USPTO - Public Comments Submitted for Patent-Eligible Subject Matter Under Alice v. CLS Bank

Here are the public comments in response to the USPTO's Request for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent-Eligible Subject Matter for the USPTO preliminary guidelines for examination of US patent applications under Alice v. CLS Bank which sets forth the abstract idea test for patent eligibility.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Prioritized Examination - That Rare and Controversial Bird!

Yesterday, Harold Wegner emailed his readers regarding the USPTO's prioritized examination which permits a final disposition (allowance or final Office action) within 12 months of the filing date. It's a pay to play procedure: a large entity pays $4,000, a small entity pays $2,000, and a micro entity pays $1,000.  But pre-filing search is avoided which can be expensive and risk a court challenge.

Given prioritized examination may result in allowance five months after the petition and the USPTO rarely declines it, I found it surprising only 1% of applications are requesting prioritized examination. Mr. Wegner says the USPTO granted prioritized examination for 6,693 applications of about 600,000 applications filed in FY 2014. The USPTO dashboard indicates traditional pendency is about 27 months.

Part of the answer may be a cost-benefit decision. Applicants are unwilling to pay these fees to get a final disposition sooner, since it might not result in an US patent, but a final action rejecting all of the claims. Harold Wegner notes "an informed colleague disputes prioritized examination as a metric to judge how many applicants want a speedy patent grant: 'A great majority of my clients would like a decision within one year. The problem is that the USPTO has never been able to play it straight. All of the programs that speed examination have had a much lower success rate for the applications that were expedited. To get a final rejection sooner is not the point at all.'"

In contrast, Mr. Wegner said another claims: "we use the prioritized examination system quite regularly. With every application, so far, we have received a Notice of Allowance, usually within 6 months. The trick is to file the prioritized application as a continuation of an already pending application and submit narrow, picture claims directed to the commercial embodiment, and leave the broader claims to the parent application.  I’m a huge fan of the prioritized system and it has worked very well for my clients."

Here's a couple of factors one might consider during the cost-benefit analysis: (1) will the patent claims be infringed upon issuance; (2) will investors or acquirers give you an increased valuation that will pay for having patents vs. applications (note you may see your valuation decrease a bit if the application(s) are under a final rejection); and (3) does the technology have a short "half-life," i.e., is having a patent within one year much better than two years from now?

Copyright © 2014 Robert Moll. All rights reserved.

Gene Quinn Erosion of Patent Rights Will Harm US Economy

Tonight, check out Gene Quinn's article Erosion of Patent Rights Will Harm US Economy. Basic idea? The Federal Circuit is creating an expansive view of what is obvious, while the US Supreme Court has a narrow view of what subject matter is eligible for patent protection. Gene also notes the Supreme Court's failure to replace the CAFC's machine and transformation test with a software patent eligibility test that can be consistently applied.

I agree and add we now get a test that encourages decision makers to rewrite patent claims to a pithy snippet that is surprise an abstract idea! The test then asks: Is what is left in the claim significantly more than an abstract idea? If it's just a computer, your software patent is ineligible! Yes, because software is such an important part of the US economy, such untrammeled law may ultimately harm it.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Hosting a Roadshow to Discuss First to File System of America Invents Act

The USPTO is hosting a nationwide roadshow to discuss the first inventor to file provisions of the America Invents Act in September - October 2014.

"The roadshow series will begin on September 16 and run through October 9, 2014, with stops in Concord, New Hampshire; Madison, Wisconsin; Dallas, Texas; Silicon Valley, California; and Atlanta, Georgia, as well as on USPTO campuses in Alexandria, Virginia, and Denver, Colorado. The roadshows in Alexandria on September 23 and Denver on October 2 will be webcast live through the USPTO website.

The roadshow events are free and open to the public. Seating is available on a first-come, first-served basis. For more information, including roadshow logistics, venues, and webcast access information, please refer to the AIA roadshow page on the USPTO website."

See USPTO press release for further details.

Copyright © 2014 Robert Moll. All rights reserved.

Joe Mullin - US Courts Trash a Decade's Worth of Online Documents, Shrug it Off!

Wow! Mr. Joe Mullin reports in US Courts Trash a Decade's Worth of Online Documents that the US Administrative Office of the Courts (AOC) removed online access to nearly a decade's worth of electronic documents from four US appeals courts, including the Federal Circuit.

Why the removal given the low cost of data storage and the Internet bandwidth? We are told it's due to an upgrade to Public Access to Court Electronic Records (PACER). Mr. Mullin notes that AOC refused to comment when asked why it gave no warning about the removal of the online access on August 10. So the public gets to travel to the courthouse or pay 7 - 10 cents per page thanks to AOC and PACER? Surely, you must be kidding, Mr. Mullin!

Copyright © 2014 Robert Moll. All rights reserved.

PTAB - Ariosa Diagnostics v. Isis Innovation Ltd. - Extraterritorial Depositions during Inter Partes Review

Today, the Patent Trial and Appeal Board (PTAB) issued informative decisions related to taking of an extraterritorial deposition in a foreign language. See inter partes review Ariosa Diagnostics v. Isis Innovation Ltd., IPR 2012-00022 (Paper 55 and Paper 67).

Also see the Board’s Informative Opinions Web page.

Copyright © 2014 Robert Moll. All rights reserved.

Shine Tu - Patent Examiners and Litigation Outcomes

Tonight, check out Shine Tu's Patent Examiners and Litigation Outcomes. Here is the abstract of the article:

"Conventional wisdom argues that unnecessary litigation of low quality patents hinders innovation, and that the PTO could play a role with its high grant rates. Accordingly, it is important to answer these questions: (1) which patent examiners are issuing litigated patents, (2) are examiners who are “rubber stamping” patents issuing litigated patents at a disproportionately higher rate, and (3) are examiners with less experience issuing more litigated patents? In sum, do patent examiners who issue litigated patents have common characteristics? Intuition would argue that those examiners who issue the most patents (approximately one patent every three business days) would exhibit a higher litigation rate. Surprisingly, this study suggests that this is wrong.

This study uses two new patent databases that code for nearly 1.7 million patents and approximately 12,000 patents that were litigated between 2010 and 2011. This study determined that (1) litigated patents mainly come from primary examiners (those examiners with more experience), and (2) primary examiners with between three to five years of experience and who grant between forty-five and sixty patents per year are contributing to the litigated patent pool at a higher rate than expected. Interestingly, the highest volume primary examiners (examiners who on average grant more than eighty patents per and have more than eight years of experience) do better than expected."

The study matches my observations. Less experienced examiners tend to have lower production and/or require amendments that unduly narrow applications. Higher volume primary examiners (e.g., having eight years of experience) tend to have a better understanding of patent law and their technology which increases the chance the issued patent will be worthy of litigation.

Copyright © 2014 Robert Moll. All rights reserved.

PriceWaterhouseCooper's 2014 Patent Litigation Study

Tonight, check out PWC's 2014 Patent Litigation Study - As case volume leaps, damages continue general decline. This study is interesting.

IP Navigator argues the explosion in patent litigation is a myth. IP Navigator's article states the study fails to support big tech's claim that patent litigation is out of control. Instead, big tech pushes the myth to pressure Congress to pass new laws that limit US patents. This makes sense as an incumbent wouldn't want strong patents held by startups. After all, it might shake up the status quo.

How do lobbyists and academics perpetuate the myth? Ignore that the increase in cases is partly due to the American Invents Act making it difficult to join multiple defendants in a single lawsuit, plus ignore that the increase in patent litigation is also due to an increase of US patent grants.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Patent Trial and Appeal Board Update

The USPTO's Patent Public Advisory Committee held a quarterly meeting and published a Patent Trial and Appeal Board Update on August 14, 2014.

In the Update, Chief Administrative Patent Judge Mr. James Donald Smith provides 41 PowerPoint slides that describe the operation of the PTAB.

Copyright © 2014 Robert Moll. All rights reserved.

Jay Walker's Patent Properties the ASCAP of Patent Licensing?

Jay Walker, Priceline founder, is launching a startup Patent Properties to produce a marketplace for patent owners much like ASCAP which represented musicians and publishers to reach an agreement where radio stations paid a reasonable fee to play songs licensed by ASCAP. Since 1920, ASCAP has collected nearly $1 billion in royalties.

Patent Properties hopes to make a marketplace for patent owners that will broker low cost deals between inventors and users. Mr. Walker states, "we believe that by using simplicity, technology and common sense that works for everybody, and especially by keeping prices very low, we can replicate in the intellectual property and patent world what ASCAP did in the music world." Walker notes only 5% of 2.3 million U.S. patents enforce are licensed due to the high cost of patent litigation and companies unwillingness to take a patent license until forced.

Patent Properties asks that a patent owner agree to a no-fault system that makes the patented invention available to companies that pay a monthly fee of $1,000 to license 100 patents deemed statistically relevant to the company's business. Mr. Walker states each time a patent gets packaged an inventor can expect on average $100/year.

Mr. Walker notes since it won't have permission to use all US patents, the subscribers will be provided insurance that covers 50% of legal costs arising from infringement lawsuits up to, of course, a limit.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - PTAB Webinar and PowerPoint Slides on 17 Questions Related to AIA Trials

As a follow up to the article USPTO Request Public Comments on American Invents Act Covered Business Method Review, Derivation, Inter Partes Review, and Post Grant Review:

The USPTO published a webinar and PowerPoint slides on 17 questions regarding practice in America Invents Act (AIA) Trials: webinar and slide set on July 29, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

I/P Engines, Inc. v. AOL, Google et al. Federal Circuit Holds US Patents Invalid & Stock Drops 70%

One of the more interesting software patent cases decided this year is I/P Engines, Inc. v. AOL, Google, et. al., because of the large damages at stake that led extensive arguments related to patent defenses (e.g., invalidity, non-infringement, laches, etc.).

Today, Mr. Joe Mullin reports the Federal Circuit (CAFC) agreed with some of the arguments and reversed Vringo's $30M damages and cut off future royalties on Google Ad words. See Mr. Mullin's article: After years of hype, patent troll Vringo demolished on appeal: Vringo stock drops 70%, as Google shuts down dreams of a billion-dollar payday. Note Vringo established I/P Engines as a patent holding company.

For a PDF copy of the CAFC decision: I/P Engines, Inc. v. AOL, Google, et al.

Although this per curiam decision is non-precedential, it reminds that sufficient legal resources can overturn even fact findings underlying a judgment of non-obviousness.

The concurrence showed how 35 USC 101 and 103 analysis continues to be conflated: "There is, of course, some 'overlap' between the eligibility analysis under section 101 and the obviousness inquiry under 35 U.S.C. § 103. Section 103, however, asks the narrow question of whether particular claims are obvious in view of the prior art. By contrast, the section 101 inquiry is broader and more essential:  it asks whether the claimed subject matter, stripped of any conventional elements, is ‘the kind of discovery that the patent laws were intended to protection."

Software patent cases such as this one may be difficult to decide, but it's hard to applaud rewriting a claim, concluding "the claim" is a patent-ineligible abstract idea, and labeling that activity as defending our Constitution. Is it just a concurring judge or the precursor of 35 USC 101 analysis?

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Requests Public Comments on Optimum First Office Action (Examination) and Total Patent Pendency

I am often asked how long will it take to get examination of US patent application. People know that issuance of a US patent is not guaranteed, but also want a sense of how long it will take on average if all goes well. The USPTO is aware this is a common concern so published Request for Comments on Optimum First Action and Total Patent Pendency seeking the public's input on the optimal time from the filing date to get the first Office action and a US patent.

Five years ago, the USPTO targeted ten months for the first action and twenty months for issuance. The USPTO states in the last four years it reduced average first action pendency from 25.7 months to 18.1 months, and reduced average total pendency from 35.3 months to 28.1 months.

This sounds like good news for patent applicants, however, the USPTO concedes that the average pendency in both cases does not include applications in which a Request for Continued Examination (RCE) has been filed. Since RCE's constitute nearly half of all of the applications pending, it seems that it would be appropriate to see how they affect the pendency values.

Patent Public Advisory Committee (PPAC) notes it "supports reducing pendency and while the proposed levels are laudable, there is nothing magical about the proposed pendency times."

I am glad the patent pendency problem is being reviewed, but note reducing patent pendency to the target amounts (e.g., 10/20 months) is ultimately in the USPTO's hands, not ours. At the same time, the America Invents Act (AIA) has a number of options to reduce pendency:

• Prioritized Examination: Payment allows a final disposition of an application within a year.
• Patent Prosecution Highway: Advances an application if its claims were allowable in an earlier counterpart application.
• First Action Interview: Grants an interview before the first Office action.
• After Final Consideration Pilot (AFCP) - authorizes additional time for examiners to consider after final rejections.
• Quick Patent IDS - Eliminates need for a RCE to submit an information disclosure statement for consideration by the examiner after issue fee payment.

Copyright © 2014 Robert Moll. All rights reserved.

Conversant Offers Help: Patent Troll Letter or Notice Letter?

Tonight, Conversant's ad on IP Watchdog asks if we have received a patent troll letter. Here's what Conversant offers:

1. A quiz, a video, two articles, and two letters to help us understand the difference between a patent troll demand letter (bogus) from a patent notice letter (legit);

2. An opportunity to share one's patent troll experiences with others; and

3. An opportunity to see a streaming RPX ad and Professor Rubin Feldman's quote that 70% of VC-backed startups have received a demand letter.

Unfortunately, I don't feel like taking a quiz or sharing with others at 11 pm. Also not to fixate on a typo, but it's Professor Robin Feldman not Rubin.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Statistics on AIA Procedures

Tonight, I was curious how many people are taking advantage of the America Invents Act (AIA) procedures such as inter partes review and preissuance submission. I started by checking on the USPTO web site, which has a page AIA statistics that gives the raw number of filings for the AIA procedures from their inception on September 16, 2012 up to June 30, 2014.

First, some AIA procedures are being increasingly used while others are ignored. For example, inter partes review is more often than not the key strategy to consider if you have been sued for patent infringement.  Thus, I expect patent infringement actions without a concurrent inter partes review to become even more rare (i.e., Concurrent court/USPTO cases are about 2/3) as defendants become aware of the benefits. In contrast, covered business method patent review filings don't appear be increasing in a big way due to the subject matter restriction, and perhaps because inter partes review is more cost effective. We don't know much about post-grant review just yet, since the first petition was just filed and we still don't have that many issued US patents filed after March 16, 2013.

As far as the other administrative procedures, preissuance submission is seeing only a modest number of filings (e.g., 100 filings is a good month!) given the number of applications pending in the USPTO. Supplemental examination has seen surprisingly little use (e.g., 7 filings per month).

Note the raw filings do not indicate they complied with US patent law and regulations.

Also see the USPTO data for the administrative trials at the PRPS Filing System.

Copyright © 2014 Robert Moll. All rights reserved.

Professor Dennis Crouch - A Few Problems at PTAB

Professor Dennis Crouch has an interesting article on problems at the Patent Trial and Appeal Board (PTAB). See A Few Problems at PTAB. Among other things the article discusses the ballooning backlog of ex parte appeals before PTAB. Professor Crouch notes "In 2006, there were fewer than 1,000 pending ex parte appeals at any given time. That figure steadily and rapidly ballooned to a seeming high-point of over 25,000 pending ex parte appeals."

Despite the fact administrative judges must also handle AIA Trials, this ballooning backlog of ex parte appeals is startling. Professor Crouch states the ex parte appeals face a three-year delay to get a decision. Of course, this is why many applicants file a request for continued examination (RCE) rather than appeal. Note 46% of all applications are based on RCE's today.   

Copyright © 2014 Robert Moll. All rights reserved.

AIPLA's Response to Request for Guidance Pertaining to Patent Eligible Subject Matter (re:Alice)

As a follow up to how the USPTO will interpret software patent eligibility post-Alice, the AIPLA has published its comments:

AIPLA Reponse to "Request for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent Eligible Subject Matter (re: Alice), July 31, 2014

Because those against software patents may consider the Alice decision a victory, it is worth reading the AIPLA's comments. Beside being I think the largest organization of US patent attorneys, its moderate views are more likely to be adopted by the USPTO.

Note it is becoming apparent many of the criticisms against patenting software inventions could be made against patents in general. So why the attack on software patents? Big tech lobbying by the incumbents.

Copyright © 2014 Robert Moll. All rights reserved.

WSJ Article - Bose Sues Beats Over Noise-Cancelling Patents

The WSJ article reports that Bose Sues Beats Over Noise-Cancelling Patents:

"Bose is suing Beats Electronics, the headphone and speaker maker that Apple agreed to acquire for $3 billion earlier this year, for infringing on patents related to its noise-cancelling technology."

"Bose filed the lawsuit on Friday in U.S. District Court in Delaware, saying that Beats – known for its colorful and flashy headphones – had infringed on five of its patents pertaining to its noise-cancelling headphones. Bose also filed a complaint to the U.S. International Trade Commission, seeking to halt the sale and import of certain Beats products."

I have not studied the merits of this suit, but it seems the delay in filing the suits won't help. Bose must have known of the infringement before the acquisition by Apple and if so, lost an opportunity to get a favorable settlement and now faces a very experienced patent defense team.

Copyright © 2014 Robert Moll. All rights reserved.

What is the Probability of Receiving a US Patent?

Tonight I point to What is the Probability of Receiving a US Patent? which gives insight into US patent examination, including the fact different technologies and entities have different allowance rates. Worth reading if you trust in big data for strategy decisions, but at the same time a bit out of date for an article published in 2014, since it is based on applications filed in 1996 -2005.

Here is more detail taken from the author's abstract:

"We follow the prosecution histories of the 2.15 million new patent applications filed at the US Patent and Trademark Office between 1996 and 2005 to calculate patent allowance rates. 55.8% of the applications emerged as patents without using continuation procedures to spawn related applications. The success rate of applications decreased substantially from 1996 to 2005, particularly for applications in the “Drugs and Medical Instruments” and “Computers and Communications” fields. Applications filed by large firms are more likely to emerge as patents than those filed by small firms. We discuss the implications of our findings for inventors, policy makers, and social scientists who use successful patent applications as indicators of innovation."

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Patent Examiners Stressed Out!

In the article Inside the stressed-out, time-crunched patent examiner workforce, the Washington Post reports on what the patent community knows too well -- the emphasis on production quotas is stressing out US patent examiners. Until the USPTO can assess quality of examination and values it more than quantity of applications processed, there is no easy way out of the current environment.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Commissioner for Patents Explains the USPTO Implementation of Alice v. CLS Bank

The Supreme Court decision in Alice v. CLS Bank has had lots of critical commentary. Perhaps the most warranted is Alice affords at best murky guidance for decision makers (e.g., judges and examiners) seeking to determine if a software invention is an abstract idea. Many are puzzling over what the USPTO will consider patent eligible in the realm of business software. And this is not an academic point.

At least the USPTO is seeking to help the public. Recently, USPTO Commissioner for Patents Peggy Focarino posted Update on USPTO's Implementation of 'Alice v. CLS Bank'.

The Commissioner states the Supreme Court held the claims to "a computerized scheme for mitigating settlement risk" patent ineligible because they are drawn to an abstract idea. Somehow this reminds how the Court deleted many claim limitations to find the claim was a "scheme for mitigating settlement risk" then an abstract idea. This analysis has no objective principle and it gives no real credit to way applicant wrote the claimed invention. The scope of the claim is entirely up to the decision-maker. If the decision-maker is "anti-patent" the claim is paraphrased to a pithy gist that is abstract, the stripped out limitations are then brought back into the analysis but somehow deemed to be insufficient to render the claim patent eligible, and the applicant or patent owner is turned away for the audacity of seeking a patent on an abstract idea. 

On June 25, 2014, she notes the USPTO "issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp." Nice document but I don't see how to resolves what is an abstract idea anymore than the case.

Ms. Focarino notes the USPTO examiners reviewed a small group of applications (note actual number was not given) likely affected by the Alice and withdrew notice of allowances (i.e., withdrew from issuance) if the application includes one or more claims reciting an abstract idea and no more than a generic computer to be reexamined by the original examiner in light of Alice.

Of course, the USPTO can withdraw applications from issuance, but should probably just send all applicants a check rather than saying they must now request refunds.

I expect the public comments on the preliminary examination instructions to sound much like Sean Sullivan's comment to Ms. Focarino post:

"The problem with the preliminary examination instructions and the withdrawal of the notices of allowance is that there is no guidance as to how an "abstract idea" is determined. The post-Alice office actions have offered no analysis of whether a claim is drawn to an abstract idea, but rather a mere conclusory statement that the claim is abstract. This appears to have resulted in a per se exclusion of business method patents, which impermissibly broadens the scope of the Supreme Court decisions on subject matter eligibility."

Copyright © 2014 Robert Moll. All rights reserved.

PTAB Rejects Petition for Covered Business Method Patent Review Because Previously Filed DJ for Invalidity

No surprise in the first precedential decision of the Patent Trial and Appeal Board (PTAB) SecureBuy, LLC v. CardinalCommerce Corporation. PTAB denied a petition to institute a covered business method patent review, because petitioner had previously filed a declaratory judgment action in court that challenged the validity of the patent claims.

I say no surprise, since 35 USC 321-329 states covered business method patent review shall employ all statutory standards and procedures of post-grant review (i.e., 35 U.S.C. §§ 321–29) except for those expressly excluded (i.e., 35 U.S.C. §§ 321(c); 325(b), (e)(2), (f)).

Of course, this left the door open to applying 35 U.S.C. § 325(a)(1) which wiped the petition in all respects: (1) POST-GRANT REVIEW BARRED BY CIVIL ACTION-- A post-grant review may not be instituted under this chapter if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.

Yes it's first love or no love when it comes to the USPTO.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Request Public Comments on American Invents Act Covered Business Method Review, Derivation, Inter Partes Review, and Post Grant Review

As a follow up to the eight USPTO roundtables held across the country this spring, the USPTO issued a request for public comments on covered business method review, derivation proceedings, inter partes review, and post grant review before the Patent Trial and Appeal Board (PTAB) under the America Invents Act. 

The USPTO is seeking public input on all of these proceedings, but especially issues raised at the roundtables: claim construction, motions to amend, patent owner preliminary responses, obviousness, real party in interest, additional discovery, multiple proceedings, extensions of 1 year period to issue a final determination, and oral hearings.

Written comments must be submitted no later than September 16, 2014.

Copyright © 2014 Robert Moll. All rights reserved.