may obtain success in filing a Pre-Appeal Brief Request for Review.  Further, obviousness rejections which fail to consider a claim recitation(s) or improperly correlate a claim recitation, may be similarly overcome by filing persuasive arguments in a Pre-Appeal Brief Request for Review which point out the clear error or factual deficiencies which are present therein.

Obviousness – Teaching Away Arguments

An Applicant may be successful in overcoming an obviousness rejection if they further a persuasive “teaching away” argument.   “Teaching away” requires an explicit statement or teaching within one of the cited references which indicates that the proposed combination, as asserted by the Office Action,  would render the claimed invention (of the subject application) inoperable for its primary purpose.

It should be noted that if one of the references only describes disadvantages such as inefficiency or cost, a teaching away argument will be likely unsuccessful.   Accordingly, for a “teaching away” argument to be successful, an explicit teaching must be included within the cited art (e.g., a machine will be unoperable if element A is XYZ material, a process will be unoperable above temperature ABC, etc.).

The MPEP provides guidance regarding “teaching away” (MPEP 2141.02 – Differences Between Prior Art and Claimed or Invention) indicating that, “a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).   Further,  MPEP 2145 – D. References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose provides additional guidance regarding “teaching away.”

Contrastingly, for arguments which require the panel to interpret claim scope or what a person of ordinary skill in the art would understand with regard to cited art (e.g., especially if multiple interpretations are present) will likely not succeed, and instead should be included in a full appeal brief.

In summation, an Applicant should seriously consider filing a Pre-Appeal Brief Request for Review prior to filing an Appeal Brief.

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

“Printed Publication”

The primary factors that must be examined for determining whether a reference qualifies as a  “printed publication” include: 1) dissemination; and 2) public accessibility.  (See MPEP 2128.01)

“Patented”

The term “patented” as used above in sections (a) / (b) / (d) refers to the date that a patent was granted (not the date that the patent application was filed).  (see MPEP 2126 – Availability of a Document as a “Patent” for Purposes of Rejection Under 35 USC 102(a), (b) and (d).

35 USC 102(e)

Section (e) is applicable to references which are either: 1) U.S. patents;  2) U.S. published applications (35 USC 122(b));  or 3) WIPO publications of  international applications (IA) filed under PCT Article 21(2) ( international application has an international filing date on or after November 29, 2000).

MPEP 706.02(f)(1) indicates that, “the 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 … If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined: (1) If the international application meets the following three conditions:  (a) an international filing date on or after November 29, 2000; (b) designated the United States; and (c) published under PCT Article 21(2) in English, then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).”

If the international application has an international filing date prior to November 29, 2000, the pre-AIPA rules must be followed which require:

• U.S. Patents:    Allocate 102(e) date to either: fulfillment of 35 USC 371(c)(1)(2) and (4) or filing date of later-filed U.S. application (whichever is earlier).
• U.S. Patent Publication/WIPO Publication (direct):   For U.S. patent publications and WIPO publications which result directly from the international application, no 102(e) date exists.    Instead, the publication date may be utilized for 102(a) or 102(b).
• U.S. Patent Publication (benefit claim):   If a U.S. patent publication claims benefit to an international application filed prior to November 29, 2000, the actual filing date of the later-filed U.S. application is the 102(e) date.

The MPEP includes a convenient  35 USC 102(e) Flowchart for determining 35 USC 102(e) dates.   Additionally, it must be remembered that international applications (PCT) which fail to either publish in English or designate the U.S. WILL NOT be afforded a 35 USC 102(e) date, even if the international application claims benefit to an earlier-field U.S. application (non-provisional/provisional).   However, such a reference may instead qualify under 35 USC 102(a) or 35 USC 102(b) as of its publication date.

An earlier filing date (than the application filing date) may be afforded to the subject application if a benefit claim is properly made therein to: 1) a provisional patent application under 35 USC 119(e);  2) a nonprovisional patent application under 35 USC 120; or 3) an international application under 35 USC 365(c).

Further, it must be remembered that an earlier filed application must in all instances provide 35 USC 112, first paragraph support for the claimed subject matter of the later filed application.

The MPEP provides an extensive overview of 35 USC 102(e) (see MPEP 706.02(f)(1) – Examination Guidelines for Applying References under 35 USC 102(e)).   Additionally, the USPTO has provided the following guidance regarding this section: USPTO – Questions and Answers regarding 35 USC 102(e)

Overlap of 35 USC 102 Sections – Order of Application in Formulating a Prior Art Rejection

1)  35 USC 102(b)

One may have noticed that a reference can qualify for multiple sections of 35 USC 102; more specifically, some overlap between sections (a), (b) and (e) may arise.   In determining the order of application of the aforementioned sections in formulating a prior art rejection which is included in an office action, Examiners will typically apply 35 USC 102(b) first as this section is a “statutory bar” which is absolute (e.g., cannot utilize a rule 1.131 affidavit to overcome a 102(b) rejection).

2)  35 USC 102(e)

Next, 35 USC 102(e) will be typically applied as references here are treated as “special” (e.g., application filing date is used under certain circumstances).  It should be noted that a reference which is asserted under 35 USC 102(e) may be disqualified further to 35 USC 103(c) if the reference is: a) only prior art under 35 USC 102(e) (f), or (g); b) applied in a 35 USC 103(a) rejection; and c) the reference and subject application were commonly owned or subject to an obligation of assignment at the time of invention.

3)  35 USC 102(a)

A printed publication (e.g., patent publication) which is published (anywhere and “by another”) prior to the subject applications effective  filing date may qualify under this section.   Accordingly, if a reference is published prior to the effective filing date of the subject application, the aforementioned exclusion (35 USC 103(c)) will not apply as the reference will qualify under 102(a) (or 102(b) if published more than a year prior to the subject application filing).

If the aforementioned scenario arises, the Applicant may consider: 1)  “swearing behind” the 102(a) reference utilizing a 1.131 Affidavit or Declaration (CANNOT utilize 1.131 to swear behind 102(b) references), 2) arguing differences between claim recitations and the cited art; 3)  amending the claim(s); or 4) perfecting a benefit claim to an earlier-filed application (see also MPEP 706.02(b) – Overcoming a 35 USC 102 Rejection Based on a Printed Publication or Patent.

Further details regarding the foregoing may be found at MPEP 706.02(a) – Rejections Under 35 USC 102 (A), (B) or (E).

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

Background

1)   Establish Priority:   Provisional patent applications may establish an earlier “effective filing date” (or priority date) for a later filed: 1) non-provisional patent application; 2) application(s) filed in a foreign jurisdiction (non-U.S.); and 3) PCT application.

2)  Must Subsequently File a Non-Provisional Patent Application (12 months):   To avoid losing the priority date of the provisional patent application, a non-provisional patent application must be filed within 12 months from the filing date of the provisional application and must include a benefit claim to the provisional patent application.   The benefit claim to the provisional must be filed within four months of the non-provisional filing date or sixteen months from the provisional filing date (whichever is later).   Additionally, the aforementioned 12 month period cannot be extended and the provisional patent application cannot mature into a patent as it becomes abandoned after the 12 month period.

3)  Not Examined / Published:   Provisional patent applications are neither examined nor published by the United States Patent and Trademark Office (USPTO).  Additionally, because provisional patent applications are not examined, Information Disclosure Statements (IDS) should not be included therewith.

4)  No Indication of Patentability:   Because provisional patent applications are not examined, the Applicant is provided with no indication of patentable subject matter.

5)  Can Not Claim Benefit to Earlier Filed Application(s):  The provisional patent application cannot claim benefit to an earlier filed domestic or foreign application.

6)  Common Inventorship:    The provisional patent application and subsequently filed non-provisional patent application must share at least one common inventor between both applications.

7)  Non-English Filing:   The provisional patent application may be filed in a language other than English.   Further, a translation and statement that the translation is accurate does not need to be filed with the provisional (although it could be).   However, to claim benefit to a non-english provisional in the subsequently filed non-provisional, a translation and a statement that the translation was accurate must be filed within four months of the non-provisional filing or sixteen months from the provisional filing (whichever is later).   In view of the foregoing, an Applicant who has drafted a non-english patent application could file said application as a provisional and provide a translation, etc. at a later time.
 Claims / Oath or Declaration -  Not Required:   Claims may be filed in a provisional patent application; however, they are not required.

9)  Design Patents:  Provisional patent applications cannot be utilized with design patents.

Legal

A provisional patent application is a U.S. national application for patent which is filed further to 35 U.S.C. 111(b) (whereas a non-provisional patent application is filed further to 35 U.S.C. 111(a)).

MPEP 601 – Content of Provisional and Non-provisional Applications indicates that a provisional patent application must satisfy the following statutory requirements:

“(b) PROVISIONAL APPLICATION …

(A) a specification as prescribed by the first paragraph of section 112 of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application….”

Additional provisional patent application filing requirements (e.g., cover sheet, government contract requirements, etc.) are included in MPEP 601.

Advantages

1)   Patent Term Extension:    For applications filed on or after June 8, 1995, the term of a patent (other than a design patent) is 20 years from the date that patent application was filed.   (MPEP 2701 – Patent Term).    More specifically, as the 20 year patent term is measured from the non-provisional patent application filing date (rather than the provisional patent application filing), it is possible to extend the patent term termination date up to 12 months by filing a provisional patent application prior to the non-provisional patent application.

2)  “Patent Pending” Designation:   Once an Applicant has filed a provisional patent application, they may utilize the designation “Patent Pending” with their invention (e.g., conversations with others, product literature, etc.).   However, it should be noted that exclusionary (legal) rights are only obtained once a patent grant has been procured.

3)  Reduced Initial Costs / Obtain Market Feedback:   The government fees for filing a provisional patent application are actually quite minimal  ($220/$110- Small Entity : Current USPTO Fee Schedule).   In addition to the minimal government fee, a filed provisional patent application allows an inventor to “test the waters” and determine whether there is market demand for the invention.

4) Public Disclosure Safeguard – Foreign Filing:   Although the United States allows an Applicant to file a patent application within 12 months from a public disclosure (35 USC 102(b) – “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States”, many foreign countries do not provide such an exception.

Many foreign jurisdictions instead employ an absolute novelty bar in which a public disclosure or commercial activity negates an Applicants ability to file a patent application.   So what are an Applicants options if they need to present their invention publicly but are unsure whether foreign filing will be pursued?

Although one could choose to delay the public disclosure, an alternative option to possibly safeguard foreign rights is to file a provisional patent application prior to the public disclosure (the foreign application/non-provisional would need to be filed within 12 months of the provisional filing).

5)  Patent Prosecution – Secondary Considerations:    Further to item #3 above (“obtain market feedback”), if the invention receives a positive reception in the marketplace and enjoys eventual “commercial success,” these results may be beneficial in overcoming an obviousness rejection during the patent prosecution phase of the non-provisional patent application.   More specifically, the  Supreme Court in Graham v. John Deere outlined a number of primary factors that must be examined for conducting a non-obviousness analysis:  ( 1) scope and content of the prior art; 2) differences between the prior art and claims at issue must be ascertained; and 3) the level of ordinary skill in the art must be resolved ).

In addition to the aforementioned factors, the Supreme Court further annunciated that some “secondary considerations” may also be considered.   The court specifically stated, “such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”    In addition to the foregoing items, caselaw since Graham has identified the following items as “secondary considerations” :   praise by others, licensing activities, copying of the invention, etc.

In summation, although an Applicant will want to focus upon the primary Graham factors in furthering the non-obviousness argument,  the aforementioned secondary considerations could be additionally utilized.

6)   Non-Disclosure Agreements:     A quick review of many corporations invention intake policies reveals that they will not sign a Non-Disclosure Agreement (NDA) to review an invention.   However, once an Applicant has filed a a provisional / non-provisional patent application (or obtained a patent grant), there are no further concerns regarding NDAs due to the provisional application filing.

Considerations

1)   False Marking:    Although an Applicant may utilize the designation “Patent Pending” after a provisional patent application has been filed,  various consequences may arise if a product is marked or marketed with the aforementioned designation with the designation after the following events:  a non-provisional patent application is not subsequently filed within 12 months of the provisional patent application filing date or after patent expiration.

Regarding false marking, ( 35 USC 292 – False Marking) states that:

“(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.”

2)  Satisfy Statutory Requirements: As indicated above, although a provisional patent application is not required to contain any claims, it must satisfy various statutory requirements (35 USC 112, first paragraph / 35 USC 113) for the desired level of scope of the claimed subject matter in the subsequently filed non-provisional patent application.    The aforementioned point cannot be stressed enough … the provisional patent application and non-provisional patent application must each satisfy the same statutory requirements ( written description / enablement / best mode).

In view of the aforementioned requirement, many patent practitioners believe that unless the Applicant believes that the specification of the provisional could be filed as the non-provisional, the provisionals effectiveness may be minimal in obtaining an earlier effective filing date, and may even invalidate the patent (see point 3 below).

Although identical disclosures are not required in both the provisional and non-provisional patent applications, failing to provide sufficient statutory support (written description / enablement / best mode / drawings)  in the provisional for the claimed subject matter in the non-provisional could disallow the benefit claim to the earlier filed provisional.

Accordingly, in view of this requirement, it is uncertain whether a provisional filed with a few paragraphs of details and a rough sketch of one embodiment of the invention would satisfy the aforementioned statutory requirements if the later filed non-provisional patent application included a full claim set (~20 claims) and a few dozen pages of disclosure describing multiple embodiments.

3)  Statutory Bar – Effective Filing Date:  The statutory bar of 35 U.S.C. 102(b) denies a patent to an Applicant if the invention was in public use or on sale in the United States more than one year prior to the patent application filing date.   This is especially relevant in the context of provisional patent applications if a court determines that a non-provisional should not be afforded priority to a provisional.

Further to the foregoing, if such a use or sale occurs and a court holds that a provisional patent application should not be afforded priority due to inadequate statutory support (e.g, 35 USC 112, first paragraph – written description / enablement / best mode) for the later filed non-provisional patent application, the patent may be invalidated if the use or sale was more than one year before the non-provisional filing date (as the provisional filing date in such a scenario would not be relied upon).    See New Railhead Manufacturing, LLC v. Vermeer Manufacturing Company (Fed. Cir. 2002)).

4)   Later Patent Issue Date:    As provisional patent applications are not examined, the later that one files their non-provisional patent application (not later than 12 months from provisional filing), the later a patent grant may arise due to the delayed non-provisional filing.    Accordingly, for Applicants which require an earlier patent issue date for business purposes, it may be advisable to file a non-provisional rather than a provisional.

5)   Multiple Filing Fees:   In addition to the provisional patent application filing fee, the Applicant will additionally incur a non-provisional patent application filing fee.

6)   PCT / Foreign Filing Consideration:   Similar to a non-provisional patent application, a PCT or foreign application(s) must be filed within 12 months of the provisional filing date to claim benefit to the provisional.   As the PCT process is complex (and requires a blog post of its own), many additional details need to be reviewed and considered (preferably with a licensed patent attorney) if this particular route is chosen.

7)  Filing Multiple Provisional Patent Applications: Multiple provisional patent applications, directed toward various advancements of a single invention, may be filed for up to one year from the earliest provisional patent application filing date as said advancements are realized by the inventor(s).   Further, even if multiple provisional patent applications are filed, a non-provisional patent application must be filed within a year from the earliest provisional patent application filing.

However, it should be noted that because each of the subsequently filed provisional patent applications will in essence describe some new inventive feature or advancement of the invention, various claim recitations of the non-provisional patent application may each possess different priority dates which correspond with the respective provisional patent application that first describes said feature.

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.

Establishing Priority – Reduction to Practice

The Federal Circuit (CAFC) has held that “priority of invention goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive of the invention and that it exercised reasonable diligence in later reducing that invention to practice.”   Accordingly, a patent applicant may establish “reduction to practice” either constructively or actually.   A “reduction to practice” (actual reduction) occurs in the context of an inventor’s notebook when an invention is constructed and successfully tested.

Filing a patent is considered a “constructive reduction to practice.”   Further, the application filing date is what is used by a patent examiner for determining the date of invention.    Alternatively, a party can also assert an “actual reduction to practice” (MPEP 2138.05 “Reduction to Practice” ) which requires: “(1) construction of an embodiment or performance of a process that met all the limitations of the interference count; (2) . . . determination that the invention would work for its intended purpose, ; and (3) the existence of sufficient evidence to corroborate inventor testimony regarding these events” as stated by the CAFC.   Accordingly, an Inventor’s notebook may assist an applicant in corroborating an actual reduction to practice.

Failure to Corroborate Evidence – Loss of Priority

In at least one case, the CAFC in Medichem, S.A. v. Rolabo, 437 F.3d 1157 (Fed. Cir. 2006) reversed the District Courts award of priority to the plaintiff because the Court determined that the inventor’s testimony was not corroborated by sufficient independent evidence.   In the present case, the point of contention involved the third prong (recited above) which requires independent evidence to corroborate an inventors testimony.

Although Medichem introduced documentary corroborating evidence, the court reasoned that the corroborative value of the inventors’ notebooks was minimal because they were not witnessed, and did not provide an “independent” source of authority on the issue of reduction to practice.   Further, the court stated that a non-inventors notebook has minimal corroborative value when the notebook is:  offered into evidence pursuant to authentication by an inventor; the notebook author(non-inventor)  did not testify at trial or otherwise attest to the notebooks authenticity; and “where the notebook has not been signed or witnessed and has not been maintained in reasonable accordance with good laboratory practices sufficient to reasonably ensure its genuineness under the circumstances.”

Notebook Retention Program

Although a number of factors played a role in the courts decision to minimize the corroborative value of the proffered evidence, an important lesson can be extracted:  institute a formal notebook retention program within your organization.    By instituting a formal written program, an organization may be able to overcome any authenticity assertions that may arise concerning the genuineness of inventor records.    Some general ideas to help kick-start a notebook keeping program are included below for maintaining both physical and electronic notebooks.

Physical Notebooks

1)  Bound Notebooks:   The notebook should be bound – DO NOT use a binder with loose pages.

2)  Blue Ink: All entries (essentially anything written in the notebook) should be made using a blue ink pen for authenticity purposes –  DO NOT use pencil!

3)  Corrections:    If a correction needs to made, place a line through the item and initial/date the modification – never correct (or “white out”) a mistake using correcting fluid.

4)  Avoid Blank Spaces Between Entries:   One should avoid including blank space between entries in the notebook.   If blank space does exist between the entries, one should place angled lines through such areas (initial & date the area).

5)  Sign/Witness Each Page:   Ideally, each completed page should be signed/dated by the inventor; AND an individual who is disinterested and not a joint-inventor of the subject invention.   Further, the witness must have a level of skill within the respective art which allows them to understand the technical subject matter contained therein (for attestation purposes).

6)  DO NOT Modify Already Signed/Dated Pages:  Once a page has been signed/dated by all respective parties, no further modifications or insertions should be made.   Instead, additional pages or notebooks should be used to indicate which pages contain errors, etc.   However, if the page has not been signed/dated by the disinterested witness, the Inventor may further a correction as indicated above.  If corrections of signed and completed pages would be allowed, its possible that an authenticity issue could arise thereby jeopardizing the notebook retention program.

7)   Number Pages Sequentially:   All pages of the inventor’s notebook should be numbered sequentially.

8)   Do not remove pages from the notebook:   Pages should not be removed from the notebook to avoid the appearance of impropriety.

9)   Designate a Champion:   To help alleviate any authenticity concerns (and to add an oversight layer), its advisable to designate a champion (a person within the organization) the responsibility of ensuring that the organizations notebook retention program is properly maintained.  The champions duties could include:  ensuring that the inventor notebooks are not improperly accessed (maintaining confidentiality), indexing completed notebooks, controlling the release of the notebooks, etc.   Additionally, the champion could review the submitted inventor notebooks for adherence to the specifics of the notebook retention program.  Furthermore, in addition to maintaining exclusive control of the invention records, this individual chould additionally record the date/time that any notebook was checked-in/out.

10) Factual Details:   The inventor should view the inventor notebook as an unrestricted writing space in which they provide all of the factual details (e.g. drawings, components, materials, amounts/weights, test methods/results, etc.) pertaining to the invention, even those they consider as trivial.  Further, the inventor should be encouraged to provide substantial details in each of their notebook entries.  The level of detail included in each of the inventor notebook entries should allow an individual who is technically skilled within the subject art and unfamiliar with the particular invention to understand the particulars of the invention (e.g., what problem does the invention solve, how is the invention implemented, what items are used, what items were found through testing to make the invention inoperable, etc.).

11)  Collaborators:    If the Inventor is collaborating or working with others during the development of the invention, the notebook should:  include identifying information of the collaborator, describe the collaborators role(s) and indicate whether they contributed to any aspect of the invention.   It should be remembered that the general rule concerning inventorship is that an individual who contributes to the conception of the claimed invention should be included as a co-inventor of the patent application. (MPEP 2137.01 – Inventorship) Contrastingly, if an individual merely reduces the invention to practice (without contributing to conception) further to the direction of an inventor, this individual would likely be considered a technician rather than a co-inventor.

12)  One Notebook Per Invention:   It is generally not a good idea to place invention details related to multiple inventions in a single notebook.

13)  External Documents:    If an inventor reviewed or relied upon an external document during the invention process, a reference should be included within the notebook providing particularized details regarding the document source/date/relevant details/etc.  Additionally, the document should be included within the notebook or provided to the Champion for safekeeping purposes.

It should be noted that pre-printed inventor notebooks are available which include features such as bound permanent pages, identifier fields (title/project/etc.) on each of the pages, sequentially numbered pages, etc.

Electronic Notebooks

Further to the courts focus upon “good laboratory practices sufficient to reasonably ensure its genuineness under the circumstances” in Medichem, it seems possible that an organization could satisfy this requirement by maintaining  electronic inventor records through a computer program.  This computer program would likely follow the principles enunciated above for physical inventor notebooks (e.g., designating a champion, secure check-in/check-out functionality, password security, etc).  Furthermore, I assume that physical printouts (monthly/quarterly) of inventor records coupled with a formal notebook retention program which provides secure inventory control would further the records genuineness.

Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.