US Patent Office

When discussing the fundamentals of patent law with potential clients, we are often asked whether it is necessary, and whether it is a good idea, to conduct a patentability search.

 The bottom line is that there is no requirement to conduct a patentability search before filing a U.S. patent application.  However, in most cases, it is a very good idea to do so.

Depending on the technology, a basic patentability search will typically cost $750-$2,000.  We use the term “basic” because this type of search does not cover all documents in all languages throughout the world.  Instead, it is a cost-minded approach intended to give the client “the biggest bang for their buck.”   

 A basic patentability search will typically include a search of issued U.S. patents, published U.S. patent applications and PCT publications — and sometimes a quick Google search to uncover products not disclosed in patent literature and products for which a corresponding patent applications has not yet published.  (Occasionally, for certain technologies, there is a need to search academic publications and other types of non-patent literature.)

 While a basic search is not guaranteed to uncover every document that could weigh in on the question of patentability, if carried out by a qualified firm or practitioner, it will undoubtedly provide you with valuable insight about the patent landscape surrounding your new invention and your chances of obtaining a patent.  (We emphasize the word “qualified” because some searchers are better than others.  Before hiring a firm to conduct your patentability search, be sure to understand their search methodology.  Most qualified firms, like us, use the WEST system which accesses the same database used by US examiners to examine your patent application.)

There are many good reasons to perform a basic patentability search, but in our experience, there are at least two primary reasons to do so:

1.         A basic patentability search can save you a lot of time and money (and heartache) down the road.  Everyone knows that filing a patent application, and seeing that application through to issuance, are expensive propositions.  So ask yourself …would you rather find out now — or later — that you’ve made a good investment?  That is, do you want your answer after you’ve spent $1,500, for example, on a patentability search, or after you’ve spent $10,000 … $20,000 … or more on a patent application and its ensuing prosecution?

2.         If, after obtaining the results of the patentability search, you decide to file a patent application, you can rest assured that the quality of the application will be better as a result of the search — that is, assuming (a) the person drafting the application conducted the search or has access to the search results; and (b) the search was conducted by a competent firm or practitioner.  Armed with general knowledge about the prior art, and often a specific understanding of one or more significant prior art references, the drafter will have a much better idea of what to include in the application — and just as importantly, what not to include in the application — to give the best possible chance of success.

Thus, while there is no requirement to conduct a patentability search before filing an application, we believe it is a very good idea to do so in the vast majority of cases if you consider the overall expense of drafting, filing and prosecuting an application.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice.  Please contact one of our attorneys to learn more about patentability searches or any other aspect of intellectual property law.

Clients and prospective clients are often eager to obtain patent protection even though their new product (invention) is still “under development”. They often ask: “When should I file a patent application?” and “What type of application should I file?”

If the core of your invention is fairly well established but you are still making improvements, you should strongly consider filing a U.S. provisional patent application.

A U.S. provisional patent application expires 12 months after it is filed. While a provisional application, as such, is never examined by the U.S. Patent and Trademark Office (and thus will not mature into an issued U.S. patent), a provisional application can form the basis for U.S. and non-U.S. patent protection if the proper steps are taken. (Essentially, to retain the benefit of the “provisional” filing date, the provisional application must be converted into a regular, non-provisional U.S. application and/or an International [PCT] application before the end of the 12-month period.)

Thus, in a situation where the product is fairly well developed but refinements are still being made, filing a provisional application would allow the applicant to “lock in” an early effective filing date for the core inventive concept while still leaving opportunities to supplement the original filing during the 12-month period.

This approach highlights some of the major benefits of starting with a provisional application when the core inventive concept, while mostly complete, is still being “fine tuned”. Any time during the 12-month period, you would be able to supplement the first provisional with one or more additional provisional applications—for example, to cover any newly-added features, improvements, modifications, etc. (Typically, the sum total of all provisional disclosures is converted into a regular application during the 12-month period of the first provisional application so as to retain the early effective filing date of the first provisional.)

Additionally, at the time of converting the provisional application(s) to a regular, non-provisional application, you would again have the option to supplement the provisional disclosure.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about filing U.S. provisional patent applications or any other aspect of intellectual property law.

In the most recent publication of the Federal Register (Vol. 75, No. 100), the United States Patent and Trademark Office (USPTO) announced a new procedure for the review of appeal briefs filed in ex parte reexamination proceeding appeals. The intention is to increase the efficiency of the appeal process and to reduce the overall pendency of appeals. Briefly, the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceeding appeals comply with the regulations outlined in 37 C.F.R. 41.37 will be taken on by the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee. The goal is for the Chief Judge or designee to complete the determination within one month from the filing of the appeal brief and will thereafter forward the appeal brief to the examiner if the brief is in compliance. If one or more regulations are found to be non-compliant, the Chief Judge or designee will send the appellant a notice of noncompliant brief requiring a corrected brief. The appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Chief Judge or designee will continue the responsibilities outlined above for corrected briefs and will address any inquiries and petitions regarding notices of noncompliant briefs. In effect, this streamlined process eliminates duplicate reviews by the examiner and the BPAI.

This new streamlined procedure is applicable to appeal briefs filed in ex parte reexamination proceedings on or after May 25, 2010. It does not apply to inter partes reexamination proceedings; however, the USPTO is considering a streamlined procedure for these as well.

On November 6, 2009, the USPTO announced the initiation of a program called “Project Exchange.”  This program was initially limited to applicants claiming small entity status; however, the USPTO has more recently announced that this program will be available to all applicants, pending its publication in the Federal Register.  Under this program, any applicant having more than one application currently pending at the USPTO can receive expedited review of one application in exchange for withdrawing an unexamined application. 

 The purpose of this program is to reduce patent backlog at the patent office, as well as give applicants more control over the priority in which their applications are examined.  In exchange for abandoning an application that may be less important, an applicant can advance a more important application to the front of the examination queue.  In theory, this program will also benefit applicants that do not qualify.  Indeed, applicants should see their applications taken up for examination more quickly than would otherwise occur in the absence of this program even if they have only one pending application or do not have a pending application they are willing to abandon.

 The expanded Project Exchange will be limited to 15 applications per entity through December 31, 2010.  Additional details of this program will be available in the Federal Register in the coming weeks and on the USPTO website.

The Court of Appeals for the Federal Circuit (CAFC) recently issued on en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., essentially leaving the written description requirement intact.  In that case, Ariad filed a patent application relating to NF-kB and its involvement in activating gene expression underlying the body’s immune response to infection.  Once issued, Ariad and others sued Lilly for infringement, and the district court found that Lilly did indeed infringe some of the claims.  The district court also determined that the patent was not invalid for anticipation, lack of enablement or lack of written description.  On appeal, the CAFC reversed this decision, holding the Ariad patent invalid for lack of written description.  Ariad then petitioned for en banc review, which the CAFC granted.  Relying on the language in the statute, Supreme Court precedent and policy considerations, the en banc court ruled that the written description requirement was indeed separate and independent from the enablement requirement and affirmed that the Ariad patent is invalid for lack of written description. 

In his public blog, Director Kappos provided comments in response to this decision.  He suggests that some of the principles noted by the majority when analyzing whether or not the written description is met were also discussed in the USPTO’s 2001 Written Description Guidelines and exemplified in the 2008 Revised Written Description Training Materials.  He states that one of these principles involves considering “whether the specification discloses a representative number of species, sufficient structure, and/or a sufficient correlation of function to structure.”  Director Kappos suggests that although the written description requirement may not be used in a vast majority of cases, it is nevertheless an important tool for Examiner’s to use when a patentee is attempting to claim more than what he/she has invented.  He specifically mentions the usefulness of written description as it is applied to claims reciting functional language, for example, when a genus claim uses functional language to define what species are encompassed by the claim.

 The Ariad case demonstrates a common problem in the chemical and biotechnology arts.  Typically, an invention is discovered at an early stage, at which point a patent application is filed.  If the invention shows promise, further research is performed, and additional information that may not have been disclosed in the initial patent application is now trying to be claimed.  As noted by Director Kappos, this can occur where a compound is disclosed but a claim directed to a broad genus encompassing the compound is pursued.  Such a claim may be rejected for lack of written description.  To the extent possible, it is generally good practice to include any relevant experimental information showing multiple species in the context of the invention at the time of initial filing of a patent application.

In case you don’t have enough to watch on TV, the USPTO launched a portion of its new Trademark Information Network where anyone can view news broadcast-style videos that cover important topics and can teach you about the various phases of the trademark registration process.  The site, which is not yet fully populated, will provide video walk-throughs of the entire trademark application process.  Examples of the videos which will be available include:

• Before You File – overview of the most important issues you should be aware of when filing a trademark application, including trademark availability searching, ownership information, differences between drawings and specimens, identifications of goods and services, and filing bases.
• Searching – use of the Trademark Electronic Search System (TESS) and an overview of the system and tips for how to use the system effectively.
• Applicant Information – focuses on what is meant by the term “applicant.” 
• Drawing Issues – focuses on what is meant by the term “drawing” and how to comply with the requirements for submitting a drawing to the USPTO.
• Goods and Services Issues – focuses on identifying the correct “goods and services” for filing in association with your application.
• Basis Information – provides specifics about the filing requirements for both Section 1(a), Use-in-Commerce, and Section 1(b), Intent-to-Use-in-Commerce, filing bases.
• Specimen Issues – provides examples of acceptable specimens and highlights the differences between a “drawing” and a “specimen.” 
• After You File – provides an overview of the most important issues you should be aware of after filing your application.  It covers such topics as using the USPTO’s electronic resources to keep your application current, who to contact with questions, and what you must do to avoid abandonment.
• Post-Registration Issues - provides an overview of the most important issues you should be aware of after your application has matured into a registration.  The video explains the required maintenance documents that you must file to keep your registration alive, as well as discusses an optional filing to enhance the legal strength of your registration. 

The Anchor in the videos is the Trademark Information Network’s Mark Trademan.  We will leave it to you as to whether his name is either a great coincidence or an attempt at humor.

The USPTO recently announced its new Ombudsman Pilot Program. The Ombudsman Pilot Program is designed to enhance the experience applicants and their representatives have in dealing with issues that arise during patent application prosecution.  To do so, the USPTO is providing personnel to help applicants identify, understand and overcome organizational roadblocks and act as an intermediary between the USPTO and applicants when problems arise.  In the context of this Pilot Program, the “Ombudsman” is meant to ensure that an applicant, attorney, or agent gets the assistance they need when the normal channels have not yielded that assistance.  More specifically, when there is a breakdown in the normal prosecution process, the Ombudsman Pilot Program is designed to provide a method for getting the process back on track quickly.

The Ombudsman Pilot Program does not supplant normal communication between applicants and the USPTO examiner assigned to the case. For example, when an applicant has a question about a specific application in prosecution and is unable to find the correct person to assist them or they are unable to obtain assistance from the examiner to whom the application is assigned, then the Ombudsman Pilot Program is the venue to use. 

In addition to resolving problems, the Ombudsman program will accept confidential complaints for issues which arise during prosecution and attempt to track their occurrence rate over time.  The Ombudsman Program Director will periodically review reports of the confidential complaints looking for trends or groups of complaints regarding the same or similar issues and will take action based on the trend or group of complaints without revealing the particulars of any individual complaints. 

To view the USPTO’s FAQs on the Ombudsman Pilot Program, click here.

The United States Patent and Trademark Office (USPTO) is considering making a change to pendency of provisional patent applications.  The change, if adopted, would somewhat extend the existing 12‑month provisional application period to 24-months.  This change would be implemented through the missing parts practice common to 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.  

Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding nonprovisional application in order to claim the benefit of the provisional application.  The proposed change would not alter this requirement but instead would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application.

Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration.  In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request.  Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees.

The USPTO is currently accepting comments on its proposal before considering it for implementation.  A copy of the USPTO Notice is available here.

A pilot program of the Trilateral (EPO, JPO and USPTO) PCT-Patent Prosecution Highway began January 29, 2010 and is planned to run for two years.  The program fast-tracks patent examinations in the EPO, JPO and USPTO for PCT applications receiving a positive written opinion of the International Searching Authority or the International Examining Authority from the EPO, JPO, or USPTO.  Such a positive opinion must come in the form of: (i) a written opinion from the ISA; (ii) a written opinion from the IPEA; and/or (iii) an IPER from the IPEA. 

In effect, the work product from any of these patent authorities (acting in its PCT capacity) serves as the basis for a petition to make special in the USPTO.

US Applicants my request participation by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP).  When filled via EFS-Web, the form is indexed as “Petition to make special under PCT-Patent Pros Hwy”.

On a related note, Applications may now be prepared in a Common Application Format (CAF) developed by the Trilateral Office.  This format streamlines direct filings in the EPO, JPO and USPTO where applications in this format are not subject to additional formality requirements.  For US applicants, the CAF goes beyond what is required in the US.  However, using the CAF can provide significant savings when nationalizing PCT applications in the EPO and JPO.  More information may be found at http://www.trilateral.net/projects/pct/CAF.html and http://www.wipo.int/pct/en/filing/caf_example.html.

As we previously discussed, the United States Patent and Trademark Office (USPTO) proposed significant changes to the Examiner count system on September 30, 2009.  Those proposed changes took effect on February 18, 2010.  As indicated in the USPTO press release (found here), the changes “place emphasis on complete and thorough initial examination, and are expected to decrease redundancy and encourage quicker resolution of issues in the patent application process.”

Among other things, the changes give the examiners more time for a first office action on the merits and time for examiner-initiated interviews, while reducing the credits received on requests for continued examination.  In order to gauge the effectiveness of the changes, the USPTO has launched a “Feedback Channel”.  The public now has an opportunity to provide comments and input to agency official regarding the new count system.