IP Law Bulletin

In the recent case of Ropes & Gray v. Jalbert, No. SJC-10333 (July 28, 2009), the Supreme Judicial Court of Massachusetts held that attorneys’ liens for services rendered but not paid for in connection with the prosecution of patent applications can attach to the applications, letters patent issuing thereon, and their proceeds. This is not to say that patent applicants or patentees must pay their lawyers, but it is to point out that failure to do so can complicate their patent lives.

On August 24, 2009 the USPTO issued interim instructions to examiners for handling 35 U.S.C. §101 rejections. These instructions provide guidance to examiners while awaiting the U.S. Supreme Court’s 2009 / 2010 decision in In re Bilski, which, as patent practitioners are surely aware, concerns patentable subject matter under §101. In the meantime, these instructions can also provide practical guidance to applicants and patentees in claim drafting, amendments to and arguments regarding pending claims, and evaluation of issued patent claims. A copy of the interim guidelines can be found here at the USPTO’s website.

Determining whether an invention would have been obvious to one of skill in the art has been an evolving analytical balancing act. Arriving at a determination of obviousness, without using hindsight, is a problem that the Federal Circuit attempted to solve by codifying the “teaching, suggestion, or motivation” (TSM) test that had been used in some form for the past several decades. Almost two and half years ago, however, the Supreme Court rejected a rigid application of the TSM test by issuing its ruling in KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007). In KSR, the Court ruled that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim,” but instead “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 14. The Court further stated that an obviousness analysis must “ask whether the improvement is more than a predictable use of prior art elements according to their established functions.” Id. at 13. Now that time has passed since the KSR decision, it is insightful to look at what effect this newest standard has had on everyday practice before the United States Patent and Trademark Office (USPTO).

Patent practitioners struggle daily with interpreting and arguing obviousness under KSR while prosecuting patent applications before the USPTO. KSR’s broader approach to obviousness can often seem quite arbitrary in every day practice. Since KSR, there have been a number of precedential Board of Patent Appeals and Interferences (BPAI, the Board) decisions that shed light on how the USPTO views the TSM test since KSR. In particular, shortly after KSR, the Board issued three precedential decisions seeming to indicate that the USPTO would no longer use the TSM test. More recently, however, the Board issued three other precedential decisions that are more of a mixed bag and may signal that the USPTO is willing to apply the TSM test and require some minimal explicit motivation for combining prior art references.

Those first three BPAI decisions following KSR involved applications in the mechanical (Ex Parte Smith, No. 2007-1925 (Bd. Pat. App. & Int. June 25, 2007)), electrical (Ex Parte Catan, No. 2007-0820 (Bd. Pat. App. & Int. July 3, 3007)), and biotechnological (Ex Parte Kubin, No. 2007-0819 (Bd. Pat. App. & Int. May 31, 2007)) arts. In all three cases, the Board rejected application of the TSM test and only applied KSR. In two of the three opinions in its most recent trilogy, however, the Board used the TSM test to support its decisions made primarily under KSR.

The first of the most recent three cases is Ex parte Fu, No. 2008-0601 (Bd. Pat. App. & Int. March 31, 2008) in which a representative claim was directed to a charge transport layer consisting of a poly(flouroacrylate)-graft-poly(methyl methacrylate) surfactant. Id. at 2-3. The Examiner relied on an “obvious to try” rationale and maintained an obviousness rejection over art that disclosed a surfactant having a perfluoroalkyl radical, without limitations to a particular species. Id. at 13. The Board found that while the genus of surfactants disclosed by the prior art was arguably broad, it consisted of a finite number of surfactants that could be tried to solve the problem that the applicant was attempting to solve. Id. at 14-15. The Board noted that the Examiner’s analysis passes muster even under the “more rigorous” TSM test. Id. at 15.

Ex parte Whalen II, No. 2007-4423 (Bd. Pat. App. & Int. July 23, 2008) claimed a composition for embolizing an aneurysm having a high relative viscosity. Id. at 2. The Examiner rejected the claims as being obvious over art having the same composition with a lower relative viscosity arguing it would have been obvious to optimize the prior art composition by using a higher viscosity. Id. at 14. The Board reversed the Examiner stating that the Examiner had not explained why a person of ordinary skill in the art would have had a reason to modify the prior art compositions with a higher viscosity. The Board acknowledged that the Supreme Court had not discarded the TSM test altogether in KSR and stated that there still must be some “apparent reason to combine the known elements in the fashion claimed” and that the reason must be explicit. Id. at 15-16.

Finally, in Ex parte Jella', No. 2008-1619 (Bd. Pat. App. & Int. November 3, 2008), claims directed to garage panel doors having a specific height were rejected by the Examiner as being obvious over art teaching doors of the same construction with a different finished height. Id. at 8-9. The Board agreed with the Examiner that the finished height of the door was a matter of design choice and would be a predictable result were someone having ordinary skill in the art to modify a commercially available door. Id. at 11. Regardless of a lack of teaching in the art and a number of secondary considerations cited by the appellant, the Board stated that this was an example of market demand driving a design trend. It did not use the TSM test and cited KSR as warning against granting patent protection to advances that would occur in ordinary course without real innovation. Id. at 13.

Out of the three more recent BPAI opinions, two used the TSM analysis in support of their decision. Even though Ex parte Jella' held strictly to KSR without mentioning the TSM test, the Board in Ex parte Whalen IIacknowledged that there still must be an “apparent reason to combine” prior art elements and that these reasons must be made explicit. There is no doubt that KSR has changed how obviousness is argued before the USPTO, but perhaps the BPAI has begun to provide assurance to patent practitioners and signal that the USPTO is beginning to recognize the unpredictability that has so often plagued obviousness rejections afterKSR.

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.

As many patent practitioners are doubtless aware, there is substantial redundancy in the prosecution of patent applications around the world. The Patent Prosecution Highway (PPH) is intended to reduce duplication of effort by allowing the patent office in a country of second filing to take advantage, at least partially, of the work of the patent office in the country of first filing. When a PPH alliance is in place, an office of second filing (OSF) can use the search results from the office of first filing (OFF) to accelerate their examination. Also, because only allowed claims from the OFF are eligible for examination in the OSF under the PPH, claim amendments have usually already been made to distinguish over any relevant prior art, further accelerating prosecution.

The PPH program first began with a trial program between the U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) in July 2006. The U.S. PPH program has since grown to include links with the United Kingdom (UKIPO), Korea (KIPO), Canada (CIPO), Australia (IPAU), Europe (EPO), Denmark (DKPTO), Singapore (IPOS), and Germany (DPMA). In January 2009, the effort between the JPO and the USPTO became the first fully implemented PPH program, with PPH programs between the USPTO and the UKIPO and the KIPO following since.  Current details on the PPH programs available with the USPTO are available at the USPTO website at http://www.uspto.gov/web/patents/pph/index.html. Other pairs of patent offices have also implemented PPH programs, e.g., the JPO has established PPH programs with the KIPO, UKIPO, DKPTO, DPMA, National Board of Patents and Registration (NBPR) of Finland, and Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT).

Value Of The PPH  

Although some caveats will be discussed in more detail below, PPH programs seem to at least increase allowance rates and reduce a number of office actions. For example, the USPTO has reported a PPH application allowance rate of about 94%, or more than double the usual allowance rate, and the average number of office actions is approximately half that of other U.S. patent applications. The CIPO has reported that approximately 35% of the PPH applications were deemed allowable without an examiner’s report, and many of the remaining PPH applications resulted in an examiner’s report that merely required correction of informalities.

Requirements Of The PPH 

Not every application is eligible for entry to an OSF through the PPH, and there are a number of requirements that must be met. First, the application must be an application claiming priority under the Paris convention, a National Stage of a PCT application, or a bypass continuation application. Second, the application must have at least one claim allowed by the OFF. Third, claims provided to the OSF must correspond in scope to the claims found to be allowable in the OFF. Fourth, examination of the application must not have yet begun in the OSF. If these initial conditions are met, then an applicant can file a Request for participation in the PPH program.

USPTO Example

If the USPTO is the OSF, then in addition to the Request for participation in the program, the applicant must also submit an appropriate petition to make special and the required petition fee, copies of all office actions from the OFF that are relevant to patentability, including translations if the office actions are in a foreign language, a table that indicates the correspondence between each claim in the OSF application with an allowed claim from the OFF, and an information disclosure statement listing all the documents cited by the OFF. When the OFF is the EPO or JPO, the applicant can request that the USPTO obtain documents such as office actions and cited references electronically via the Dossier Access System. The USPTO will then review the submission and give the applicant one chance to bring the application into compliance if it is found lacking.

If the Request for participation in the PPH program is granted by the USPTO, then the application will be examined in advance of earlier-filed applications by a supervisory patent examiner. The examiner will then issue an office action indicating allowable claims; other claims will be rejected or objected to with written arguments as in normal examination. The applicant can then respond as usual, with the limitation that any amendments must still correspond to one or more allowable claims from the OFF as shown in a new correspondence table filed with the amendment.   

EPO Example

It is important to note that as of the date of this article, the EPO-USPTO PPH is still a trial program. It is also important to note that the EPO PPH program is not open to ex-PCT applications that have entered the European phase. Unfortunately, this excludes the majority of applications with a U.S. priority claim that are eventually filed in the EPO. For an eligible application filed in the EPO, an applicant will be invited to amend the claims of their pending European patent application to conform to the claims of a corresponding U.S. patent that has issued or is about to issue. As in the U.S., the original or amended claims in the European application must sufficiently correspond in scope to the patentable/allowable claims in the USPTO application and a claims correspondence chart must be filed indicating the correspondence between the European application claims and the allowable claims in the U.S. application.

The applicant must also submit copies of all office actions from the USPTO that are relevant to patentability and copies of all the documents cited in the USPTO office action except for European patents of published European applications. However, if these documents have already been filed in the U.S. application before the Request for participation in the PPH program, they do not need to be resubmitted. Instead, the applicant may simply refer to them in the Request for participation indicating when the documents were previously filed in the U.S. application. When the Request for participation in the PPH program is granted by the EPO, the European application will be advanced out of turn for examination and processed under the “programme for accelerated prosecution of European patent applications,” or PACE.

Examples Of The PPH With Other Patent Offices

When the USPTO is the OFF, a PPH Request can be filed in the OSF for fast-track examination of claims that correspond to the claims found allowable in the USPTO. Each OSF will then follow its own rules and practices during examination of the claims presented in the OSF application. Eligibility requirements and application procedures vary among PPH programs, and can even be different for the OFF and the OSF in the same PPH program. Different fast-track procedures may be carried out in each OSF, e.g., the JPO only accelerates the first round of examination to issue a first action within 2-3 months after the PPH request is filed (the usual average time is 26 months). It is therefore important to check current PPH requirements and procedures in each OSF of interest.

Risks And Rewards   

There is necessarily a narrow window of opportunity for entry into a PPH program. The application must not have been filed so recently that prosecution in the OFF has not reached a successful conclusion or have been filed so long ago that examination has already begun in the OSF. Applicants wishing to take advantage of the PPH must therefore keep abreast of the prosecution status of related applications in the OFF and the OSF countries so that once a notice of allowance issues in an OFF, a request to enter the PPH can be made as soon as possible before an examination report or office action issues in the desired OSF.

There is also a risk that none of the claims allowed by the OFF under their patent laws and rules will be allowable under the patent laws and rules of the OSF. In fact, for some types of claims, there is a significant risk that there could be no allowable corresponding claim in the OSF. Applicants should also consider the possibility that amendments made during prosecution in the OFF could narrow the claims more than would be required in the OSF. For example, an amendment made during U.S. prosecution to overcome a rejection based on prior art under 35 U.S.C. §102(e) may not be required in the EPO where such a reference might not be considered prior art. Another example are the varying standards for obviousness and inventive step in different countries. There is also a concern that negative comments by the examiner in an OSF might be used during litigation against the patent granted in the OFF.

In effect, the applicant takes these risks, as well as giving up the chance to more carefully craft claim language and limit admissions in prosecution, in exchange for earlier examination and possible earlier enforceable patent protection. This trade off can be of particular interest in fast moving technologies such as computers and electronics, as well as for applicants involved in cross-licensing negotiations where the PPH can provide a means to secure rights to claims that, while possibly narrower, still read on a competitor’s products.

Effective PPH Strategies  

Strategic approaches can be developed to maximize the advantages offered by PPH programs and to avoid or mitigate any potential disadvantages. At the outset, applicants must be aware of issues of subject matter, priority relationships between applications, claim scope, and timing in order to take advantage of PPH programs. Further strategic considerations include:  identification of eligible pairs of OFF and OSF applications; identification of potential future OFF and OSF applications; the choice of a preferred OFF or OSF for a pair of applications; the management of prosecution timelines to maximize the chance that a pair of applications will be eligible for PPH; identification of the subject matter, claims, and claim format suitable for each PPH program; and if appropriate, preserving the ability to protect other inventions or subject matter outside of PPH programs.

Another important consideration can be the development of a strategy based on continuation practice in the U.S. by which many of the disadvantages of the PPH can be eliminated. For example, in an unexamined U.S. patent application with claims to multiple inventions, the claims that correspond to allowable claims in an OFF application can be examined under the PPH, and the claims to other inventions could be filed in U.S. divisional and/or continuation applications to be prosecuted separately. In another example, an applicant with a U.S. application corresponding to allowable claims in an OFF application can file a continuation application from the U.S. application and request that the continuation application be examined under the PPH.  Such a strategy can preserve the broader claims in the first U.S. application for conventional prosecution while accelerating prosecution of claims corresponding to the allowable OFF claims in the continuation application.

Conclusion

PPH programs offer important benefits such as accelerated patent grant, high allowance rates, and the potential for significant cost savings. An applicant wishing to learn how they can benefit from PPH programs should contact qualified patent counsel who can review their portfolio of patents and patent applications and identify strategies for maximizing the potential benefits of PPH programs.

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.

While examiners often request practitioners submit proposed amendments and/or proposed topics of discussion prior to an interview, we recommend practitioners be cautious as to material submitted. Applicants do not want materials on the record that could be misconstrued at some later point in time.

The preferred way to inform the examiner about topics to be discussed during an interview is by way of a telephone call in advance of the interview. Practitioners may also consider generally proposing ideas for amendments during such a call, without identifying the specific wording. For example, the practitioner may state, “I may be willing to consider amending the pusher member of claim 1 to include the gauge feature discussed in paragraph 43.”

If the examiner requires interview topics to be discussed be submitted in writing, a simple, bullet-point outline including a general description of the topics for discussion may be sufficient for the examiner. We have not found that examiners require specific positions be included in such an outline, and we recommend practitioners avoid including specific positions if possible. It may be helpful, however, to direct the examiner to particular areas of the prior art to review before the interview so the interview can be spent discussing the topics rather than reading the references.

With respect to proposed amendments, practitioners should evaluate whether to submit the amendments based on the particular situation. While in some instances it may be easy to discuss the proposed amendments orally during the interview, in other instances it may be advantageous to submit written amendments prior to the interview. For example, if the amendments are not particularly substantive, such as to address a 35 U.S.C. §112 issue, there may be no foreseeable harm to having them on the record. Alternatively, if the amendments are substantial but likely necessary, it may be useful to submit them prior to the interview because trying to discuss the proposed amendments without having a written reference may be neither effective nor efficient. However, as with any document that will be made of record, we recommend that before submitting such amendments, practitioners consider how the proposed amendments may look to an adverse party in the future if the proposed amendments are not formally entered.

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.

August 11, 2009

After more than fifteen years of ad hoc formulations that differed more or less from the familiar four-part test for issuing preliminary injunctions, the Federal Circuit has brought some much-needed clarity to its confused standard for preliminary injunctions in patent cases with its decision in Titan Tire Corp. v. Case New Holland, Inc. Following Titan, it will be harder for alleged infringers to fend off meritorious preliminary injunction motions. A mere “whiff” of invalidity will no longer suffice.  Instead, the alleged infringer will be unable to escape an injunction without showing that it has a likelihood of success on the merits of its invalidity defense in light of the clear and convincing burden of proof it bears at trial.

Since the early 1990s, the Federal Circuit has used the unique phrase “substantial question” of invalidity to describe what an alleged infringer must show to overcome the patentee’s likelihood of success on the merits (the first prong of the traditional four-part test that also includes a showing of irreparable harm, balancing of the equities, and a look at the public interest). This seemingly innocuous “substantial question” standard has created confusion among district courts regarding the amount of evidence needed for an alleged infringer to defeat a preliminary injunction. The Federal Circuit has compounded that confusion by employing the phrases “vulnerability” and “casting of doubt” in its attempt to explain the meaning of its “substantial question” phrase.

Some district courts have interpreted the “substantial question” standard as allowing an alleged infringer to show something less than a fifty percent chance of success on the issue of invalidity. Such a result makes nonsense of the very concept of “likelihood of success” and disregards the Supreme Court’s 2006 decision in eBay, Inc. v. MercExchange, LLC, which held that the traditional four-part test for injunctive relief applies in patent cases as in all other cases.

In Titan, the Court finally made some headway in explaining that “substantial question” of invalidity is simply a re-articulation of the “likelihood of success on the merits” factor of the preliminary injunction test. The Court began by confirming that there is no special preliminary injunction standard for patent cases per eBay. The “substantial question” analysis simply acts as a tool for evaluating the primary issue at the preliminary injunction stage—has the patentee established a “likelihood of success” on the merits?:

Asking whether the challenger has raised a substantial question of invalidity in the manner we have described may be a useful way of initially evaluating the evidence, but the ultimate question regarding the first preliminary injunction factor remains that of the patentee’s likelihood of success on the merits.

When analyzing whether there is a “substantial question” of invalidity, a trial court is therefore making a substantive determination as to the likelihood of prevailing on the validity/invalidity issue. While the patentee bears the burden of showing it is likely to overcome any validity challenge, the alleged infringer bears the ultimate burden of showing it is likely to prove invalidity at trial. That is, the burden does not just rest with the patentee to overcome any possibility of invalidity conjured up by the alleged infringer. Instead, the trial court “must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid.”

In short, the Court explained that “substantial question of invalidity” is simply another way of expressing the requirement that a patentee establish a likelihood of success on the merits with respect to validity in order to obtain an injunction. Such a demonstration, in turn, means that the alleged infringer has not established a likelihood of success on the merits with respect to invalidity. This follows because the issue of validity/invalidity sums to zero:  there can be only one likelihood of success on the merits of this issue and, thus, only one winner.

Titan’s holding that “substantial question” equals “likelihood of success” should eliminate any debate about the evidence of invalidity an alleged infringer needs to muster to defeat an otherwise meritorious preliminary injunction motion. This holding favors patentees because it should make it more difficult for alleged infringers to use flimsy invalidity challenges to avoid preliminary injunctive relief.

To read more about the history of “substantial question” and its interpretation by different courts, see the article calling for the Federal Circuit to abandon the standard published by Nutter attorneys in the Summer 2009 ABA Intellectual Property Newsletter.

This advisory was prepared by Nutter’s Intellectual Property Litigation Practice Group. 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.