Patent Law Insights

Patents for Humanity

Rajiv Sarathy — Thu, 08 Mar 2012 09:46:27 -0800

The USPTO has announced a competition designed to encourage research and development that targets challenges humanity faces worldwide. Winners will receive a certificate for accelerated examination of their patent application.

For details, see:

Federal Circuit Says Software Is Unpatentable When It Merely Implements Mental Steps

Rajiv Sarathy — Thu, 18 Aug 2011 09:20:37 -0800

On Tuesday, the Federal Circuit affirmed Judge Patel's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware.

According to the Federal Circuit:

Steps that can be performed entirely by a human mind are not patentable – even when they are embodied in computer-readable storage media (i.e., "Beauregard" claims) – because the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." (Citing the Federal Circuit's own language in its previous Bilski decision.)
Adding data-gathering steps does not make an otherwise nonstatutory claim statutory.
Courts look to the underlying invention even if the preamble is directed to a statutory class other than a method.
Although adding software to a general-purpose computer makes the computer a special-purpose computer, simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind does not make the algorithm patentable.
The patent applicant has the burden of demonstrating that claims drawn to a specific apparatus are distinct from other apparatuses capable of performing identical functions.
The "mere manipulation or reorganization of data" does not satisfy the transformation prong of the "machine-or-transformation" test.
To satisfy the machine prong of the "machine-or-transformation" test, "the use of the machine 'must impose meaningful limits on the claim's scope.'" (Citing the Federal Circuit's language in Bilski.)

My initial thoughts are:

Reciting steps to create the database of Internet addresses may have involved sufficient use of computers to overcome the 35 U.S.C. § 101 threshold.
Reciting steps to sort, weigh, or draw conclusions from Internet transactions may have been useful to make the claims less "abstract," but it's unclear if doing so would have been sufficient to make the claims patentable.

The court also reiterated two of its prior decisions on patentable software that could serve as useful guidance:

SiRF Tech. v. Int'L Trade Comm'n: a method for calculating an absolute position of a GPS receiver was patentable because the method could not be performed without the GPS receiver.
Research Corp. Techs. v. Microsoft Corp.: a method for rendering a halftone image of a digital image was patentable because the method (a) manipulated data structures; (b) output a modified data structure; and (c) could not be performed entirely mentally.

Earth Day-Friendly Patenting

Rajiv Sarathy — Fri, 22 Apr 2011 08:20:48 -0800

Just in time for Earth Day 2011:

General Motors announced last week in a press release that it "received more clean-energy patents last year than any other organization, according to the Clean Energy Patent Growth Index of U.S. patents. GM’s 135 patents represent nearly 14 percent of the total 1,881 received by 700 entities." Among these 135 patents are several that are directed to electrically operated vehicles. That's no surprise because, according to the press release, "GM believes electrically driven vehicles offer the most long-term benefits to customers around the world."

In the top 25 companies in the Growth Index, GM came second only to Honda in overall numbers, and its 2010 results surpassed Honda's. Interestingly,Toyota came in third, giving the top three spots in the list to automotive companies. Looking further down the list, the automotive industry had five of the top seven spots (Nissan was fifth and Ford was seventh).

In 2010, applicants from the United States were awarded more Green Energy patents than applicants from any other country, according to the Growth Index.

The Growth Index is compiled by Heslin Rothenberg Farley & Mesiti P.C. I don't know what criteria they use to select patents for inclusion.

The IP World Is Shrinking (But We Already Knew That)

Rajiv Sarathy — Wed, 16 Mar 2011 08:40:58 -0800

Last, week, the United States Patent and Trademark Office issued a press release indicating that it had "hosted a two-day meeting with representatives from Asia-Pacific economies to discuss the importance and future of substantive patent law harmonization."

Next month, Commissioner Robert Stoll will be speaking at a conference in Bangalore, India. When I spoke at an International Technology Law Association's conference in the same city last month, I was surprised to see so many practitioners from the United States as well as several European and Asian jurisdictions -- both speaking and attending.

Many countries -- including the United States -- are attempting to harmonize patent laws, and these cross-jurisdictional meeting opportunities facilitate that goal.

Canadian Government Appeals Amazon "One-Click" Decision

Rajiv Sarathy — Fri, 10 Dec 2010 11:14:18 -0800

On November 15, 2010, the Attorney General of Canada and Canada's Commissioner of Patents filed a Notice of Appeal in Canada's Federal Court of Appeal in a case involving the patentability of Amazon's "One-Click" invention. If the Court of Appeal overturns the earlier decision, it could make Canada's patent law diverge from U.S. patent law regarding the patentability of some (or potentially all) software.

Software Is Not Abstract

Rajiv Sarathy — Thu, 09 Dec 2010 14:01:32 -0800

Earlier this year, I wrote that the U.S. Supreme Court ruled that Bilski's claims were abstract, and that abstract claims are unpatentable under 35 U.S.C. § 101. According to the Federal Circuit in Research Corp. Tech. v. Microsoft Corp., software-related claims are not abstract.

In yesterday's decision, the Federal Circuit held that some claims present "functional and palpable applications in the field of computer technology" and so are not excluded under 35 U.S.C. § 101. Moreover, according to the decision,

inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

The decision also quoted the Supreme Court's reiteration of Diamond v. Diehr:

claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.

(Emphasis added.)

The court then went on to state that even though claims may be patent-eligible under 35 U.S.C. § 101, they may nevertheless fail under 35 U.S.C. § 112, e.g., if they do “not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.” (Quoting Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.)

Pilot Program to Defer Prosecution of Non-Provisional Patent Applications

Rajiv Sarathy — Thu, 09 Dec 2010 09:43:14 -0800

Some patent applicants file a provisional patent application to defer filing a non-provisional patent application for up to a year. Yesterday, the United States Patent and Trademark Office (USPTO) announced a new pilot program to defer prosecution (and payment of some fees) for the non-provisional patent application by up to a second year.

According to the USPTO, the

Pilot Program will benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which applicants later decide not to pursue examination.

Because the program prohibits filing a nonpublication request, applications cannot be kept secret. Moreover, the program is not available for International Applications filed under the Patent Cooperation Treaty.

To take advantage of the program, applicants will need to file a special form when they file their non-provisional patent application, and will still have to pay a basic filing fee.

Beacon Power's Smart Grid Patent

Rajiv Sarathy — Sun, 14 Nov 2010 16:52:45 -0800

Beacon Power reported last week that its patent application directed to smart grid technology has been allowed. The patent will issue on Tuesday as U.S. Patent No. 7,834,479, and is directed to controlling the frequency of power on a mini-grid that is disconnectable from a utility grid.

Claim 1 of the patent will recite:

A method for operating a mini-grid including one or more power generation sources and one or more loads connected to a bus, comprising the steps of:

monitoring a condition of a utility grid;

disconnecting the mini-grid from the utility grid to operate the mini-grid independently in response to a power disruption over the utility grid;

monitoring at least one of a frequency and a voltage of power on the bus; and

providing an interconnect device connected to the bus, the interconnect device
including at least one of: an energy storage device for absorbing or releasing real power to control the frequency of the power on the bus, and a power quality compensator for absorbing or releasing reactive power to control the voltage of the power on the bus.

A first Office Action rejected the claims under 35 U.S.C. 112 because the patent examiner did not understand where the interconnect device is and what it does. Beacon amended the claims to more particularly claim the interconnect device, and the examiner then allowed the claims.

The application was first filed in 2008. Although claim 1 does not define what the energy storage device is or how it works, Beacon's "fly-wheel" storage device is described at Beacon's web site. It will be interesting to watch how broadly Beacon will attempt assert claim 1.

USPTO Expands "Green Technology Pilot Program"

Rajiv Sarathy — Wed, 10 Nov 2010 09:38:38 -0800

The USPTO today announced an expansion and extension to the "Green Technology Pilot Program." Under the program, patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction can be accorded special status and prosecuted more quickly than other applications.

This pilot program will run until December 31, 2011, but the USPTO will accept only the first 3,000 grantable petitions to make special under the Green Technology Pilot Program.

NASA Is Auctioning Off Five Software Patents

Rajiv Sarathy — Tue, 26 Oct 2010 08:46:42 -0800

NASA Goddard Space Flight Center is putting up for auction five software-related patents on Veteran's Day, November 11, 2010.

7,668,796

"Automata learning algorithms and processes for providing more complete systems requirements specification by scenario generation, CSP-based syntax-oriented model construction, and R2D2C system requirements transformation."

(I like the R2D2 part of this patent's title.)

7,627,538

"Swarm autonomic agents with self-destruct capability."

7,752,608

"Systems, methods and apparatus for verification of knowledge-based systems."

7,739,671

"Systems, methods and apparatus for implementation of formal specifications derived from informal requirements."

7,543,274

"System and method for deriving a process-based specification."

The U.S. Government apparently expects to receive at least $250,000 from the auction of these patents.

Patent Peer Review Program

Rajiv Sarathy — Fri, 22 Oct 2010 03:43:27 -0800

The USPTO on Tuesday announced a second "Peer to Patent Pilot" program for peer review of patent applications to begin on Monday, October 25.

Under the pilot program, inventors can opt to have their patent applications posted on the www.peertopatent.org website. Volunteer scientific and technical experts then discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination.

The Peer To Patent pilot is a collaboration with the USPTO and New York Law School, and is funded by GE, HP, IBM, Article One Partners, Microsoft, Open Invention Network, and Red Hat.

Amazon's One-Click Patent Is Patentable In Canada

Rajiv Sarathy — Sat, 16 Oct 2010 08:18:12 -0800

The Federal Court of Canada ruled on Thursday that claims in Amazon's 1-click patent constitute patentable subject matter, thereby reversing the Commissioner of Patents' findings. The Commissioner argued that there is a business method exclusion in Canada, but the Court ruled that there is not.

According to the Court's ruling:

There is no exclusion for “business methods” which are otherwise patentable, nor is there a “technological” test in Canadian jurisprudence. Even if there was some
technological requirement, in this case the claims, when viewed as a whole, certainly disclose a technological invention.

The Canadian Court's ruling appears to be consistent with the U.S. Supreme Court's opinion in Bilski.

Apple Patent For Censoring Texting

Rajiv Sarathy — Wed, 13 Oct 2010 13:13:33 -0800

Yesterday, the USPTO issued Apple's U.S. Patent No. 7,814,163 directed to a "Text-based communication control for personal communication device." The patent has one independent claim and 14 total claims.

Claim 1 recites:

1. A text-based communication device comprising:

input circuitry that provides a user interface to enable a user to perform at least one of inputting and editing a text message;

transmission circuitry for sending the text message; and

processing circuitry for controlling the sending of the text message based on at least a portion of the text message and at least one message control condition, wherein the at least one message control condition comprises a rated message control condition corresponding to the user's designated language skill rating.

According to the Notice of Allowability, the patent office allowed the claims because the references the patent office relied on in its original rejections did not disclose "a rated message control condition corresponding to the user's designated language skill rating."

According to the extensive "Summary of the Invention" section of the patent,

In some embodiments, at least one of the message control conditions includes applying ratings to the message control conditions, at least one of which can correspond to the user's designated language skill rating. The rated message control conditions can be applied to the entire message or a portion of the message according to the user's designated language skill rating. In further embodiments, the designated language may include a required foreign language, vocabulary, spelling, grammar and/or punctuation based on the user's designated skill level.

Software Pioneer's Company Sues Software Companies

Rajiv Sarathy — Fri, 27 Aug 2010 20:07:46 -0800

Interval Licensing LLC today sued AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube for patent infringement. The complaint alleges that the defendants infringe U.S. Patent Nos. 6,263,507; 6,034,652; 6,788,314; and 6,757,682.

The '507 patent is directed to a "Browser for use in navigating a body of information, with particular application to browsing information represented by audiovisual data." Claim 1 recites:

1. A system for acquiring and reviewing a body of information, wherein the body of information includes a plurality of segments, each segment representing a defined set of information in the body of information, the system comprising:

means for acquiring data representing the body of information;
means for storing the acquired data;
first display means for generating a display of a first segment of the body of information from data that is part of the stored data;
means for comparing data representing a segment of the body of information to data representing a different segment of the body of information to determine whether, according to one or more predetermined criteria, the compared segments are related; and
second display means for generating a display of a portion of, or a representation of, a second segment of the body of information from data that is part of the stored data, wherein the second display means displays the portion or representation of the second segment in response to the display by the first display means of a first segment to which the second segment is related.

The '652 patent is directed to an "Attention manager for occupying the peripheral attention of a person in the vicinity of a display device." Claim 1 recites:

1. A system for engaging the peripheral attention of a person in the vicinity of a display device of an apparatus, comprising:

a content display system associated with the display device, the content display system including means for receiving a set of content data and a set of instructions for enabling a display device to selectively display, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from a set of content data, the content display system further including means for using the display device to selectively display the image or images using the set of instructions;
a content providing system including means for providing a set of content data to the content display system;
means for providing to the content display system a set of instructions for enabling a display device to selectively display an image or images generated from a set of content data;
first communication means for enabling communication between the means for providing and the content display system;
second communication means for enabling communication between the content providing system and the content display system; and
means for auditing the display of sets of content data by the content display system.

The '314 patent is directed to an "Attention manager for occupying the peripheral attention of a person in the vicinity of a display device." Claim 1 recites:

1. A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of:

providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device;
providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and
auditing the display of sets of content data by the content display system;
wherein the one or more sets of content data are selected from a plurality of sets of content data, each set being provided by an associated content provider, wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider and without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system, and wherein for each set the respective content provider may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image or images generated from the set of content data.

The '682 patent is directed to "Alerting users to items of current interest." Claim 1 recites:

1. A system for disseminating to a participant an indication that an item accessible by the participant via a network is of current interest, comprising:

a computer configured to receive in real time from a source other than the participant an indication that the item is of current interest; process the indication; determine an intensity value to be associated with the indication and an intensity weight value, and adjusting the intensity value based on a characteristic for the item provided by the source; and;and (sic)inform the participant that the item is of current interest; and
a database, associated with the computer, configured to store data relating to the item.

Software Is Not Necessarily Business Method

Rajiv Sarathy — Thu, 08 Jul 2010 08:20:52 -0800

Section 101 of the patent statutes (Title 35 of the U.S. Code), broadly outlines the categories of what is patentable subject matter. These include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." A business method falls into the "process" category, but claims in patents directed to software can be written as a process, machine, or manufacture. However, people commonly confuse software patents with business method patents. These are different things, and although the distinction can be difficult to discern because businesses today rely on software so much, the distinction is likely to become important over time because of the U.S. Supreme Court opinion in Bilski.

Most people understand that a claim directed to software can be written as a process. They are commonly drafted as "method" claims, which is probably why many people confuse these with "business method" claims. A business method does not necessarily involve software at all. For example, a method of hedging energy risks does not necessarily require software. People were hedging risks relating to commodities over a hundred years ago -- well before electronic trading devices were invented -- by buying and selling commodity futures.

Claims directed to software can also be written as a machine or manufacture. Patent attorneys commonly draft claims directed to computing devices and computer-readable storage media that implement or embody the software. We do this to provide broad protection to our clients so that someone who makes, sells, or imports infringing software can be liable in addition to a user of the software who only infringes when the software is run and it performs the claimed process.

The media equally confuses software and business method patents. For example, an article published in the San Jose Mercury News last week equates software with business methods. It provides examples of patents owned by software companies (one of which was successfully procured and litigated by Perkins Coie) that are drafted to include aspects of computing. However, these are not pure business method patents: the claims are drafted in terms of what a computing device does and not what a business does. Although many business methods today are performed using computing devices, it is likely that those same methods could be performed without the computing devices. On the other hand, most software inventions would be nearly impossible to implement without computers.

The article goes on to state:

Folks such as the Electronic Frontier Foundation have been railing against the evils of such patents for years. "The patents can be so broad that they cover a lot of activity that people have been doing for a long time," said Michael Barclay, an attorney and EFF Fellow. "The result is a lot of patents that get allowed that shouldn't get allowed."

This statement is a red herring. Once the United States Patent & Trademark Office (USPTO) determines that an invention falls within one of the eligible categories outlined in Section 101, it has to determine whether the claimed invention is novel (Section 102) and not obvious (Section 103). However, patent examiners are not perfect and can award patents that should not be awarded because they do not have infinite time to analyze all the prior art even if all of it could be identified. However, this is a problem in all areas of innovation and not just software (or business methods, for that matter). If a patented claim covers "a lot of activity that people have been doing for a long time" as Mr. Barclay suggests, such a patented claim is invalid under either the novelty or nonobviousness requirements and cannot be successfully enforced. Just because the USPTO granted a patent because it had inadequate resources to properly and fully examine the underlying patent application, it does not mean that all innovators should be barred from receiving patents on their innovations.

The article states that because the U.S. Supreme Court opinion concluded as it did,

the folks at the patent office were feeling the relief of someone who had just avoided a neutron bomb going off in their house. Rather than descending into chaos that would have come with reviewing thousands of patents, patent officials were thinking about issuing follow-up guidelines at some point.

This reflects another misconception a lot of people not familiar with the patent system have. The USPTO does not review previously granted patents unless someone requests a reexamination, e.g., because of newly found "prior art." On the other hand, the law evolves continually and patents that were valid one day may become invalid the next because the law changed. As far as I know, the USPTO does not have the authority to revoke a patent sua sponte, and a defendant's recourse is to request a court to find that an asserted (or threatened to be asserted) patent is invalid as a matter of the new law.

Luckily for the software patent bar, the Supreme Court Justices wisely recognized that tests to determine whether an innovation was patentable during the Industrial Age are irrelevant during the Information Age. (U.S. Supreme Court Slip Op. at 8-10.)

Software and Business Methods Remain Patentable

Rajiv Sarathy — Mon, 28 Jun 2010 10:34:35 -0800

Software companies that desire patent protection on their innovations or previously spent considerable effort in procuring patents received good news today. The Supreme Court in its Bilski opinion today held that business methods and software can be patentable, but Bilski's claims are not.

The following are some salient points from the Supreme Court's opinion:

the "machine-or-transformation" test the Federal Circuit enunciated in its Bilski holding "may be a useful and important clue or investigative tool, [but] it is not the sole test for deciding whether an invention is a patent-eligible 'process' under §101."
- this test may have been useful during the Industrial Age, but is inappropriate for inventions during the Information Age.
Bilski's claims are unpatentable because they claim an abstract idea.
the Court would like to eventually find a balance between inventors' rights to protect their innovations and others' rights to discover the same invention independently using known principles

However, not all software may continue to be patentable. For example, Judge Steven's concurring opinion called into question the State Street Bank decision that anything with a "useful, tangible or concrete result" is potentially patentable.

Until there is more guidance from lower courts, I plan to continue to draft at least dependent claims that tie methods to computer hardware and, where possible, identify some sort of physical transformation. Once the USPTO outlines what changes it is making to respond to this opinion, I may also attempt to recapture subject matter we previously relinquished to comply with changes the USPTO made to respond to the Federal Circuit's decision in Bliski.

More analysis in this Perkins Coie Update.

Two More Smartgrid-Related Patents

Rajiv Sarathy — Wed, 23 Jun 2010 23:02:47 -0800

EDSA Power Analytics recently received two smartgrid-related patents:

7,729,808 System for comparing real-time data and modeling engine data to predict arc flash events; and
7,693,608 Systems and methods for alarm filtering and management within a real-time data acquisition and monitoring environment

Claim 1 of the '808 patent recites:

1. A system for making real-time predictions about an arc flash event on an electrical system, comprising:

a data acquisition component communicatively connected to a sensor configured to acquire real-time data output from the electrical system;

an analytics server communicatively connected to the data acquisition component, comprising, a virtual system modeling engine configured to generate predicted data output for the electrical system utilizing a virtual system model of the electrical system, an analytics engine configured to monitor the real-time data output and the predicted data output of the electrical system, the analytics engine further configured to initiate a calibration and synchronization operation to update the virtual system model when a difference between the real-time data output and the predicted data output exceeds a threshold, a decision engine configured to compare the real-time data output against the predicted data output to filter out and interpret indicia of electrical system health and performance; and

an arc flash simulation engine configured to utilize the virtual system model to forecast an aspect of the arc flash event; and a client terminal communicatively connected to the analytics server and configured to communicate the forecasted aspect.

Claim 1 of the '608 patent recites:

1. A system for filtering and interpreting real-time sensory data from an electrical system, comprising:

a data acquisition component communicatively connected to a sensor configured to acquire real-time data output from the electrical system;

a power analytics server communicatively connected to the data acquisition components, comprising, a virtual system modeling engine configured to generate predicted data output for the electrical system utilizing a virtual system model of the electrical system, an analytics engine configured to monitor the real-time data output and the predicted data output of the electrical system, the analytics engine further configured to initiate a calibration and synchronization operation to update the virtual system model when a difference between the real-time data output and the predicted data output exceeds a threshold, and a decision engine configured to compare the real-time data output against the predicted data output to filter out and interpret indicia of electrical system health and performance; and

a client terminal communicatively connected to the power analytics server and configured to display the filtered and interpreted indicia.

Research-In-Motion Settles With Motorola

Rajiv Sarathy — Sun, 13 Jun 2010 09:10:10 -0800

In late February, Motorola filed an ITC Section 337 action against Blackberry maker Research-In-Motion. On Friday, Research-In-Motion announced that it has ended all worldwide patent disputes with Motorola.

According to the announcement,

Under the Agreement, Motorola and RIM will benefit from a long-term, intellectual property cross-licensing arrangement involving the parties receiving crosslicenses of various patent rights, including patent rights relating to certain industry standards and certain technologies, such as 2G, 3G, 4G, 802.11 and wireless email . In addition, the parties will transfer certain patents to each other.

The ITC complaint identified filed in February identified U.S. Patent Nos. 5,319,712; 5,359,317; 5,569,550; 6,232,970; and 6,272,333.

5,319,712 is directed to cryptographic protection of data streams using packet sequence numbers;
5,359,317 is directed to storing selected portions of received messages in selected memory elements;
5,569,550 is directed to a battery pack;
6,232,970 is directed to a user interface supporting "light" data entry (e.g., fewer keystrokes); and
6,272,333 is directed to sending data to a wireless device only after checking that the wireless device has an installed application that can access the data.

The '970 patent looks like it was written to cover the old Rolodex "Rex" credit-card sized personal digital assistant (PDA). I had a version 1 of this product in the '90s, but quickly switched to a full-sized PDA despite the larger form factor.

USPTO Proposes Three-Track Patent Examination Process

Rajiv Sarathy — Thu, 03 Jun 2010 08:58:52 -0800

The USPTO today proposed a three-track patent examination process. Further details will be announced in a notice to be published in the Federal Register tomorrow, but preliminary information is available at the USPTO web site:

Track I: prioritized examination
Track II: traditional examination under the current procedures
Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.

The USPTO believes that this will reduce pendency of applications.

The USPTO could also become more deferential to foreign patent offices:

For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USPTO until the agency receives a copy of the search report, if any, and first office action from the foreign office as well as an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO. Following or concurrent with the submission of the foreign office action and reply, the applicant may request prioritized examination or obtain processing under the current procedure. This proposal would increase the efficiency of the examination of these applications by avoiding or reducing duplication of efforts by the office of first filing and the USPTO.

The comment period will end on August 20, 2010, and a final rule will likely be promulgated by the end of the year.

I suspect that most applicants will be in favor of these rules, though some individual inventors may be concerned that corporations willing to pay additional fees could gain some advantage.

What To Do When Patent Is Potentially Invalid?

Rajiv Sarathy — Wed, 03 Mar 2010 18:23:55 -0800

Sometimes, one becomes aware of a patent that may be invalid. As an example, there is presently an online uproar about U.S. Patent No. 7,028,023, which is directed to a type of linked list. Linked lists are data structures that computer programmers commonly employ to store information that needs to be accessed sequentially.

Claim 1 of this patent recites:

1. A computerized list that may be traversed in at least two sequences comprising:

a plurality of items that are contained in said computerized list; and

a primary pointer and an auxiliary pointer for each of said items of said computerized list such that each of said items has an associated primary pointer and an associated auxiliary pointer, said primary pointer functioning as a primary linked list to direct a computer program to a first following item and defining a first sequence to traverse said computerized list, said auxiliary pointer functioning as an auxiliary linked list to direct said computer program to a second following item and defining a second sequence to traverse said computerized list.

Some people in the online community believe that this patent could be invalid in view of various prior art, including "skip lists." (As a coincidence - one of my assignments during my undergraduate education at the University of Toronto was to implement skip lists -- before an article explaining the data structure first published in 1990 -- as a favor to the author.)

Assuming that these people are correct and the patent is invalid, what should you do?

If the patent has not been asserted against you, then you may choose to implement the claimed technology assuming that you can invalidate the patent later.
If the patent is (e.g., later) asserted, you may
- request the U.S. Patent & Trademark Office to reexamine the patent based on the prior art;
- use the prior art to invalidate the patent during trial; or
- notify the patent owner that you have prior art that could invalidate their patent.

Each approach has advantages and disadvantages. As examples, the reexamination may invalidate the claims, but may result in narrower claims that are valid and that you may still infringe; the court may be convinced by the patent owner that the prior art does not invalidate the claims; or by identifying the prior art, you may give the patent owner a head start in claim construction arguments to use during trial.

As is usual, which of the many options you choose will depend on the facts of the case.