On August 18, 2020, the USPTO issued a Guidance Memorandum to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review.
The USPTO stated: "the memorandum, issued under the Director’s authority to set forth binding agency guidance, provides the office’s interpretation of 35 U.S.C. § 311(b) that the basis for an inter partes review (IPR) must be a prior art patent or printed publication, and that statements regarding prior art in the challenged patent therefore cannot serve as the basis for instituting an IPR. Such statements, however, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications."
Thus, the USPTO memo states IPR challengers cannot ground a petition solely in applicant's admissions in the specification, but can use them to support obviousness along with prior art.
This is uncontroversial, but it reminds how you write a US patent application. The popular Pressman, Patent It Yourself (2018) states that "applicants should indicate the problems of the prior art, if any, and describe and knock all prior art" under the heading Background - Prior Art. However, this is not good advice, a big job, and in my view unnecessary. Instead, it is best to avoid risk of a prior admission in describing and knocking all prior art, especially when the USPTO only requires applicants and attorneys disclose prior art they are aware of that is material to patentability in an information disclosure statement for consideration by the examiner.
Copyright © 2020 Robert Moll. All rights reserved.
Showing posts with label prior art. Show all posts
Showing posts with label prior art. Show all posts
Wednesday, August 19, 2020
Thursday, July 16, 2015
Google’s Patentability Search Improvements - Extending CPC codes to NPL
The initial step in assessing whether or not an invention qualifies for patent protection is to find the closest prior art in a pre-filing patentability search. For search I like using a variety of sites including www.freepatentsonline.com, www.uspto.gov and Google for patents and non-patent literature (NPL).
Today, Google announced some improvements to its prior art search engine. I think the most important is it has associated the USPTO's new classification codes CPC to NPL. This might be viewed as "obvious to do" but should prove helpful since free online patent databases do not relate NPL to the USPTO classification codes such as CPC, which is now used by both the USPTO and the EPO. Kudos to Google on this as long as they don't retain your search queries.
For further details see Tech Crunch's article Google’s New, Simplified Patent Search Now Integrates Prior Art And Google Scholar and Google's Public Policy Blog Improving Patent Quality One Search at a Time.
Copyright © 2015 Robert Moll. All rights reserved.
Today, Google announced some improvements to its prior art search engine. I think the most important is it has associated the USPTO's new classification codes CPC to NPL. This might be viewed as "obvious to do" but should prove helpful since free online patent databases do not relate NPL to the USPTO classification codes such as CPC, which is now used by both the USPTO and the EPO. Kudos to Google on this as long as they don't retain your search queries.
For further details see Tech Crunch's article Google’s New, Simplified Patent Search Now Integrates Prior Art And Google Scholar and Google's Public Policy Blog Improving Patent Quality One Search at a Time.
Copyright © 2015 Robert Moll. All rights reserved.
Monday, May 11, 2015
USPTO - Transition from the United States Patent Classification (USPC) to the Cooperative Patent Classification (CPC) System
In a blog post Successful
Transition to the Cooperative Patent Classification System, the USPTO Commissioner for Patents Peggy Focarino informs of the USPTO's adoption of an international classification scheme and addition of prior art documents from the EPO, China, and Korea:
"On January 1, 2015, the USPTO successfully transitioned to the Cooperative Patent Classification (CPC) system from the United States Patent Classification (USPC) system. The CPC is a collaborative venture between the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO), designed to develop a common, internationally compatible classification system for technical documents used in the patent granting process. It offers a more robust and agile classification system for both offices’ user communities and enables more technical documents to be classified, because the USPTO and EPO are both entering documents into the system. Since its launch, the USPTO has successfully issued about 47,000 U.S. patent documents under the CPC.
As we transitioned to the CPC, we made sure to keep patent applicants and owners updated on the transition process. Leading up to the changeover, throughout 2013 and 2014, numerous bilateral CPC events were held with external stakeholders, providing notice that the USPC would become a static document collection for utility patents after December 2014. Stakeholders may continue to see a limited number of U.S. patent grants still issuing with USPC symbols due to allowed applications already in the publication cycle, but the USPTO will no longer actively assign USPC symbols to issued utility patents. However, plant and design patents are not covered in the CPC, so they will continue to be published with USPC symbols.
To facilitate searching for documents, the USPTO’s existing tools have been modified to provide all users the ability to search documents classified in the CPC, the USPC (now a static document collection), and the International Patent Classification (IPC) systems. USPTO examiners are now required to classify and search using the CPC, and we want our user community to understand that the CPC will be continuously updated through bilateral revision and reclassification projects between the USPTO and the EPO. We are also working on creating a bilateral examiner-focused collaborative environment for discussions, work-sharing initiatives and training opportunities.
As a leader in the global patent community, the USPTO is dedicated to providing a quality classification system for employees and stakeholders, and one that is compatible with the international patent community. Most importantly, we will ensure that the quality of the classification system remains strong and agile.
The CPC provides a more comprehensive search result set that includes national documents from China and Korea, as well as several other countries that are classifying their national documents into the CPC; documents that were not previously available for viewing or retrieval under the USPC. We intend to keep the quality of the CPC documents at a high level by helping more countries classify their national documents into the CPC, and we will continue to work with the EPO to perform an ongoing number of CPC revision projects.
We welcome your thoughts on the transition from the USPC to the CPC. More information, including frequently asked questions, is available on the CPC page ...."
Copyright © 2015 Robert Moll. All rights reserved.
"On January 1, 2015, the USPTO successfully transitioned to the Cooperative Patent Classification (CPC) system from the United States Patent Classification (USPC) system. The CPC is a collaborative venture between the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO), designed to develop a common, internationally compatible classification system for technical documents used in the patent granting process. It offers a more robust and agile classification system for both offices’ user communities and enables more technical documents to be classified, because the USPTO and EPO are both entering documents into the system. Since its launch, the USPTO has successfully issued about 47,000 U.S. patent documents under the CPC.
As we transitioned to the CPC, we made sure to keep patent applicants and owners updated on the transition process. Leading up to the changeover, throughout 2013 and 2014, numerous bilateral CPC events were held with external stakeholders, providing notice that the USPC would become a static document collection for utility patents after December 2014. Stakeholders may continue to see a limited number of U.S. patent grants still issuing with USPC symbols due to allowed applications already in the publication cycle, but the USPTO will no longer actively assign USPC symbols to issued utility patents. However, plant and design patents are not covered in the CPC, so they will continue to be published with USPC symbols.
To facilitate searching for documents, the USPTO’s existing tools have been modified to provide all users the ability to search documents classified in the CPC, the USPC (now a static document collection), and the International Patent Classification (IPC) systems. USPTO examiners are now required to classify and search using the CPC, and we want our user community to understand that the CPC will be continuously updated through bilateral revision and reclassification projects between the USPTO and the EPO. We are also working on creating a bilateral examiner-focused collaborative environment for discussions, work-sharing initiatives and training opportunities.
As a leader in the global patent community, the USPTO is dedicated to providing a quality classification system for employees and stakeholders, and one that is compatible with the international patent community. Most importantly, we will ensure that the quality of the classification system remains strong and agile.
The CPC provides a more comprehensive search result set that includes national documents from China and Korea, as well as several other countries that are classifying their national documents into the CPC; documents that were not previously available for viewing or retrieval under the USPC. We intend to keep the quality of the CPC documents at a high level by helping more countries classify their national documents into the CPC, and we will continue to work with the EPO to perform an ongoing number of CPC revision projects.
We welcome your thoughts on the transition from the USPC to the CPC. More information, including frequently asked questions, is available on the CPC page ...."
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, December 20, 2014
Legal Times - CEO, IP expert: ‘Crowdsourcing’ improves exam process, makes for stronger patents
Tonight, I recommending Jessica M. Karmasek's Legal Times article: CEO, IP expert: ‘Crowdsourcing’ improves exam process, makes for stronger patents.
Copyright © 2014 Robert Moll. All rights reserved.
Copyright © 2014 Robert Moll. All rights reserved.
Monday, November 17, 2014
USPTO - Roundtable on International Harmonization of Substantive Patent Law on November 19, 2014
The USPTO is hosting a roundtable on international harmonization of substantive patent law on November 19, 2014:
"The United States Patent and Trademark Office (USPTO) is seeking input on certain matters relating to the international harmonization of substantive patent law. In view of the importance of harmonization of substantive patent law to the successful reutilization of the examination work of one intellectual property office by another, or work sharing, the USPTO is particularly interested in stakeholder comments on the following key patent examination-related issues the definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step. To assist in gathering this information, the USPTO is holding a public roundtable which interested members of the public are invited to attend."
When: Registration at 8:00 am and roundtable at 8:30 am
Where: USPTO, 600 Dulany Street, Madison Auditorium, Concourse Level, Alexandria, VA 22314.
It seems the international harmonization discussion should include 35 USC 101 patent eligibility.
Copyright © 2014 Robert Moll. All rights reserved.
"The United States Patent and Trademark Office (USPTO) is seeking input on certain matters relating to the international harmonization of substantive patent law. In view of the importance of harmonization of substantive patent law to the successful reutilization of the examination work of one intellectual property office by another, or work sharing, the USPTO is particularly interested in stakeholder comments on the following key patent examination-related issues the definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step. To assist in gathering this information, the USPTO is holding a public roundtable which interested members of the public are invited to attend."
When: Registration at 8:00 am and roundtable at 8:30 am
Where: USPTO, 600 Dulany Street, Madison Auditorium, Concourse Level, Alexandria, VA 22314.
It seems the international harmonization discussion should include 35 USC 101 patent eligibility.
Copyright © 2014 Robert Moll. All rights reserved.
Saturday, November 8, 2014
USPTO Crowdsourcing for Prior Art Roundtable on December 2, 2014
The USPTO is conducting a roundtable to get public input on its use of crowdsourcing to find prior art.
The USPTO will discuss: (1) how it can use the crowdsourcing tool to find prior art to improve the quality of issued patents; (2) ways it can use private sector solutions to provide that prior art to examiners; and (3) responses to the March 19, 2014 crowdsourcing notice and April 10, 2014 crowdsourcing roundtable. Also see crowdsourced non-patent literature hosting.
See Request for Comments and Notice of Roundtable on USPTO Use of Crowdsourcing to Identify Relevant Prior Art.
The roundtable will be held at the Moot Court Room, Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York, NY 10003 from 1 pm to 5 pm EST, December 2, 2014. The meeting will be also webcast.
Signing up is by email crowdsourcingroundtableny@uspto.gov
November 18, 2014: speaking requests
November 25, 2014: requests to attend the roundtable or webcast
December 9, 2014: written comment on topics identified or discussed at the roundtable
For details visit the Crowdsourcing Roundtable page on the USPTO website or contact Mr. Harvey, Director, TC 2800 at 571-272-8004 or email Jack.Harvey@uspto.gov
Copyright © 2014 Robert Moll. All rights reserved.
The USPTO will discuss: (1) how it can use the crowdsourcing tool to find prior art to improve the quality of issued patents; (2) ways it can use private sector solutions to provide that prior art to examiners; and (3) responses to the March 19, 2014 crowdsourcing notice and April 10, 2014 crowdsourcing roundtable. Also see crowdsourced non-patent literature hosting.
See Request for Comments and Notice of Roundtable on USPTO Use of Crowdsourcing to Identify Relevant Prior Art.
The roundtable will be held at the Moot Court Room, Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York, NY 10003 from 1 pm to 5 pm EST, December 2, 2014. The meeting will be also webcast.
Signing up is by email crowdsourcingroundtableny@uspto.gov
November 18, 2014: speaking requests
November 25, 2014: requests to attend the roundtable or webcast
December 9, 2014: written comment on topics identified or discussed at the roundtable
For details visit the Crowdsourcing Roundtable page on the USPTO website or contact Mr. Harvey, Director, TC 2800 at 571-272-8004 or email Jack.Harvey@uspto.gov
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, October 7, 2014
Professor Dennis Crouch - Moving Toward A Way of Searching Through Cited References
Professor Dennis Crouch's Moving Toward A Way of Searching Through Cited References discusses the increase in reference citations in US practice over the last decade. The average is 50 references per patent, which sounds high, but he notes some cite many references skewing the average.
Professor Crouch notes the need for software to search these references especially the non-patent literature. I note Adobe Acrobat's ability to convert PDF into searchable form.
Copyright © 2014 Robert Moll. All rights reserved.
Professor Crouch notes the need for software to search these references especially the non-patent literature. I note Adobe Acrobat's ability to convert PDF into searchable form.
Copyright © 2014 Robert Moll. All rights reserved.
Friday, April 4, 2014
USPTO - Crowdsourcing and Third-Party Preissuance Submissions Roundtable on April 10, 2014
The USPTO is hosting a roundtable to discuss the use of crowdsourcing and third-party preissuance submissions to identify prior art and increase the quality of examination leading to higher quality patents.
These are noble goals, but so far the number of third-party submissions is relatively small compared to the number of pending US patent applications. Finding pertinent prior art can be time consuming, and tends to not get done unless that effort is compensated. How about micro-entity fees on one application in exchange for submission of prior art that becomes the basis of a prior art rejection?
The roundtable will be held at USPTO's Madison Auditorium South Concourse Level in Alexandria, VA from 12:30 pm to 5:00 pm ET on April 10, 2014. The roundtable can be also accessed by WebEx. Registration is on a first-come, first-served basis if you email crowdsourcingRoundtable2014@uspto.gov.
The USPTO requests written comments on any topic in the Federal Register notice no later than April 25, 2014. For details on written comments click here.
The Crowdsourcing Roundtable page gives directions, the agenda, and RSVP details. For more information you can also contact Mr. Jack Harvey: jack.harvey@uspto.gov or 571-272-8004.
Copyright © 2014 Robert Moll. All rights reserved.
These are noble goals, but so far the number of third-party submissions is relatively small compared to the number of pending US patent applications. Finding pertinent prior art can be time consuming, and tends to not get done unless that effort is compensated. How about micro-entity fees on one application in exchange for submission of prior art that becomes the basis of a prior art rejection?
The roundtable will be held at USPTO's Madison Auditorium South Concourse Level in Alexandria, VA from 12:30 pm to 5:00 pm ET on April 10, 2014. The roundtable can be also accessed by WebEx. Registration is on a first-come, first-served basis if you email crowdsourcingRoundtable2014@uspto.gov.
The USPTO requests written comments on any topic in the Federal Register notice no later than April 25, 2014. For details on written comments click here.
The Crowdsourcing Roundtable page gives directions, the agenda, and RSVP details. For more information you can also contact Mr. Jack Harvey: jack.harvey@uspto.gov or 571-272-8004.
Copyright © 2014 Robert Moll. All rights reserved.
Thursday, February 20, 2014
USPTO - Prior Art Used in Examination of Software-Related Patent Applications – Request for Comments Due March 14, 2014
On December 5, 2013, the USPTO held a software partnership meeting focusing on prior art used in examination of software-related patent applications. See Software Partnership and the Prior Art Federal Register Notice.
This is an important topic, because prior art tells us whether an invention is patentable. Under the America Invents Act (AIA), prior art has an intricate definition, but can be viewed as technology in the same field as the invention or reasonably pertinent to the problem addressed by the invention. When does this technology qualify as prior art? Under AIA, it's technology (short of inventor disclosures) prior to the filing date of any US patent application that cannot claim an effective filing date before March 16, 2013.
As a follow up on January 6, 2014, the USPTO published a Federal Register Notice that sets forth the following questions about prior art for public comment due March 14, 2014:
(1) What specific databases, Web sites, tools and other resources do you find useful in searching for software-related inventions? Please indicate the strengths and limitations of each resource.
(2) What are your concerns regarding the manner in which USPTO examiners formulate and implement search strategies to identify prior art for software related inventions? How should these concerns be addressed?
It will be interesting to see what tools and techniques people share in the public comments in response to question (1). Of course, it is cost effective to search using online databases and Google using keywords, images, and/or classification of the prior art in the US. If one wants to spend more, the search can be extended into other major patent countries or regions such as the Europe, and Japan as well as PCT applications.
Copyright © 2014 Robert Moll. All rights reserved.
This is an important topic, because prior art tells us whether an invention is patentable. Under the America Invents Act (AIA), prior art has an intricate definition, but can be viewed as technology in the same field as the invention or reasonably pertinent to the problem addressed by the invention. When does this technology qualify as prior art? Under AIA, it's technology (short of inventor disclosures) prior to the filing date of any US patent application that cannot claim an effective filing date before March 16, 2013.
As a follow up on January 6, 2014, the USPTO published a Federal Register Notice that sets forth the following questions about prior art for public comment due March 14, 2014:
(1) What specific databases, Web sites, tools and other resources do you find useful in searching for software-related inventions? Please indicate the strengths and limitations of each resource.
(2) What are your concerns regarding the manner in which USPTO examiners formulate and implement search strategies to identify prior art for software related inventions? How should these concerns be addressed?
It will be interesting to see what tools and techniques people share in the public comments in response to question (1). Of course, it is cost effective to search using online databases and Google using keywords, images, and/or classification of the prior art in the US. If one wants to spend more, the search can be extended into other major patent countries or regions such as the Europe, and Japan as well as PCT applications.
Monday, May 27, 2013
Last Resort for the Prior Art - The Weird Stuff Warehouse
When we talk about assessing validity of a computer-related patent, we typically search on patent databases and Google. And if you can't find the prior art there, it better be an important case to rummage through the prior art repository of last resort: The Weird Stuff Warehouse! If the photos at the prior link don't convince you, look at this month's featured items. Old tech doesn't die, it retires.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, August 19, 2012
Google's Patent Search Tool - Improvements in 2012
Google deserves a big thank you for improvements to the Google patent search tool in 2012.
Google's patent search tool has always had fast page downloads, but has not always appeared to have a complete database. For example, more than few times Google patent searches produced less hits than the PTO patent database for the same search query. Saying it's only a beta only goes so far if the US patent database is incomplete.
However, Google announced improvements to Google Patents worth noting including:
It's already a great patent search tool for companies, patent attorneys and inventors seeking to know the prior art, but let's hope Google keeps thinking of additional improvements. It can only help.
Google's patent search tool has always had fast page downloads, but has not always appeared to have a complete database. For example, more than few times Google patent searches produced less hits than the PTO patent database for the same search query. Saying it's only a beta only goes so far if the US patent database is incomplete.
However, Google announced improvements to Google Patents worth noting including:
- Plans to allow searching the entire body of US patents and work with the PTO to add to its repository of USPTO bulk data. Hopefully this will be fixed. Incompleteness is the reason it cannot be a stand alone searching tool today.
- A Prior Art Finder that allows a single click on a "Find prior art" button to search on Google Patents, Google Scholar, and Google Books. Note the button appears at the top of the display when you open a patent on the list of search results. This is another way to find relevant documents beyond the search query initially invoked.
- Searching on the European Patent Office database. This makes a more convenient to search the EPO database in conjunction with a Google patent search.
- Google Translate improvements to eliminate the language barrier of EPO documents written in parallel languages, e.g., English, French, and German.
It's already a great patent search tool for companies, patent attorneys and inventors seeking to know the prior art, but let's hope Google keeps thinking of additional improvements. It can only help.
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