- Design Patents En Banc: On June 2, the CAFC is hearing the en banc Egyptian Goddess case to consider the proper method for determining infringement of a design patent. That afternoon, the FCBA is hosting a post-argument discussion with a panel including attorneys for the parties as well as as several amicus. Participate either live or via Webex.
- Big Verdict: “Howrey Loses $250 Million IP Verdict in East Texas” [Medtronic wins over Boston Scientific]. This case may well be ongoing for some time through post-trial motions and appeal.
- Malpractice: “Morgan Lewis Faces Malpractice Suit Over Patent Application.” See also Patent Malpractice a Federal Issue.
“Personally, my belief is that such a construction is absurd.”
Yes, Malcolm, I was stretching the interpretation for rhetorical effect. agent007 got my point. Note that “inadvertence” appears to be exactly what occurred in this case.
To put this in context, let’s go back to your earlier post, where you said “You can’t incorporate essential matter by reference.” This, of course, is just flat wrong. You then suggested that it was utterly impossible to secure a filing date for a continuation if the description was not filed in the continuation. We’ve now established that this is also incorrect, provided that the failure was inadvertent.
You really don’t like to admit when you’re wrong, do you?
37 cfr 1.57(a)
“Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).”
In response to your question, Leopold, the answer is “yes” *if* the term “inadvertently” is construed so broadly as to include “intentionally.”
Personally, my belief is that such a construction is absurd.
Again, I particularly like the reasoning that goes something like this: “the rules state that my signature certifies that I did not intentionally do anything wrong, I signed the darned thing, therefore there must be nothing wrong with the filing…”
Am I the only one who caught that?
A reasonable petition could have been made in this case based on 37 CFR 1.57(a), where a priority claim can function as an incorporation by reference of the parent. This priority claim was made at the time the divisional was filed, so the conditions of 1.57(a) would appear to be applicable.
However, this point does not appear to have been made in this case. Instead, the petition as filed makes other arguments.
“You can’t incorporate essential matter by reference.”
Wrong. 37 cfr 1.57(c)(c) “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference.
“If you could secure a filing date by mailing a letter to the PTO saying “We’re filing a divisional (or continuation) of app xx/xxx,xxx with these claims (specification and drawings forthcoming). Thank you.” practitioners would do it routinely.”
Isn’t this precisely what 37 cfr 1.57(a) says you can do?
“35 USC 111(a)(4) states “The filing date of an application shall be the date on which the specification and required drawings are received in the Patent and Trademark Office.” The specification and required drawings already were received in the Patent and Trademark Office at the time of the 08-13-2003 filing date.”
You mean the parent application specificatoin and drawings? Nice try.
“I stand in disbelief that the 08-13-2003 filing date was not accorded because the petitioner did not use the magic words “incorporated by reference” and instead merely “referred” to the prior filing.”
You can’t incorporate essential matter by reference.
Let’s face it: this is a straightforward example of a clueless attorney blowing it. If you could secure a filing date by mailing a letter to the PTO saying “We’re filing a divisional (or continuation) of app xx/xxx,xxx with these claims (specification and drawings forthcoming). Thank you.” practitioners would do it routinely. The decisions to file such applications are too often made by applicants within 24 hours of the deadline. If the specification is nasty long and there is some other crap going on in the office, why would anyone make life more stressful if they could just do it the “easy” way our P&E friend figured out all on his own?
And whether it’s two months or ten, the PTO gave applicants notice of the foul-up.
RE: Malpractice
Some questions:
(1) What time bar reminder methods did Pennie & Edmonds use at that time and were they used?
(2) Did Pennie & Edmonds and/or the practitioner file any other divisionals six months before and after the 10/640,916 divisional and how did they fair?
Comments:
(1) The USPTO took 10 months after the 08-13-2003 filing to issue a first Pre-Exam Formalities Notice (without filing date) and four months after the 08-23-2004 filing to issues a second Pre-Exam Formalities Notice (with an 08-23-2004 filing date). The USPTO took six months to accept the 05-10-2004 Power of Attorney. Where is the USPTO’s liability in all this?
(2) 35 USC 111(a)(4) states “The filing date of an application shall be the date on which the specification and required drawings are received in the Patent and Trademark Office.” The specification and required drawings already were received in the Patent and Trademark Office at the time of the 08-13-2003 filing date. The statutory requirements were met and, because of the USPTO’s 10 month gross delay in issuing a first Pre-Exam Formalities Notice, the 08-13-2003 filing date should have been accorded in the interest of justice. The statute says nothing about using the magic words “incorporated by reference”.
(3) On reviewing the 11-30-2004 Petition Decision, I stand in disbelief that the 08-13-2003 filing date was not accorded because the petitioner did not use the magic words “incorporated by reference” and instead merely “referred” to the prior filing.
(4) I also was taken aback at the USPTO referring to the petitioner’s failure to exercise due care and referring to it’s own action of taking ten months to reply to the 08-13-2003 filing as “unfortunate.”
RE: Malpractice
How do I love thee? Let me count the ways.
(1) The PTO/SB/05 Utility Patent Application Transmittal has a check box for the specification whereas the August 13, 2003 filed Pennie & Edmonds cover sheet form seems to omit a check box for the specification, which would seem more Pennie & Edmonds fault.
(2) No MPEP 503 return receipt self-addressed postcard appears to have been filed on 08-13-2003, the USPTO stamping of which would have revealed any errors in the 10/640,916 divisional with in two weeks of the filing.
(3) The written specification and the drawings appear to have been omitted from the divisional filing, which appears only to have included a two page Pennie & Edmonds cover sheet, an Oath or Declaration, an Information Disclosure Statement (IDS) (without copies of the references), and a Fee Worksheet.
(4) No MPEP 102 status request appears to have been filed within a reasonable time after the 08-13-2003 filing to find out the status of the filing receipt.
(5) The status of the 10/640,916 divisional does not appear to have been reviewed at the time of the 05-10-2004 filing of the Power of Attorney.
(6) No MPEP 503 return receipt self-addressed postcard appears to have been filed on 08-23-2004, the USPTO stamping of which would have revealed any errors with in two weeks of the filing.
(7) No MPEP 102 status request appears to have been filed within a reasonable time after the 08-23-2004 filing to find out the status of the filing receipt.
There are two different situations discussed in this thread.
To pursue substantially different claims after allowance you would have to do a reissue, and in this case perhaps also file a divisional of the reissue as someone suggested. The petition did look to be doomed, but if it had succeeded it would have been quicker and cheaper than a reissue, so I suppose you can’t blame him for trying.
OTOH, if good art turns up after allowance you can either just have it placed in the file or you can file a reexam, and it is a judgement call. If the art is not so good you may not even need to do anything. If you feel that the new art would kill the patent stone dead, or at the other extreme it is of marginal relevance, you probably don’t want to pay for a reexam, so filing an IDS after allowance is not so crazy, and you certainly don’t want to pay a fee when you know it won’t be considered.
If the patent is important to the portfolio and the new art resulted in refusal of a patent elsewhere, then as long as there is an arguable case that the patent should still be allowable a reexam seems to be indicated. If your reexam request is denied then you don’t have to go any further and the validity is shored up, and if you have to prosecute the reexam then you may have to narrow the claims, but that is better than having a broad patent that isn’t likely to survive litigation.
In denying the petition, it appears the PTO felt constrained by the statute. I would try to take it out from under the statute.
For example, I would argue that the papers that actually happened to be filed qualified as the “specification, drawing and claim” required by the statute. Clearing that hurdle, the petition would be then to suspend the rules to allow the substitution of the “correct” specification, drawings and claims corresponding to the divisional application.
Petitions officer, commence firing.
Inquiring mind,
To get a filing date, all you need is the description, necessary drawings, and claims. Everything else can be submitted late if necessary. As long as you have those three, you or your firm may have to eat some late submission fees, but you will get the filing date.
Mr. Nowotarski,
I don’t believe that this particular matter would be qualify for a director initiated reexam. The reexam is granted when there is a “substantial new question of patentability.” SNQ of patentability is typically raised by newly-discovered prior art not considered at the time of the initial examination.
“pds”, “yet another anon”, etc. thanks for the responses. Since I don’t work on your side of the business, your responses help clear up what the line for malpractice is & what kinds of things might raise to that level. Appreciate it!. Oh, BTW, for the form with the IDS, it was typed out (form paragraphs, maybe?) but not a regular check-off form.
re “Mark Nowotarski”, we get basically no guidance on requesting a re-exam other than what it says in the MPEP that you cited. Really, my guess is that “they” would only want something like that used if it was really embarrassing to the office (not the applicant). I think it would have to really egregious situation to have an examiner, for example, write up a request & have it granted. Probably best to let the applicant deal with it in a reissue or re-exam, or litigation if it ever got that far.
MVS
There is a reissue pending.
A standard form may not have a space to check for “no fee is due because we are filing this IDS after payment of the issue fee.”
MVS wrote: After allowance & payment of issue fee, and about 2 weeks prior to the publication as a patent, they file an IDS. In their papers, they indicate that no fee or petition is due because the IDS is being filed “prior to a first action” (I checked the various dates, & no mistake, it was clearly filed AFTER payment of issue fee (dates on the filing papers were well after the payment) & there was no RCE request). The IDS did not get to the examiner until well after the patent issued. However, it looks like the IDS cited very good art that can be used to reject at least some of the claims. (Let’s not get into if the examiner should have found the references or not; different discussion.)
I don’t think this shows sufficient intent for fraud.
The reason why no fee was due for the IDS is incorrect, but the fact remains that no fee was due since the references won’t be considered after the payment of the issue fee.
Whether or not the IDS cites art that is material to patentability (or merely cumulative) is a judgement call. Regardless, that art will be considered when the patent goes into re-exam prior to litigation. So why would it be malpractice?
When I used to work at a firm, on occasion I happened to find myself finishing up an application for filing late at night, long after our wonderful administrative assistants had gone home, only to wonder: do I really have all the pieces of paper and forms filled out correctly for this filing? Fortunately I did, but it would have been great to have a simple, up-to-date practice manual with flow diagrams or a short list of instructions for standard filings for just this sort of situation. After all, when an application is due by midnight and it’s getting close and you’ve been frantically assembling and redrafting an application, it might be possible to forget something in your dash to the Post Office. (Maybe not the whole spec, usually, but something that will at least be embarrassing when you have to correct it.) And I know we’re all supposed to know everything, but of course you don’t get to bill time you spend studying the O.G. for new twists to the rules and forms, and as a practical matter I think many attorneys rely on trusty administrative assistants for various details, perhaps so much so that they end up losing track of stuff (or maybe that’s just me, but sometimes these details just don’t stick in my head and I have to look them up–you can’t do that if you’re under the gun). I hope loss prevention takes a tip from this case to do something constructive to help attorneys avoid such situations–at least it would prevent some late-night panics.
MVS,
Let me turn the question around a bit. Under what conditions would an office employee begin the process for a director initiated reexam? link to uspto.gov
Do you have guidelines in this regard?
js,
A terminal disclaimer is used to shorten a patent’s term. Because the late application lost continuity from the parent, there was no earlier term from which to shorten. The late application became a new parent application. A terminal disclaimer would not be able to provide the link to the earlier parent application.
or at least broadening amendments, but new claims would be cleaner…
I would say a broadening reissue must necessarily include new, broader, claims…
Actually, the error for the reissue would need to be something other than the restricted claims. But there is nothing to stop you from including divisional claim set when you file reissue. For example, broadening claim and divisional claim set.
I’m not getting paid to look at this case, so I won’t, but please note that, in general, applicant’s own 102(b) art, e.g. more than one year prior will be anticipatory, ergo, in those cases, a terminal disclaimer is obviously ineffective… But you probably knew that.
Question to Jim H.:
Because of the filing date of the spec and drawings, the filing date became 8/23/04 and the original application become a prior art. I can understand this. But, how can one remedy this. Would a terminal disclaimer work?
Budge, under certain circumstances, it seems that the filing of a Reissue itself can be tantamount to an admission of malpractice…since “errors” have to be identified.
The Morgan Lewis guy screwed up twice, he should have fessed up so his client could have gotten someone to advise him on reissue practice. I think you can file reissue application and get restriction requirement and pursue reissue divisional. Sure, everything is pending again, but the parent patent does not surrender until issuance of the reissue.
Not surprising Mooney doesn’t get it.
More surprising however is that a practitioner would spend 15 pages of a Petition (I personally would have a hard time imagining a situation where I would consider filing a Petition that was more than about 3 pages) trying to convince the PTO that 112 does not require a copy of the specification to accord a filing date or that 111 doesn’t specify the manner of when and how the specification should be filed despite the language of 111 specifically requiring a specification under 112.
The drafter then goes on an incredible tortured logical route that winds up at a place where somehow his signature itself should fix everything, e.g. well, by the rules, my signature certifies that I am not trying to do anything wrong, ergo, if I have signed, I must not be doing anything wrong. Whew, now THAT is real power.
This might be a good example of what happens when litigators start to believe their own B.S. Take heed Mooney or, well, you know the drill, dog poop and all that.
“Is it possible fraud (in view of the clearly incorrect statements by the attorney in filing the IDS)?”
I doubt it is fraud. Fraud involve deception for gain. Once the IDS was filed after the issue fee was paid, unless the case was withdrawn from issue, the PTO wasn’t/couldn’t considered the IDS. It didn’t matter what they wrote or didn’t write.
As for malpractice, that depends upon what the client knew/agreed to. If the art was newly cited and the client agreed that it wasn’t worth withdrawing the application from issue, then no problem. They can still file a reissue/reexamination (not sure on this one??) to get the references considered.
Remember, if this patent is ever asserted, any alleged infringer will immediately pull the file wrapper and find this cited (but not considered prior art. If it is as good as you think it is, then the patentee knows that they have invalidity problems.
Bottom line, it is impossible to know for sure what is going on behind the scenes. In certain instances, patent are valuable, even if they are never asserted. They may have made a decision to get the patent knowing that they’ll never assert it.
Dennis, your spam filter is awful.
MVS, maybe, maybe not regarding malpractice. An analysis might be done, and all parties involved (the client and law firm) may be convinced that the art is not relevant (it is only cumulative, etc.). This is not my area of expertise, but inasmuch as it appears to be a genuine mistake, rather than fraud, it may (?) be curable by reissue and/or reexamination. There may have been no way to get the art considered anyway, and it may have been that the attorney only intended that the art be placed in the folder.
From the file wrapper, no specifications or drawings were filed with the divisional application on August 13, 2003. It wasn’t until August 23, 2004, that these were filed. Citing 35 USC § 111(a)(4), the PTO stated that “[t]he filing date of an application shall be the date on which the specification and any required drawing are received. . . .” The PTO made it a point of noting the SHALL language of 111. By filing late, the earlier application issued as a patent which, in turn, became prior art. OUCH!
WHOOOOPS!
On the topic of “malpractice” and what may or may not be “malpractice”, I have a question for you attorneys.
I recently was reviewing a case and it has a clear problem in it that looks to be a potential issue that can be malpractice for the attorney/firm. Obviously, I will leave out the SN & specific dates as I do not want to torpedo the attorney or patentee (I work at the office; not my case, so not my direct problem).
Situation:
After allowance & payment of issue fee, and about 2 weeks prior to the publication as a patent, they file an IDS. In their papers, they indicate that no fee or petition is due because the IDS is being filed “prior to a first action” (I checked the various dates, & no mistake, it was clearly filed AFTER payment of issue fee (dates on the filing papers were well after the payment) & there was no RCE request). The IDS did not get to the examiner until well after the patent issued. However, it looks like the IDS cited very good art that can be used to reject at least some of the claims. (Let’s not get into if the examiner should have found the references or not; different discussion.)
On top of all that, the SAME attorney signed the response to 1st action, the payment of issue fee AND the IDS papers, so “should” have known that the IDS was not “prior to a first action” and was being filed after the payment of the issue fee. (No telling if he or someone else actually prepared the papers.)
So, based on the preceding, my questions are:
Is this, in your unprecedential opinions, malpractice?
Is it possible fraud (in view of the clearly incorrect statements by the attorney in filing the IDS)?
Look forward to your opinions.
MVS
Malcolm, 007 got it. The “filing” was little more than a sheet of paper indicating that a divisional application was being filed.
Ouch. From the 10/640,916 file wrapper, it looks like the application itself was omitted from the filing of the divisional. No app = no filing date. It was not helpful that the PTO’s notice of incomplete application was sent out many months later, but that fact doesn’t change anything.
From the news piece:
————–
Landmark claims that Kohler, while at Pennie, filed a patent application for the electronic billboard in 2002. After dropping some claims — which describe the invention in question — in response to a patent office requirement, he refiled them as part of a follow-on application known as a “divisional application.”
The suit claims the divisional applications contained errors, that the patent office sent it back in June 2004, and that it then rejected the patent lawyer’s petition for appeal that November. Kohler and Morgan Lewis found out the petition had been denied in early December 2004.
The result was a loss of “continuity” — that is, the claims in the divisional application couldn’t be tied to the original filing date or the “parent” application. And since the billboard had been erected and the original patent application had been published in the meantime, the claims were invalidated because the invention was no longer novel, according to the suit.
———
What happened? No reference to the parent? Was the specification changed?
With respect to the malpractice case (I once worked at MLB), review the prosecution history on public PAIR for application no. 10/640,916. This really does appear to be a case of malpractice. Although I obviously don’t know the specifics of this particular case, this appears to me to be a case where a litigator believed (erroneously) that he knew how to file a divisional application. I see this (potential error) being made all the time – so far I have never allowed it to happen while I was the reviewer.
Comments are closed.