Bilski v. Doll: Round I of Amicus Briefs

March 5, 2009Supreme Court

Bilski v. Doll (on petition for writ of certiorari 2009)

In a 2008 en banc decision, the Federal Circuit affirmed a Patent Office ruling that Bernard Bilski’s claimed method of hedging the risk of bad weather through commodities trading was not patent eligible under Section 101 of the patent act. The Court applied a “machine-or-transformation test” as the only test to be used in determining whether a claimed process is eligible for patenting under § 101. The decision holds that a claimed process either (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing. Although the Court identified the Bilski test as the only test, it added two corollaries: (1) the addition of a mere field-of-use limitation without other meaningful limits on claim scope will not render a method claim patent eligible; and (2) insignificant extra-solution limitations will not render a method claim patent eligible.

Bilski has petitioned the Supreme Court to hear its appeal and look at the question of patentable subject matter for the first time in a generation. Diamond v. Chakrabarty and Diamond v. Diehr together opened the door for broader patent eligible subject matter. Notably, Justice Stevens – author of the Diehr dissent – is the only justice still on the bench. Bilski’s petition asks two questions:

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

The first round of Amicus briefs – those supporting the petition – have now been filed. The PTO’s briefs and briefs in opposition to the petition are due in early April.

Amicus Briefs Supporting the Petition (I have not reviewed all of these, but wanted to post them for public consumption):

AIPLA: “There is no support in this Court’s precedent for the Federal Circuit majority’s conclusion that this Court enunciated a definitive ‘machine or transformation’ test for determining the patent eligibility of a claimed process under § 101.” The statute should be interpreted to promote new areas of technology. File Attachment: aiplaamicus.pdf (148 KB)
Boston IPLA: The “machine-or-transformation test” conflicts with Supreme Court precedent. File Attachment: bostonamicus.pdf (142 KB)
Borland Software: File Attachment: borlandamicus.pdf (158 KB)
Koninklijke Philips Electronics: File Attachment: philipsamicus.pdf (162 KB)
Anne Barschall: The Supreme Court appears to have some “prejudice against electronic devices [as evidenced by] both Benson and Morse.” Its not magic, it is engineering. You can’t see electricity or quantum particles but that does not make them abstract ideas. File Attachment: barschallamicus.pdf (217 KB)

Medistem: Bilski has considerable bleed-through to non-business method patents. File Attachment: medistemamicus.pdf (109 KB)
Accenture and Pitney Bowes: The Federal Circuit's "only one test" rule is too rigid and goes against the Supreme Court's precedent that demonstrated flexibility in the Section 101 inquiry. [DDC Comment: The flexibility theme is strongly present in the past several years of Supreme Court patent cases. In eBay, MedImmune, and KSR, the Supreme Court saw a rigid Federal Circuit rule and made it more flexible.] File Attachment: accentureamicus.pdf (122 KB)
Franklin Pierce Law Center: File Attachment: fplcamicus.pdf (128 KB)
John Sutton: File Attachment: suttonamicus.pdf (120 KB)

PTO’s Current Examination Standards for Applying Bilski

March 5, 2009USPTO News

DATE: January 7,2009
TO: Technology Center Directors Patent Examining Corps
FROM: John J. Love
SUBJECT: Guidance for Examining Process Claims in view of In re Bilski

Recently, the Court of Appeals for the Federal Circuit issued an opinion affirming a final decision by the Board of Patent Appeals and Interferences sustaining a rejection of claims because they were not directed to patent-eligible subject matter under 35 U.S.C. § 101. See In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008). The court's opinion clarified the standards applicable in determining whether a claimed method constitutes a statutory "process" under § 101. Office policy is consistent with the court's opinion in Bilski.

We are presently studying the full ramifications of the court's clarification and other recent developments in the law. In view of the Bilski decision, the guidelines are being redrafted to reflect the most current standards for subject matter eligibility. Until the guidelines are completed, examiners should continue to follow the current patent subject matter eligibility guidelines appearing in MPEP 2106, with the following modification.

As explained in a memorandum dated May 15, 2008, entitled "Clarification of 'Processes' under 35 USC § 101", a method claim must meet a specialized, limited meaning to qualify as a patent-eligible process claim. As clarified in Bilski, the test for a method claim is whether the claimed method is (1) tied to a particular machine or apparatus, or (2) transforms a particular article to a different state or thing. This is called the "machine-or-transformation test". It should be noted that the machine-or-transformation test from Bilski is slightly different from the test explained in the May 15 Clarification memo, which was based on the Office's interpretation of the law prior to Bilski.

There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

For guidance, examiners are encouraged to consult their managers and to consult additional training materials as they are developed.

[Read the memo]

Patent Attorney – Law Firm – Reston, Va.

March 2, 2009- US - MidAtlantic and South, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

Patent Attorney – Law Firm – Houston, Texas

February 27, 2009- US - Southwest, - US - West, Emp - Law Firm, Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

Reinstating Patents After Failure to Pay Maintenance Fee

February 26, 2009Revival

In a prior post, I discussed payment of maintenance fees. Ordinarily, three post-issuance maintenance fees must be paid in order to keep the patent in force for its entire term. A large entity pays $980 3.5 years after issuance; $2,480 7.5 years after issuance; and $4,110 11.5 after issuance. If the fee is not paid then the patent will expire at the next 4, 8, or 12 year mark. In that 6-month interim (e.g., between the 3.5 year due date and the 4 year expiration date), the fee can still be paid with a $130 surcharge. Once the patent expires, it can still be reinstated if the fee is paid along with an additional surcharge for either unavoidable failure to pay the fee ($700) or unintentional failure to pay the fee ($1,640). In addition, the Patent Office (PTO) must accept your explanation for the delay. Under 35 U.S.C. 41(c), revival for unintentional expiry is only available within two years of the expiration date. Later revival requires proof that the failure to pay the fee was unavoidable - a difficult standard to meet.

The PTO publishes reinstated patents each week in the Official Gazette. Using those publications, I compiled the following table showing the number of patents being reinstated each year. As the chart show, the number of reinstated patents has risen over time. The absolute number of issued patents is also rising, but at a slower rate. Thinking about this as an applicant's 'error rate' - for the past decade, about 2.5 percent of patents that expire due to non-payment of maintenance fees are later reinstated. This is an incredibly high error rate for a purely ministerial function of paying a fee.

I pulled Patent No. 6,798,824 from the list of reinstated patents that was published in the February 24, 2009 Official Gazette. That patent originally was assigned to InterDigital and is directed to a particular type of spread spectrum communications device. The patent issued on September 28, 2004 and expired four yeas later due to failure to pay the maintenance fees. Realizing its problem, the patent holder filed a petition to accept late payment of maintenance fees on December 19, 2008 and the petition was granted on January 30, 2009. (Note - the petition is not available in PAIR).

Note:

Cite, Dennis Crouch, Reinstating Patents After Failure to Pay Maintenance Fee, Patently-O, https://patentlyo.com/patent/2009/02/reinstating-pat.html (Feb. 26, 2009). See also, Dennis Crouch, USPTO Maintenance Fees, Patently-O, https://patentlyo.com/patent/2009/02/uspto-maintenance-fees.html (Feb. 23, 2009); Dennis Crouch, Formalism at the Federal Circuit: Equitable Plea for Revival is Rejected, Patently-O, https://patentlyo.com/patent/2008/06/formalism-at-th.html (June 10, 2008) (discussing the Federal Circuit's decision in Burandt v. Dudas); Dennis Crouch, Unavoidable Delay: Ignorance as an Excuse?, Patently-O, https://patentlyo.com/patent/2007/08/unavoidable-del.html (Aug. 15, 2007) (discussing the FemSpec case where the DC district court refused to revive a patent - holding that the unavoidable delay standard has a due care element).

Congress Looks to Review Patent Examiner Goals

February 25, 2009USPTO News

The current pending omnibus appropriations bill would provide $2.01 billion to the PTO so long as all of that money is obtained by the PTO through fees. [LINK]. As Greg Aharonian noted in his PATNEWS, none of the $800 billion bailout money is being directed toward improving the patent system.

Applying Supreme Court Precedent

February 25, 2009Supreme Court

Carlsbad Technology v. HIF Bio (Supreme Court 2009)

Patently-O Bits and Bytes No. 92

February 24, 2009Supreme Court, USPTO News

New Commerce Secretary: Gary Locke. Former Washington State Governor, Partner at Davis Wright Tremaine. Gov. Locke is Chinese American and co-chairs the firm's China practice. He is also an Eagle Scout, a Yalie, and a Terrier.
USPTO Deferred Examination Comments Due February 26:
- http://www.uspto.gov/main/homepagenews/2009feb09.htm
- https://uspto.connectsolutions.com/p91717658/ (Watch the Roundtable discussion)

Cert Denied: The Supreme Court has denied certiorari in the following patent related cases.
- Singleton v. Volkswagen (E.D. Texas Venue Case where 5^th Circuit ordered transfer).
- Forest Labs v. Caraco (Declaratory Judgment standing).
- FTC v. Rambus (Duties of a patent holder in standard setting negotiations).
- Burandt v. Dudas (When is a failure to pay "unavoidable").
- Apotex v. Roche (reverse doctrine of equivalents).

Judge Linn recently gave a Keynote address to the PTO examiner's corps. [Read it here]. Judge Linn started as a patent examiner in 1965. The following are some quotes from the full speech:
- "Your job is much harder now than it was for me all those years ago. The technology of today's inventions is immensely more complex than ever before. The length and breadth of applications is greater. The volume of prior art is much larger. The legal issues are more intricate and harder to comprehend. And the law is in a continual state of change. Compounding all of this is the perception among some individuals that the work of the PTO in general, and the examiners in particular, is somehow of secondary importance and questionable quality. It is commonly said that the real action in patents is in private or corporate practice."
- "Your job is to grant patents—valid patents. And that takes a combination of skills, reasoning and informed judgment. The Examiner's task is to assess the patentable merits of each invention, as presented, and to grant patents where patents are due. No applicant wants an invalid patent. Similarly, no examiner wants to grant an invalid patent. Thus, both the applicant and the examiner play parallel and complementary—not contradictory— roles in seeing to it that valid patents are issued."
- "[R]eading legal decisions, particularly those of the Board and the Federal Circuit, is not only the best way to learn how to make the tough decisions you are regularly called upon to make, but also the best way to make your job easier and more enjoyable. You might ask, "why should I bother to read decisions of the Board and the Federal Circuit? After all, I have all the guidance I need in the MPEP, and I don't have time to spend reading other cases that have nothing to do with me." The answer is that the cases bring to life the statutes and rules you are required to apply and give you real world examples of how those statutes and rules apply in similar cases. The MPEP has some guidelines, but they are just a sampling and cannot possibly reflect the full range of claims and circumstances you face every day. Keeping up with the law by reading decisions of the Board and the Federal Circuit will allow you to master your craft and will result in your standing out from your peers."
- "The last point I want to make is to not forget about §112. … [I]t is not correct to trivialize or ignore these kinds of Informalities [such as claims that are vague and indefinite or lacking in support in the written description]. Indeed, these kinds of problems affect not only the applicant but the public as well in a significant way. … In case after case before my court, the central debate revolves around the meaning of claims terms that, for example, were added during prosecution and do not appear anywhere in the written description. For those cases, the meaning of the claim limitation has to be inferred from other words, leaving the issue open to unnecessary dispute and leading frequently to protracted and costly litigation. You have the authority and the responsibility to not let that happen and to insist that applicants use words in the claims that find unambiguous and full support in the written description."

USPTO Maintenance Fees

February 23, 2009Revival, USPTO News

A large portion of PTO revenue comes through applicant’s payment of maintenance fees. Under the current fee structure, three post-grant maintenance fees must be paid in order to keep a patent from prematurely expiring. A large entity pays $980 3.5 years after issuance; $2,480 7.5 years after issuance; and $4,110 11.5 after issuance. If the fee is not paid then the patent will expire at the next 4, 8, or 12 year mark. In FY08, the PTO reported over $500 million in revenue from maintenance fees.

USPTO Maintenance Fees

February 23, 2009Revival, USPTO News

Patent Office is Looking for New Leadership

February 17, 2009USPTO News

The PTO is not planning to wait until a new Director is appointed before filling other key management slots. Two positions are listed on the PTO job board: (1) Deputy Commissioner for Patent Examination Policy; and (2) Patent Examination Policy Advisor. I believe that the Deputy Commissioner position will fill the spot left by John Love who is reportedly retiring at the end of this month. Pay is between $117k and $177k. For the right person, I will also throw-in a few free favorable Patently-O posts. Seriously, this is one of the top non-political slots at the PTO and a true expert is needed. The Patent Examination Policy Advisor is slightly lower in rank, but will also serve an incredibly important role at the PTO in "providing professional leadership and direction" in the Office of Patent Legal Administration (OPLA). OPLA is the office where the MPEP is written and new rules are drafted.

Survey Results: Next PTO Director

February 14, 2009USPTO News

The Patent Bar has spoken – overwhelmingly choosing Todd Dickinson as the choice for the next director of the US Patent and Trademark Office. Dickinson is now leading the AIPLA after leaving his post as IP Director of GE. Previously, he was PTO director under Clinton and a partner at the Howrey firm.

IP Technology Specialist – Small Corporation – Cambridge, Mass.

February 13, 2009- US - Northeast, Emp - Corporate (in-house), Tech - Any / Other, Tech - Biotech, Work - Patent Prosecution

Alnylam Pharmaceuticals, Inc., seeks a Technology Specialist to join our Intellectual Property team. The position will involve working closely with scientists and management to secure intellectual property for inventions worldwide. The position requires drafting and prosecuting patent applications, patent and literature database searching, reviewing and evaluating new invention disclosures and supervising scientific notebook documentation process.

Responsibilities:
• Prepare, file and prosecute patent applications worldwide.
• Coordinate with and oversee outside counsel in the preparation and prosecution of patent applications.
• Communicate with inventors in the preparation, filling and prosecution of patent applications.
• Conduct patentability assessments.
• Support intellectual property opinion work and landscaping efforts.
• Conduct intellectual property training sessions for in-house personnel.
• Participate in due diligence with in-house and outside counsel to evaluate IP portfolios.
• Supervise scientific notebook documentation process.

Qualifications:
• 2-5 years of in-house or law firm experience in the preparation and prosecution of patent applications, freedom-to-operate, and validity and infringement analysis in the chemical sciences.
• Undergraduate degree in chemistry with a strong preference for an advanced degree in organic/nucleic acid chemistry.
• Preferably licensed to practice before the U.S. Patent and Trademark Office.
• Excellent writing, analytical and communication skills.
• Familiarity with scientific and intellectual property databases and use of the same.
• Organized, independent, detailed oriented, capable of working under pressure and on multiple tasks.
• Enthusiastic and works well in a team environment.

Contact:
To apply, please visit www.alnylam.com/careers. Alnylam Pharmaceuticals is committed to a diverse workplace.

Additional Info:
Employer Type: Small Corporation
Job Location: Cambridge, Massachusetts

In Search of a Commerce Secretary

February 12, 2009USPTO News

According to news reports, Senator Gregg (R-NH) has withdrawn his nomination as Secretary of Commerce after indicating that he could not fully support President Obama's initiatives. I expect that a permanent PTO Director will not be nominated until the Commerce post is filled. President Bush did not nominate his first PTO Director (Jim Rogan) until May of his first year in office (2001). Clinton nominated Bruce Lehman in April 1993.

Deferred Examination: PTO Roundtable

February 12, 2009USPTO News

Today in the PTO roundtable on deferred examination, several important points have been made (some of which directly relate to deferred examination):

Survey: Next Patent & Trademark Office Director

February 10, 2009USPTO News

Patently-O Bits and Bytes No. 91

February 9, 2009USPTO News

Statistics on the Use of Means Plus Function Language: Thus far in 2009 (1/1/2009 – 2/8/2009) the PTO has issued 17,206 patents. Of those, only 12% (2060) have a “means for” clause in the claim language. Looking back one decade, 24% of patents issued in January 1999 included a “means for” clause in the claim language. Looking back two decades, 34% of patents issued in January 1989 included a “means for” clause in the claim language. Looking back three decades, 40% of patents issued in January 1979 included a “means for” clause in the claim language.
New Funny Blog: http://courtoons.wordpress.com/ by appellate attorney David Mills
Watch The Symposium: The hardworking folks at Santa Clara’s Computer & High Technology Law Journal (CHTLJ) have posted materials and video from their conference two weeks ago. Those of you who have practiced before Judges Whyte or Ware will certainly enjoy the tribute video. [LINK] [The best portion begins at 11:20 in the Whyte video].
PTO Transparancy: Readers submitted two additional suggestions for PTO Transparancy
- The PTO should calculate and publish the expiration date of each patent.
- The PTO should publish reexamination certificates so that they are searchable. [Via NIPPER]

No No Words: What Words do you Avoid in Patent Applications

February 6, 2009USPTO News

I'm planning to do a quick study of "no no words" in patent applications and how their use has changed over time. Examples include "objects of the invention," the "present invention," "must," "prior art," "limitation," ...

Inter Partes Reexamination Estoppel and ITC Proceedings

February 5, 2009USPTO News

One knock against the inter partes reexamination system is that it creates an estoppel. Under 35 USC 315(c), a third-party of requester is estopped from later asserting that a claim is invalid based on grounds that were "raised or could have been raised" during the reexamination. The 315(c) estoppel, however, is specifically limited to "civil action[s]" arising from 28 USC 1338 – i.e., those brought in district court. Similarly, under Section 371(b), an accused infringer cannot request an inter partes reexamination after losing a final decision in district court on any validity issues that the party "raised or could have raised" in the civil action.

Next Secretary of Commerce: Senator Gregg?

February 3, 2009USPTO News

Republican Senator Judd Gregg appears poised to be nominated as the next Secretary of Commerce. The PTO reports to Commerce, and the next Secretary will likely play an important role in selecting the next PTO directors and in directing PTO policy.