IP Law Bulletin

Our January 2010 issue included a report about the initiative implemented by the USPTO to reduce the backlog of patent applications by permitting small entity applicants to expressly abandon one application and file a petition seeking special status for a second application. This initiative is sometimes referred to as the “Bump and Dump” program. To be eligible for this program 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 USPTO recently announced that this program has been extended through June 30, 2010. Small entity applicants that have unexamined applications that they are no longer interested in pursuing should consider taking advantage of this rule to expedite examination of another application.

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

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.

The United States Patent and Trademark Office (USPTO) recently released the statistics of the Board of Patent Appeals and Interferences (BPAI) for the fiscal year ending September 30, 2009. Of the 6,800 appeals disposed of in FY2009, the examiner’s rejection was wholly affirmed in slightly more than 50% of cases, affirmed-in-part in 14% of cases, and wholly reversed in 25% of cases. Additionally, more than 15,300 appeals were filed during FY2009, representing an increase of more than 140% over those filed in FY2008. Although the BPAI disposed of almost 40% more cases than in FY2008, the astonishing increase in appeals filed in FY2009 bloated the backlog of cases pending before the BPAI to almost 12,500, with an average pendency of 8 months. The BPAI’s Chief Administrative Patent Judge recently warned that, despite the additional 35 judges hired since 2007, the BPAI is ill-equipped to deal with the growing number of appeals. Without additional personnel and resources, the BPAI projects that the backlog of pending appeals could approach more than 21,500 cases, with an average pendency of 14 months, by the end of FY2010. Given that applicants and examiners typically spend about 11 months filing appeal briefs and replies before the case is even forwarded to the BPAI, applicants could soon be waiting on average more than two years after filing a notice of appeal to have their appeal resolved.

Many factors obviously must be considered before deciding to appeal a rejection. These include the strength of the applicant’s case and the extent of prosecution conducted thus far. Keeping in mind that examiners sometimes thwart the appeal process and simply reopen prosecution rather than file an examiner’s answer, other tactics must be considered as well. For example, new arguments and/or amendments may be able to resolve prosecution in a timely and satisfactory manner without an appeal. In some cases, the pre-appeal brief conference program, which offers the potential for an expedited review of the issues and a decision within 45 days of an applicant’s request, can prove to be a useful tool. It is estimated that about one-third of the cases in which the applicant has requested a pre-appeal brief conference result in an allowance or the reopening of prosecution without the applicant having to file an appeal brief. 

In cases where an appeal must be pursued, it is helpful that an applicant is entitled to a patent term adjustment equal to the number of days from the filing of the notice of appeal to a final decision by the BPAI in favor of the applicant. Similarly, a remand by the BPAI entitles the applicant to a patent term adjustment, so long as a request for continued examination (RCE) is not filed prior to the examiner’s issuance of a subsequent office action or a notice of allowance. While patent term adjustments mitigate some of the risk associated with filing an appeal, the current backlog of appeals in the BPAI and the resultant delays should incentivize applicants to carefully consider their options before moving forward with an appeal.

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

In July of 1994, Dr. Lister registered with the United States Copyright Office a manuscript describing a method of playing golf in which players use a golf tee on any shot that is not in a designated hazard area or on a green. Later learning that his copyright registration would not protect any potential invention, he filed a patent application directed to his method in August of 1996.

Following several rounds of rejections and amendments, including two appeals to the Board of Patent Appeals and Interferences, the Federal Circuit decided whether Dr. Lister’s registration of his manuscript with the U.S. Copyright Office qualified as prior art under 35 U.S.C. § 102(b) against his own patent application. The Board previously overturned a rejection under 35 U.S.C. § 102(a) that relied on Lister’s manuscript because it was held that an inventor’s own manuscript cannot be prior art under 35 U.S.C. § 102(a). ¹

The parties did not dispute the existence or the date of Dr. Lister’s copyright registration for his manuscript. The parties also did not dispute that the manuscript disclosed the claimed invention. The parties did dispute whether the manuscript was publicly accessible.

Generally, a publication is considered publicly accessible if it is available to persons interested and having ordinary skill. A publication does not need to have actually been accessed to be considered publicly accessible. Further, convenience is not a factor in determining public accessibility. While cases involving disclosures stored in libraries have held that a reference must be cataloged, indexed, and shelved in a meaningful way to provide public accessibility, cataloging and indexing is not a requirement of public accessibility.

Dr. Lister’s manuscript was available to the public both through the U.S. Copyright Office, and through private databases provided by Westlaw and Dialog. In the present case, it was determined that the access provided by the U.S. Copyright Office was not sufficient to be considered publicly accessible because it did not allow for searching in a meaningful way. At the time, searching of U.S. copyright registrations could only be performed by searching the last name of an author or the first word of a title. The Westlaw and Dialog databases, on the other hand, were considered publicly accessible because they allowed for keyword searches of the title (but not the full text) that would have allowed an interested person having ordinary skill to locate Dr. Lister’s manuscript.

Although the Westlaw and Dialog databases were considered publicly accessible, the rejection could not be maintained because the examiner was unable to establish when Dr. Lister’s manuscript was made available for search by either Westlaw or Dialog. Further, the evidence did not contain any information related to the general procedures practiced by Westlaw and Dialog for cataloging copyright registrations. In view of prior “thesis” cases that relied on general procedures to prove a likely publication date, it is likely that such information would have been sufficient to prove a likely date by which Dr. Lister’s manuscript was made available for search by either Westlaw or Dialog.

Comparing the situation to one in which an examiner finds a reference on the Internet but is unable to prove when the reference first appeared on the Internet, the Federal Circuit determined that Dr. Lister’s reference could not be relied upon to reject Dr. Lister’s patent application under 35 U.S.C. § 102(b) without first establishing that it was publicly accessible on either Westlaw or Dialog more than a year prior to the filing date of Dr. Lister’s patent application. The Board’s decision was thus vacated and remand ordered.

Despite the favorable decision for Dr. Lister in this particular aspect of his prosecution, we do not believe this case should change the behavior of those filing patent applications. Potential patentees should remain cautious with any publications they make that could include disclosures of potential inventions. As our readers know, the public disclosure of an invention begins the one year window in which patent applicants have to file a patent application in the United States and terminates the opportunity patent applicants have to file a patent application in most every other country. Pinning one’s hopes to some other organization’s publication policies is generally not prudent. Thus, applicants benefit from filing an application before, or at the very least within one year of, any public disclosure that could possibly be construed as disclosing aspects of a potential invention.

 ¹ An inventor cannot disclose his or her own invention before he or she invents it.  Thus, 35 U.S.C. § 102(a) requires disclosure by another  that would provide evidence that a patent applicant is not the first to invent.

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