Effective Patent Application Drafting and Prosecution in Light of Recent in Light of Recent
Transcript of Effective Patent Application Drafting and Prosecution in Light of Recent in Light of Recent
Effective Patent Application Effective Patent Application
Drafting and ProsecutionDrafting and Prosecution
in Light of Recent in Light of Recent
Woods Patent Law, LLCWoods Patent Law, LLC
in Light of Recent in Light of Recent
DevelopmentsDevelopments
Thomas F. WoodsThomas F. Woods
Woods Patent Law, LLCWoods Patent Law, LLC
..
Topics CoveredTopics Covered
BackgroundBackground
Recent Changes in the LawRecent Changes in the Law
Before WritingBefore Writing
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Prior Art SearchesPrior Art Searches
Effective Application Drafting TechniquesEffective Application Drafting Techniques
Effective Prosecution TechniquesEffective Prosecution Techniques
SummarySummary
BackgroundBackground
Difficulty of drafting patent applicationsDifficulty of drafting patent applications
Patents have become more difficult to obtainPatents have become more difficult to obtain
Problems administering patent applications at the Problems administering patent applications at the
USPTOUSPTO
Recent changes in the lawRecent changes in the law
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Recent changes in the lawRecent changes in the law
Economic pressuresEconomic pressures
A changed patent landscapeA changed patent landscape
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Reductions in rates of Reductions in rates of
allowanceallowance
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Increasing PendencyIncreasing Pendency
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Backlog of Pending Patent Backlog of Pending Patent
ApplicationsApplications
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Total Pending ApplicationsTotal Pending Applications
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Kappos at the USPTO
Kappos has significant patent experience
Changes at the USPTO are apparent
Better guidance re. KSR recently provided by the
USPTO
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USPTO
Changes to the Examiner quota system
First Action Pilot Program
Patent Application Backlog Reduction Stimulus Plan
Patent Examination Corps Hiring
Recent growth in the Examiner Corps
Better searches
Backlog could begin to clear
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Backlog could begin to clear
Implications for interviews and written communications
Appeals
Reversal rates in appeals have dropped precipitously
post-KSR
KSR is being applied frequently by the BPAI
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The number of appeals has increased
Backlog at the BPAI has increased
Decreasing quality of BPAI decisions
Recent Changes in the LawRecent Changes in the Law
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KSR Int’l Co. v. Teleflex, Inc. KSR Int’l Co. v. Teleflex, Inc.
KSR KSR is the most important decision regarding is the most important decision regarding obviousness in many yearsobviousness in many years
Upends decades of careful obviousness jurisprudence Upends decades of careful obviousness jurisprudence established by the Federal Circuitestablished by the Federal Circuit
Reaffirms traditional obviousness analysis of Reaffirms traditional obviousness analysis of Graham v. Graham v. John DeereJohn Deere
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John DeereJohn Deere
Rigid application of the TSM test is to be avoidedRigid application of the TSM test is to be avoided
(TSM and MTC are not dead, however)(TSM and MTC are not dead, however)
New “common sense,” “obvious to try,” “finite number of New “common sense,” “obvious to try,” “finite number of predictable solution” and “ordinary creativity” standardspredictable solution” and “ordinary creativity” standards
Examiner must still articulate a reason or rationale to Examiner must still articulate a reason or rationale to support obviousness (support obviousness (GrahamGraham fact findings central)fact findings central)
KSR Int’l Co. v. Teleflex, Inc. KSR Int’l Co. v. Teleflex, Inc.
“Whether there was an apparent reason to combine the “Whether there was an apparent reason to combine the known elements in the fashion claimed;” analysis “should known elements in the fashion claimed;” analysis “should be made explicit.”be made explicit.”
KSRKSR is cited in 60% of BPAI decisionsis cited in 60% of BPAI decisions
USPTO Guidelines regarding the USPTO Guidelines regarding the KSR KSR decisiondecision
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USPTO Guidelines regarding the USPTO Guidelines regarding the KSR KSR decisiondecision
Rates of allowance have dropped significantly in the Rates of allowance have dropped significantly in the wake of wake of KSRKSR
KSRKSR provides poor guidance regarding obviousnessprovides poor guidance regarding obviousness
The doctrine of missing elements remains black letter The doctrine of missing elements remains black letter lawlaw
The value of arguably overbroad claims continues to fallThe value of arguably overbroad claims continues to fall
Bilski et al. v. KapposBilski et al. v. Kappos
No dramatic changes affecting property rights
At least some business method claims are patentable
The machine-or-transformation test is not the sole test, but can provide “clues,” for determining the patentability of process claims under §101
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of process claims under §101
Prohibition on patenting “abstract ideas” is re-emphasized, but with little guidance from the Court
For further guidance, look to §100(b), Charkrabaty, Benson, Flook, and Diehr
Ariad v. Eli LillyAriad v. Eli Lilly
En bancEn banc decision by the Federal Circuitdecision by the Federal Circuit
In Section 112, paragraph 1, the written description In Section 112, paragraph 1, the written description
requirement is separate from the enablement requirement is separate from the enablement
requirementrequirement
Primary application to pharmaceutical, biotechnology Primary application to pharmaceutical, biotechnology
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Primary application to pharmaceutical, biotechnology Primary application to pharmaceutical, biotechnology
and some software casesand some software cases
Prevent patentees from claiming too muchPrevent patentees from claiming too much
Phillips v. AWH Corp.Phillips v. AWH Corp.
When interpreting claims, intrinsic evidence trumps When interpreting claims, intrinsic evidence trumps
extrinsic evidenceextrinsic evidence
Does the patentee “intend for the claims and the Does the patentee “intend for the claims and the
embodiments in the specification to be coextensive”?embodiments in the specification to be coextensive”?
Disclose more than one embodimentDisclose more than one embodiment
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Disclose more than one embodimentDisclose more than one embodiment
Be careful in your choice of wordsBe careful in your choice of words
McKesson Information Solutions v.
Bridge Medical
What is a “related case”?
Disclosing existence of related applications is not
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Disclosing existence of related applications is not
enough
If co-pending cases have “substantially similar” claims,
then cite rejections as well
Contemporaneously record assessments of prior art and
reasons why not cited
Drafting the Patent Application
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Before WritingBefore Writing
Carefully consult with the inventorsCarefully consult with the inventors
Ask openAsk open--ended questions; let the inventors educate youended questions; let the inventors educate you
Data sheets, manuals, productsData sheets, manuals, products
What is the closest prior art of which the inventors have What is the closest prior art of which the inventors have knowledge?knowledge?
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knowledge?knowledge?
Obtain a comprehensive disclosure of the invention Obtain a comprehensive disclosure of the invention ––with drawings with drawings –– from the inventorsfrom the inventors
What is the system within which the invention will What is the system within which the invention will operate?operate?
Understand what the invention is, and whether or not it Understand what the invention is, and whether or not it may be patentablemay be patentable
Prior Art SearchesPrior Art Searches
Prior art searches can be expensive, and carry risk and Prior art searches can be expensive, and carry risk and potential liabilitypotential liability
The importance of prior art searchesThe importance of prior art searches
Farming out prior art searchesFarming out prior art searches
Prior art search resultsPrior art search results
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Prior art search resultsPrior art search results
Effective Drafting of the Effective Drafting of the
SpecificationSpecificationWhat is the invention? What is the invention?
Start with the claimsStart with the claims
Sections of the patent applicationSections of the patent application
Disclose methods and more than one embodimentDisclose methods and more than one embodiment
Incorporation by referenceIncorporation by reference
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Incorporation by referenceIncorporation by reference
Reciting metrics and measurementsReciting metrics and measurements
More figures rather than fewerMore figures rather than fewer
Choose words carefullyChoose words carefully
Effective Claim DraftingEffective Claim Drafting
Draft surgical claims Draft surgical claims
How many references would have to be combined for a How many references would have to be combined for a
prima facieprima facie 103 rejection? 103 rejection?
Dependent claimsDependent claims
The postThe post--filing value of narrow claimsfiling value of narrow claims
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The postThe post--filing value of narrow claimsfiling value of narrow claims
Consider the effects of reexaminationConsider the effects of reexamination
Cite the most relevant prior artCite the most relevant prior art
Prosecuting the Patent
Application
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Application
Get Feedback from the Inventors
Especially helpful in difficult or complicated cases
Reduce client fees
You are likely to find out something you don’t know,
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You are likely to find out something you don’t know,
either about the invention or the cited prior art
Opportunity to strengthen relationships with the inventors
and the client
Missing Elements
Most likely avenue for securing allowance
The “All Elements Rule” is black letter patent law
Pennwalt v. Durand-Wayland, Inc., 883 F.2d 931 (Fed. Cir. 1987) (en banc), affirmed by the Supreme Court in Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)
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Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)
Pushes the Examiner into the KSR no-man’s land and sharpens the issues at hand
Other avenues: Newly updated USPTO KSR guidelines, teaching away, unpredictable or surprising results, level of ordinary skill in the art
Avoid or minimize pre-KSR unobviousness arguments
Interviews
Communication via paper is inherently deficient
More compact prosecution
Encouraged by Kappos
Number of interviews is up sharply
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Number of interviews is up sharply
Examiners are ready to talk
Opportunity to develop relationships with individual
Examiners
Interviews
Impart a sense of urgency and importance
Find out what the Examiner is really thinking
Opportunity to discuss and analyze the prior art with someone else
You might learn something new
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You might learn something new
The Examiner may have suggestions for amending the claims you would not have thought of or proposed
Consider requesting an SPE attend the interview
Related cases
Watch out for the requirements of McKesson
Identify related applications
Disclosing the existence of a related case is not enough
File complete copies of rejections and responses in
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File complete copies of rejections and responses in
related cases having “substantially similar” claims
Keep continuations alive to obtain claims directed to
competitors’ products
Appeals
Requests for Pre-Appeal Conferences
Interview before filing an appeal brief
Call the Examiner’s SPE or Group Leader
Many appeal briefs are rejected on technical grounds
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Many appeal briefs are rejected on technical grounds
Possibility of prosecution being re-opened after an
appeal brief is filed
Appeals can be used to limit costs and have other
advantages
SummarySummary
The The KSRKSR decision has significantly changed the U.S. decision has significantly changed the U.S.
patent landscape patent landscape
Patents have become more difficult and expensive to Patents have become more difficult and expensive to
obtainobtain
Consider not pursuing patent applications covering Consider not pursuing patent applications covering
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Consider not pursuing patent applications covering Consider not pursuing patent applications covering
inventions of marginal patentabilityinventions of marginal patentability
Conduct thorough searches of the prior art before Conduct thorough searches of the prior art before
drafting and filingdrafting and filing
Patent applications must be carefully draftedPatent applications must be carefully drafted
Surgical independent claims are especially importantSurgical independent claims are especially important
Summary (cont’)
Carefully analyze and respond to rejections
Talk to the inventors
Talk to the Examiner
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Focus on Missing Elements
Watch out for the requirements of McKesson
Carefully vet appeal briefs for technical errors before
filing