USPTO Confirms Validity All Claims of Steve Jobs Patent in Reexamination

Today, FOSS reports U.S. Patent Office confirmed all 20 claims of the Steve Jobs patent: bad for Samsung, Google.

U.S. Patent No. 7,479,949 to Steve Jobs et al. addresses the "need for touch-screen-display electronic devices with more transparent and intuitive user interfaces for translating imprecise user gestures into precise, intended commands that are easy to use, configure, and/or adapt ... in mobile computing devices."

Not only are all claims confirmed as patentable, the ex parte reexamination certificate states "no amendments have been made to the patent." Thus, an infringer cannot argue they obtained intervening rights. Of course, this allows damages up to six years before filing the patent infringement action. Further, this patent does not appear to be a standard essential patent (SEP) in any sense of the word and de facto SEPs has not caught on. So Apple may not only get damages, it may seek injunctions. Sure people are getting smarter about designing around, but tinkering with the UI risks annoying users into switching to an iPhone. I guess losing every aspect of an ex parte reexamination although rare has some not so fun implications. It may not bar validity challenges in court, but it may convince some courts that a validity challenge on similar literature should fail.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO Confirms Validity of U.S. Patent No. 6,314,420, Which Vringo Asserts Against Google

On July 24, 2013, the USPTO issued a Notice of Intent to Issue Ex Parte Reexamination Certificate confirming the validity of all claims of U.S. Patent No. 6,314,420 (the '420 patent) that were challenged by Google. Despite the great results many are getting sometimes ex parte reexamination may not work as expected and could bolster the validity of the challenged patent.

For details see Vringo announces that USPTO confirms validity of the '420 patent asserted in litigation with AOL, Google, et al.

If you want to see the reexamination papers, please click on USPTO PAIR, select the control number button, and enter the control number: 90/009,991.

Some tend to place considerable importance on such reexamination decisions. In USPTO Checkmates Google Over Vringo Patents Seeking Alpha claims Google is in trouble. Really did it lose it's rights to appeal? What is at stake? You say a billion dollars? You may remember the jury upheld the validity of the '420 patent as well as another US Patent No. 6,775,664, and awarded the former owner I/P Engine $30.5 million based on a reasonable royalty of 3.5%. Why the relatively high royalty rate but modest damages given Google's scale? I discussed this in Vringo v. Google - Laches Dashing Expectations - From $493M to $31M. Let me say if unreasonable delay in bringing a patent infringement suit prejudices a defendant, a court can rule no damages accrued before the suit was filed.

Seeking Alpha claims Larry Page settled with Yahoo on the Adword related patents in 2004, but somehow bought the wrong patents. This is a silly argument. Most think Google was smart to license the Yahoo patents right before its IPO. Based on this ex parte reexamination decision, Seeking Alpha suggests Google should quickly buyout Vringo at $5-7/share before others realize Vringo is worth way more. It's funny, you disclose you are long and you will say quite a bit to "help out" your hope. Vringo's shares may have jumped this week because of the USPTO notice, but I expect the shares may settle back down as investors realize this ex parte reexamination decision hasn't resolved this dispute.

Copyright © 2013 Robert Moll. All rights reserved.

Patent Planet's Most Popular Posts - December 2011 - 2012

Almost midnight in Los Altos, California. I am struggling with the task of writing up a summary of the most important patent news in 2012. Hmm lots of material to consider (212 published posts plus 11 draft posts). Finally, I decided to take the easier route: let Blogger Stats do the work. Yes, that's my ticket out of here!

Based on total pageviews - the top ten posts on Patent Planet from December 2011 - 2012:

1. WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101

2. Failure to Patent Mark - Losing Easy Money

3. Third Party Preissuance Submissions of Prior Art

4. The Banana Grab - Market Share Can Change

5. Patent Reexamination Has Arrived for Both Parties - Oracle v. Google

6. America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012

7. Board of Patent Appeals Backlog Enormous and Growing

8. USPTO Satellite Office in San Jose Delayed

9. Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012

10. America Invents Act - Final Rules for Third Party Preissuance Submissions

Happy New Year!

Copyright © 2012 Robert Moll. All rights reserved.

America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012

A brief reminder the America Invents Act (AIA) makes major changes to patent reexamination on September 16, 2012.

If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.

If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.

Copyright © 2012 Robert Moll. All rights reserved.

America Invents Act - Final Rules for Citation of Prior Art and Written Statements and Reexamination Estoppel

The PTO announced final rules to implement post patent provisions in the America Invents Act (AIA): the citation of prior art and written statements and the estoppel attaching to an ex parte reexamination request filed after a final decision in an inter partes review or post grant review. The provisions are effective on September 16, 2012, and will apply to any U.S. patent issuing before, on, and after September 16, 2012. The Federal Register Notice on the final rules is here.

The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.

The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.

Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.

The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.

Copyright © 2012 Robert Moll. All rights reserved.

Apple's Touchscreen Patent - Google Requesting Ex Parte Reexamination?

Florian Mueller of FOSS Patents suggests that Apple's U.S. Patent No. 7,479,949, Touch Screen Device, Method, And Graphical User Interface for Determining Commands by Applying Heuristics (the '949 patent) "probably scares the living daylights out of Google's Android Team."

Very funny, but I am having difficulty imagining Google's Android team quaking in fear over the '949 patent after its patent victory in Oracle v. Google.

At the same, Florian may be right that Google is the real party behind the request for ex parte reexamination (Enter 90/012,308 in PTO PAIR for the papers) of the '949 patent filed on May 24, 2012. Here are a few reasons the speculation may be correct:

1. In Oracle v. Google, Google used reexamination to eliminate five of seven Oracle patents from trial.

2. Google must continue to protect the Android ecosystem (e.g., the handset manufacturers). This summer Motorola (now Google) and Samsung, the leading Android handset manufacturer must defend themselves against the '949 patent, which relates to how to interpret user swipes on a touchscreen into computer commands. It would be extremely beneficial to attack the '949 patent before the parties go to trial.

3. Although  the ‘949 patent is currently the subject of an ITC investigation, Certain Electronic Digital Media Devices and in federal district court litigation Apple v. Motorola, Google may be reluctant to directly attack Apple's patent due to exposure it may have on other Apple patents. This goes to why ex parte reexamination rather than inter partes reexamination was requested.

4. Perhaps the weakest point is the Bryan Cave law firm that filed the request for ex parte reexamination has recently represented Google on another IP matter.

Yes, the inferences and scant evidence highlight we don't know who is the real party in interest for ex parte reexamination.

Copyright © 2012 Robert Moll. All rights reserved.

In re Baxter International - Federal Circuit Affirms Ex Parte Reexamination Invalidity Over Litigation Validity

In the recent case In re Baxter International, the Federal Circuit affirmed the Board's decision in an ex parte reexamination that claims 26-31 of U.S. Patent No. 5,247,434 (the '434 patent) are invalid despite the fact the Federal Circuit previously affirmed a federal court's decision that claims 26-31 were not invalid. That's startling! Doesn't the Federal Circuit agree with its previous decision? And no, it is not a matter of a different CAFC panel.

The Federal Circuit explained as follows:

"Lest it be feared that we are erroneously elevating a decision by the PTO over a decision by a federal district court, which decision has been affirmed by this court, the following additional comments must be made. When a party who has lost in a court proceeding challenging a patent, from which no additional appeal is possible, provokes a reexamination in the PTO, using the same presentations and arguments, even with a more lenient standard of proof, the PTO ideally should not arrive at a different conclusion. However, the fact is that Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings. Usually one would expect that any such reexamination, such as the one before us, would raise new issues. In this case, the patent examiner relied on new prior art that had not been raised in the prior district court proceeding. Why Fresenius [the defendant in related litigation] did not present that prior art before the district court we do not know. But the Director apparently found that a substantial new question of patentability had been raised and the examiner was then entitled to conduct a reexamination on the basis of the new art presented and her search of the prior art. Thus, this case is not about the relative primacy of the courts and the PTO, about which there can be no dispute. Finally, we could not conclude that the PTO was barred from conducting the reexamination of the ’434 patent because of the final judgment in Fresenius without over-ruling Ethicon and Swanson, which we cannot do."

In re Baxter International highlights ex parte reexamination is not subject to a legal estoppel from the court decision such as applies to inter partes reexamination. Further, it reminds that patent challengers have a lower evidentiary standard in ex parte reexamination than in federal court. In ex parte reexamination, the challenger must only prove invalidity by a preponderance (i.e., it's more likely than not); in court, the challenger must prove invalidity by clear and convincing evidence. Accordingly, ex parte reexamination may be preferably over litigation if you seek to prove a US patent is invalid over written prior art.

Copyright © 2012 Robert Moll. All rights reserved.

Post-Grant Proceedings Under the America Invents Act - The 12 Month Rule

On May 15, 2012, Teresa Stanek Rea of the USPTO posted: Building a Better Post Grant on Director Kappo's Blog. She talks about how the USPTO plans to build a better post-grant proceedings under the America Invents Act (AIA) that will serve as an efficient alternative to patent litigation. 

Ms. Stanek Rea states "Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals." Ms. Stanek Rea notes the AIA establishes post-grant review, inter partes review and the transitional program for covered business method patents by the Board of Patent Appeals and Interferences (Board) which will be referred to as the Patent Trial and Appeal Board.

Congress has limited the length of these post-grant proceedings to 12 months, plus six months for exceptional cases. To explain how the PTO will complete a post-grant proceedings in 12 months Ms. Stanek Rea states:

1. The PTO is adding many judges with considerable patent prosecution and litigation experience to the 120 judges currently on the Board.

2. The PTO's rule making will incorporate input from the user community, the PTO,  the federal court, the ITC,  and interferences.

3. The AIA's post-grant procedures rules will be streamlined to what is essential to decide the case. Thus, dilatory practices, wasteful motions, and procedural traps that drove older interferences to last 4-7 years will not be permitted.

4.  Judges will be given great latitude to shepherd cases to stay on schedule.

Although Ms. Stanek Rea envisions reaping the benefits of a straightforward process (e.g., a trial), implemented by experienced judges, resulting in a fair and efficient proceeding, the post doesn't address how the PTO will keep stay on such a tight schedule plus reduce the backlog of more than 30,000 ex parte appeals now pending.

Copyright © 2012 Robert Moll. All rights reserved.

CSIRO Wi-Fi Protocol Patent Owner - Patent Troll?

On April 2, 2012, I posted an article reporting Australia's Commonwealth Scientific and Industrial Research Organization (CSIRO) reached a $229 million settlement with Acer, AT&T, Leveno, Sony, and T-Mobile for a license to its Wi-Fi protocol patent.

As I was reading ars technica tonight, I came across Joe Mullins' article How the Aussie government "invented Wi-Fi" and sued its way to $430 million implying that CSIRO is a patent troll, e.g., a patent owner asserting a dubious patent that it does not commercially practice.

Although Mr. Mullins seems to agree with Steven J. Vaughan-Nichols that CSIRO is a patent troll, See Vaughan-Nicols' Australian government patent troll collects from Wi-Fi Vendors, Mr. Mullin's article appears to be premised on the view that a new combination of old elements has suspect validity despite contrary Federal Circuit patent law.

At the same time, Mr. Mullins' article received over 300 reader comments and not all of it positive especially from Aussies that complained that he mischaracterized it the Wi-Fi patent when the claims only covered a component of the Wi-Fi protocol. Whether all of the comments were right, Mr. Mullin felt compelled to address the comments in his Responses and clarifications.

Then in the Australian publication DeLimiter Renai LeMay wrote Is the CSIRO a patent troll? US debate turns feral favorably on Mr. Mullin's article with again lots of adverse comments by Aussies. 

Obviously a controversial topic, but the bottom line is CSIRO has obtained over $430 million given it earlier received over $200 million licensing the patent to 3Com, Asus, Buffalo Technologies, D-Link, Dell, HP, Microsoft, Intel, Microsoft, Netgear, Nintendo, and Toshiba  in 2009. See ZDNet article for information on some of the settlements reached in 2009 here.

The validity of CSIRO patent was greatly disputed at trial, but the case settled after four days of testimony. If the patent was dubious, why the settlement? What appears to be missing from the PTO PAIR records is a request for ex parte reexamination of the patent. Apparently, despite the tone in the press that the patent was dubious, none of the defendants were willing to take on that challenge in the PTO given the monetary stakes.   

Copyright © 2012 Robert Moll. All rights reserved.

Oracle Can't Reinstate the Reexamined Patentable '702 Patent In Trial

Today, Judge Alsup issued an order here rejecting Oracle's request to reinstate US Patent No. 5,966,702 (the '702 patent) in the trial.

To understand why Judge Alsup would not reinstate the patent, you have to consider the events leading up to the order. Before the trial was scheduled, the question arose whether to wait until the PTO had finished the reexaminations of certain Oracle patents. Google wanted to delay the trial until the PTO finished the reexaminations which could reduce the Oracle patents it would face at trial. Oracle wanted an early trial date so offered to dismiss with prejudice all patents that remained rejected "at the time of trial." An early trial must have been important to Oracle, because a dismissal with prejudice meant it could not sue Google for infringement of the '702 patent on the same technology in another lawsuit.

Judge Alsup's order stated in granting an early trial date he acted in reliance on Oracle's offer to dismiss the patents under a final office action if not reversed prior to trial.

Judge Alsup says Oracle is required to stand by its word, but what exactly was Oracle's word? In the order, Judge Alsup interprets Oracle's "at the time of trial" as beginning on April 16, but maybe it should be when the trial began with respect to patents. Oracle had argued the '702 patent is subject to reinstatement since the PTO reversed itself prior to the "patent trial." Only three days after the copyright phase of the trial started, on April 19, and well before the patent phase of the trial starting next week, the PTO mailed a notice of intent to issue an Ex parte reexamination certificate confirming the patentability of the asserted claims of the '702 patent.

Google argued it would be prejudiced if it had to prepare for a third patent, but aren't both parties intimately familiar with the '720 patent? Further, Judge Alsup has not balanced Google's prejudice against the prejudice to Oracle if it cannot assert the '702 patent against the Android. Is it a matter of balancing the parties respective interests or sticking someone with an interpretation that streamlines the trial?

Nonetheless, unless Oracle can successfully appeal or overturn this order, I don't see how Oracle can assert the '702 patent against Google for Android in the trial.

Copyright © 2012 Robert Moll. All rights reserved.

AIPLA - Comments on the America Invents Act

The American Intellectual Property Law Association (AIPLA) is the largest organization of IP lawyers in the US. When I joined the "P" in AIPLA stood for patents and it was the largest organization of patent attorneys. Shortly, after AIPLA realized some members handled other intellectual property matters such as copyrights, trademark, trade secrets, and unfair competition and changed the meaning of "P" to property, leaving the acronym intact, but diluting the patent focus.

Anyway, the AIPLA's website, publications, email alerts, and conferences keep members abreast on changes in the law. Because it is still very much a group of patent attorneys, the AIPLA has focused on the proposed rules and fees to implement the America Invents Act (AIA). The AIPLA has many members who focus on patent law, and presents fair, balanced, and workable comments. It may not be fun to read AIPLA comments, but it is still worth the time if you want an early look at what may be the final PTO rules and fees.

I have listed links to AIPLA comments on the proposed rules and fees to implement the AIA:

Fee setting authority

Statute of limitations for Office discipline

Changes to the inventor's oath or declaration

Preissuance submissions of prior art by third parties

Citation of patent owners' written statements regard claim scope and estoppel on ex parte reexamination requests by third parties

Supplemental examination and revised reexamination fees

Copyright © 2012 Robert Moll. All rights reserved.

Professor Lemley - Fixing the Patent Office

I read Professor Lemley's paper Fixing the Patent Office and want to highlight several things tonight.

Professor Lemley states the PTO has issued many dubious software, electronic commerce, and Internet patents over the last two decades. He doesn't quantify this observation, but I think the patent community would mostly agree. Professor Lemley states a natural reaction is the PTO needs to award patents only when deserved. However, he pragmatically notes most bad patents merely protect technologies that fail in the marketplace, protect against non-existent competitors, are not infringed, licensed, or the subject of negotiation or assertion in court. In short, their issuance has no social cost.

As Professor Lemley states it, "The problem, then, is not that the Patent Office issues large number of bad patents. Rather, it is that the Patent Office issues a small but worrisome number of economically significant bad patents and those patents enjoy a strong, but undeserved, presumption of validity."

Having framed the problem this way, Professor Lemley states his solution: "The Patent Office should focus its examination resources on important patents and pay little attention to the rest."

Before turning to discuss that proposed solution, Professor Lemley asserts what probably won't fix the PTO:

Preventing fee diversion. For the last two decades Congress has diverted 10-20% of the PTO fees to general revenue. Yet in the last several years fee diversion did stop, while the backlog of pending applications grew. My comment is last year the backlog was slightly reduced.

Giving the PTO the authority to set own fees. The PTO may be in the best one to decide fees, but it is unclear which fees should be increased or decreased. For example, examining all applications more intensely is wasteful. Being stricter on allowances reduces the patent maintenance fees that make up for low filing fees. Raising filing fees raises costs on startups at the outset. Increasing a maintenance fee even by a factor of ten ($40,000) won't discourage patent trolls given the potential rewards of patent litigation.

Rejecting bad patents. The vast majority of bad patents are not litigated or licensed so rejecting them is wasteful. Applicants dissatisfied with a rejection can file requests for continued examination (note 53% of pending applications are RCEs) and/or continuations.

Retaining patent examiners. The PTO has a high rate of turn-over, and the median examiner has only been at the PTO for three years. The problem is junior examiners appear to be better at rejecting bad patents than senior examiners.

Outsourcing search. The thinking is examiners are not particularly good at finding relevant prior art so let's outsource this time-consuming task. However, research show examiners rely almost entirely on their own prior art search not the prior art submitted by others.

Next, Professor Lemley asserts what might work:

Second pair of eyes (SPER). Professor Lemley reminds after State Street the PTO initiated SPER to help deal with the flood of business method patents. He notes, however, SPER is asymmetric - two examiners must agree to allow a case while it takes only one examiner to reject a case. This led to 16% allowance rates in contrast to 72% on average. Professor Lemley finds it interesting that the PTO recently shut down SPER program on business methods applications. My comment is SPER over all technology areas would be very expensive, if not wasteful.

Changing examiner incentives. Research indicates much of the problem may be examiner's behavior due to incentives. This section seemed a bit muddled about how and what incentives should change. My experience over the past two decades is the quantity of cases processed sometimes appears to be more important to the PTO than the quality of examination. Whatever the change to incentives, you can count on the examiner's union to resist changes to how the examiners are evaluated and patent attorneys to resist any changes that make it more difficult to get patents.

Tiered review. Professor Lemley now presents his solution that the PTO should focus on important patents and pay little attention to the others, but it is difficult to know which patents are likely to be important. Professor Lemley concedes the government would find it difficult to know, but patent applicants and competitors have better information about the likely value of an invention. Thus, he proposes applicants "gold plate" their patents by paying for an intense search and examination process that would merit a strong presumption of validity. My comment here is (1) startup may be excluded from gold-plating; and (2) the tiered review appears to conflict with the Supreme Court's i4i v. Microsoft decision that the clear and convincing standard for invalidity applies to all US patents.

Oppositions and adversarial evaluations. I agree with Professor Lemley's expectation that the new post-grant and inter partes review will help fix the Patent Office's tendency to issue bad patents at times, but note this addresses bad patents rather than fixes the Patent Office, which to me is about the original examination. Also it will be interesting if the public input reduces the PTO fees for post-grant procedures.

Professor Lemley concludes that (1) reform proposals can never eliminate bad patents because examination is an imperfect process; (2) we will continue to rely on litigation as the primary means for weeding out bad patents; (3) courts should modulate the presumption of validity to match the facts; and (4) clear and convincing must be earned by patent owners.

Despite enjoying Professor Lemley's paper in the end I could only find agreement with Professor Lemley on conclusion (1). With regard to conclusion (2), if reexamination is not the primary means for weeding out bad patents I think it is becoming the best way to attack dubious patents. AIPLA economic survey data shows it's much less expensive than patent litigation even if you factor in the proposed increase in PTO fees. PTO statistics indicate it is effective in eliminating invalid patents as we saw in Oracle v. Google. Further, timely reexamination may result in stays of expensive litigation. With regard to (3) and (4), I don't see how "modulating" the standard of proving invalidity and concluding nothing was earned in the examination is not merely a litigator's delight plus runs counter to i4i v. Microsoft as mentioned earlier.

Copyright © 2012 Robert Moll. All rights reserved.

Predicting Patent Litigation - Top Ranked Patent Paper Today

Professor Chien's Predicting Patent Litigation 2011 is the top ranked academic paper focusing on patent law today. I will give some highlights, but recommend reading her paper, which helps one predict what patents are likely to be asserted in patent litigation.

Professor Chien initially points out that patent infringement lawsuits are disruptive, unpredictable, and expensive. Professor Chien also notes that patent litigation is practically uninsurable and companies are driven to rapidly purchase large patent portfolios to have a defense against other company's patents, which, of course, is no help to ward off patent assertion entities, which we affectionately refer to as patent trolls.

Information technology (IT) companies in Silicon Valley have a patent clearance problem. The large scale purchases of mobile phone patents has only exacerbated the problem. RPX asserts 250,000 US patents relate to smartphones today. Even if that estimate is off by a factor of ten, that is still 25,000 patents to review and assess whether they pose an obstacle. Who has the time and money for such a review?  Professor Lemley states people's response is to ignore patents (See Professor Lemley's Ignoring Patents) .... until the patent owner's letter arrives. Yet, since only 1% of issued patents are ever litigated awaiting that arrival doesn't appear irrational to all that many companies. 

Nonetheless, Professor Chien states uncertainty about what patent is likely to be asserted can be reduced by identifying the riskiest patents. And litigated patents have markedly different characteristics than non-litigated patents that can be readily observed before a lawsuit is filed.

Litigated patents have more:

• Claims
• Backward citations (applicants submit large IDSs to "bullet proof" the patent)
• Foreign counterpart (a signal of the owner's estimate of value of the invention)
• Patent family members (e.g., continuations, divisionals, and CIP)
• Forward citations (examiner cites the patent in subsequent filed applications with different inventorship)
• Maintenance fees (another signal of owner's estimate of value)

The litigated patent owners are more 

• A small entity
• Domestic based
• Owner by assignment of the patent
• The assignment involved a change in size (i.e., large entity to small entity)
• Patents were used as collateral
• Requested ex parte reexamination of the patent (If you are not getting the patent ready for litigation, why spend the money?)

I would emphasize the track record of the patent owner can trump many of these characteristics in predicting whether a given patent will be litigated.

Copyright © 2012 Robert Moll. All rights reserved.

PTO's Proposed Fees Will Deter Use of America Invents Act Procedures

The PTO has proposed major increases in fees to implement the America Invents Act (AIA). The argument is the PTO fees should match the service provided. But this can lead to surprising results. For example, Harold Wegner suggested a patent that has hundreds of claims will be effectively insulated from challenge because the PTO proposes to charge half a million in PTO fees. We need to return to reason. The user based system only needs to work at the aggregate level. We don't make litigants pay the true cost of litigating in federal district court, and it doesn't make sense to hold users of the AIA contested procedures to this standard either. If we raise the PTO fees as proposed, smaller companies will not use them because they are no longer affordable. And we don't need a patent system that can be only accessed by the largest companies. Startups should also have access to ex parte reexamination, post grant review, and inter partes review to challenge doubtful patents and implement Congress' objective to give all of us an inexpensive alternative to litigation.

Also see America Intellectual Property Law Associate (AIPLA) comments on the proposed fee increase.

Copyright © 2012 Robert Moll. All rights reserved.

Third Party Preissuance Submissions of Prior Art

The PTO recently proposed rules to implement preissuance submission by third parties, 35 USC 122(e) of the America Invents Act (AIA). Preissuance submission permits the public to submit relevant prior art against any US patent application pending on September 16, 2012.  

Professor Crouch comments new 35 USC 122(e) "opens the door to Peer-to-Patent style submissions for all published applications." But what is Peer-to-Patent? It was a PTO pilot that ran from 2007-2009 and 2010-2011 that permitted peers to submit prior art to examiner. It never received widespread adoption and is reported to have only affected a few hundred applications. Perhaps it was too much to expect applicants would want to submit their application to examination by "peers" in exchange for expedited examination. Preissuance submission has the potential to affect many applications since volunteering to participate is not a requirement.

Preissuance Submission by Third Parties - 35 USC 122(e):

(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—

(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—

(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—

(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

Here are several features and pitfalls to 35 USC 122(e) preissuance submissions:

1.  Proposed PTO fees for preissuance submission are inexpensive ($180 for up to ten references) or nothing if a first submission of up to 3 references.

2.  The PTO does not require the patent application owner be served and will not identify the third party making the preissuance submission to encourage submissions.

3. On the other hand, preissuance submissions may alert the applicant getting broad claims and filing continuations is warranted because somebody infringes the application claims.

4.  You must file a preissuance submission before the PTO mails a notice of allowance. If, however, the PTO hasn't allowed an application, you can file a preissuance submission up to 6 months after the PTO first publishes the application or up to the first Office action rejecting a claim, whichever is later. However, one cannot safely rely on filing before those later events, since the PTO has no duty to inform before mailing a notice of allowance or an Office action rejecting any claim.

5.  Once a preissuance submission meets all requirement, it will be treated in terms of procedure much like an information disclosure statement (IDS). However, unlike an IDS, an examiner will have the benefit of a description of the asserted relevance of each document. If nothing else, this should make it easier to write up an Office action rejecting the claims. 

6.  A preissuance submission may backfire. If the claims are not canceled or narrowed based on the preissuance submission, the third party may face a strengthened patent that is infringed, plus have lost practical benefit of the prior art. Further, any amendments that do occur to the claims to avoid the preissuance submission will not raise intervening rights such as those obtainable in reexamination or reissue. 

7.  Two reasons the preissuance submission may backfire. After submission, the third party has no right to participate further. Only the examiner and applicant get to exchange information on what it all means. If this happens in an interview, don't expect the interview summary to fully describe what was discussed. Second, examiners suffer from information overload, which tends to result in complex filings not being fully addressed. See Kuhn, Yale Journal of Law and Technology, Information Overload at the U.S. Patent and Trademark Office: Reframing the Duty of Disclosure in Patent Law as a Search and Filter Problem. Yet a presumption is raised the preissuance submission was duly considered.

8.  Although the third party is not estopped from raising the prior art in an ex parte reexamination, inter partes review, post-grant review, or in a district court, the third party will have a more challenging situation to use the references of the preissuance submission.

9.  I expect third parties to be therefore reluctant to submit the best prior art in a preissuance submission when stakes are high. Instead, they will save the prior art to support a request for ex parte reexamination, inter parties review, post-grant review, or a district court. 

10. An examiner will be required to inform of a submission when it issues an Office action, but applicant will be required to monitor applications to know at other times. 

Preissuance submissions may help to derail doubtful patents, but are best limited to when other post-grant procedures (e.g., ex parte reexamination) are too expensive and other relevant prior art can be kept out of the preissuance submission just in case.   

Copyright © 2012 Robert Moll. All rights reserved.

Three Interviews of Patent Leaders at other Blogs

The Web has made it easy to hear from many smart people. Staying with this thought, let me point to some interviews of leaders in the patent community this week:

1.  IBM was announced as the leader in US patent grants in 2011. No surprise here but still perfect timing for Gene Quinn's interview of IBM's Chief Patent Counsel Manny Schecter.

2.  In Gene Quinn's second interview of PTO Director Kappos, Director Kappos talks about the never-ending (impossible) job of getting examiners to uniformly apply US patent law, PTO rules, and policies to the various inventions they review.  

3.  The Reexamination Center interviews patent attorney Dr. Nancy Linck on post-grant review, inter partes review, and ex parte reexamination in the past and under the America Invents Act.

Copyright © 2012 Robert Moll. All rights reserved.