Posts Tagged ‘patent’

PTO Issues Expansive Ruling on Post Grant Review

26 Sep

The PTO has chosen the Director’s Forum, a moderated PR blog by David “IBM” Kappos to state that in PGR (post grant review) the PTAB (Patent Trial and Appeal Board) will review subject matter patentability, a court-defined (See the Bilski and Prometheus cases) prerequisite for issuance of a valid patent as a “condition for patentability” along with other statutorily defined conditions (see 35 USC 102, 103, 112). Presumably that will only occur when the petitioner for PGR raises the issue. The legal justification given by Kappos was somewhat shaky, although we expect correct, grounds. See . This was expressly issued to quell the commentators on Patently-O (see that suggested the PTO had no authority to review subject matter patentability in PGR under the AIA (America Invents Act, or as we more fittingly call it, the “Anti Inventor Act of 2011”).

We agree with IBM Kappos on this one, as it seems clear to us that the Supreme Court has in analyzing subject matter patentability under 35 USC 101 judicially added another condition of patentability, in effect another paragraph to 35 USC 102, that reads “h) or, the invention is an abstract idea, a law of nature, a mathematical formula, an intangible business method devoid of structure, or some other subject matter that has been determined by the Supreme Court to not be proper subject matter for a patent.”


Flaw in Google Patents – Non-citations (& non-prior art) listed as “Citations”

17 Aug

What is Google Patents up to??
I found an interesting anomaly with Google Patents while working with 6,425,764 for a prior post . Google Patents lists (see as “citations” on the patent “Overview”, 19 patent references, among them being two Hodges & Rothbaum patents that were cited under 35 USC 102e (effective as of their filing date to show invention prior to the applicant’s filing date which is presumed to be the date of invention unless shown to be earlier) and then removed following the applicant’s submission of a Rule 131 Affidavit proving the applicant’s date of invention was before those patents were filed . I know this from the file history. This is confirmed by looking at the front page of the patent itself (see only lists 5 patents as “cited references” That is, Google lists 14 non-citations as citations including two that were specifically held NOT to be prior art during prosecution of the patent – very wrong and misleading of Google Patents. Wonder why they do that!


More patent fee increases on the way. Still no Micro-Entity fees. How is that fair or smart?

23 May

“I am sometimes asked why we need the additional fee increase, given the 15 percent surcharge already in place and plans to implement a revised fee schedule by the first quarter of next year.

The answer is: leveling, cash flow, continuity — much like with any large enterprise. Think of the CPI adjustment as ensuring “bridge funds.” This planned CPI adjustment will provide a small but needed increase in funding, allowing the USPTO to continue reducing the backlog and pendency until our new fee schedule–which will provide long-term financial resources–is in place.”
-David Kappos, Director, US Patent and Trademark Office, May 14, 2012

Where are the micro-entity fee reductions that were mandated by the AIA 9 months ago? Answer: Delayed indefinitely by David “IBM” Kappos. Instead of the mandated 50% reductions,  15% increases for micro-entities went into effect as first order of business immediately on passage of the AIA (Anti Inventor Act of 2011). Likewise, the Fast Track For Fat Cats system of examination (where “money talks” when it comes to examination priority) went into effect right away in response to Big Business lobbyists (IBM?) Now Kappos is back asking for even higher fees for small and micro entities based on CPI. Meanwhile the mandated reductions for micro-entities are on hold for “consideration”. This translates into “Screw the little guy, we are working for IBM.” That means IBM and other Fat Cats get special treatment and “leveling” of their fees with those of small entities so they can send more jobs overseas and together with big foreign companies can further stifle American ingenuity and small American business. How is that smart for America, where most new jobs are created by small businesses, not IBM, which is busy shipping jobs overseas.

When will this madness end? Apparently not while IBM is running the Patent Office.


WIPO and EPO Get Even Cozier

03 May

Moving more and more toward multilateralism, the EPO and WIPO have embarked on a program to make their search and patent prosecution programs essentially the same. The purpose, lest anyone doubt, is to advantage EPO members relative to the rest of the world, i.e. the US, China, and India. However, we welcome this move as the US and WIPO already closely cooperate and this cooperation treaty will make it less likely that any of the 38 members of the EPO will go rogue on their patent laws.


Patent Examination – Roll The Dice, It’s A Matter of Luck

27 Apr

For years I have counseled clients that experienced examiners allow more patents quicker and inexperienced examiners often allow few or no patents. I have been prosecuting patents for 40 years now and I have never in all that time wavered from a belief in that unfortunate principle – get a senior examiner and you improve your chances of getting a patent, get a new examiner and you decrease your chances. Get a new examiner and you get someone afraid to allow an application for fear of making a mistake. Get a senior examiner and you get one who has seen enough inventions to have developed the confidence to know what is non-obvious to a PHOSITRA.

Now there is an empirical study confirming this is more than a perception, it is a fact.

This study is evidence in favor of switching to a registration system of patents than is inherently fair to all rather than an examination system that favors the rich and powerful who have the money to hire patent attorneys, rather than the individual inventors that are just getting by while creating the majority of great, world-changing inventions. I have been arguing for switch to a registration system for 25 years, but the majority of my colleagues work for big business or big firms and have their livelihood inextricably tied to the current scheme and are unwittingly corrupted by the system.  It is a delight to see a study like that of Dr. Shine Tu shine a light on the sad truth for Tu and You.


When an Invention is Not – Mayo v Prometheus – a Supreme error

15 Apr

A unanimous Supreme Court invalidated a patent on a diagnostic method for helping doctors safely administer thiopurine (TP) drugs that are used to treat autoimmune diseases such as Crohn’s disease and ulcerative colitis. Prometheus Laboratories (Prometheus) found that a certain compound 6TG could be administered with the TP drug and the level of 6TG in the blood measured with a specific level indicating more TP is needed and another specific level indicating less TP is needed. This was important to have enough TP to be effective but not so much as to be unsafe, as excessive dosage was potentially lethal, but had yet to be achieved because different people tolerated different amounts and different people required different doses to be effective. Prometheus solved that riddle with this invention. Specifically claim 1 of the patent  directed to a method of optimizing treatment of an immune-mediated gastrointestinal disorder had 2 steps, first administering a dose of certain medicine containing 6TG, second measuring the level of 6TG in the blood, and 2 wherein clauses, first that 230 pmol/ 800,000,000 red blood cells (“units”) indicated a need to increase TP dosage and second that 400 units indicated to decrease TP dosage. Prometheus licensed manufacture of a diagnostic kit based on the patent. That Prometheus invented this was not in doubt. Mayo Clinic wanted to use the patented method without paying Prometheus so began selling kits and challenged the patent on the basis that it was an unpatentable as claiming a law of nature. That Prometheus discovered this alleged “law of nature” was not in dispute. That they spent lots of money inventing it was not in doubt. That it was valuable was not in doubt. That it was a major advance in TP treatment methodology was not in dispute.  Yet, the trial court nevertheless agreed with Mayo that it impermissably claimed a law of nature and was invalid. However, on appeal the Federal Circuit (twice) held it patentable. The Supreme Court reversed, and went unanimously for Mayo, declaring the patent invalid as claiming a law of nature.


Was it correct or a travesty of justice?


The reviews have been mixed, with Patently-O, and biotech blogs publishing posts suggesting the Supreme Court blew it as the claim was really to a diagnostic method not a law of nature, and may invalidate all diagnostic method patents and medical treatments patents and will reduce the incentive to develop such treatments and thus slow the progress of medical science.
On the other hand, the anti-patent lobby is rejoicing, saying this is good because such patents lock up life-saving medical treatments and make medical care much more expensive and this will encourage development of new treatments utilizing the methods declared unpatentable.

It’s a hard case with both sides having good points. We join those concluding the Supreme Court blew it. The founding fathers already decided oppositely when they created the patent system, and the first patent was to a method that merely claimed a law of nature, that heating soda ash a second time would give a higher purity of potash. The founding fathers were Deists and individualists who believed in a natural rights theory of property, namely that property comes naturally as the fruit of labor and not from a King or Church, and that intellectual property rights are the rightful fruit of original creative intellectual labor and serve as a just reward for the effort of inventors. They also believed that exclusive manufacturing and sales rights belong rightly to the person(s) who invented the thing being made or sold, because when invented it was solely in the mind of that person unknown to the world and thus actually in the inventor’s exclusive control, i.e. his or her “intellectual property”. To encourage inventors to give their inventions, their “intellectual property” to the public, James Madison proposed that the Government grant patents to the first and true inventor rather than, as King George did, to some special friend or rich patron of the King/Government who really did not exert the effort to create the item being patented. Thomas Jefferson opposed the issuance of patents at all, contending that the system would be corrupted by Government and patents end up going to the big, wealthy and powerful and thus used by Government and the wealthy to oppress the people. The compromise was that patents would go to inventors after reasonable examination to assure that it was the true and first inventor that got the patent and no one else such as a friend of Government. This approach has served the US well for 222 years since 1790, but will be ditched next March pursuant to the Anti-Inventor Act of 2011 (officially misnamed the America Invents Act and commonly called “Patent Reform”) in favor a system where the first and true inventor does not get the patent but rather the first one to file at the US Pat. & TM Office claiming to be an inventor. The first and true inventor loses out unless he or she has proof of derivation by the one who filed, but such proof is in the possession of the one who derived and thus challenges will be ineffective and pointless.
That means the fat cats will get the patents and the real inventors will lose, which gets us close to what Jefferson predicted.

Mayo v Prometheus brings us yet another step closer to abandoning the patent system envisioned by the founders, as it prevents the patent reward going to the inventor and instead allowing big pharma to steal the invention without rewarding the inventor. When Prometheus came up with its discovery, it chose to file a patent disclosure giving the invention to the public in return for the limited period of exclusivity provided by the patent system. Prometheus viewed the incentive of the patent system as worth disclosing its invention rather than keeping it secret. Jefferson likely agreed with Madison on setting up a patent system because he agreed with Madison that otherwise inventors might go to their graves with their invention and the public thus be deprived of the invention, but that a patent system as we have it would not only reward the creative effort of the inventor to encourage them to invent but would also reward the inventor for disclosing his invention. Mayo v Prometheus tells the inventor of a diagnostic method to keep it secret to keep possession of it rather than lose it by disclosing it, and Mayo v Promethius does this by preventing the patenting of the method.

It is hoped that this erroneous and counterproductive interpretation of the patent system will be overruled by Congress in new legislation. It is also hoped, but not likely, that the best Congress money can buy will go back to first to invent so the vision of Madison and Jefferson can be kept alive for the benefit of America as the technical leader of the world. Unwittingly, the Supreme Court is killing our technical edge, as did Congress with the Anti-Inventor Act of 2011

The natural rights theory on which the patent system was founded is now under attack. Anti-patent activists claim patents retard rather than promote the progress of science. Small inventors correctly contend that patents are a great and necessary equalizer that do not depend on how big, rich or powerful you are, and which should reward their risk-taking so as to encourage them to risk inventing as they develop the majority of new products. In effect the patent system requires the inventor to give the invention to the public in return for an exclusive lease to the invention for about 17 years (20 from filing, less about 3 years of red tape at the US Pat & TM Off). This is so because at the end of that time the invention becomes public domain, free for everyone and anyone to use. That exclusive lease, that patent, can be very valuable to the inventor if the invention is very valuable. And, the invention thus given to the public can be very valuable forever, as those whose lives are saved by the lowered cholesterol from use of atorvastin calcium (Lipitor) which just came off patent this year can attest.

Here, the Supreme Court misses the point that the patent system is intended to encourage inventors to give their invention to the public and to reward their risk taking in making the research discoveries that leads to such discoveries as the safe way to administer this valuable medical treatment. Safe administration of TP had alluded researchers until this invention was made. Would Prometheus have invested the money to invent this if it knew Mayo could reap where it did not sow and take the invention for free? Arguably not. How many future diagnostic methods will now go to the grave with their inventor as a result of this? How many future diagnostic methods will be missed due to lack of incentive to invest in R&D to develop them? We will never know, but really it is our loss, and it is one that the founding fathers sought to prevent 222 years ago only to have the Supreme Court unanimously kill the goose that laid the golden eggs in diagnostic medical methods.


The “No-Patent-For-You” Office?

28 Feb

Reports are surfacing of a disturbing practice of some SPEs (Supervisory Primary Examiners) to NEVER allow a patent to a business method unless ordered to do so by the PTAB (Patent Trial and Appeal Board).  And, those have up 86% of their rejections reversed on appeal by the PTAB.  This is no longer just conjecture, as a recent article by Eugene Quinn at points out.


AIA – suggested practice for conflicting applications

28 Feb

Here is a key piece of practice advice for transitioning to FTI on 2013-03-16. How you handle your cases procedurally could make the difference between getting a patent and not getting a patent, or between infringing and not infringing.

If prior to effective date (2012-03-16) you are first to invent but second to file, you want to monitor for post 3-16 CIPs, as you would not want to abandon your app if there is one.

If prior to effective date, you were second to invent, but first to file, you want to file a CIP after 2013-03-16 and monitor for abandonment of the second to file application, as that would remove it an obstacle to patentability due to the prior inventor abandoning his right to that date of invention.

For a detailed explanation of this see the following article:


Grace period chart – worldwide

28 Feb

The Patentology blog published a nice article with a chart on grace periods in major countries.


Great Article by Kenneth Lustig of IV on why NPEs are neither new nor bad, but rather old and good

28 Feb

Lustig article on Linked In’s Licensing Executive Society Int’l group site.

Here is a great article by one of the key figures at Intellectual Ventures. He is very convincing about how NPEs are a good thing and that the current smart phone patent wars are not unusual, considering that the original telephone patent wars involving

Alexander Graham Bell and others were fought in 587 patent suits. The fact is that when world-changing disruptive technology like the smart phone is developed the financial incentives are enormous and the incremental advances that led to the commercialization of the technology have to be sorted out to determine how the financial bonanza pie is split.