No Patent for Claimed Method of Patenting

In 2000, patent attorney Jeff Grainger filed his provisional application for a "computer implemented method for securing intellectual property rights." The claimed method consisted of a system that used an electronic information disclosure form that actively prompted users to provide invention-related information and then automatically converting the information to patent application format. The dependent claims focused on specific prompts – such as "best mode" and "enablement" information.

The first rejection came in 2005, followed by a final rejection in 2006 and the BPAI appeal finally decided in 2011.

The key prior art cited by the examiner was the old ePave filing system.

In the BPAI appeal, Grainger's attorneys at the Kilpatrick Townsend firm had argued that the claimed active prompting for best mode or enablement information was a non-obvious advance over the prior art. The board rejected that argument – explaining that one of skill in the art knows the statutory requirements for a patent application and therefore "ePave's data fields for submitting the Specification, with their textual cues that the Specification is asked for" renders the claimed invention obvious.

At that point the applicant gave-in and has allowed the application to go abandoned – apparently without further continuation.

Grainger is now a partner at the early-stage start-up and investment group known as The Foundry. Back in 2000, he was a founder of First to File, Inc., which he then sold and which now holds the intellectual property rights.

19 thoughts on “No Patent for Claimed Method of Patenting

  1. “anybody know…”

    How could this possibly be relvant to anything? Are you thinking of taking on some pro bono work? I mean more than you already do from your “clients” (e.g., hobos, poets, malconents, and the like).

  2. Yea! So, the PTO has finally done what it was supposed to do and reject computer software based on 103 when appropriate as it was here.

    Have any of you ever considered that all of this 101 nonsense of Benson has done nothing but caused massive trouble by focusing efforts on 101 arguments when properly the arguments are 102, 103, and/or 112 arguments.

    So, Richard Stern, “J.” Douglas, “J” Stevens, and the need to be impeached three of Cybersource have done nothing but obfuscated the issues.

    If the PTO back in the time Benson had been told, figure this out instead os whining and trying to resolve the problem with 101 we would not now have all these problems.

    Benson is intellectually dishonest, morally wrong, scientifically and technically wrong, and policy based.

    Get over the 101 issue and get to work with 102, 103, and 112 issues. That way we can focus on innovation.

  3. 2007/0154871 that guy lit up every stat grounds of rejection possible save 103 because I guess the examiner figured 102 was enough.

  4. Shame. That could have been almost as useful as a process of love (2003/0152907), a theory of time / life (2007/0154871), or a marriage proposal (US 2007/0078663). Come on, PTO! People need exclusionary rights to stuff. Surely there is a market demand for immortality…

  5. see: 6049811 “Machine for Drafting a Patent Application and Process for Doing Same”; this may be prior art.

  6. Using stock market event studies around patent lawsuit filings, we find that NPE lawsuits are associated with half a trillion dollars of lost wealth to defendants from 1990 through 2010, mostly from technology companies. Moreover, very little of this loss represents a transfer to small inventors.

    Reminds me: anybody know the average annual income and/or average wealth of “small” inventors and/or “small” businesses who rely on the patent system?

  7. 6, thanks for that link to that troll research paper, the Abstract of which says:
    “In the past, non-practicing entities (NPEs) — firms that license patents without producing goods — have facilitated technology markets and increased rents for small inventors.
    Is this also true for today’s NPEs? Or are they “patent trolls” who opportunistically litigate over software patents with unpredictable boundaries? Using stock market event studies around patent lawsuit filings, we find that NPE lawsuits are associated with half a trillion dollars of lost wealth to defendants from 1990 through 2010, mostly from technology companies. Moreover, very little of this loss represents a transfer to small inventors. Instead, it implies reduced innovation incentives.”

  8. In the BPAI appeal, Grainger’s attorneys at the Kilpatrick Townsend firm had argued that the claimed active prompting for best mode or enablement information was a non-obvious advance over the prior art.

    Meanwhile applicants with non-ridiculous arguments were forced to wait while this baloney worked its way through the system.

    Thanks. Thanks a lot.

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