37 C.F.R. § 1.75(e), Jepson claims, and the Administrative Procedure Act

By David Boundy

The following is a guest post by David Boundy – a Cambridge Massachusetts attorney with a specialty at the intersection of patent and administrative law. In 2007-09, David led the teams that quashed the Continuations, 5/25 Claims, IDS, Markush, and appeal rules under the Paperwork Reduction Act.

This is a follow-up to Dennis’s two posts on Jepson claims, of Sept 1, 2017 and Aug. 30, 2017.

Wherein the Improvement Comprises

Jepson Claims (Part II)

37 C.F.R. § 1.75(e), recommending that applicants “should” use Jepson form, is a classic case of a “general statement of policy” under the Administrative Procedure Act, 5 U.S.C. § 553(b)(A).  It’s only hortatory, with no force of law.  The PTO did exactly the right thing, stating that its preference is non-binding, by using the word “should.”  Patent attorneys do exactly the right thing in recognizing the multiple substantive perils of Jepson claims, and ignoring § 1.75(e).

The point that controls everything else is that the PTO has no relevant substantive rule making authority, and therefore has no power to dictate any matter of claim form that might have substantive consequences.  The PTO is permitted to announce any preference it likes on issues of claim drafting, and can even alert the public that life is easier for the PTO if applicants follow this preference for Jepson form.  But the PTO has no authority to require any claim drafting technique that has substantive impact.

Because this is an issue where the PTO has no rule making authority, § 1.75(e) could not be promulgated as a “must” binding regulation.  To bind the public with force of law, an agency must have authority for the particular rule, and follow Congress’ procedures for promulgating it (35 U.S.C. § 2(b)(2)(B), the Administrative Procedure Act, Paperwork Reduction Act, Regulatory Flexibility Act, Executive Order 12,866, and all the rest).  So even though the PTO jumped all the procedural hoops and ended up with something that looks facially like a “regulation” in CFR (rather than in guidance), without authority, that regulation has no force of law (and would not, even if § 1.75(e) had used the word “must”).

The Administrative Procedure Act, § 553(b)(A), creates a pigeonhole for this kind of expression of agency preference, called a “general statement of policy.”  (I wrote about “policy statements” earlier this summer.)  “General statements of policy” are often used by an agency to offer helpful suggestions (at least suggestions that the agency thinks might be helpful to it).  But conversely, “policy statements” are purely hortatory, with no binding effect against the public.  That’s exactly what the PTO did here, using the word “should” in § 1.75(e) to indicate a non-binding preference, rather than “must” to indicate a requirement.

Legality of the Matal Appointment: Acting As PTO Director

“Policy statements” are also used to unilaterally promise a quid pro quo or set a floor (“If you the public do x, we the agency promise favorable outcome y.  If you don’t do x, you can still convince us to do y if you convince us under the controlling law.”)  Such quid pro quo policy statements bind the agency to give favorable action y for any member of the public that relies on x, but impose no binding requirement on the public to do x.  Here, the PTO made no promise of any favorable result that would occur if an applicant uses Jepson form, so § 1.75(e) signifies nothing—and does it without sound and fury.

When the PTO has preferences of this sort, there is no requirement to put them in CFR regulations—§ 553(b)(A) expressly exempts “statements of policy” from any requirement to be stated in regulation.  (They still have to be published, § 552(a)(1)(B), but need not be baked into CFR and notice-and-comment.)  The PTO’s preference for Jepson claims could just as well have been in a guidance document like the MPEP.  There’s no error or harm in putting a “should” policy statement in a regulation rather than guidance, but no requirement either.

The only ethical principle for patent attorneys that I see, in absence of force of law, is to avoid doing dumb stuff that hurts the client.  Patent attorneys have ethical obligations to their clients to avoid all the substantive pitfalls of Jepson claims.  I see no “ethical guideline” that would pull in the direction of § 1.75(e)—though of course I’d love to learn something new, and I look forward to the comments.

Two meanders on a rainy Labor Day weekend that were prompted by looking at  § 1.75(e)—

First—

37 C.F.R. § 1.75(d)(1) says “ terms and phrases used in the claims must find clear support or antecedent basis in the description.”  There are multiple drafting errors here, and the PTO should correct them.

(a)  There is no requirement whatsoever for “antecedent basis” agreement between the spec and claims.  Sure, § 1.75(d)(1) blurs the “must” requirement by adding an alternative, “clear support or antecedent basis,” but the Paperwork Reduction Act requires that regulations be “written using plain, coherent, and unambiguous terminology.”  Agencies are not permitted to waste the public’s time by tossing red herrings and irrelevancies into their regulations and leaving it to the public to decipher the agency’s sleight of hand (or spend hours over the years pointing examiners to the word “or” that so many overlook).

(b) § 112(b) permits “written description” and enablement support to be drawn from the drawings as well as the specification.  A rule that says it “must” be in the “description” is at the best unclear, and at worst over-prescriptive.

I get it, it’s easier for the PTO to examine an application when the claims and specification use the same terms.  But the PTO has no authority to put that preference in a “must” regulation.

Second—

The “single sentence rule” of MPEP § 608.01(m), affirmed by the D.C. District Court in Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995), stands on flimsy ground, though I’m not sure which way a better-argued case under today’s law would come out.

The D.C. District Court noted that claims can be drafted in single sentences or multiple, as only a matter of form, with no substantive effect, and the rule is thus “procedural” and not subject to requirements for notice and comment.  Even assuming that the Court’s characterization as “procedural” is correct, it doesn’t answer the question—the APA’s §§ 552 and 553 set procedural requirements for any rule that an agency wants to promulgate with binding effect, even procedural rules, and the MPEP doesn’t qualify and never did (an administrative law point that Fressola didn’t argue).  Today’s 35 U.S.C. § 2(b)(2) is even clearer, requiring § 553 “regulations” for procedural rules, and forbidding the PTO’s practice of promulgating procedural requirements in guidance.  Further, the language of today’s § 2(b)(2)(B) (especially when contrasted to pre-1999 § 6) is similar to the language in other statutes for other agencies, and the agencies accept that the language means they “must” use notice and comment.  See, e.g., Department of State, Notice of Proposed Rulemaking, 64 Fed. Reg. 53632 (Oct 4, 1999) (“Pursuant to [9 U.S.C. § 553], the rulemaking procedures of [5 U.S.C. § 553] apply to any determination to effectuate such a modification or amendment [of the Department’s procedural rules for international arbitration]. In accordance with those procedures, notice must be published in the Federal Register, time for comment provided, and the final rule published for 30 days before the rule may become effective.”).

The Fressola court stated (citing Chevron) “the Plaintiff must nonetheless overcome a quite deferential standard of review in order to justify the invalidation of a portion of the MPEP by a reviewing court.”  Nonsense.  That kind of deference only applies to interpretations (not rules cut out of whole cloth, like the single sentence rule), issued in a reasonably formal form published to the regulated public (not squirreled away in guidance directed to agency employees).  Subsequent developments in the Chevron administrative law space (specifically Mead and Christensen) make even clearer that informal guidance is not entitled to high deference.   An agency only gets that kind of deference after it earns it by jumping several hoops of formality for its interpretation.

The reasoning of Fressola is a terribly confused mish-mash of incompatible legal principles (see my upcoming article in ABA Landslide, later this fall, which provides a helpful taxonomy of rules).  The single sentence rule and Fressola have been entirely undercut by developments since 1995.  (The continuing vitality of Ex parte Quayle practice also comes to mind.)

But at the end of the day, the “single sentence” rule could squeak through a challenge, under the administrative law standing principles of “suffering legal wrong” and “harmless error”—even Fressola admitted that his single-sentence claims suffered no substantive disadvantage relative to his multi-sentence claims.

62 thoughts on “37 C.F.R. § 1.75(e), Jepson claims, and the Administrative Procedure Act

  1. Well well. I see now, that on Jepson claims I should have checked back, on Mr Quinn’s blog. Readers, it contains a nice article by the esteemed educator, Brian Cronin, comparing them with EPO 2-part c-i-t claims and it makes lots of nice points:

    link to ipwatchdog.com

    I can recommend the Cronin piece enthusiastically.

    I should add that, long ago, I used to read the Quinn blog. But then I gave it up in exasperation.

    1. Interesting, but I balk at the continued insistence at something that is at best circular (when attempted to be applied back into the US sovereign).

      People are admonished not to do something, even though that something (as can be seen by your own “journey” here, and the backtracking “certainty” of the difference that you started with) leads directly to the very thing being admonished not to do.

      To wit:

      Thus, the pre-characterizing part is is [sic]not a definition of the prior art but is a non-novel definition of the invention.

      What makes it non-novel? (and thus not an item of “true” invention)…?

      That’s right – it is not novel because it reflects the prior art.
      Otherwise, it would be…

      wait for it…

      wait…

      …novel.

      There is a helpful comment by the author (inadvertent or otherwise): “This thinking has been reinforced over the years by the subsequent case law.

      I will also note that the author does not take into account other sovereign differences (such as the example not yet commented upon by you of New Matter treatment).

      Also lacking a firm answer from you MaxDrei is the notion of the applicant’s power to choose “D1.” The author states “In drafting 2-part claims for a new patent application, the choice of an appropriate preamble is important because this involves selection of the Field of the Invention, which is critical for classification, search, and determination of the skilled person’s field of knowledge.” which seems to make it seem that the applicant DOES have much more power over setting that illustrious “D1.” Here in this sovereign, applicants have NO such power (and in fact, per the Supreme Court direction of KSR, the opposite path is the path that our profanity-laden judicial branch has decreed to be taken.

      Here (again, in this sovereign), actually discussing other people’s inventions only leads to trouble – along a number of different factors.

      The author does critically note that the “here use my eyeglasses, they work for me” mentality is not proper.

      1. Cronin explains that the pre-characterizing part of an EPO 2-part claim is NOT to be taken as a list of all the features in the claim that are known. That helped me to see how it is, that Jepson’s are perceived as different from 2-part EPO claims

      2. That’s right – it is not novel because it reflects the prior art.

        Well, it might. More generally, however, as Mr. Cronin explains, it is “not novel” because it encompasses the prior art. That’s not quite the same thing. That’s his point.

        1. Except it remains circular, because it is only in the second part that the distinguishment is made.

          As I said – he exhorts “not to” even as it IS.

          (the rest comes down to different choices for different sovereigns – please be sure that THAT is not my beef here)

      3. Anon —

        The problem is that you didn’t read carefully. “The pre-characterizing part” is not the entire claim. In a Jepson (or EP) claim, the part before the phase “characterized in that” is NOT supposed to be novel. The novelty comes when you add the “characterized in that” additional limitation(s). THEN the ENTIRE CLAIM has to be novel.

        There are other problems under U.S. law, which we won’t go into today.

        But your criticism of MaxDrei and Cronin relates to a fault in your reading and understanding, not their presentation or an illogic in the practice.

    2. I can recommend the Cronin piece enthusiastically.

      That’s a very nice article, Max. Interesting, isn’t it, that Mr. Cronin was able to explain all of that without ever using the word “sovereign”?

      1. To the extent that he does not use that word, his explanation is deficient.

        Note that HE DOES distinguish between the sovereigns, though.

        Ipsis verbis not required….

        Your smarminess is its own undoing.

  2. At 2.2.1, discussing the improvement D to the known ABC, Dennis expresses interest, and writes:

    “…add a Jepson claim once examiner has searched the prior art and found some allowable subject matter.”

    This reminds me of routine everyday practice with every pending application at the EPO, with its “2-part” c-i-t claim, whenever it becomes clear that ABC is disclosed, beyond any sliver of doubt, in combination, in prior publication X.

    But proceed with extreme caution, brothers and sisters nevertheless. In Europe, such a course of action is fraught with danger, irresponsible to your client, unless:

    1. X discloses each of A, B and C not just as such but also, and indisputably, in combination with each other, typically all in one single embodiment of that single prior art reference X, which
    2. is (also beyond indispute) a “realistic starting point” for setting the terms of a debate of the obviousness issue under the EPO’s Problem and Solution Approach, which debate is fair to the Inventor, and
    4. you take care to explicitly announce, in your specification, that X is the basis of the “pre-charcterizing part” of your c-i-t claim.

    Otherwise, you just went and admitted on the public file at the EPO and in your issued European patent that more stuff is prior art than truly is the case.

    1. MaxDrei,

      once again, the differences in our sovereigns becomes evident.

      Your point 1 appears to reflect the (unsubstantiated) limitation on number of references. In our sovereign, the 103 filter is simply not so tightly constrained that a single reference must have all of the other items (besides the last item).

      Your point 2 appears to reflect my comment on the “In The Art” portion of PHOSITA.

      Your point 4 appears to reflect my earlier comments that such an introduction of explicit “D1” discussion will not happen in our sovereign, seeing as “D1” is not known at the time that the application is submitted unless it is the applicant being able to declare what “D1” is to be.

  3. Paul Morgan at 7.1.1.1.1.1

    “….file numerous nearly identical claims in an application or amendment, in which one of the claims would leave out a major limitation to get much broader claim scope hoping the examiner would not notice that limitation was missing from that claim.”

    No wonder that so many US patent attorneys take umbrage, when the EPO Examining Division limits them to one independent claim per “category”.

    The wonder, to me is why these US attorneys bother with the trick. It should be plain as a pikestaff, to any competent patent practitioner, even in the USA, that the excessively broad claim that the USPTO was tricked into issuing is hopeless as a legitimate basis for extracting rent.

    I suppose the game is to aggregate so many thousands of issued claims, that it is just too expensive to consider whether one has enough “clear and convincing” evidence to discount the threat. In the end, it’s likely cheaper just to pay what the ex t0rt10nist demands. After all, it’s only business.

    1. Your snide comment regarding clear and convincing is noted.

  4. I refer to Dennis’s question at 7.1.

    Whereas a Jepson at the USPTO is as rare as a hen’s tooth, a c-i-t claim at the EPO is developed in nearly every case examined at the EPO (even if Applicant is successful in avoiding it in the issued patent). So, prosecutors and Examiners at the EPO are swimming in a sea of Jepson-type claims.

    I agree with MM, that Jepson-izing a claim leverages patentability. Good inventions are exposed for what they are, and bad ones likewise.

    It’s this clarification and focus that US attorneys instinctively recoil from.

    With good reason. The less clarity the better, when it comes to use of a patent to intimidate. This is perhaps why EPC Rules state that a c-i-t claim not “should” but “shall” be used.

  5. David, thanks for the post. Good timing too – I’m preparing a response and before reading your post also noticed that 37 C.F.R. § 1.75(d)(1) says “terms and phrases used in the claims must find clear support or antecedent basis in the description”, and that the MPEP and BPAI have as a result made a mess of that term “antecedent basis”.

  6. There is nothing a Jepson claims gives up that I couldn’t make you admit anyway without enough time to do so – Don’t want to admit a processor preexists? I’ll make a 112a rejection and force you to prove the art’s ability to make a processor before I make an art rejection, because your spec isn’t going to waste pages teaching us how to make something you already know exists. The only reason Jepsons aren’t used is because the office compacts prosecution in good faith and the applicant does not, and they know we won’t spend the time to actually force their good faith. If I was in charge of a “top tier” quality group (as some people have suggested paying more for better quality) that group’s first action wouldn’t even start with a prior art search, it would all be 101/112a/112b and demands for nominating whether means-plus is invoked or not, and only once we sized the invention to the spec and admitted prior art would there be a search of the allegedly inventive aspect.

    I actually saw an applicant argue that the prior art didn’t teach a processor before. I had half a mind to withdraw the rejection and write a notice of allowance that the sole reason the claim issued is because the record contained no evidence of a prior-existing processor.

    I once inherited a case after appeal and I wrote a notice of allowance that said “I’m allowing this case because the board said this element wasn’t present for the 103 – here is how the board misunderstood the reference. In addition, if I had been the original examiner I would have made these rejections. In addition, since this application was appealed Alice was decided and this claim is abstract. But currently no rejections remain, and the claims are allowable.”

    Now any applicant that wants a good-faith valid examination ought to, at a minimum, call me up and ask for a second non-final to argue the issue. Instead this person paid the issue fee and then submitted a petition asking my notice of allowance be stricken from the record. Then you guys wonder why courts invalidate claims, when they were all granted because of borderline bad faith actions.

    Now sure, most examiners aren’t going to actually write a correct record like I would, so maybe there won’t be a tailor-made case of fee shifting, but what are you attempting to accomplish by pulling this? Is it really better for your clients to rely upon an overbroad “protection,” that only exists because you played games, which wont stand up to scrutiny, instead of just admitting what could be proven anyway and having the examination time spent on useful things?

    1. 99.9X % of the US says otherwise, oh Windmill tilter.

      But YOU would show everybody – if only you did your job (instead of the metrics of your job).

      Games?

      Please.

    2. I actually saw an applicant argue that the prior art didn’t teach a processor before. I had half a mind to withdraw the rejection and write a notice of allowance that the sole reason the claim issued is because the record contained no evidence of a prior-existing processor.

      Pictures, or it didn’t happen.

  7. DC: its really clear that [Jepson claims] are generally detrimental to patentees.

    I think this is misleading. There is really nothing about Jepson claims that is “detrimental” to an innovator who has actually innovated something. If your innovation is new and non-obvious, go ahead and describe it as an improvement over the prior art. That’s not “detrimental.”

    What is “really clear” is that if you have not innovated anything it is far far easier to hide the ball and scriven something that looks impressive using non-Jepson claim “formats.” It’s also “really clear” that applicants do this all the time. Why? Because they can.

    1. I think this goes to the question of whether Jepson claims are Substantive. My understanding is that the basic issues with Jepson claims are:

      (1) they require the patentee to admit to what is known in the art; and

      (2) they focus attention on a portion of the claim (the new bits) rather than the claim as a whole.

      Although both of these might impact substantive rights if handled poorly by the patentee, it is not entirely clear to me that either of these should be considered substantive in nature.

      Any thoughts MM’s suggestion that: Jepson claims particularly undermine patents on weak inventions but still readily protect strong inventions?

      1. “Weak” versus “strong” in the context of Malcolm’s direct head in the sand of legal reality impugns the person who contemplates such.

        In other words, you have to suspend reality and ignore the FACT that patent profanity exists in order to try to classify inventions along the proffered “weak” and “strong” indicators.

        In Malcolm’s world, an otherwise FAR and excessive picture claim (that would have near zero real world value) would be considered “strong.”

        Such “results” that reflect the opposite of reality should be avoided – even in academic considerations.

        1. near zero real world value

          And yet companies spend billions of dollars developing new compositions of matter and and paying patent attorneys to describe and claim them in sub-molecular detail.

          Go figure.

          Here’s a thought: if a picture claim describing what you actually reduced to practice has “no real world value” than probably what you think you’ve “innovated” isn’t all that interesting to begin with. Hence the extreme reliance on scrivening and an even heavier reliance on judge-made “exceptions” by a certain class of applicants.

          The reaction to Jepson claiming by “anon” and Boundy and others reflects a much bigger problem with the US patent system than “PTO rulemaking.” And it’s been a problem plaguing the system for decades now. Specifically, it’s the problem of scrivened patents being turned into commodities themselves that are more valuable as nuisances than they are as disclosures about how to make and use specifically claimed (and useful valuable) products. The problem is a direct result of letting logic patents into the system because, once that door was opened, the system is just a playground for attorneys seeking to “get rich off the Internet” or whatever the latest “hot” information-processing “technology” happens to be.

          1. Here’s a thought: if a picture claim describing what you actually reduced to practice has “no real world value” than probably what you think you’ve “innovated” isn’t all that interesting to begin with.

            Well, yes, it is a thought. A transparently fallacious and thoroughly unconvincing thought, but a thought nonetheless.

            A claim that does not exclude minor variations from that which you have reduced to practice will not given one effective commercial exclusivity. Given that commercial exclusivity is the very aspect of the patent system that makes a patent into a commercially compelling spur to innovation, picture claims are almost always worthless in practice, except in certain heavily regulated industries such as pharma and crop chemicals.

            1. Mostly but not Entirely true Greg. Even if it turns out that all one could get allowed after a decent examiner search would be a picture claim, the patent or application publication may be of defensive value against later-filed patents of others for what it discloses of details of a planned new product. Details that [unlike a normal publication] need not be publicly disclosed until 18 months after the filing date, so as not to lose product planning secrecy and commercial lead time, yet get a prior art date as of the filing date.

            2. [not] effective commercial exclusivity

              But you will still have actual commercial exclusivity for the useful thing that you described. And you can get “picture claims” to other things that differ only by “minor variations” unless you really blow it.

              If you somehow aren’t first to market and you can’t figure out how to sell a useful working product and make money, well, then: that’s not the fault of the patent system, is it?

              Try not to forget: vast overwhelming numbers of people make and sell stuff and earn money on it without any patents at all. How do they do it? Have you ever stopped and marveled at that fact for a moment?

              The idea that it’s impossible to succeed in business without a patent so you can get by without direct competition for 20 years is a relatively recent idea. It’s a virus that infected the patent bar (surprise, surprise). And the disease is logic patents.

              1. that it’s impossible to succeed in business without a patent so you can get by without direct competition for 20 year

                It’s also a strawman that only Malcolm has ever advanced on these threads…

          2. MM, I agree. The problem goes back far longer than a few decades. It goes back a few hundred years.

            People have been lying, hiding the ball, playing games with examiners, claiming vaguely, broadly, etc., for so long that it is a wonder that the PTO and the courts tolerate it.

            Then you look at who traditionally runs the PTO and who populates the CCPA and the Federal Circuit. That there is the source of the problem. Until that is fixed, we are never going to have a patent system that is functioning the way it should function.

            1. Most of you had not practiced long enough to fully appreciate Ned’s comment at 7.1.1.1.12. E.g., before claim fees and compact prosecution a not unusual practice was to file numerous nearly identical claims in an application or amendment, in which one of the claims would leave out a major limitation to get much broader claim scope hoping the examiner would not notice that limitation was missing from that claim.

            2. Your “the way it should function” is highly suspect, Ned.

          3. to describe and claim them in sub-molecular detail.

            LOL – you mean like that chemical arts claim that I offered the other day for your Sniff test that LACKED a singular “objective physical structure”…?

            You are funny- even as you appear to not be trying to be funny.

      2. As a practical matter Jepson claims make the same invention with the same [technically the same] claim scope harder to get allowed by some examiners, even if it is to a “strong” invention, especially if the combination with the prior art claim elements is unobvious. As to a “weak” invention your prior blog on “passing the hand span test” answers that question. [I would hope that IPR APJs are not susceptible.] I suspect Jepson claims might also make it harder to convince a jury or judge to sustain validity, especially by reducing proof of what claim elements are old?

      3. I generally agree with the sentiment in that I believe that Jepson claims are often disliked merely because they require an attorney to clearly indicate how a claimed invention is innovative over what is known.

        Although there are certainly attorneys who act in bad faith and play hide the ball to try to get broader claims than they are entitled to, I think the more insidious problem is that this is much harder work to do, and if you find a reason not to do it, then it becomes much easier to justify filing patent applications without having to specifically identify what it is that an inventor has actually invented.

        If an inventor comes to you with a design for a mouse trap and can’t identify what about the mouse trap that is innovative, well, that might be a bad sign as to obviousness of the mouse trap and possibly should even implicate some 112 written description issues if you later focus on a feature that the inventor didn’t even believe was important to his “invention”.

        However, it’s easy enough to just describe the mouse trap, and if you can draft a claim reciting elements of the mouse trap without ever having to inquire as to what is innovative about the mouse trap, well, it becomes easy to prepare and file that application.

        The patent office doesn’t have much of a mouse trap problem right now, but it sure does have a lot of people filing patent applications for computer-implemented methods without bothering to identify what steps of the computer-implemented method are innovative.

        If you have a clear improvement to an existing apparatus or method, making clear what is innovative doesn’t seem to be inherently harmful (although there are always pitfalls in claim drafting). On the other hand, if you have an apparatus or piece of software that you think is commercially valuable and want to find a way to protect, having to identify what you believe is innovative suddenly becomes challenging.

        I counsel clients and their employees all the time that patents are for inventions, not for software applications or products. In my mind, ideally disclosure and claims would live up to this ideal, but I have been surprised to learn that there are some who seem to feel that it isn’t an applicant’s job to identify what is inventive in a patent application. That seems… odd.

          1. “thoughtful” as in kind is not the required thoughtfulness for a legal discussion.

            “thoughtful” as in critical thinking – even if presently brusquely – IS the required thoughtfulness for a legal discussion.

            For one who has steadfastly refused to follow objective editorial controls and let a certain blight run rampant for eleven and half years, this “thanks” comes across as more than just a little bit shallow and self-serving.

            Certainly, JCD comports himself well. There is no doubt about the politeness factor. And I would even posit that he is earnest in his posts.

            But the emphasis on “polite” at the expense of developed dialogue (seeing as the “count” filter is still active – and still not objectively applied) is what makes the editorial contribution here a reflection of a misguided aim.

        1. “[T]here are some who seem to feel that it isn’t an applicant’s job to identify what is inventive in a patent application. That seems… odd.”

          JCD, MaxDrei has often pointed out that if the novel subject matter is not discussed in the specification as being novel, then there is a problem of discussing or even arguing inventive step abroad.

          In the US, at least the original claims are consider part of the specification and can count as a written description of the novel features. Thus, as prosecution proceeds, one can focus on what emerges as the novel subject matter without any real written description requirement.

          Still, I think the Supreme Court might ultimately want to say a few things about this practice. But what are they going to say? That the inventor must know, when he files, just how his mousetrap distinguishes over the prior art? He may not know this. All he has to say, when he files, that what he claims is new to himself.

          1. Why are you entreating the Judicial Branch to become active in rewriting the statutory law that is patent law, Ned?

          2. What are they going to say, you ask, Ned. Ned in another thread you refer to Rex v Arkwright, appended to your Brief in the Oil States case. Perhaps one day SCOTUS will hark back to that case, when addressing the issue what needs to be included in the specification you are drafting for filing at the USPTO.

            1. Max, Arkwright provided no description of his carding machine, how to make it or how to use it. He just described the components that were used. Actually, two different machines were described and some components were added that had nothing to do with the claimed machine — just to confuse.

              Of course, the reason he gave was that he did not want the French to gain the secret of the automatic carding machine that was revolutionizing England.

              Today’s US specifications are trending towards Arkwright’s. I think you and I would agree on that.

  8. Hm, this makes me think of an issue that comes up in my line all the time: the PTO wants to build a searchable database of genes and proteins disclosed in patent documents. Therefore, if you disclose a sequence of four or more amino acids or ten or more nucleotides, you must supply a sequence listing in a particular file format, that the PTO can then automatically enter into their database. In other words, they are outsourcing the work of building the database to the applicants.

    The way this works in practice is that if you file your application without supplying the sequence listing, you get a spec objection in your first office action, telling you that you must submit the sequence listing. This is not a “rejection” (indicating a failure to comply with a law) but rather an “objection” (a formality issue that must be corrected before you can get to allowance). I have always complied as instructed, but I assume that if one fails to file the sequence listing as requested, then the objection will be maintained in subsequent office actions, and therefore you cannot get to allowance without doing as requested. Incidentally, the practice is not entirely uniform on this point, but I have received office actions that tell me that the case will go abandoned if I do not supply the sequence listing with the next response.

    So, is the PTO allowed to do this? It appears to me that this amounts to just as much of a case of imposing a requirement not mandated by statute as the Jepson claim rule noted in 37 C.F.R. 1.75(e). If the PTO is not violating the APA in requiring these sequence listings, would that mean that the PTO could treat the Jepson claim rule in the same manner—i.e., they could simply issue a “claim objection” in the office action insisting on compliance with Rule 75(e), and refuse to mail a notice of allowance until compliance is obtained?

    1. You can get an allowance/issuance with an outstanding objection.

      1. Really? Then why does anyone ever bother to respond to spec objections?

    2. Sure, until an applicant files suit against the PTO under the APA and (hopefully) gets the practice quashed, which would happen much more quickly (immediately?) compared to the sequence listing practice. For better or for worse, Jepson format is viewed as being substantively disadvantageous, whereas sequence submissions are purely an issue of format (unless I’m missing a substantive angle?).

    3. In other words, they are outsourcing the work of building the database to the applicants.

      The database is already built. Applicants are filling the database with art (most of it is prior art; some of it is new). The PTO is requiring applicants to use the format to facilitate both the searching and archiving of sequence data.

      I think it’s more than a bit of a stretch to refer to this requirement as “outsourcing the work”. Are all the other application format requirements also “outsourcing”? e.g., is it “outsourcing” to require my application be typed instead of handwritten? The PTO could type it out themselves after all.

      1. Fair enough. The “outsourcing” characterization is the least important aspect of my #6. If you think that word is inapt, I will happily withdraw it.

        I am entirely in favor of building a searchable database of sequences, and it makes more sense for the applicant (who has the easiest access to searchable copies of the relevant information) to have the burden of supplying them. In other words, I really do not wish to suggest that the PTO ought not have this policy. I simply wonder, in view of Mr. Boundy’s explanation of the administrative law implications of Rule 75(e), whether an analogous issue is present in other aspects of PTO practice.

        1. I simply wonder, in view of Mr. Boundy’s explanation of the administrative law implications of Rule 75(e), whether an analogous issue is present in other aspects of PTO practice.

          Given the number of rules, I’d bet there are multitudes of analogous issues.

          The first one that comes to my mind are the “recommended” sections for the specification. For example, is a Background section required? Is there any requirement about what must be in the Background section? Why have a Background at all? It’s “detrimental” to patentees …

          1. It seems clear enough to me that the MPEP 601 “parts of the application” requirement is on a very different footing than the MPEP 2422 sequence listing requirements.

            I have prosecuted many §371 national stage entries that do not have one or more of the “required” sections (including “background”), and I have never received a spec objection on account of the “missing” sections. By contrast, I routinely receive spec objections where the spec neglects to include some disclosed sequence in a computer-readable sequence listing.

  9. The most interesting bit is at the very end:

    The single sentence rule and Fressola have been entirely undercut by developments since 1995. (The continuing vitality of Ex parte Quayle practice also comes to mind.)

    Who is going to take on the single sentence rule?

    1. Of course what is presented as a claim is not even a sentence (no verb), but merely the object of a sentence, unless one also includes the implied language “I claim”, “We claim”, or “What is claimed is”. I think the USPTO still automatically prints those words or some variation of them as part of the patent, even when the application leaves them out.

      1. The verb is the word “claim” that as in “We claim:”

  10. A delightful read, but I would have broken this into two separate articles – if only to highlight the first topic covered.

    1. A delightful read…

      Agreed.

      I would have broken this into two separate articles…

      Also agreed. There was nothing wrong with lumping the two issues into one post, but they are analytically distinct enough to merit two separate entries.

  11. As Dave Boundy notes there is not a specific general statutory authorization for the PTOs many years of extensive rulemaking and other regulatory activities. However, AIA 35 USC 316(a) did specifically give the PTO Director broad statutory rulemaking authority for various aspects of AIA post-grant proceedings.

    1. Yes Paul, and ad also noted, such does not do anything from a Constitutional infirmity view point as to whether Congress could either so allocate to the executive branch (or do the work itself).

      All that your point does is make the (non-Ends controlling) point analogous to Congress letting the Office write (in the first instance) a law such as the one in Tam that was struck down.

  12. Ah, substative vs. procedural. As messy a problem in the administrative law as it is under Erie v Tompkins. Every court struggles with that. The PTO doesn’t–they just take a position that is 100% dead wrong. That’s another article for another day.

    Here, there’s no “might” about it. Lots of CCPA and Federal Circuit cases tell us that Jepson claims are suicide, on both validity and infringement.

    1. Right – the admin-law boundary line is irrelevant for the Jepson claim since its really clear that these are generally detrimental to patentees.

    2. I have seen Jepson-type claims used effectively in litigation like this:

      Claim 1 recites A, B, and C.

      During prosecution the claim is rejected over prior art that describes A, B and C. The Applicant and Examiner agree during an interview that the prior art does not show A, B, C and D. The Applicant amends claim 1 to recite A, B, C and D. The Applicant adds a Jepson-type claim that says the says, “A widget having a A, B, and C, wherein the improvement comprises using D” or “using D to XYZ.”

      Then in litigation there is little to no validity fight over A, B, and C. The validity fight is over D, and it’s a problem/solution narrative about all the hard work that went into figuring out D. When the defendant declares, “D is simple and easy, and anybody can do it,” the Plaintiff responds,”Yes! which is why you can and want to use D – it’s an easy and inexpensive way for you to access a market.”

      1. This is interesting. One of the fears for patent attorneys is that they do not know the prior art well enough and so stating clearly that “the improvement is XYZ” will come back to bite them once we find out that its known in the art.

        Your suggestion here is for patent attorneys to add a Jepson claim once examiner has searched the prior art and found some allowable subject matter.

        1. At least logically, the Examiner shouldn’t argue with it if she is on board with adding D to make A,B,C and D allowable.

  13. David – Thanks for writing this and bringing-in Administrative law issues.

    DB argues that: “the PTO has no relevant substantive rule making authority, and therefore has no power to dictate any matter of claim form that might have substantive consequences.”

    For me, the difficulty here that needs teased-out is what is meant by “might” and who has the burden of proving substantive consequences.

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