Patent applications should include ammunition for future claim amendments; Clot removal system; Reverse Medical Corp.; U.S. Pat. No. 8,343,167

February 19, 2013 Leave a comment

U.S. Patent No. 8,343,167, issued on January 1, 2013 to Reverse Medical Corp. of Coto de Caza, CA, discloses a thrombectomy system for removing clots and foreign bodies from blood vessels.

us8343167_fig7      us8343167_claim1

The ’167 patent discloses a catheter-based system for capturing and removing occlusions (e.g., blood clots) from a blood vessel.  The claimed system uses a wire made of a shape memory alloy which converts from a straight configuration to a coiled configuration upon applying heat to the wire.

According to its website, Reverse Medical is a privately-held company “focused on expanding the endovascular management of acute stroke and neurovascular disease.”  While the company markets its ReCruit™ microcatheter for “retrieval of intravascular foreign objects,” the retrieval element of the marketed product looks quite different from that of the ’167 patent.  It may be that the ’167 patent describes a configuration planned for future products, or a configuration that the company sought to patent to keep its competitors from using.

During prosecution of a patent application through the USPTO, it is common for the claims of the application to be modified in response to the arguments raised by the USPTO examiner in rejecting the claims.  These modifications are geared towards overcoming these rejections, typically by narrowing the scope of the claims so that they no longer read on the references cited by the examiner.  Of course, such narrowing also reduces the scope of protection provided by the resulting patent, so applicants generally seek to make only those amendments that are needed to steer clear of the prior art, and to keep the claims as broad as possible.  Any such amendments, however, must be based on descriptions found in the application as originally filed, otherwise they are considered to be adding new matter to the application, which is forbidden.

The ’167 patent provides an example of such an evolution of the claims during prosecution.  When the application was originally filed, the retrieval element (called the “obstructive material engaging structure”) of Claim 1 was described broadly as being “transitionable from a collapsed configuration [that is] substantially linear … to an expanded configuration [that] will engage the obstructive material.”  However, in view of the arguments that the Examiner made to reject Claim 1, Applicants narrowed the scope of Claim 1 to avoid the prior art references being cited by the Examiner.  When it eventually issued, Claim 1 of the ’167 patent was narrowed to recite that the “obstructive material engaging structure” comprises “a shape memory wire comprising a proximal coil segment and a distal coil segment,” that each of these segments is ”transitionable, in response to energy delivered thereto, from a collapsed, straight configuration to an expanded, coiled configuration,” and that the source of energy is operable “to i) selectively cause one of the proximal and distal coil segments to expand while the other does not or ii) cause the proximal and distal coil segments to expand at different expansion rates” (emphasis added).  Undoubtedly, Reverse Medical sought to make only those amendments that were perceived as overcoming the rejections being made in the various office actions without unduly narrowing the claims and without adding new matter to the application.

Because claim amendments must be based on the application as originally filed, it is generally good practice to prepare the patent application to include as much description of the various permutations or versions of the invention as can practicably be included within the time and budget constraints.  There are other good reasons for such a full “fleshing out” of the invention, but since the basis of rejections by the USPTO cannot be reliably predicted, at least for this reason it’s preferable to have as much “ammunition” in the application as originally filed as possible to be able to strategically select what modifications to make to preserve as much breadth in the claims as possible.

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Expanding universe of “prior art”: Patent applications will be more vulnerable to attack if filed after March 16, 2013

January 21, 2013 Leave a comment

HR1249U.S. patent law is scheduled to soon experience major changes under the America Invents Act (AIA) that will make it harder to get a patent granted and that will make it easier to challenge an issued patent.  Therefore, if contemplating filing a patent application in the near future, it’s wise for applicants to do so before March 16, 2013, the day these changes take effect.

One major change is that the “prior art” universe is expanding on March 16, 2013.  “Prior art” is the term used for references or activities that can be cited against the patentability of a patent application or the validity of an issued patent.  Under current law, for a sale, offer for sale, or public use of a product to qualify as “prior art,” this activity had to (i) occur in the U.S. and (ii) be earlier than one year before the patent application’s filing date.  Under the new law, being on sale or in public use anywhere in the world can be cited.

In addition, under current law, for a foreign patent application to qualify as “prior art” against your U.S. patent application, it has to satisfy at least one of the following conditions:

  1. published before your conception date,
  2. published more than one year before your filing date, or
  3. filed before your conception date as an international patent application under the Patent Cooperation Treaty (“a PCT application”), that was published in English, designated the U.S., and resulted in a granted patent.

Under the new law, conditions (1) and (3) of the current law disappear since the conception date no longer matters (as discussed below).  Condition (2) of the current law excludes all foreign patent applications that published less than one year before your filing date, but under the new law, condition (2) is modified to only exclude foreign patent applications by the inventors (or obtained from the inventors) that are published less than one year before your filing date. 

A second major change in U.S. patent law, receiving the bulk of the buzz regarding the new law, is that the U.S. is changing from a “first to invent” standard to a “first to file” standard.  It’s always been beneficial to file patent applications as soon as possible, but under the old “first to invent” standard, even if you filed your patent application after someone else did for the same invention, you could be awarded the patent instead of them by proving that you were the “first to invent,” i.e., you invented the claimed invention before they did.  However, under the new “first to file” standard, the first party filing their patent application is awarded the patent, regardless of who was the “first to invent.”  

(Rigorously speaking, the new law is actually a ”first inventor to file” standard, since it prevents someone from obtaining the invention from the inventors, and then racing to the patent office to file an application first for something this someone didn’t actually invent.)

It’s rare that two entities separately conceive and file patent applications for the same invention.  But this change to a “first to file” standard makes an important contribution that further expands the “prior art” universe.  Under the current “first to invent” standard, the date that you conceived of the claimed invention could be used to exclude a certain category of references that were available to the public before your filing date from being considered “prior art” against your patent application.  But under the “first to file” standard, applicants can no longer rely on their earlier date of conceiving the claimed invention to overcome any cited references.  In other words, conception date will no longer matter; only the application’s filing date will control.

Besides expanding the “prior art” universe, the new law also introduces a new “post-grant review” (PGR) mechanism for challenging the validity of U.S. patents within nine months of issuance before the Patent Trial and Appeal Board.  This mechanism became available to challenge so-called “business method” patents in September 2012, but on March 16, 2013, it will be available to challenge all U.S. patents with filing dates after this date.  In conjunction with the other mechanisms for challenging issued patents (e.g., ex parte reexamination and inter partes review), each with its own requirements and pros and cons, PGR opens up a new way for competitors to invalidate your patent.

Finally, the new law includes language that has not yet been interpreted by the federal courts, so the full effects of the new law are uncertain at present. 

For one example, with regard to the activities anywhere in the world being “prior art,” as discussed above, the new law states that the application can be rejected if the claimed invention is ”in public use, on sale, or otherwise available to the public” before the application’s filing date.  So does “otherwise available to the public” mean that a private sale of the invention would not qualify as “prior art” under the new law?  Under existing law, any sale or offer for sale in the U.S.would qualify as “prior art,” public or private.  Until the courts weigh in, it’s probably prudent to make the conservative assumption that any sales or offers for sale, public or private, would qualify as “prior art” and to strive to not enter into such activity unless a patent application is already on file.

For another example, the new law excludes “disclosures” made by the inventors (or obtained from the inventors) within one year before the application’s filing date from being considered as “prior art” against the application.  But are being ”on sale” or “in public use” considered to be ”disclosures” under the new law?  Under existing law, sales, offers for sale, and public uses are excluded from being “prior art” if within one year before the application’s filing date.  Here, until the courts weigh in, the conservative assumption to make is that this one-year grace period does not apply to these activities.  In other words, don’t do anything that might be considered to be a disclosure of the invention until you first have a patent application filed.

In summary, under the new regime of the AIA, patent applications filed after March 16, 2013 will have to overcome a larger universe of “prior art” references to be granted as a U.S. patent, there will be more options for competitors to challenge the validity of such patents, and there will be uncertainty in how the law applies to various situations.  Therefore, potential applicants should consider filing their patent applications before March 16, 2013, to avoid this new regime.

(Cross-posted from www.PhotonicsPatents.com)

Filed under america invents act, ip, orange county, patent, patent laws Tagged with , , , , ,

Orange County companies saw an 8.7% increase in U.S. patents in 2012

January 4, 2013 Leave a comment

In 2012, Orange County companies saw an 8.7% increase in the total number of U.S. patents granted by the USPTO.  This increase lags the nearly 12% increase in the total number of U.S. patents granted by the USPTO to entities worldwide in the same year.  It also is less than the 14% increase seen by Orange County entities in 2011.

Orange County entities were awarded 2945 U.S. patents in 2012 (about 9% of which were design patents), which represent about  1% of the total number of U.S. patents awarded in the past year.  These U.S. patents were distributed among about 500 entities. 

2012 patents by year 

Once again, Broadcom far and away leads OC companies in the number of U.S. patents.  The next two OC companies, Western Digital and Allergan, each received about a factor of 10 fewer U.S. patents than did Broadcom.  The following list provides the numbers of U.S. patents and percentages (as compared to their 2011 results) for the top 10 OC companies:  

  • Broadcom: 1146; +6.7%
  • Western Digital: 116; +35%
  • Allergan: 111; -16.5%
  • AMO: 55; -26.7%
  • Beckman Coulter: 38; +31%
  • Applied Medical Resources: 37; +68%
  • Edwards Lifesciences: 30; -25%
  • BSH Home Appliance: 29; +26%
  • Quest Software: 27; +35%
  • Masimo: 26; -28%

The medical device and pharmaceutical sector in Orange County only saw a 0.5% increase of U.S. patents in 2012 over 2011.  The patents in this sector were distributed among about 110 entities in 2012, as compared to about 100 entities in 2011.  As evidenced by the “top 10″ list, some companies in this sector saw large increases, while others saw large decreases in 2012 compared to 2011.

The electronics, optics, and semiconductor sector experienced a 3.3% increase, but when the results for Broadcom are removed, this sector shows a decrease of 3.8%.  The patents in this sector were distributed among about 125 entities in 2012, as compared to about 120 entities in 2011.

The software and business method sector saw the largest increase (+45%) in 2012 over 2011 levels, with an increase in the number of entities receiving these patents (about 100 in 2012, about 80 in 2011).  

The mechanical and fluids sector saw a 25% increase over 2011 levels, with an increase in the number of entities receiving these patents (about 165 in 2012, about 135 in 2011).

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Keep non-essential features out of your patent claims; Mortarless tile installation; Custom Building Products, Inc.; U.S. Pat. No. 8,302,366

December 24, 2012 Leave a comment

U.S. Patent No. 8,302,366, issued on November 6, 2012 to Custom Building Products, Inc. of Seal Beach, CA, discloses a system and method for installing tile without using mortar.

us8302366_fig20     us8302366_claim2

Custom Building Products markets SimpleMat® tile setting mats, which it touts as being “the quickest, easiest, cleanest way to install tile on backsplashes, countertops and shower walls.”  On one side, each mat has a first adhesive that sticks to the underlying surface, and on the other side, a second adhesive that the sticks to the tiles.  The mats replace the mortar that is typically used to hold tiles in place, and because the adhesive doesn’t have to set, as does mortar, the tile can be grouted immediately after being placed onto the mats.  A video shows the SimpleMat® system in action, describing it as an ”innovative, patent pending, double-sided adhesive mat” that has been featured on the Today Show and Fox News.

When pursuing patent protection, it is highly advisable to keep non-essential features out of the claims, since such non-essential features unduly narrow the scope of protection and give your competitors a way to avoid infringement.  The claims define the systems and/or methods protected by the patent (i.e., the systems and/or methods that the patent owner can exclude others from making, using, selling, or offering for sale).  A claim is infringed if a competitor’s product or service includes each and every feature of the claim.  For example, if a claim recites a device having the features A, B, and C, and the competitor’s device includes A and B and C, then the competitor’s device infringes the claim.  Note that even if the competitor’s device also includes one or more additional features (e.g., feature D), then the competitor’s device still infringes since it still includes A, B, and C.  Assuming that there are no problems with the claim’s validity, the only way that the competitor can avoid having its device infringe the claim is to have its device avoid having at least one of A, B, and C.  For example, a device having only A and C, but not B, would not infringe the claim.  The process of designing a product to avoid infringing patents owned by another is called “designing around the patent.”

When a claim includes only essential features (i.e., features which are needed to make the device work or to be desirable for use), designing around the claim would result in an inferior device, perhaps one that would not operate or that consumers would not want to purchase when the claimed device is available.  However, when a claim includes a non-essential feature, a competitor can market its device without worrying about infringement by avoiding use of the non-essential feature.  Since the operability or desirability of a device missing a non-essential feature is presumably not adversely impacted by the omission, the competitor’s effort to design around the claim results in a product that can compete in the marketplace with the patented device. 

I’ll use the ’366 patent to illustrate what I mean.  Each claim of the ’366 patent recites that the adhesive mats are “generally planar.”  It’s true that the SimpleMat® system includes flat, planar mats, but is the feature of being generally planar essential to a marketable device?  What if a competitor sold its products in a rolled-up form, would that “design around” the claims of the ’366 patent?  Would mats that are installed on curved surfaces still infringe the claims?  At least at first glance, it appears that these hypothetical situations give a competitor some possible ways to design around the claims of the ’366 patent to produce an operable and marketable product.  I’m not saying that these efforts would definitely be successful to avoid infringement, since the rolled-up mats would typically be flattened out for installation, and the curved surface installation is probably only a fraction of the total number of installations.  But why needlessly give your competitors a potential avenue for designing around your claims?

When drafting patent applications, I work with the inventors to purge non-essential elements out of the claims.  This effort can take multiple drafts that hone the claim language, but the end result is a claim that is more robust to the designing-around efforts of competitors.     

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Persistence in the face of adversity: Air-filled packing material with check valves; Air-Paq, Inc.; U.S. Pat. No. 8,277,910

December 1, 2012 Leave a comment

U.S. Patent No. 8,277,910, issued on October 2, 2012 to Air-Paq, Inc. of Irvine, CA.  While the original application was filed in June of 2003, the ’910 patent didn’t issue until after more than nine years of rejection by the USPTO, a true example of persistence by Air-Pac.

Air-Paq’s ’910 patent discloses a packing material to be wrapped around fragile items to protect them during shipping.  The packing material comprises multiple air-filled bladders with check valves for filling the bladders with air and keeping them filled.

     

Looking at the prosecution history of the ’910 patent, we can determine why it took so long to get the patent to issue.  (The “prosecution history,” also called the “file history,” is a publicly-available written record of all the rejections put forth by the USPTO and the arguments and claim amendments put forth by the applicant to show patentability leading up to issuance.)

The prosecution history of the ’910 patent shows that its nine-year pendency at the USPTO was primarily due to efforts made by Air-Paq to show that its invention was patentable over an earlier patent: U.S. Pat. No. 5,469,966 issued in 1995 to Boyer:

 

Over the course of nine years, Air-Paq had to refute a dozen Office Actions and amended the claims many, many times to find language that the examiner would agree defined their invention so as to be patentable over the Boyer patent.  These amendments and the accompanying arguments by Air-Paq primarily focused on the claim language’s description of the structure of Air-Paq’s check valves, and in particular, the features of this structure that create a patentable distinction over the one-way, self-sealing valves of Boyer.

Since it defines the scope of protection given by a patent, the claim language is the key focus in analyzing patentability, as well as analyzing infringement if the patent is ever asserted against a competitor.  To be patentable, the claimed invention has to be (i) novel and (ii) not obvious in view of the prior references.  This analysis hinges on the inclusion, deletion, and meaning of the words used in a claim as they compare to the cited references.  In determining whether an accused product infringes the patent, the amendments and arguments of the prosecution history will be scrutinized  in an infringement lawsuit to determine whether the applicant made any assertions or acquiesced in any way regarding how the claim should be interpreted.

Clearly, Air-Paq thought that the potential protection to be obtained was worth the nine years it took to get the ’910 patent to issue.  But this long pendency comes at a cost.  There is of course the general delay in Air-Paq getting a patent.  But in addition, because the term of a patent extends only 20 years from its earliest priority date, the ’910 patent will only have a patent term of eleven years remaining, expiring in 2023.

Sometimes, it can be worthwhile for an applicant to make the claims more narrow earlier in the process, so that the USPTO issues the patent earlier.  While such a patent will have a narrower scope of protection, it may still be worthwhile to own even if it does not cover everything sought to be covered.  Meanwhile, a continuation application can be filed and used to pursue the desired broader scope of protection by continuing the back-and-forth with the USPTO.  Since the eventual second patent will have the same priority date as the first, it will have the same patent term, but in this way, the applicant at least has the first patent in hand for potentially asserting against competitors while the battle for broader claims is ongoing.

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Doing the examiner’s work for faster patents

November 27, 2012 Leave a comment

Following up on my earlier posts, I want to mention one last method of speeding up the patent process, which entails doing the patent examiner’s work for him/her using the USPTO’s “Accelerated Examination” (AE) program.  The AE program has the goal of completing examination of the application within twelve months.

In normal patent examination, when an application eventually reaches the top of the examiner’s queue, the examiner reviews the application, focusing on the claims, and performs a search of the existing prior art to find references relevant to the claim’s patentability.  The examiner then applies these references and the standards of patentability to the claims, including novelty and non-obviousness, and decides whether the claims are patentable or unpatentable.  The examiner’s conclusions are then sent to the applicant, who then has a chance to rebut the examiner’s reasoning or to modify the claims.

However, using the AE procedure, instead of the examiner performing the prior art search, the applicant does the searching (the search can’t be half-hearted; it has to satisfy certain requirements) and submits the results for the examiner along with the filed application.  In addition, the applicant must also provide the initial analysis to the examiner by submitting an “accelerated examination support document” (AESD) which explains the relevance of the key references to the claims, and provides a rationale for why the claims are patentable in view of these references.  Basically, the applicant has to do much of the work that is normally done by the examiner.  In exchange for lightening the load on the examiner, the USPTO puts such applications on a fast track through the USPTO.  

One contributing factor to the speed of getting the examination done quickly is that the AE program requires that an interview be conducted with the examiner before he/she writes up the first office action.  During this interview, both the examiner and the applicant try to resolve potential impediments to allowance of the application.  I discussed the power of such interviews in my previous blogpost.

Since the applicant must make statements on the record regarding the claims and the various prior art references, even those not yet cited by the examiner, the added potential of making characterizations or admissions may give some applicants pause in using the AE program.  In addition, it can be rather expensive, since performing the search and preparing the AESD can take considerable attorney time.  This factor is mitigated somewhat though because the rapid examination avoids multiple back-and-forths with the examiner, and the corresponding costs.  However, given the other avenues available for expedited examination (particularly the new “Prioritized Patent Examination” program I described in a previous blogpost), the attractiveness to the AE program is now muted.

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You can’t patent a general idea or goal; but you can patent specific solutions that achieve the goal.

November 19, 2012 Leave a comment

A basic concept of patent law is that you cannot get a patent for a general idea or goal, but you can get a patent on a new and non-obvious system or method of achieving this goal.

I was reminded of this concept when I recently attended Tech Coast Venture Network‘s seventh annual “Survivor” business pitch competition for Southern California entrepreneurs, held this year at Chapman University’s Beckman Hall.  Thirty contestant entepreneurs each gave a thirty-second pitch to a panel of judges, who chose 10 semi-finalists who had two minutes each to further describe their business.  Five finalists, chosen by the audience, then each fielded questions from the panel of judges for five minutes, who then picked the winner.

A crowd favorite among the contestants was 11-year-old Victoria Walker and her mobile app company “RodeDog,” which has developed a social web and mobile app that monitors whether a driver is potentially texting while driving. Basically, as Victoria explains in this video, the app sends “barks” or other sounds to the texting driver until the phone is turned off.

Victoria developed her idea in collaboration with David Grau, a creative director and designer at WLDG Agency in Santa Ana, and her idea has garnered some buzz since September when she won $20,000 at AT&T’s “It Can Wait” Hackathon for systems to discourage texting-while-driving.  While she didn’t win the TCVN “Survivor” competition, she came in third which is extremely impressive for such a young innovator.

A search of the USPTO database didn’t find any patents yet granted to Victoria for her invention, but it’s possible that she has a patent application on file that is not yet available to the public.  Any such U.S. patent application would need to have been filed at least one year before the date that the invention was first made publicly available.

In addition, her U.S. patent application would have to do more than merely try to patent “an app that prevents texting-while-driving.”  Instead, the patent application would need to be directed to the combined detailed steps of the method or the combined components of the system that Victoria envisions using to achieve the goal of discouraging texting-while-driving.

For example, there are already a number of U.S. patents for inventions that seek to stop texting-while-driving (e.g., U.S. Pat. Nos. 8,295,854, 8,290,480, 8,270,933, and 8,258,919, each of which have issued in the last few months).  However, each of these patents describes a different technique to achieve the goal.  With the understanding that patents are directed to specific solutions, and not to the general goal being achieved, there is no inconsistency in having these different patents coexisting, along with any patent that Victoria is pursuing.

If Victoria seeks to patent her invention, she will have to convince the USPTO that her way of achieving the goal is new and not obvious in view of what is publicly known.  Best of luck, Victoria!

Filed under Computers, Electronics, ip, orange county, patent, patent laws Tagged with , , , ,

Snow ski with concave sidewalls; Armada Skis, Inc.; U.S. Pat. 8,262,123

October 24, 2012 Leave a comment

U.S. Patent No. 8,262,123, issued on September 11, 2012 to Armada Skis, Inc. of Costa Mesa, CA, discloses a snow ski designed for use in both powder snow and hard snow.

According to the ’123 patent, skis for packed snow “typically include sidecuts to facilitate turning” while skis for deep powder snow have convex sidewalls or reverse sidecuts for maneuverability.  Use of conventional skis designed for one environment can be difficult to use on the other.  The ’123 patent discloses a ski “adapted for skiing on powder snow that also handles well on hard snow” by having concave sidewalls which “enable a skier to use the edge of the ski to turn on hard snow” while they “do not detract significantly from the performance of ths ski in powder.”

 The ’123 patent is a continuation of U.S. Pat. No. 7,690,674 issued to Armada back in April 2010.  Later that year, Armada sent “cease-and-desist” (C&D) letters to a number of its competitors, including Skis Rossignol S.A.S., alleging that their skis infringed the ’674 patent and insisting that these competitors “immediately cease selling such skis or others that fall within the patent.” 

If the recipient of such a C&D letter is not interested in settlement, it is fairly common for it to respond to the implicit threat of a patent infringement lawsuit by filing a declaratory judgment (DJ) lawsuit in federal district court.  In a DJ lawsuit, the plaintiff (the alleged infringer that received the C&D letter) seeks a court ruling or judgment that “declares” either the plaintiff has not infringed the defendant’s patent or the defendant’s patent is invalid.  A DJ lawsuit is similar to a patent infringment lawsuit in that the issues to be resolved are the same, but the identities of the plaintiff and defendant in a DJ lawsuit are reversed from those in a patent infringement lawsuit.  There can be a tactical advantage to being the plaintiff, but the patent owner might make the strategic decision to decline this advantage and to send the C&D letter in an attempt to first come to a settlement with the alleged infringer, rather than rushing to file an infringement lawsuit. 

Doing so though leaves open the possibility that the alleged infringer will file a DJ lawsuit so that it, not the patent owner, is the plaintiff.  A DJ lawsuit can only be filed if there is an actual controversy existing between the plaintiff and the defendant, but in practice, this requirement is a fairly low bar.  Therefore, a patent owner sending out a C&D letter should be prepared for the likelihood that the recipient will file a DJ lawsuit.

If the patent owner is hesitant to have the matter escalate into litigation, it might try to word its C&D letter so as to avoid triggering the actual controversy requirement, but there cannot be any guarantee that this effort will be successful.  Before sending out the letter, the patent owner should do some investigation regarding how the recipient has responded to C&D letters in the past to gauge whether the recipient is prone to such action.  

Rossignol responded to Armada’s C&D letter by filing a DJ lawsuit in the federal district court of Utah.  In addition, Rossignol utilized another tactic used by entities accused of infringement.  It pulled out one of its own U.S. patents, and accused Armada of infringing this patent.  As a result, besides asserting its own patent, Armada was then in the position of also defending itself against accusations of patent infringement.  Presumably, the DJ lawsuit had the desired effect for Rossignol since, according to the civil docket for this lawsuit, it was voluntarily dismissed by Rossignol about four months after it was filed, but details of any settlement between Rossignol and Armada, if one occurred, are unavailable.

Filed under infringement, ip, Mechanical, orange county, patent Tagged with , , , , , , ,

“Face Time”: A tried-and-true way to faster patents

September 30, 2012 1 Comment

Spending time speaking with the patent examiner reviewing your application can be a simple way to get your patent application to reach issuance faster than it would otherwise.  To explain why this “face time” can be beneficial, let me first provide a bit of background … 

Most of the communication between the USPTO and patent applicants is done in written form: the application itself (both text and figures), the written “office actions” laying out the USPTO’s evaluations regarding the patentability of the invention (typically based on prior art publications), and the applicant’s written responses to the USPTO’s evaluations, which can include arguments and/or claim amendments to refute rejections of the claims. 

Having all of these communications done in written form (called the “file history” or “prosecution history”) provides documentation of both the USPTO’s positions and the applicant’s positions regarding what the application and its claims cover and what the prior art publications disclose.  If the patent is ever the subject of litigation or a post-grant proceeding, this file history can be informative, and even dispositive in some circumstances, regarding the scope of the patent and its validity.  Therefore, any patent attorney worth his/her salt tries to keep the file history as “clean” as possible, not making any unneeded assertions or concessions regarding claim terms or prior art disclosures.

But doing everything in written form can be frustrating, and at times, inefficient.  For example, the office actions sent out by the USPTO are often not paragons of clarity, so it can be difficult to discern by reading the office action exactly what issues the examiner sees with the claims.  In addition, having the sword of “file history” hanging over the patent attorney’s head can result in some arguments being presented in ways that are less than crystal clear.  It’s also often true that explaining some nuanced distinction between the application and the cited prior art publications can be done more easily verbally than in written form. 

Recognizing the inherent limitations of operating soley in written form, the USPTO gives applicants the opportunity to speak with their patent examiners, either by telephone or by in-person interviews.  These discussions can provide a way for the examiner and the patent attorney to have a conversation about the application and the prior art references without the overhead of every single word being written down in the file history.  While a summary of the discussion is placed in the file history, this summary typically only lists the claims and prior art references that were discussed, and whether agreement was reached or not regarding the issue at hand. 

On the personal level, I find such interviews are helpful just by giving the examiner a human face to associate with the application.  Examiners seem to be less inclined to put forward flimsy or off-the-wall rejections once they’ve met me face-to-face (but my friendly visage is not infallible; some examiners put forward such rejections regardless). 

At times, it can be especially helpful to bring the inventor along for the interview.  When the technology is complex, or we have a persuasive story regarding how the invention was conceived or the problem being solved, having the inventor speak directly with the examiner can go a long way towards issuance.  Examiners are typically glad to meet the inventor, since from the examiner’s viewpoint, the invention is more important or interesting than a run-of-the-mill application for which the inventor did not take the time to meet with him.  Also, it can give an examiner a good feeling that his/her work actually has an impact in the development of a technology.

While interviews have long been permissible, historically they have only been available, upon request by the applicant, after the examiner has mailed out the first office action.  However, the USPTO has begun making interviews available even earlier in the process.  Under its “First Action Interview Pilot Program,” if an applicant requests an interview prior to the first office action (no fee required), the examiner will conduct a prior art search and will provide a condensed pre-interview communication that cites the relevant prior art publications and any proposed rejections of the claims.  The applicant then has 30 days to schedule the interview and to submit proposed amendments and/or arguments.  If agreement is reached during the interview regarding patentability, the examiner will mail out a Notice of Allowance.  If agreement is not reached, then the examiner will mail out a first office action, and prosecution proceeds normally.   

Under an earlier version of this program which was only open to applications in certain technologies, about 41% of the applications received a Notice of Allowance right after the interview (i.e., without an office action being mailed out).   The program is currently scheduled to expire November 16, 2012, but based on its success, I expect that it will be extended by another year, or even made permanent. 

To help the USPTO meet its goals for reduced pendency and faster prosecution, the USPTO is also encouraging its examiners to conduct, or even initiate, interviews where the examiner thinks that it would advance prosecution of the application.  In this way, the USPTO is acknowledging the power of a simple conversation that can be had via an interview.

Filed under orange county, patent, patent laws Tagged with , ,

High-aspect-ratio homopolar magnetic actuator; Calnetix Tech., LLC; U.S. Pat. No. 8,169,118

August 27, 2012 Leave a comment

U.S. Patent No. 8,169,118, issued on May 1, 2012 to Calnetix Technologies, LLC of Yorba Linda, CA, discloses a magnetic actuator.

          

An active magnetic bearing (AMB) uses electromagnets positioned around a rotor to hold or suspend the rotor so that it can spin without physically contacting the AMB.  Since AMBs can avoid using liquid lubricants and can support extremely fast rotations, they are useful in various industrial settings such as vacuum pumps and electric generators.  AMBs can be heteropolar (magnetic polarity around the rotor at a particular axial position that varies) or can be homopolar (magnetic polarity stays the same all around the rotor at any given axial position).  According to the ’118 patent, homopolar configurations can provide low rotational losses and can use permanent magnets which reduce power consumption, but their aspect ratios are generally small and not easily changed.  Aspect ratio of an actuator (length divided by the difference between outer diameter and inner diameter of the actuator) is important in the dynamics of the rotor, so the constrained aspect ratios of conventional homopolar configurations have limited their use.  The ’118 patent discloses a high-aspect-ratio homopolar magnetic actuator configuration that alternates the pole polarity “in the  axial direction, while preserving the homopolar structure in the tangential direction with associated low rotational losses.”

In a June press release, the company described the ’118 patent as disclosing “homopolar permanent-biased magnetic bearings that could be used as direct replacements of the heteropolar EM-biased actuators in the existing machines, offering a significant performance improvement for the existing users of machines on magnetic bearings.”

According to its website, Calnetix “designs, develops, and manufactures high-speed permanent magnet motor generators, magnetic bearings systems and power electronics” for a wide variety of industries.  In December 2011, the company relocated its headquarters, engineering and manufacturing facility to Cerritos, CA.

The company touts its IP portfolio as “driv[ing] innovations in multiple industries for generations to come.”  According to the USPTO database, the company has been granted ten U.S. patents, three of which have issued in 2012.

Filed under ip, Mechanical, orange county, patent Tagged with , , ,

“To serve man”: Newest pathway for faster patents

July 25, 2012 1 Comment

On occasion, the USPTO enacts various initiatives that are designed to reward innovations in particular technological areas.  Examples are the various fields (e.g., energy, security, HIV/AIDS or cancer) which are eligible for petitions to have a patent application be placed on the “special” docket for expedited examination, as I described in my previous blogpost.

Recently, the USPTO announced its newest intiative: “Patents for Humanity,” a new 12-month awards competition which is intended to ”create business incentives for patent holders to engage in humanitarian issues.”  The program identifies four eligible categories (medical technology, food and nutrition, clean technology, and information technology), and gives examples as:

life-saving medicines and vaccines, medical diagnostic equipment, more nutritious or heartier crops, food storage & preservation technology, water sterilization devices, cleaner sources of household light and heat, or information devices promoting literacy and education.

A video accessible on the USPTO website gives an overview of the program, and mentions “fiber optics” as a technology that “benefits society and improves citizen’s lives in countless ways.”

A panel of experts will judge entries to the program and will award up to 50 winners in the pilot year with certificates for accelerated processing at the USPTO.  Each certificate can be used to accelerate any one matter in the certificate holder’s portfolio, even a technology different from the one that qualified for the award. 

Interestingly, besides patent examination, the certificate can also be used to accelerate an appeal to the Board of Patent Appeals and Interferences.  Such appeals can currently add two or more years to the pendency of a patent application, so the ability to shorten this process can be extremely valuable, especially since there is currently no other options available for accelerating such appeals.

Filed under orange county, patent, patent laws Tagged with , ,

Fluid container; KOR Water, Inc.; U.S. Design Pat. No. D658,064

July 11, 2012 Leave a comment

U.S. Design Patent No. D658,064, issued on April 24, 2012 to KOR Water, Inc. of Fountain Valley CA, discloses a fluid container, or as KOR describes it on its website, a “hydration vessel.”

 

                               

According to its website, KOR launched its first product in 2007, and introduced its “KOR ONE” Hydration Vessel in the summer of 2008, after almost three years of development with RKS Design of Thousand Oaks, CA.  The ’064 patent is apparently directed to the “KOR ONE” product, as can be seen by comparing the top three images from the ’064 patent with the bottom three images from the KOR website.

The ’064 patent had a bit of a rocky path through the USPTO.  The design patent application was filed in September 2007, but an examiner did not review the application until September 2010.  This three-year pendency is uncommonly long for design patents, which are generally examined within half that time.  This delay might have been the result of KOR’s filing of an improper request to have the USPTO include  the assignee’s name on the filing receipt.  Since it is the USPTO’s “Office of Initial Patent Examination,” and not the actual patent examiner that makes decisions regarding such modifications, I’m guessing that the application was not immediately returned to the examiner’s docket from the OIPE after KOR’s request to update the filing receipt was denied.

An additional delay was the result of the initial drawings that KOR submitted in the application being unclear in the examiner’s view, and when KOR submitted replacement drawings, the examiner deemed them to include new matter that was not apparent in the drawings as originally filed.  Adding new matter to a pending patent application is strictly impermissible, and unclear drawings are impermissible as well, especially for design patents, such as the ’069 patent, since it is the figures of the design patent that determine the scope of protection.  This situation is an example of why it is so crucial to make sure that the figures being submitted in a design patent application clearly show what they are intended to show. 

It took KOR another year of back-and-forth communications with the USPTO, including going over the head of the examiner and the examiner’s supervisor to the Director of the USPTO’s design patent unit, to resolve the dilemma.

It is unclear whether these delays were a detriment or a boon to KOR.  On the one hand, it took about four years after its “KOR ONE” product was first introduced to the marketplace in 2008 for the ’069 patent to finally be issued.  Therefore, between 2008 and 2012, the ’069 patent was not available to KOR to assert against potential infringers.  However, on the other hand, U.S. design patents have a patent term of 14 years measured from the date of issuance, so the delays at the USPTO result in the ’069 patent providing protection to KOR into 2026.

According to the USPTO database, the ’069 patent is KOR Water’s only U.S. patent.  I don’t know if the experience of the ’069 patent soured the company on filing patent applications or not, but I note that the delays experienced in this case might have been prevented by ensuring that the originally filed drawings conformed to the USPTO requirements and by not filing for a correction of the filing receipt that did not fall under the rules of the USPTO.

Filed under Design, ip, orange county, patent Tagged with , , ,

“Special Effects”: Getting your application on the special docket at the USPTO

June 26, 2012 1 Comment

Two of my previous two blogposts, “Paying a Premium” and “Hitting the Highway,” explained two ways that patent applicants can get their applications examined by the USPTO faster than normal.  A third way to obtain expedited examination is described below.

Special Effects: The USPTO has identified numerous criteria that warrant having patent examination expedited.  If one of these criteria is satisfied, applicants can file a “Petition to Make Special,” which if granted, place the patent application on the examiner’s “special” docket resulting in a faster track for examination. 

Filing a petition based on one of the following criteria does not require any extra fee to be paid to the USPTO:

  • Applicant’s age or health:  An applicant qualifies under this criterion if (i) one of the inventors is 65 years old or older, or (ii) the health of one of the inventors is such that he/she might not be able to assist in the prosecution of the application.  This criterion is probably the one most commonly used for petitions to make special.
  • Environment: The invention will enhance the quality of the environment, for example, by contributing to the restoration or maintenance of the basic life-sustaining natural elements (air, water, or soil).
  • Energy: The invention will contribute to the development or conservation of energy resources, for example, by contributing to the discovery, development, or efficiency of use of energy resources.
  • Security: The invention will contribute to countering terrorism, for example, detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems.

Filing a petition based on one of the following criteria does require an extra fee of $130:

  • Prospective manufacture: To qualify, resources for manufacturing the invention must be lined up, and manufacturing in the U.S. must be dependent on the patent being granted.  Applicant must also identify the prior art references deemed to be most closely related to the invention.
  • Actual infringement: To qualify, an analysis comparing a device/method that is actually in the market or in use to the claims of the application must show that infringement unquestionably is occurring (in the view of the petitioner).  Applicant must also identify the prior art references deemed to be most closely related to the invention.
  • Recombinant DNA: The invention relates to safety of research in the field of recombinant DNA.
  • Superconductivity: The invention relates to superconducting materials, or their manufacture or application.
  • HIV/AIDS or cancer: The invention contributes to the diagnosis, treatment, or prevention of HIV/AIDS or cancer.
  • Biotechnology being developed by a small entity: To qualify, development of the technology must be significantly impaired if patent examination is delayed.

While there has been some debate regarding exactly how much time is gained by having an application deemed to be “special,” for applications for which speed of examination is desired, it can be a relatively inexpensive and easy option.

Filed under ip, patent laws, petition to make special Tagged with ,

Carbon emission management system; Stillwater Energy Group, LLC; U.S. Pat. No. 8,157,003

June 19, 2012 Leave a comment

U.S. Patent No. 8,157,003, issued on April 17, 2012 to Stillwater Energy Group, LLC of Irvine CA, discloses a system for managing carbon emissions.

 

According to the ’003 patent, “the petroleum refining industry uses almost 30 percent of all energy used in manufacturing and emits over 20 percent of the carbon dioxide.”  In particular, the ’003 patent states that there have been systems and measures proposed for making isolated segments of the petroleum lifecycle more efficient and clean, but not a solution that is economically practical for the overall petroleum industry including petroleum by-products (e.g., petroleum coke) that are used as lower grade fuels.  The system disclosed by the ’003 patent integrates a source of an emulsified combustion fuel (e.g., multiphase superfine atomised residue or MSAR®) with a combustion facility (e.g., a power plant) that burns the fuel and generates carbon dioxide, and an oil production facility (e.g., oil field) that pressurizes and injects the generated carbon dioxide into the ground to enhance the volume of petroleum production. 

According to its website, Stillwater Energy Group “is a joint venture between California Refining Company of Long Beach CA and Stillwater Associates LLC“  (the two inventors of the ’003 patent are the presidents of these two organizations).  The technology is touted as providing “a way to recycle 3.5 million tons per year of carbon dioxide while generating power with near zero emissions.”

 The ’003 patent is Stillwater Energy’s first U.S. patent, according to the USPTO database.

Filed under Chemical, Cleantech, ip, orange county, patent Tagged with , , ,

“Hitting the Highway” to faster patents

June 15, 2012 1 Comment

In a previous blogpost, “Paying a Premium,” I described the problem of excessively long pendency of patent applications at the USPTO, and how the “Prioritized Patent Examination Program” can be used to expedite an application through the USPTO within one year by paying an extra fee ($2,400 or $4,800, depending on the size of the applicant).  Below I describe another way to obtain faster examination by the USPTO.

Hitting the Highway:  One of the ways that the USPTO is seeking to increase the speed of examination is by leveraging the results of examination that has already been performed by the patent offices of other countries and regions via one of the many “Patent Prosecution Highways” (PPHs).  Based on a favorable examination which finds at least one patentable claim in a related foreign patent application (in one of the eligible countries or regions), a U.S. applicant can file a “Petition to Make Special,” which is a request to have the examination of the U.S. application fast-tracked at the USPTO.  Once the petition is granted, the USPTO strives to provide a first office action within two to three months.  The requirements for the petition are easy to provide, and in contrast to the “Paying a Premium” option of my previous blogpost, there is no additional fee for filing the PPH petition.

By allowing U.S. examiners to reuse search and examination results generated by these foreign patent offices, the PPH program is designed to “streamline patent processing” and to “allow applicants to obtain patents faster and more efficiently.”  According to a video on the USPTO website, applications that go through the PPH program have an allowance rate more than double that of non-PPH applications.  Also, PPH applications generally receive fewer office actions than do non-PPH applications, so the cost of prosecution can be reduced by using the PPH program. 

To qualify for the PPH program, the application must be related to a foreign application and its claims must sufficiently correspond to the claims deemed allowable by the foreign patent office.  Also, examination of the U.S. application must not have already begun.  Currently the list of eligible foreign patent offices includes: Australia  Austria, Canada, China, Denmark, European Patent Office, Finland, Germany, Hungary, Iceland, Israel, Japan, Korea, Mexico, Norway, Russia, Singapore, Spain, Taiwan, and the United Kingdom.  The USPTO also has a PPH program for Patent Cooperation Treaty (PCT) applications, and it is continuing to pursue additional partnerships with other foreign patent offices as well.

These PPH programs also can be used to leverage a favorable examination in the U.S. to get faster examination in the participating foreign countries.  I’ve had good success in traveling these highways in both directions to expedite prosecution.

Filed under patent laws, patent prosecution highway, petition to make special Tagged with , ,

Cryptic communication system; Ubiquity Broadcasting Corp.; U.S. Pat. No. 8,155,947

June 11, 2012 Leave a comment

U.S. Patent No. 8,155,947, issued on April 10, 2012 to Ubiquity Broadcasting Corporation of Irvine CA, discloses a system for communicating using symbols in place of words.

    

According to the ’947 patent, it describes a system which “allows users of portable devices such as teens, to communicate with one another using a cryptic language scheme” (some parents would say that their teens already communicate using a cryptic language scheme).  The system disclosed by the ’947 patent seeks to allow people speaking different languages to communicate with one another by  converting messages in one language into symbols (using a lookup table) that are transmitted and once received, are converted (again using a lookup table) into messages in another language.

According to its website, Ubiquity seeks to create “a new entertainment and communications experience, bringing creators and viewers together by combining traditional television, social networks and rich information – all in one simple package.”  The company touts its patent portfolio as covering “a broad range of methods and technologies including next generation guidance and navigation, high quality and intelligent video compression, lifestyle services and targeting, immersive advertising an interactive commerce.”  (According to the USPTO database, Ubiquity currently has five U.S. patents, including the ’947 patent.)  Last year, the company opened its 3D digital production studio in Irvine “to develop, shoot, edit and distribute both 2D and 3D productions.”

The company’s website includes only one reference to “cryptic translation,” instead focusing on its Sprocket™ navigation tool and its weav™ web services platform.  Along with the relative terseness of the ’947 patent (one page, two figures) and the lack of any continuation application filings, my sense is that the ’947 patent does not represent a core technology for Ubiquity, but is seen as an innovation to be worth some investment in patent protection, perhaps with the goal of generating licensing revenue. 

Filed under Computers, ip, orange county, patent Tagged with , , ,

Camouflage for integrated circuits; SypherMedia Int’l, Inc.; U.S. Pat. No. 8,151,235

June 7, 2012 1 Comment

U.S. Patent No. 8,151,235, issued on April 3, 2012 to SypherMedia International, Inc. (SMI) of Aliso Viejo, CA, discloses a method of camouflaging the operating structure of an integrated circuit from efforts to reverse engineer the circuit.

      

An application specific integrated circuit (ASIC) is a semiconductor chip containing circuitry designed to perform a specific function.  An ASIC contains billions of transistors, making up millions of logic cells, in a multilayered structure with the logic cells interconnected with one another by metal layers and metal vias.  According to the ’235 patent, ASICs are vulnerable to being pirated by reverse engineering using optical or electron microscopic techniques to look at the pattern of logic cells, interconnects, and the unused spaces.  The ’235 patent discloses a technique to camouflage the design of the ASIC by placing filler cells, which have no function in the operation of the ASIC, in the gaps between the functional logic cells of the design and connecting these filler cells with metal layers and vias “to thwart piracy and protect sensitive intellectual property from reverse engineering.”

According to its website, SMI was founded in 2003 “by a team of veteran media security and content protection executives and engineers.”  SMI’s corporate officers include a former VP of Engineering, a former Senior Director of Security Architecture, and a former Director of Set Top Box Security from DirecTV, a company that is certainly concerned with the piracy of the ASICs which perform the decryption of video streams in its set top boxes.   

SMI touts its SypherMedia Library™ Circuit Camouflage Technology as making “reverse engineering of semiconductors virtually impossible” and allowing chip manufacturers to “keep key and strategic aspects of their latest designs secret from competitors and counterfeiters.”  According to the USPTO database, the ’235 patent is SMI’s third U.S. patent. 

The patent application that resulted in the ’235 patent included color figures, which is a relatively rare occurrence.  Generally, color images are impermissible, unless the applicant files a petition with the USPTO and explains why color images are “necessary as the only practical medium by which to disclose the subject matter sought to be patented.”   

Filed under Computers, Electronics, ip, orange county, patent Tagged with , , , ,

Serving videos for gaming; Gaikai Inc.; U.S. Pat. No. 8,147,339

May 22, 2012 Leave a comment

U.S. Patent No. 8,147,339, issued on April 3, 2012 to Gaikai Inc. of Aliso Viejo, CA, discloses a system and method for serving videos for gaming.

UPDATE: On July 2, 2012, Sony Computer Entertainment announced that it has acquired Gaikai for about $380 million.  Sony’s press release states that through the acquisition, Sony will “deliver a world-class cloud-streaming service that allows users to instantly enjoy a broad array of content ranging from immersive core games with rich graphics to casual content anytime, anywhere on a variety of internet-connected devices.”

            

According to the ’339 patent, prior game systems used a remote server to present multiplayer games over a network (e.g., the internet).  The remote server would receive input from each player’s computer and would send game state information and limited image information back to these computers.  Each player’s computer was configured to use this information from the server to render images and present them to the player.  For example, the player’s computer would render an image (e.g., a view based on the point of view of the player’s avatar), taking into account the three-dimensional relationships between various components of the image (e.g., other avatars, game objects, non-player characters, and the game environment).  In such systems, the memory and computing power of the rendering logic of the player’s computer would determine the quality and imaging speed of the displayed video.  In contrast, the ’339 patent discloses a system in which the remote server does some or all of the image rendering, and these rendered images are delivered to the players via the network, so that the player’s computer may no longer need rendering logic.  As a result, images can be generated on display systems with limited computational power (e.g., smartphones). 

According to its website, Gaikai is “a cloud-based gaming platform that allows users to play high-end video games and applications instantly from a webpage or internet-connected device.”  The company is working to be able to deliver video games so that they “can be accessed as easily as movies and music,” and believes that gaming “will become the #1 form of entertainment in the world.” 

Under current U.S. patent law, the content of a patent application is published (i.e., made available to the public) by the USPTO 18 months after the earliest priority date of the application (typically, the filing date of the application).  However, until the American Inventors Protection Act (AIPA) of 1999, under U.S. law, the content, and indeed the existence, of a patent application was kept secret by the USPTO until the application finally issued as a U.S. patent.  The rationale for this change was to expand the library of prior art available to examiners and to bring the U.S. procedures closer to those of other countries which did not keep pending patent applications secret. 

It was also intended to help relieve the problem of so-called “submarine patents” in which a patent application was filed and kept pending for years while the applicant delayed issuance and made changes to the claims to track the recent developments of the technology, all the while keeping the content and existence of the application secret.  At some point, when another company brought an infringing product to market, the applicant would have the application issued by the USPTO and would then assert the patent by the patent owner against the unsuspecting company.  Since the term of a U.S. patent was measured from its date of issuance (specifically, 17 years from the date of issuance), the applicant did not incur any downside to doing so.

But in 1995, the U.S. changed the term of a patent from 17 years from the date of issuance to 20 years from the earliest priority date.  Therefore, an applicant wishing to obtain a “submarine patent” would only be able to do so for a maximum of 20 years, and the amount of time that the U.S. patent could be asserted would be the remaining portion of the 20-year period.  This change of the law helped curtail the “submarine patent” practice significantly, and the practice was further curtailed by the publication of pending U.S. patent applications.

However, current U.S. law still allows an applicant to keep its application secret and unpublished if it so wishes.  If the applicant is willing to forego foreign patent rights for the invention, the applicant can file a “Request for Non-Publication” along with the application when filed at the USPTO.  Upon granting the Request, the USPTO will keep the content of the application secret until it eventually issues as a U.S. patent.

Gaikai utilized this procedure for the patent application that resulted in the ’339 patent, by filing a “Request for Non-Publication” to keep its content secret until the ’339 patent issued last month.  Had Gaikai not filed the non-publication request, the application’s content would have been published in June 2009.  However, by filing the non-publication request, the contents of the ’339 patent were not published for almost another 4 years, until the patent issued in April 2012.   Presumably, Gaikai saw a strategic advantage in keeping the content of the ’339 patent secret for these 4 years.

According to the USPTO database, the ’339 patent is Gaikai’s first U.S. patent, but the company has numerous patent applications still pending, including five continuation-n-part applications claiming priority to the ’339 patent.

Filed under Computers, ip, orange county, patent Tagged with , , , , , ,

Paying a Premium: How to get a U.S. patent within one year

May 12, 2012 3 Comments

One of the most common gripes I hear about the patent process cites the excessively long time it takes between filing a patent application and getting the patent to issue.  For example, the latest statistics out of the USPTO show that for applications in the “Semiconductor, Electrical, Optical Systems & Components” category (one in which a large number of my clients reside), it takes an average of 26.5 months after filing to get the first office action, and an average of 29.3 months for the patent to issue.  This technical category is actually one of the fastest, with “Computer Networks, Multiplex Communication, Video Distribution, and Security” being the worst, with averages of 33.6 and 40.7 months, respectively.

The USPTO has been working to reduce this pendency time, and has announced its “2010-2015 Strategic Plan” that sets the goal of reducing the average total pendency of patent applications to 20 months by 2015.  Much of this effort is focused on the USPTO’s internal processes, and as a patent practitioner, I support these improvements.

But even beyond these improvements, there are ways that applicants can help themselves and position their applications to be among the fastest through the USPTO.  In my opinion, these measures are currently underused in general, and many companies, especially those in high-tech fields (such as electronics and optics), can reap the substantial benefit of getting a patent in hand within one to one-and-one-half years.  In this blogpost (and following blogposts), I’ll explain some of the measures that can be used by applicants to expedite their applications through the USPTO.

Paying a Premium: The easiest and most potent way to get a U.S. patent to issue within one year is to use the USPTO’s newly-enacted “Prioritized Patent Examination Program” (also known as “Track I”) which started this past September as part of the “America Invents Act” (“AIA”).  Under this “fast track” program, an applicant can file a petition and pay an extra fee to the USPTO ($2,400 for small entities, $4,800 for large entities).  Upon approval of the petition (99% approval rate so far), the USPTO will expedite the application with the goal of having the patent processed to completion within 12 months.

The early results from the program are very attractive:

  • Over half of the approximately 1,200 “fast-track” requests filed since the program began in September 2011 have already received their first office action, with an average time of 66.4 days after filing.
  • There have already been 23 allowances under the program, with the average time to allowance being 39.2 days from petition approval.  The first allowance came 103 days after the application was filed (U.S. Pat. No. 8,094,942 issued to Google).
  • The program was initially open to only newly-filed applications.  However, it has recently been expanded to include pending applications for which a “Request for Continued Examination” has been filed.

Acceptance into the program is not a guarantee of issuance.  The USPTO will still apply the same standards of patentability as are used for all other applications.  For example, some applications in the program have already received their final rejections, with the average being 34.3 days measured from approval of the petition to enter the program.  In addition, the program is limited to accept only 10,000 applications during the fiscal year.

For a company planning on going through the due diligence accompanying funding events or acquisition in the foreseeable future, it can make sense to improve its IP portfolio in the eyes of the VCs or acquisition entity by getting patents in hand sooner rather than later using the “Prioritized Patent Examination Program.”

Filed under america invents act, ip, orange county, patent, patent laws, prioritized examination, track I Tagged with , ,

Fluid flow conditioner; Komax Systems, Inc.; U.S. Pat. No. 8,136,980

May 4, 2012 Leave a comment

U.S. Patent No. 8,136,980, issued on March 20, 2012 to Komax Systems, Inc. of Huntington Beach, CA, discloses a fluid flow conditioner.

    

According to the ’980 patent, turbulence due to disturbances of the flow (e.g., pipe elbows, valves, restrictions) upstream from a flow rate meter can cause errors in the measured flow rate (called “the meter factor”).  For example, for determining the volume of petroleum crude flowing out of a storage tank, errors in such flow rate measurements can equate to significant monetary losses.  Fluid flow conditioners are useful to reduce the influence of turbulence on such measurements, and the ’980 patent discloses a fluid flow conditioner that is intended “to provide repeatable and accurate meter readings.”

Komax touts its “more than three hundred combined years of fluids-mixing experience,” stating that it “has led the industry in static mixing technology offering a diverse range of Static Mixers, Steam Heaters, Desuperheaters, and Heat Exchangers.”  Komax’s website shows the “Komax Optimized Flow Conditioner” (KOFC), a flow conditioner that closely resembles that of the ’980 patent, which is described as “integrating a Komax Triple Action Static Mixer with a standard perforated plate conditioner.”  The company reports that ”field testing of the KOFC showed an 80% reduction in meter factor for an ultrasonic flow meter.”  

During prosecution of the patent application that resulted in the ’980 patent, the USPTO examiner rejected some claims and allowed the remaining claims.  Rather than merely accepting the allowed claims, Komax decided to appeal the examiner’s rejection to the Board of Patent Appeals and Interferences (BPAI). 

If an examiner remains unpersuaded by an applicant’s arguments regarding why the pending claims are patentable, an appeal to the BPAI is the next step in trying to refute the rejections and get the claims allowed.  A panel of three administrative patent  judges (APJs) reviews the arguments being presented by both the applicant and the examiner, and decides whether to reverse or affirm the examiner’s rejections.  Currently, the BPAI is awash in a large backlog of cases (recently reported to be approximately 26,000 cases), and it can take two or more years from filing the appeal to receiving the BPAI’s decision.  The USPTO is currently hiring more APJs as part of its efforts to reduce this backlog. 

The ’980 patent followed a typical trajectory through the appeal process.  Komax filed its Appeal Brief, the examiner responded with his Answer, and Komax filed its Reply Brief.  Twenty months later, the BPAI reviewed these materials and affirmed the examiner’s rejection.  As a result of Komax’ loss, the ’980 patent issued with only the claims allowed by the examiner. 

Notably, Komax did not conduct an oral hearing with the BPAI.  An oral hearing allows the applicant to orally argue its case before the three-judge panel, and can be conducted in person or by telephone.  During the hearing, the applicant typically has 20 minutes to present its arguments, and the panel can interrupt throughout with questions.  While examiners are also given an opportunity to be heard at the hearing, they almost never show up, so the applicant can try to pursuade the panel unchallenged.  That is not to say that it is a cakewalk.  Depending on the panel and the issues at hand, the questions from the panel can be difficult and probing, and there can be ample opportunities for the applicant’s attorney to unintentionally give the panel a reason to side with the examiner. 

I have had good success in conducting oral hearings for all the cases that I have appealed to the BPAI.  Despite the risks, my general opinion is that if the application is important enough to the applicant to appeal to the BPAI, the oral hearing is worth the time, effort, and expense in order to maximize the probability of a successful outcome.

As I said, Komax didn’t conduct an oral hearing, so the BPAI decided the case solely on the written record.  Komax might have helped its case by conducting an oral hearing.  In addition, prior to even reaching the appeal stage, Komax might have considered submitting an affidavit (e.g., by one of the inventors) that explained on the record the technical reasons for why the cited prior art references did not disclose the concepts for which the examiner relied upon them, or why the references would not be combined by someone skilled in the art as suggested by the examiner.  Even if this affidavit would not have convinced the examiner, it could have bolstered the written record to provide the BPAI panel more of a reason to reverse the examiner’s rejection of the claims.

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