Prosecution history is available to the public in the USPTO’s Patent Application Information Retrieval system (PAIR) http://portal.uspto.gov/pair/PublicPair PAIR accesses patent information held in the USPTO internal Patent Application Locating and Monitoring (PALM) system and presents it in two different web-based views: Public PAIR and Private PAIR. PAIR provides web-based access for pending patent information and eases the process of tracking patents, patent applications, and follow-on documents through the USPTO approval process. Public PAIR provides status and history information for issued patents and published applications. In Public pair you can search for application information using the Application number; the control number; a Patent number; a PCT number; or the publication number. Private PAIR provides controlled access to non-public patent information, and Private PAIR provides access to all public information. There is an application process to gain access to Private PAIR.
Friday, November 15, 2013
In re Bogese, 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002)
Applicant filed twelve continuation applications over an eight-year period and applicant did not advance prosecution when the PTO gave the applicant an opportunity to advance prosecution. In Borgese the Federal Circuit ruled that applicant had forfeited their right to a patent under the doctrine of prosecution history laches for unreasonable and undue delay in prosecution. Prosecution history laches is not a hard and fast rule but the court ruled that where “multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution,” laches may apply. Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005)
Precision Instrument Mfg. Co. v. Automotive Co. - 324 U.S. 806 (1945)
Precision applied for a patent that interfered with Automotive’s patent. Precision falsified dates and information during the interference proceedings on their patent. Automotive at least suspected Precision of fraud in their application. Automotive brought this up to Precision’s attorney and Precision’s attorney withdrew. The new counsel for Precision settled with Automotive and Automotive became the owner of the patents that came out of the interference proceeding. Relations between Automotive and Precision declined and Automotive sought to enforce the patent they obtained from Precision, against Precision.
When Automotive sued to enforce their patent the district court denied damages saying that because Automotive knew of the falsified dates and information that Automotive’s conduct was inequitable, and Automotive could not sue for damages. The Appeals court reversed, and the Supreme court via a split decision, affirmed the district court’s determination that the patent was unenforceable due to inequitable conduct.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)
The Doctrine of Equivalents says equivalents of the claimed elements in a patent claim can also cause infringement. Judge Learned Hand said that courts "resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention.” Royal Typewriter co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948) One of the limits on the Doctrine of Equivalents is prosecution history estoppel. Prosecution history estoppel is the presumption that any narrowing limitation added to the claims during prosecution bars the doctrine of equivalents in defining scope of the amended claims.
After Festo began marketing its patented device, Shoketsu marketed a device that allegedly infringed Festo's patented device. Festo charged infringement under the doctrine of equivalents. Festo's claim had been amended during prosecution to fix a 35 U.S.C. §112 problem, and Shoketsu claimed that prosecution history estoppel should bar Festo from asserting equivalents. The court decided that the prosecution history estoppel presumption is rebuttable where:
- the amendment cannot reasonably be viewed as surrendering a particular equivalent;
- the equivalent may have been unforeseeable at the time of the application;
- the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question;
- or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.
Thursday, November 14, 2013
Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (federal circuit 1988),
Inequitable conduct during prosecution can invalidate a patent in later litigation. Inequitable conduct resides in failure to disclose material information, or submission of false material information, with an intent to deceive, and those two elements, materiality and intent, must be proven by clear and convincing evidence.
Kingsdown had a claim rejected and then Kingsdown renumbered the claim and told the examiner that the renumbered claim had the same wording as an already allowed claim. The District court found that the amendment was material, because the amendment was made to overcome a rejection; the District court found that the amendment was deceitful because the amendment was at least grossly negligent; and the District court invalidated the patent on grounds of inequitable conduct. The Federal Circuit found that the District court’s decision regarding inequitable conduct was clearly erroneous and reversed the decision and remanded the case.
Wednesday, November 13, 2013
Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co. 520 U.S. 17 (1997)
The Doctrine of Equivalents says equivalents of the claimed elements in a patent claim can also cause infringement. Judge Learned Hand said that courts "resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention.” Royal Typewriter co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948) One of the limits on the Doctrine of Equivalents is prosecution history estoppel. Prosecution history estoppel is the presumption that any narrowing limitation added to the claims during prosecution bars the doctrine of equivalents in defining scope of the amended claims.
In Warner-Jenkinson a chemical process was patented. During prosecution a limitation was added that a step in the chemical process had to be carried out at a PH of between six and nine. The upper limit, nine, was added to overcome the prior art of record; but at the time of trial, it was unclear why the lower limit, of six, was added to the claimed chemical process. The alleged infringer was doing the same chemical process at a PH of two and the patent owner sued the infringer arguing that under the doctrine of equivalents, the infringer was using an insubstantial tweak to the chemical process to avoid literal infringement. The Supreme court decided that prosecution history should be used to limit the doctrine of equivalents whenever an amendment was made for a “substantial reason related to patentability…” and left it up to lower courts to decide what a substantial reason related to patentability is. Waner-Jenkinson also did not decide whether prosecution history estoppel was a complete bar to Doctrine of Equivalents or whether prosecution history estoppel just limited the number of things that could be considered equivalents.
In Warner-Jenkinson a chemical process was patented. During prosecution a limitation was added that a step in the chemical process had to be carried out at a PH of between six and nine. The upper limit, nine, was added to overcome the prior art of record; but at the time of trial, it was unclear why the lower limit, of six, was added to the claimed chemical process. The alleged infringer was doing the same chemical process at a PH of two and the patent owner sued the infringer arguing that under the doctrine of equivalents, the infringer was using an insubstantial tweak to the chemical process to avoid literal infringement. The Supreme court decided that prosecution history should be used to limit the doctrine of equivalents whenever an amendment was made for a “substantial reason related to patentability…” and left it up to lower courts to decide what a substantial reason related to patentability is. Waner-Jenkinson also did not decide whether prosecution history estoppel was a complete bar to Doctrine of Equivalents or whether prosecution history estoppel just limited the number of things that could be considered equivalents.
Thursday, November 7, 2013
Impermissible Recapture in a Patent Reissue Application
A Reissue application is an application filed with the USPTO that seeks to broaden the scope of a previously allowed patent. A reissue application will not be allowed where the claimed subject matter was surrendered during the application process for the original patent. Applying for previously surrendered subject matter in a Reissue Application is called “recapture” and it is not allowed.
There is a three step test for recapture outlined in the North American Container case, 415 F.3d at 1349, 75 USPQ2d at 1556.
North American Container says that impermissible recapture happens when:
- The reissue claims are broader than the original patent claims;
- The limitations of the reissue claims that have been broadened are limitations regarding subject matter that was surrendered in the original application;
- and the limitations were material to the allowance of the patent in the original application.
Saturday, September 7, 2013
Arguments go nowhere at a rate of adjective and/or adverb used per sentence
I'm a patent examiner and most days I exhaust my capacity for adjectives and adverbs. My theory is that, in non-fiction writing, arguments that don't progress understanding come with markers; and those markers are adjectives and adverbs.
In patents the words "clearly", "erroneously", "obviously", and "merely" are used. These words are filler for a lack of understanding, respect, or both. In the patent law, one of the determinations that has to be made for every application, is whether or not the patent application is obvious in view of the prior art. This non-obviousness requirement is a litigated issue, see Graham v Deere, KSR v. Teleflex etc. It costs time and money to argue about what is obvious. What would happen, I wonder at least once a day, if non-obvious were better defined or not a requirement; how much money and time would be saved?
Adjectives and adverbs also rude up the place, for a good example see a Patent attorney melt down in a legal response, it's full of adjectives and adverbs. Adjectives and adverbs don't persuade people whose job it is to decide things, to decide a certain way, see douchebag bingo. Finally, adjectives and adverbs don't progress the argument because adjectives and adverbs don't add facts. Adjectives and adverbs cover a lack of facts. For example:
In patents the words "clearly", "erroneously", "obviously", and "merely" are used. These words are filler for a lack of understanding, respect, or both. In the patent law, one of the determinations that has to be made for every application, is whether or not the patent application is obvious in view of the prior art. This non-obviousness requirement is a litigated issue, see Graham v Deere, KSR v. Teleflex etc. It costs time and money to argue about what is obvious. What would happen, I wonder at least once a day, if non-obvious were better defined or not a requirement; how much money and time would be saved?
Adjectives and adverbs also rude up the place, for a good example see a Patent attorney melt down in a legal response, it's full of adjectives and adverbs. Adjectives and adverbs don't persuade people whose job it is to decide things, to decide a certain way, see douchebag bingo. Finally, adjectives and adverbs don't progress the argument because adjectives and adverbs don't add facts. Adjectives and adverbs cover a lack of facts. For example:
- Don't say something is fast when you can say it goes 1000km/h.
- Don't say Usain Bolt is fast, say Usain Bolt won a gold medal in the 100m dash
- Don't say "the reference clearly doesn't teach allocating power..." Say "the reference does not use the words 'allocate' or 'power' anywhere within its disclosure."
- Don't say "the opposing party merely seeks to confuse the court..." Say, "The opposing party has submitted 678 claims..." Let the judge decide if 678 claims shows an intent to confuse.
In all the above examples, adjectives and adverbs added no facts and confused the point with how the writer feels about the point. I realize that sometimes a term of art is an adjective or adverb and therefore has to be used, but I limit my use of adjectives and adverbs to terms of art as much as I can.
Adjectives and adverbs confusing the issue recently happened between two people that I admire. Here is a case study in how adjectives and adverbs hurt feelings and muddy waters. Full disclosure: I put 130$ into Rob Rhinehart's Soylent meal replacement shake kickstarter and I am excited about the product; And I own all of Tim Ferriss' books, I work similar to the prescription in Tim's four hour work week book, I leaned out with Tim's four hour body book; and I learned how to draw using the compressed learning techniques in Tim's four hour chef book.
Soylent is a meal replacement shake invented by Rob Rhinehart. Rob made a shake, he ate only the shake for a period of time, then he reported his results. Rob perceived some critique of his shake, so he responded with adjectives and adverbs. For example, "We are more serious about health..." What does "serious" mean? Serious is not defined and I don't even know how to measure it. Serious doesn't add a fact; Serious doesn't require a fact to be rebutted; and it is relative to some point that we can't know. Rob could have said "We are more happy about health..." and it would have added just as many facts to the argument.
Tim responded by calling the argument "underhanded and deceptive". Under whose hand, how is hand position relevant, and who is deceived -- while we are on it, what is the international unit of measurement for deception. I suggest Maddoffs as a unit, and I say that Rob's argument was 20 milliMaddoffs. I'm trying to make jokes now, but I hope it gets my point across. Two things have been said, feelings have been hurt, and the argument has not gotten anywhere closer to conclusion. Why say something if you're not progressing some train of thought, or progressing the course of an argument?
Sunday, March 10, 2013
What was Jefferson thinking?
It could be said that Jefferson is a figurehead for limited state involvement in private and commercial matters. So, it's always been confusing to me that Jefferson served on the first patent examination board. Patents are government sanctioned monopolies on private or commercial things, so why would he advocate for them? I narrowed the answer down to an article called Godfather of American Invention written by a historian named Silvio A. Bedini and published in The Smithsonian Book of Invention in 1977. In the article Mr. Bedini gives many quotes that highlight what Jefferson might have been thinking. The problem is that Mr. Bedini does not give citations or references specific enough to read quotes in context or even validate them. For example, one quotation is taken from a letter "to a correspondent in France in 1787..." What the hell am I supposed to do with that? That has to be the scholarly equivalent of "they say..."
I'm not going to complain about Bedini. I give him full faith that all the things he quoted were accurate to the best of his knowledge and ability; from my limited reading about Bedini he was a much better historian than I. However, stumbling on this article made me realize that trying to dive back into the brain of someone who isn't here to explain themselves is pointless. Even if Jefferson said all the things that Bedini asserts, does it mean anything? If someone went through all my text messages, not even the drunk ones, and tried to discern what I think about any given topic it would be mishegoss. Not only are my own views and thoughts sometimes inconsistent, my definitions of words are not the same as everybody else's definitions of words. Separate that fact with 200 years of abstraction and you have terms of art that can't possibly be understood and phrases that make no sense out of the day to day context that all thoughts necessarily inhabit.
That's when it hit me: who cares what Jefferson thought about the patent system. I've been ordering books and reading online sources in order to track down a thought nugget that may not exist and is unreliable even if it does exist. What matters, and what I should care about, is whether the patent system makes sense TODAY. Does it accomplish it's constitutionally stated purpose of incentivizing innovation TODAY? It doesn't matter what a slave owner who granted patents on the manufacture of pot ash thinks about patents in the 1790's. What matters is whether the patent system TODAY, is working like it should TODAY. So I'm switching the focus of my research.
I'm not going to complain about Bedini. I give him full faith that all the things he quoted were accurate to the best of his knowledge and ability; from my limited reading about Bedini he was a much better historian than I. However, stumbling on this article made me realize that trying to dive back into the brain of someone who isn't here to explain themselves is pointless. Even if Jefferson said all the things that Bedini asserts, does it mean anything? If someone went through all my text messages, not even the drunk ones, and tried to discern what I think about any given topic it would be mishegoss. Not only are my own views and thoughts sometimes inconsistent, my definitions of words are not the same as everybody else's definitions of words. Separate that fact with 200 years of abstraction and you have terms of art that can't possibly be understood and phrases that make no sense out of the day to day context that all thoughts necessarily inhabit.
That's when it hit me: who cares what Jefferson thought about the patent system. I've been ordering books and reading online sources in order to track down a thought nugget that may not exist and is unreliable even if it does exist. What matters, and what I should care about, is whether the patent system makes sense TODAY. Does it accomplish it's constitutionally stated purpose of incentivizing innovation TODAY? It doesn't matter what a slave owner who granted patents on the manufacture of pot ash thinks about patents in the 1790's. What matters is whether the patent system TODAY, is working like it should TODAY. So I'm switching the focus of my research.
Wednesday, February 13, 2013
US patent office Fee schedule questions
If you want the official USPTO fee schedule, here it is. If you want to read questions I have about the fee schedule, then read on from here.
The search fee for a utility patent is $620, and $310 -- if the applicant is a small entity. It is known, but I can't prove it's known, that the complexity of the search depends on the type of invention. An application for a latch is usually easier to search for than an application for a method of moving electrons in a certain way. This is because latches can usually be pictured and it's hard to picture a method for moving electrons without describing it. Pictures are easier to search through than written descriptions. For me, the fact that searches vary in difficulty but don't vary in price, raises the following questions.
Should there be a different fee for different applications that claim different inventions, i.e. does it actually take more work to search for some inventions? Do different fees raise the barrier to entry into the patent game, for certain arts? Does the patent system incentivze innovation if it charges applicants more when they apply for inventions that are hard to search for? Do other countries do it differently? do private companies do it differently? I'll answer these questions in a later blog.
The search fee for a utility patent is $620, and $310 -- if the applicant is a small entity. It is known, but I can't prove it's known, that the complexity of the search depends on the type of invention. An application for a latch is usually easier to search for than an application for a method of moving electrons in a certain way. This is because latches can usually be pictured and it's hard to picture a method for moving electrons without describing it. Pictures are easier to search through than written descriptions. For me, the fact that searches vary in difficulty but don't vary in price, raises the following questions.
Should there be a different fee for different applications that claim different inventions, i.e. does it actually take more work to search for some inventions? Do different fees raise the barrier to entry into the patent game, for certain arts? Does the patent system incentivze innovation if it charges applicants more when they apply for inventions that are hard to search for? Do other countries do it differently? do private companies do it differently? I'll answer these questions in a later blog.
Sunday, February 10, 2013
Why you should allow
As an examiner, you might think that more valid patents are good because they encourage innovation; are bad because they hamper innovation; or they're the thing that gets you paid.
If you think that more valid patents are a good thing, then allow more valid patents and encourage innovation. This assumes that you believe the constitutional intent of the patent system is "[t]o promote the Progress of Science and useful Arts..."
If you think that more valid patents are a bad thing, then you still want allowances. More valid patents will gum up the system and make the drawbacks of the patent system more vivid.
If you think issuing patents is a way to get paid, then you still still want allowances. The office works on counts. You have to get a certain amount of counts each bi-week to get your paycheck and bonuses. A first action allowance is worth two counts, a first action rejection is worth 1.25 counts. A second action allowance is worth .75 counts, compared to a final rejection which is only worth .25 counts. "ALLOW!!"
Friday, January 25, 2013
Project planning with fudge
I have spent a little time planning different projects. I have seen that when setting out to do something that hasn't been done by you before, it helps to add a fudge factor. I did this during a job interview and predicted the timeline of a project to build a heavy duty engine more accurately than the team that was actually in charge of the heavy duty engine *cough a team of Daimler engineers cough*. I have also seen this lack of fudge factor blow up in my face *cough moving to D.C. and thinking I could get a nice apartment for less than $1,000 cough*.
The fudge factor is to multiply your expenses by 1.5 and multiply your resources by .75. If I had done this before moving to DC then I would have seen that my expenses were somewhere around 4.3k monthly and my income would have been more around 3.8k, which, it turns out, is almost dead on for my life in D.C.
Case study: becoming a millionaire in one year using the fudge factor. You need to make 1.5M to be a millionaire, because 1M*1.5=1.5M. And you have nine months to do it, because 1yr*.75=9mo. Now that you know your actual costs and the actual time you have to do it in, the rest of the planning phase is just number crunching and a little bit of reading.
1.5M/9mo means about .16666M per month needs to be netted. If you sell a product with a $6 profit (think $40 product) then you have to sell about 27k products each month. $.60 profit and you have to sell 277k products, and on and on and on. NOW! You know your profit margin and you know the width of your supply chain. Find a supply chain that can support 27k products moving through it per month: Off the top of my head, Walmart, Target etc. Find a product that you can move 27k per month at a $6 profit: Off the top of my head, nutritional supplements, shirts etc. Now I know what your saying/thinking... I don't know how to do any of that and I will fuck it up :( Yes, Mr./Ms. Negativity you will fuck some of it up and that's why there is a fudge factor.
Some of you who are reading this will think that is is not scientific and it isn't the way we should be planning projects in this day of high technology and easy data analysis. Well, first off, in science we use constants all the time, Plank's constant, 9.1m/s^2 etc. They are just things that make equations work out better, even though they are not completely accurate for all cases over all time. And if a constant is working to predict real world events then, it may not be pretty, but it is pretty useful -- and scientific. As far as technology and data are concerned, this just lumps all the rounding errors and unknown unkowns (thanks Mr. Bush) into an easy to consider fudge factor. Collect the data, know the knowns and the knowables and then add the fudge factor. If you still don't like the idea of using the fudge factor without some sort of data backing it, go through old projects you ran and apply the fudge factor to the data you had when you started the project. If the numbers come out close to what actually happened then the fudge factor is a good predictor. Finally, it's true that 1.5 and .75 are just guesses but they are constant guesses which makes them better than random guesses because they will deliver consistency in an area where there was little consistency before, i.e. guesstimating, which is half of project planning anyway.
The fudge factor is to multiply your expenses by 1.5 and multiply your resources by .75. If I had done this before moving to DC then I would have seen that my expenses were somewhere around 4.3k monthly and my income would have been more around 3.8k, which, it turns out, is almost dead on for my life in D.C.
Case study: becoming a millionaire in one year using the fudge factor. You need to make 1.5M to be a millionaire, because 1M*1.5=1.5M. And you have nine months to do it, because 1yr*.75=9mo. Now that you know your actual costs and the actual time you have to do it in, the rest of the planning phase is just number crunching and a little bit of reading.
1.5M/9mo means about .16666M per month needs to be netted. If you sell a product with a $6 profit (think $40 product) then you have to sell about 27k products each month. $.60 profit and you have to sell 277k products, and on and on and on. NOW! You know your profit margin and you know the width of your supply chain. Find a supply chain that can support 27k products moving through it per month: Off the top of my head, Walmart, Target etc. Find a product that you can move 27k per month at a $6 profit: Off the top of my head, nutritional supplements, shirts etc. Now I know what your saying/thinking... I don't know how to do any of that and I will fuck it up :( Yes, Mr./Ms. Negativity you will fuck some of it up and that's why there is a fudge factor.
Some of you who are reading this will think that is is not scientific and it isn't the way we should be planning projects in this day of high technology and easy data analysis. Well, first off, in science we use constants all the time, Plank's constant, 9.1m/s^2 etc. They are just things that make equations work out better, even though they are not completely accurate for all cases over all time. And if a constant is working to predict real world events then, it may not be pretty, but it is pretty useful -- and scientific. As far as technology and data are concerned, this just lumps all the rounding errors and unknown unkowns (thanks Mr. Bush) into an easy to consider fudge factor. Collect the data, know the knowns and the knowables and then add the fudge factor. If you still don't like the idea of using the fudge factor without some sort of data backing it, go through old projects you ran and apply the fudge factor to the data you had when you started the project. If the numbers come out close to what actually happened then the fudge factor is a good predictor. Finally, it's true that 1.5 and .75 are just guesses but they are constant guesses which makes them better than random guesses because they will deliver consistency in an area where there was little consistency before, i.e. guesstimating, which is half of project planning anyway.
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