April 2004

Petitions filed under MPEP 1002.02(b)

It appears that the USPTO had (or is having) some office trouble handling petitions filed under MPEP 1002.02(b). If you submitted a 1002.02(b) petition after June 20,2003 that has not been answered, the Office invites you to send them an "email alert."

The email should be sent to: petitions@uspto.gov
The email should include: Application number; Date of petition; and CFR code under which the petition was filed.

A single email may be used for all of your petitions. Other information in the email will not be considered. A sample email is shown in the notice. (PDF); EFS Help Desk: (703) 305-3028

Note: There are at least three types of petitions 1002.02(b), (c), and (r).

(b) petitions are decided by the office of the deputy commisioner for examination policy.
(c) petitions are decided by the technology centers.
(r) petitions are decided by the office of publications.

Some examples of 1002.02(b) petitions include: petitions to revive, petitions for express abandonment, etc. (a total of 32 types are listed in the MPEP).

PTO Address

The USPTO has announced that revisions have been made to the list of mail stops.

The mail stops that should no longer be used are: Mail Stop Application Number, Mail Stop CPA, Mail Stop Design, Mail Stop Non-Fee Amendment, Mail Stop PGPUB-ABD, Mail Stop Patent Application, and Mail Stop Provisional Patent Application. Mail Stop Non-Fee Amendment has been changed to Mail Stop Amendment.

In addition, Mail Stop PGPUB-ABD has been changed to Mail Stop Express Abandonment and all requests and petitions for an express abandonment under 37 CFR 1.138 should be directed to Mail Stop Express Abandonment or transmitted by facsimile to (703) 305-8568. Lastly, Mail Stop L&R and Mail Stop Post Issue have been established.

Additionally, a new mail stop has been established: Mail Stop Post Issue. (PDF)

Correspondence that should be directed to Mail Stop Post Issue includes correspondence in applications that have issued as a patent, such as requests for changes of address (other than a fee address, which should be addressed to Mail Stop M Correspondence), powers of attorney, revocations of powers of attorney, withdrawal of attorney, and submissions under 37 CFR 1.501.

More Patent Office Address Info Here.

Structured Claim Drafting

Stephen Becker has a useful technique for improving the quality of your claims. (Article).

1. List the elements sought to be protected and their interrelationships.
2. Analyze each element asking:
a) Is the element necessary for preserving functionality?
b) Is the element needed to distinguish over the prior art?
c) Can the element be generalized in a way that retains claim novelty?
d) Can elements be combined in a way that retains claim novelty?

3. Review the entire claim, discarding any words not absolutely necessary for functionality or novelty.

According to Stephen:

Sanitizing the wordage, generalizing terminology and combining claim elements will improve the likelihood of literal infringement, because a competitor will find it more difficult to argue persuasively that a claim element is missing, from its competitive product or service.

Independent IP Firms Alive and Well

IP Worldwide recently ran an article questioning whether independent IP firms are viable in today’s marketplace. (Discussing the fall of Lyon & Lyon). The APLF has offered a response to the article.

The fact remains that very few large general practice firms can offer the depth and breath of expertise, in litigation, prosecution or counseling service, that are the standard offerings of independent IP firms. If the large general firms have an advantage, it is their willingness and ability to devote large budgets to advertise and promote their services. Few independent IP firms have (or desire to spend) the resources that many large general firm devoted to advertising and promoting their IP departments. Of course, those large advertising budgets also give rise to higher billing rates, a separate phenomenon which clients are also coming to recognize.

SmithKline Beecham v. Apotex
(Part IV)

In an updated concurrence, J. Gajarsa adds firepower to his disagreement with the newly defined experimental use exception:

According to the majority, SKB’s testing of PHC’s performance as a human antidepressant was not necessary to reduce PHC to practice. The majority does not make clear, however, why testing a light pole’s performance at illumination under severe weather conditions was necessary to reduce the light pole to practice, Manville, why testing an all-weather activity mat’s performance in harsh weather was necessary to reduce the mat to practice, Seal-Flex, or why testing a floating dock’s performance in rough, choppy water was necessary to reduce the dock to practice, EZ-Dock.

In all four cases, the claims at issue were product claims that did not claim the tested features explicitly. In all four cases, the patentees possessed the claimed product in substantial enough form to test their products’ performance at their intended functions. The majority does not explain why only one of these four patentees had reduced its claimed invention to practice sufficiently to preclude the experimental use doctrine.

Read Part I, Part II, Part III, and part IV.

Patent Litigation: preventive measures

The Douglas J. Kline has a nice article in the Technology Review that outlines a typical patent infringement suit. Kline also gives three tips for preparing for litigation well in advance:

1) Thoroughly and diligently prosecute your patents.
2) Learn about your competition and draft patents that cover competitor’s technology.
3) Identify competitor’s patents early in your product development and consider design-arounds.

See my earlier posts on claim drafting tips here and here.

SmithKline Beecham v. Apotex

SmithKline Beecham v. Apotex: The concurrence.

Judge Gajarsa filed a Concurrence in SKB based upon his sua sponte analysis of Section 101. SKB had argued that its claimed compound (PHC hemihydrate) had been seeded in the environment and, once seeded, will naturally contaminate any synthetically made PHC anhydrate.

J. Gajarsa agreed that the manufacture of PHC hemihydrate could be “a natural physical process” occurring “under normal climactic conditions and with no human intervention,” and thus found that it was an unpatentable process of nature.

In short, patent claims drawn broadly enough to encompass products that spread, appear, and “reproduce” through natural processes cover subject matter unpatentable under Section 101–and are therefore invalid.

Finally, the Concurrence derided the Majority’s approach, saying that it has created “unfortunate precedent that will complicate future considerations of the experimental use doctrine.”

Read Part I, Part II, Part III, and part IV.

Claim Drafting Tips – Patent Quality

One reason that corporations continue to obtain patents is that a strong patent portfolio can alter Wall Street’s outlook on the portfolio holder. During any merger or large acquisition, the associated patent portfolios should be given some review. In some instances, however, the review may simply take the form a Patent Quality Rating. PatentRatings is one company that calculates and sells such ratings. (U.S. patent 6,556,992).

The quality ratings are purely objective and can be based on a number of factors. Here are some tips to increase your rating:
1) Increase the number of claims.
2) Decrease the length of each claim.
3) Increase the length of the specification.
4) File patent as a continuation or CIPs.
5) Vary the type of claims.
6) Cite more references in your IDS.
7) Cite non-patent references or foreign patents.
8) Limit patent prosecution history.

FYI: U.S. Patent 5,583,591 has been identified with an A+ rating.

Wood Panel Clamp Inventor

Lawrence Devers from Pittsburg, Kansas (my hometown) has recently patented a new hand-operated wood panel clamping tool. (U.S. Patent No. 6,726,192).

Wood panels for cabinet doors are typically constructed from a number of boards that are glued together edge-to-edge to form the complete panel. The panel may then be sanded or planed flat and milled out or routered to produce a design on the front face of the panel. Small cabinet-making shops typically lack a good way of forcing the boards into flat alignment with one another and holding them in such alignment while the panel is being squeezed from the sides by pipe clamps or the like until adhesive between edges of the boards sets up. Typically, cabinetmakers may have to use mallets to pound the boards into place while they adjust and readjust the pipe clamps at various locations along the length of the boards. It can be a slow, tedious, inexact, and sometimes frustrating procedure.

Devers’ invention may work to solve this problem.

Patent Office Backlog

From Judy Newman at the Wisconsin State Journal:

The United States could have a backlog of 1 million patent applications awaiting approval within five years if Congress doesn’t pass a bill that would boost funds for the nation’s patent office, deputy director Jon Dudas said Monday in Madison.

According to Dudas, USPTO has 470,000 patent applications waiting for action with an average processing time of 27 months. The funding bill has passed the House, but is awaiting action in the Senate. S. 1760 (PDF).

Revision of Patent Term Adjustment

37 CFR 1.705(d) has been amended to provide that a patentee may request reconsideration of PTA within 2 months of issuance if the patent indicates a revised PTA relative to the PTA indicated on the notice of allowance.

The purpose of § 1.705(d) is to provide patentees with an avenue to obtain reconsideration of the patent term adjustment indicated in the patent when the patent term adjustment indicated in the patent differs or should have differed from the patent term adjustment indicated in the notice of allowance due to events occurring after the mailing of the notice of allowance. Section 1.705(d) is not an avenue for patentees to seek review of issues that were raised, or could have been raised, in an application for patent term adjustment under § 1.704(b).

The changes also clarify that under certain circumstances, a panel remand by the Board of Patent Appeals and Interferences (BPAI) shall be considered a decision for purposes of patent term extension or adjustment.

Effective date: May 24, 2004. (PDF)