IP Law Bulletin

In only their fourth precedential decision of 2009, the Board of Patent Appeals and Interferences (BPAI) in Ex Parte Tanaka (December 9, 2009, Appeal No. 2009-000234) considered permissible bases under 35 U.S.C. § 251 for a patent to be eligible for reissue. This decision by an expanded panel expressly overturns any contrary precedent that allowed reissue based on a submission of one or more narrower claims as a hedge against potential invalidity of the issued claims. A reissue application must satisfy § 251, which requires that through error without deceptive intent, a patent be wholly or partly inoperative or invalid because of defects in the specification or drawings or because the patentee claimed more or less than he is entitled to. The BPAI held that merely submitting a narrower claim to hedge against possible invalidity of the original claims, without particularly identifying any inoperability or invalidity of any of the issued claims, is not sufficient grounds for reissue. In light of this decision, patent practitioners considering reissue should carefully evaluate whether their bases for reissue satisfy the requirements of § 251.

A copy of the Tanaka opinion can be found on the USPTO website at the following link.

China’s patent system provides three types of patent rights: invention, utility model and design. Utility models are used extensively by Chinese applicants but foreign applicants have filed only a small number of utility model applications. Among other changes, a recent amendment to Chinese patent law, which became effective as of October 1, 2009, clarifies that an applicant can apply for both invention and utility model patents on the same invention but requires that the applicant abandon the utility model patent in favor of the invention patent when the invention patent grants. This clarification brings to light a filing strategy not often pursued in China by foreign applicants.  

As mentioned, China has three types of patents: invention patents, utility model patents and design patents. A Chinese invention patent is similar to a U.S. utility patent and protects a new technical solution relating to a product, a process or an improvement thereof. A Chinese utility model patent, on the other hand, covers a new technical solution relating to a product's shape, structure or a combination thereof.  

Utility model patents, which have a 10-year term, are not substantively examined and are granted after a formal examination, which generally takes about one year to 1.5 years or less. In contrast, invention patents, which have a 20-year term, are substantively examined and can take three years to five years to grant.

It can therefore be advantageous for applicants to file applications for both a utility model application and an invention patent application so as to gain the advantage of early issuance of a utility model patent. However, many foreign applicants do not follow this strategy. According to statistics from State Intellectual Property Office (SIPO), in 2008, 99.3% (223,945) of utility model applications were filed by Chinese applicants. Foreign applicants filed only 1,641 utility model applications (0.7%). These statistics are nothing new. Since 1985, approximately 99.7% of utility model applications have been filed by Chinese applicants with foreign applicants accounting for only 0.3% of utility model applications. A possible explanation is that foreign applicants, particularly those from countries where no similar system exists, are simply unfamiliar with Chinese utility models.  

Strategic Considerations
A basic strategy for filing in China could include filing both invention applications and utility model applications. Such a strategy can be advantageous because the relatively short period of time from filing to grant of a utility model application can be combined with the longer term of an invention patent to yield an extended period of time during which an enforceable right is available. Furthermore, the scope of protection provided by the claims of the initial utility model is likely to be broader than the scope of the claims in the eventual invention patent.  

Moreover, objections on inventiveness grounds during prosecution of the invention application may not necessarily affect the enforceability of the utility model because the standard for evaluating inventiveness in utility model invalidation proceedings is different from the standard for invention patents. Also, if the utility model patent and the invention patent have different scopes of protection, then there will likely be no double patenting issues. Applicants can therefore take the strategy even further by initially filing broader claims in the utility model applications while pursuing narrower claims in an invention application.

Utility models can also be a quick and cost-efficient way to protect products with a short life cycle. Invention patents may not be desirable for products with short life cycles because prosecution can take several years and can be costly to maintain. In contrast, utility models can provide protection for these products at much earlier stage and are cheaper to obtain and maintain.

Sophisticated applicants may also want to consider filing utility model applications for patentability reasons. Chinese patent applications filed by foreign applicants usually claim priority from a foreign application, either through the Paris Convention or as national stage of a Patent Cooperation Treaty application. Upon entry into national stage in China, foreign applicants must choose to enter either as an invention application or a utility model application, but not both. However, by national stage entry, applicants might have an idea of the patentability of their inventions based on previous prosecution. As discussed above, utility model applications are not substantively examined and later invalidation based on lack of inventiveness is difficult.Thus, for those applications that may have difficulty in terms of inventiveness, applicants can strategically choose to enter China as a utility model application. This strategy can quickly yield an enforceable utility model patent.  

Lastly, the utility model can also be used in cases where urgent protection is needed. For example, if a product launch in China is rapidly approaching, a utility model application can be filed quickly without the time required for sophisticated drafting. In extreme cases, the utility model application can be filed with narrow claims that may only cover the actual product.  

Conclusion
The default practice for foreign applicants in China has traditionally been to file invention applications while overlooking utility models. However, the Chinese utility model system can be used to strategically to enhance the scope of patent protection in China. An applicant wishing to learn how they can benefit from the Chinese utility model system should contact qualified patent counsel who can review their filing goals and provide advice on an appropriate Chinese filing strategy.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

The Federal Circuit recently decided Wyeth and Elan Pharma Int’l Ltd. v. Kappos (Appeal No. 2009-1120, January 7, 2010) affirming that the United States Patent and Trademark Office (USPTO) has been miscalculating, and typically under-calculating, patent term adjustment. Patent term adjustment extends the effective term of a patent due to delays in its issuance. Under 35 U.S.C. § 154(b), a patent can receive a term adjustment for, among other things, (A) delays caused by the USPTO in meeting certain examination deadlines and (B) each day that issuance of the patent is delayed longer than 3 years due to delays by the USPTO. These delays are subject to an “overlap limitation,” which says the “the period of any adjustment granted…shall not exceed the actual number of the days the issuance of the patent was delayed.” The dispute in this case centered on the interpretation of how to calculate the actual number of days the issuance of the patent was delayed in an overlap situation.

Previous to this case, if there were any overlaps in delays, the USPTO would simply adjust the patent term by the greater of the A and B delays. For example, if the A delay was 610 days, the B delay was 345 days, and there were 51 days of overlap, the USPTO would grant a patent term adjustment of 610 days. However, the Federal Circuit determined that the patent term adjustment should instead be calculated by adding the A and B delays and subtracting the actual number of days overlapping. For example, if the A delay was 610 days, the B delay was 345 days, and there were 51 days of overlap, the patent term adjustment should be 904 days (610 + 345 – 51). As a result, the decision may give many patent holders an increase in patent term.

In response to the Wyeth decision, the USPTO issued a notice indicating that the Solicitor General will not seek further review of the decision, and that the USPTO is in the process of changing the manner it will calculate patent term adjustments under Section 154(b) to conform with the Federal Circuit’s decision.

Applicants dissatisfied with a patent term adjustment determination by the USPTO can seek review of that determination either by: (1) in response to a notice of allowance and before payment of the issue fee, filing a request for reconsideration of the patent term adjustment under 37 CFR 1.705 or (2) within 180 days of patent issuance, suing the USPTO in the United States District Court for the District of Columbia pursuant to 35 USC § 154(b)(4). Under some circumstances, it is also possible to request reconsideration of the PTA within 2 months of the issue date of a patent pursuant to 37 CFR 1.705(d).

A copy of the Wyeth opinion can be found on the Federal Circuit’s website at the following link.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Late last year in Ex Parte Rodriguez (October 1, 2009, Appeal No. 2008-000693), the Board of Patent Appeals and Interferences (BPAI) ruled that a claim in means-plus-function format was invalid under 35 U.S.C. § 112, second paragraph, as being indefinite because structure other than a computer, i.e., an algorithm, was not provided in the specification for performing claimed functions. This precedential decision thus serves as a helpful reminder to patent application drafters of the importance of clearly identifying structure in the specification for every means-plus-function claim element and of carefully considering whether a claim is a means-plus-function claim despite omitting the traditional means-plus-function claim phrase “means for.” The BPAI further determined that non-means-plus-function claims are invalid under § 112, first paragraph, as not being enabled if they do not particularly identify structure, i.e., an algorithm, for performing the claimed functions. Ex Parte Rodriguez also highlights the BPAI’s power to introduce new grounds of rejection, a potential hazard practitioners are prudent to consider in deciding whether to appeal rejected claims.

A copy of the Rodriguez opinion can be found on the USPTO website at the following link.

In an effort to reduce the backlog of patent applications, the USPTO has created a temporary additional basis under which a small entity applicant may have an application accorded special status for examination. Applications accorded special status will be placed in front of the Examiner for initial examination more quickly than other applications, but the examination process itself will not include expedited response periods. To take advantage of this program, an applicant who qualifies as a small entity can expressly abandon one application and file a petition seeking special status for a second application. Both applications must be unexamined, must have been filed earlier than October 1, 2009, and must either be owned by the same party or have at least one common inventor. Further, the abandoned application cannot be revived and fees associated with the abandoned application cannot be recovered. The program is now in effect and is being adopted on a temporary basis until February 28, 2010, although the USPTO may choose to extend it.

Additional details and requirements are available from the USPTO website via the following link.

Imagine…

You’ve traveled to the ends of the Earth to present your bid to the government ministers of a foreign potentate. The machinery you propose to offer in response to His Majesty’s request-for-proposal is superior to the products of your rival bidders.

As you wait in the foyer of the palace with your competitors, you observe, to your utter shock and amazement that one of your competitors has several key slides that are, to put it bluntly, exact copies of your own slides -- photographs of the machine you manufacture, charts and diagrams explaining its use and processes, etc. All that has been changed is the company name on the slides.

"What to do? Let’s remember first that notions of copyright, routed in the West by The Digital Millennium, are more honored in the breach than the observance in many places in the East."

So you’re not going to remonstrate with His Majesty or his ministers, and, besides, relief can be very satisfying in the form of an injunction issued by a U.S. district court.

You’re going to win the bid on the merits and then hurry home to sue your infringing competitor.

Except you can’t. You never registered your copyright in your marketing and sales materials. Who, you thought, would ever steal them? And a registered copyright is a prerequisite to bringing an action for copyright infringement in a U.S. district court (Federal courts have exclusive (no state courts) jurisdiction of copyright disputes).

When you create something (called a “work”), your copyright in the work arises automatically at the instant of creation. But this instant copyright is like a dead mobile phone without a charger. Great in theory but absolutely useless without its “charger,” i.e., a U.S. Copyright Office certificate of registration.

Well, you say, I’ll proceed to register my copyright. Good idea: fill out your application, pay the $35 (online) filing fee, and wait for the Copyright Office to get back to you (4-5 months).

UNLESS, and now finally to the point: you ask the Copyright Office to accord your application “Special Handling.” The fee is an additional $760, and with Special Handling, you can be in court, as was the accuser in this case, in five business days.

The story you have just read is based on a true story. The infringer in this case was hauled before a U.S district court. It is now subject to an injunction prohibiting infringement.

Appendix
You’re thinking, can’t I just put notice of copyright on my work and be protected? The answer is “no.” The familiar copyright notice is an historical artifact beloved of lawyers. But yes, as a practical matter, it will deter people who would otherwise be “innocent” infringers and it may help you make a case for “willful” infringement (and higher statutory damages), but in and of itself, it is neither necessary nor sufficient to protect your copyright.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

The USPTO has announced a “Green Technology Pilot Program” in which an applicant may have an application accorded special status and thereby be examined more quickly. The pilot program was implemented on December 8, 2009 and is made available to applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction. To participate in the program, an application must have a filing date earlier than December 8, 2009, and the applicant must file a petition to make special with the USPTO before December 8, 2010 and before a first Office Action is issued. There is no fee required for participating in the program, but the USPTO will accept only the first 3000 petitions to make special.

Additional details and requirements are available from the USPTO website via the following link.