DEALING WITH THE CHANGING LANDSCAPE OF PATENT LAW Suffolk University Law School Annual IP Conference...

DEALING WITH THE CHANGING LANDSCAPE OF PATENT LAWDEALING WITH THE CHANGING LANDSCAPE OF PATENT LAW

Suffolk University Law School Annual IP ConferenceSuffolk University Law School Annual IP Conference

March 28, 2008March 28, 2008

Brian E. Hanlon, Deputy DirectorBrian E. Hanlon, Deputy DirectorOffice of Patent Legal Administration (OPLA)Office of Patent Legal Administration (OPLA)

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TopicsTopics PTO Pendency Statistics

On-Going Quality Initiatives and Programs Fulfilling the goal of continuous improvement

Strategic Planning & the Future of the USPTO

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Patent Pendency - Patent Pendency - End of Calendar Year 2007 End of Calendar Year 2007

Technology CenterAverage 1st Action

Pendency (months)1 As of 12/31/07

Average Total Pendency (months)2

As of 12/31/07

1600 - Biotechnology and Organic Chemistry 20.7 34.2

1700 - Chemical and Materials Engineering 25.5 34.7

2100 - Computer Architecture Software and Information Security 30.0 42.6

2600 – Communications 31.9 44.0

2800 - Semiconductor, Electrical, Optical Systems 18.1 27.1

3600 - Transportation, Construction, Electronic Commerce 24.6 32.4

3700 - Mechanical Engineering, Manufacturing and Products 22.7 30.8

UPR Total as of December 31, 2007 24.9 32.0

1 “Average 1st action pendency” is the average age from filing to first action for a newly filed application.2 “Average total pendency” is the average age from filing to issue or abandonment of a newly filed application.

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On-Going Quality On-Going Quality InitiativesInitiatives

Second Pair of Eyes

In Process Reviews

Appeal Specialists

Pre-Appeal Brief Conferences

Appeal Conferences

GS 12 Certification Exam

Primary Examiner Recertification

TC Targeted Areas of Review

Central Reexamination Unit

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Program began July 12, 2005

Extended February 7, 2006

Over 16,000 conferences requested; approximately 15,000 conferences held During FY ’07, approx. 6,800 conferences held

Decided to proceed to the BPAI over 58% of the time

First quarter FY ’08 - Over 1000 conferences held 70 % proceeded to BPAI 30% reopened or allowed

Pre-appeal Brief ConferencesPre-appeal Brief Conferences

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Pre-appeal Brief ConferencesPre-appeal Brief Conferences

Percentage of Pre-Appeal Conference Panel Decisions

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

Year/Month of Panel Decision

Perc

enta

ge Rejection Withdrawn

Defective Request

Proceed to BPAI

Reopen Prosecution

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Affirmance Rate at the BPAIAffirmance Rate at the BPAI

Technology CenterFY 08 Affirmed/ Affirmed in part FY 08 Reversed

% Affirmances of Decisions

1600 Biotech 65 31 67.7%1700 Chemical Eng. 120 33 78.4%2100 Computers 93 34 73.2%2600 Communications 64 20 76.2%2800 Electrical, Optics 44 13 77.2%3600 Mech., Bus. Meth. 77 39 66.4%3700 Mechanical Eng. 78 14 84.8%

Does not include 35 remands, 16 dismissals. As of 12/31/07.

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STRATEGIC PLANNING

AND

THE FUTURE OF THE USPTO

http://www.uspto.gov/web/offices/com/strat2007/

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Patents Strategic Plan Patents Strategic Plan ObjectivesObjectives

#1 Provide high quality examination of patent applications

#2 Improve and integrate existing electronic systems to promote fully electronic patent application processing; implement better/more secure systems

#3 Improve the quality and timeliness of patent examination by exploring a range of approaches to examining applications

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A Sample of the A Sample of the Strategic Plan InitiativesStrategic Plan Initiatives

Patent Training Academy

Expand telework & explore establishing regional/remote/local USPTO offices

Explore the development of alternative approaches to examination in collaboration with stakeholders

Peer Review of Published Applications

Patent Prosecution Highway and New Route

Accelerated Examination Initiative

First Action Interview Pilot

Design & implement a comprehensive quality system

Examination reform through rule making to focus examination & enhance information exchange

Continued increase of e-filing

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Patents Teleworking & Patents Teleworking & Laptop ProgramsLaptop Programs

1000 examiners participating in the Patents Hoteling Program, since initiated in 2006 Program allows examiners to work from home 4 days

per week with USPTO electronic tools

2,314 laptops distributed through PELP About 75% of eligible examiners

Both programs show production gains in line with increase in total examination time

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ExaminersAt Work

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Virtual Art Unit PilotVirtual Art Unit Pilot 13 Examiners and 1 SPE at home

received full PHP equipment

37 examiners remained on USPTO campus received collaboration tools and training

Random reviews by Office of Patent Quality Assurance

Surveys administered to all examiners in the art unit

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Accelerated ExaminationAccelerated Examination Change in practice effective August 25, 2006 AE petitions decided

356 granted 117 allowances 18 abandonments

108 denied on merits 92 dismissed

First patent, prosecuted in compliance with AE program, issued March 13, 2007

Guidance provided on the USPTO web site at: http://www.uspto.gov/web/patents/accelerated/

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First Action Interview PilotFirst Action Interview Pilot Initiative still in the planning stages

Applicant requests to participate

Application is NOT taken out of turn

“Preliminary office action” is prepared and mailed to applicant – condensed version of typical first action on the merits

After interview applicant receives copy of action or allowance with entry of proposed amendment

To be piloted in two workgroups of TC 2100

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Peer Review Pilot Peer Review Pilot 53 applications have volunteered for the pilot

40 have published and been sent to the website webmaster

Prior art submissions from the first 11 applications have been received from the peertopatent.org website

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e-Office Actione-Office Action

Private PAIR users can opt-in to receive electronic notification of outgoing correspondence

Benefits to Applicants More timely receipt of correspondence Potential incentives if received electronically Auto processing / elimination of paper Cost savings

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Currently in phase four of the pilot program

How the new version of outgoing correspondence differs from the current process in PAIR:

New version provides the option of email notification when a new office action is available for viewing in Private PAIR

3 months response time allowed for electronic notification

e-Office Actione-Office Action

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PPH and the “New Route”PPH and the “New Route” Patent Prosecution Highway

Pilot ended 1/3/08 Lasted 18 months, 227 requests received

Full implementation began 1/4/08 Biggest change is requiring e-filing

“New Route”

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Priority Document ExchangePriority Document Exchange

What is ‘Priority Document Exchange’ (PDX)? Provides for the direct office-to-office electronic transmission

of priority documents between participating Intellectual Property Offices

Priority Document Exchange with EPO (European Patent Office) began January 16, 2007

Priority Document Exchange with JPO (Japan Patent Office) began July 28, 2007

Free of charge – No fees required

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Retrieving EPO/JPO Priority Retrieving EPO/JPO Priority Documents by the USPTODocuments by the USPTO

The USPTO will automatically request retrieval of Priority Documents if a newly filed U.S. application claims priority to one or more EPO or JPO applications in the Oath, Declaration, or Application Data Sheet Express written instruction is not required in this situation

Written instruction (e.g., Form PTO/SB 38) is required to request retrieval of: EPO Priority Document(s) for a U.S. application filed prior to June 4,

2007. Non-EPO (e.g., French) Priority Document that is of record in an EPO

application JPO Priority Document(s) for a U.S. application filed prior to July 28,

2007. NOTE: PDX cannot be used to retrieve non-JPO (e.g., Korean)

Priority Documents that are of record in a JPO application

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Retrieving EPO/JPO Priority Retrieving EPO/JPO Priority Documents by the USPTODocuments by the USPTO

Form and instructions are available at http://www.uspto.gov/web/forms/sb0038.pdf

Monitor Private PAIR to determine whether priority documents have been successfully retrieved

Status of retrieval will be indicated in Examiner’s Office action PTOL-326 (Office Action Summary), item 12 PTOL-37 (Notice of Allowability), item 3

NOTE: Requests filed after mailing of Notice of Allowability will be processed but timely retrieval (37 CFR 1.55(a)(2)) cannot be guaranteed.

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Releasing USPTO Priority Releasing USPTO Priority Documents to the EPO/JPODocuments to the EPO/JPO

Priority Documents will be provided to the EPO or JPO only if one of the following criteria is met. The U.S. application is published or patented; The applicant submitted written authorization (Form

PTO/SB/39) to transmit the Priority Document to the EPO/JPO, and the U.S. application has cleared national security review

Form and instructions are available at http://www.uspto.gov/web/forms/sb0039.pdf

Check the EPO (http://www.epo.org) and JPO (http://www.jpo.go.jp) web sites for information on their practices

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How to submit PDX RequestHow to submit PDX Request

Requests can be made at the time of filing or as a follow-on document

Request can be submitted

Electronically

Faxed to the Central Fax Number (571-273-8300)

Mailed to:

Commissioner of Patents

P.O. Box 1450

Alexandria, VA 22313-1450

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e-Office Action Notification Pilot

[email protected]

Priority Document Exchange (PDX)

[email protected]

Complex Work Units (CWU) Pilot

[email protected]

New and Upcoming New and Upcoming e-Commerce Initiativese-Commerce Initiatives

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Proposed and Final Proposed and Final Rules ChangesRules Changes

Claims and Continuing Applications Notice of Final Rulemaking

Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications

Information Disclosure Statements

Alternative Claims

Ex Parte Appeal Practice Before the BPAI

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Claims & Continuations Claims & Continuations UpdateUpdate

Tafas v. Dudas et al. Preliminary injunction blocked implementation

of final rules on October 31, 2007 Cross-motions for summary judgment filed

December 20, 2007 Oppositions to those motions filed January 22,

2008 Rebuttal briefs filed February 1, 2008 Hearing February 8, 2008

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Implications of KSRImplications of KSR

§ 103 Examination Guidelines

Published in the Federal Register on October 10, 2007 at 72 FR 57526

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§ 103 Examination Guidelines§ 103 Examination Guidelines

These guidelines do not constitute substantive rule making.

They are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office.

Any failure by Office personnel to follow these guidelines is neither appealable nor petitionable.

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OutlineOutline

The KSR decision : KSR Int'l Co. v. Teleflex Inc., 550 U.S. —, 82 USPQ2d 1385 (2007)

Determining obviousness under 35 U.S.C. § 103

Rebutting a rejection under 35 U.S.C. § 103

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KSR Reaffirms the Graham Analysis for Obviousness

"In Graham [], the Court set out a framework for applying the statutory language of § 103, . . . [T]he factors continue to define the inquiry that controls. If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103." KSR at 1391.

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Examiner's Approach to § 103 in Light Examiner's Approach to § 103 in Light of of KSRKSR

The basic approach to determining obviousness remains the same.

KSR provides a more expansive view of prior art.

KSR emphasizes that any reasoned argument grounded in the Graham inquiries may form the basis for a holding of obviousness.

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The Basic Approach to Determining The Basic Approach to Determining Obviousness Remains the SameObviousness Remains the Same

An examiner is still required to provide a reasoned statement of rejection grounded in the Graham inquiries. He or she must articulate a reason or rationale to support the obviousness rejection.

See KSR at 1396 ("To facilitate review, [the obviousness] analysis should be made explicit.") (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

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Key PointsKey Points

Examiners need to account for all claim limitations in their rejections, either by indicating how each limitation is shown by the reference(s) applied, or by providing an explanation.

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Key PointsKey Points

Prior art is not limited to the four corners of the documentary prior art being applied.

Prior art includes both the specialized understanding of one of ordinary skill in the art, and the common understanding of the layman.

It includes "background knowledge possessed by a person having ordinary skill in the art. . . . [A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR at 1396.

Examiners may rely on, for example, official notice, common sense, and design choice.

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Making a Making a Prima FaciePrima Facie Case of Case of ObviousnessObviousness

Examiners must:

Resolve the Graham inquiries.

Articulate appropriate factual findings.

Explain the reasoning that provides a nexus between the factual findings and the legal conclusion of obviousness.

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RationalesRationales

One or more of the following rationales may be relied upon to support a conclusion of obviousness. The list of rationales provided herein is not intended to be an all-inclusive list.

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A. Combining prior art elements according to known methods to yield predictable results.

B. Simple substitution of one known, equivalent element for another to obtain predictable results.

C. Use of known technique to improve similar devices (methods, or products) in the same way.

D. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.


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E. "Obvious to try" – choosing from a finite number of predictable solutions.

F. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art.

G. TSM Test


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Impact On ExaminationImpact On Examination

Reinvigoration of MPEP 2144

KSR encourages examiners to apply their scientific and engineering knowledge

KSR reduces the divergence between “technically obvious” & “legally obvious”

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Impact on ExaminationImpact on Examination

Prior art is not limited to printed references “obvious variants of prior art references are

themselves part of the public domain” In re Translogic Technology, 2007 WL 2965979, *7 (Fed. Cir. 2007)

Obvious variations within the ordinary skill do not make something patentable. Ex Parte Mui

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Applicant's Response Applicant's Response

If an applicant traverses an obviousness rejection under § 103, they must provide: A reasoned statement explaining why

the applicant believes the Office has erred substantively as to the factual findings or the conclusion of obviousness. 37 CFR 1.111(b).

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Consequences of the KSR Consequences of the KSR decision and 103 Guidelinesdecision and 103 Guidelines

Responses to rejections: Examiners are more sensitized to the requirements of a

response under 37 CFR 1.111. Mere argument is not likely to overcome a prima facie

case, unless it undercuts the logic (reasoning) applied by the Examiner in the rejection.

Objective evidence is likely to become more important in prosecution.

Examiners are being given refresher training in evaluating evidentiary submissions.

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Arguing “no motivation to combine” is not compelling.

Examiners may respond with a rationale not based on “motivation”

If the rejection relies on motivation, then the argument is appropriate, but may not be adequate. Read the references to determine (and anticipate) how the references may render the claim obvious and try to preclude that response by argument or amendment.

Examiners may make the rejection final provided that the rejection has not been altered to the extent that applicant has not been afforded a fair opportunity to respond.

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Rebuttal EvidenceRebuttal Evidence

Applicant may submit evidence, in a timely manner, to rebut a prima facie showing of obviousness.

Rebuttal evidence may include evidence of secondary considerations such as commercial success, long felt but unsolved needs, failure of others, and unexpected results.

Rebuttal evidence may address the particular findings of fact or line of reasoning provided by the examiner in support of obviousness.

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Rebuttal EvidenceRebuttal Evidence

A mere argument that an examiner has not provided an argument based on TSM, or that no motivation is explicitly stated in the applied reference(s), is not sufficient to overcome a prima facie case of obviousness.

If an examiner maintains a rejection under 35 U.S.C. § 103 after receiving applicant's response and reweighing all of the evidence, he or she must clearly explain the reasons for doing so.

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Consequences of the KSRConsequences of the KSR decision and 103 Guidelines decision and 103 Guidelines

Do not ignore BPAI post-KSR Decisions Examiners look to the Board’s actions as a guide as

to what types of rejections are likely to be affirmed. Examiners (generally) do not like to be reversed by

the Board. Therefore, they are sensitive to the winds of change that they discern from BPAI decisions.

Board of Appeals’ website has all Final decisions in a searchable format.

Separate Sections for decisions designated as:

(a) Precedential and (b) Informative.

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Cases of Note: Is Deuel controlling law? (In re Deuel, 51

F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995)). Ex parte Kubin (2007-0819, SN 09/667,859, Decided 5/31/2007) Precedential BPAI; compare with Federal Circuit’s Takeda Chemical v. Alphapharm (06-1329, June 28, 2007).

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There are limits: e.g., Ex parte Rinkevich (2007-1317, SN 09/731,623, Decided May 29, 2007). Where the examiner has not articulated a rationale for the obviousness of the claim or the rationale is not reasonable the case for obviousness has not been established.

“In the instant case, we conclude that a person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to Wu to solve a problem already solved by Savill. Therefore, we agree with Appellants that the Examiner has impermissibly used the instant claims as a guide or roadmap in formulating the rejection.”

Ex parte Rinkevich, 2007 WL 1552288, *4 (BPAI 2007)

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Consequences of the KSRConsequences of the KSR decision and 103 Guidelines decision and 103 Guidelines

Federal Circuit post-KSR Decisions Examiners are aware that ultimately, Federal Circuit

decisions will shape the extent of the KSR decision on the practical day-to-day determination of obviousness.

Cases of Note: Leapfrog Enterprises, Inc. v. Fisher-Price, Inc.,

slip op., 485 F.3d 1157 (Fed. Cir. May 10, 2007) Takeda Chemical Indus. v. Alphapharm Pty., Ltd.,

slip op., 492 F.3d 1350, 2007 WL 1839698 (Fed. Cir. June 28, 2007)

In re Translogic Technology, Inc., slip copy, No. 06-1192, 2007 WL 2965979 (Fed. Cir. Oct. 12, 2007)

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Potential Pitfalls to Avoid Potential Pitfalls to Avoid based on KSRbased on KSR

In re Translogic:a. No need to motivate a particular choice. “ .. a person of ordinary skill would have a thorough understanding of electrical switching systems and knowledge of actual implementations..”

b. The references are relevant prior art.

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Contact InformationContact Information

Brian E. Hanlon

Deputy Director, Office of Patent Legal Administration (OPLA)

e-mail: [email protected]

Phone: 571-272-5047

Thank you.Thank you.

Appendix:

Detailed Discussion of Rationales

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"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. . . . [W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious."

KSR at 1395-66 (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).

Rationale A. Combining prior art elements Rationale A. Combining prior art elements according to known methods to yield according to known methods to yield predictable results.predictable results.

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Findings to support obviousness:

1) a finding that the prior art included each element claimed although not necessarily in a single reference;

2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately; and

3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable.


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Reasoning: All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.


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Rationale B. Simple substitution of one Rationale B. Simple substitution of one known, equivalent element for another to known, equivalent element for another to obtain predictable resultsobtain predictable results

"[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."

KSR at 1395 (citing United States v. Adams, 383 US 39, 50-51 (1966)).

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Findings to support obviousness:1) a finding that the prior art contained a device

which differed from the claimed device by the substitution of some components with other components;

2) a finding that the substituted components and their functions were known in the art;

3) a finding that one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable.

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Reasoning: The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.

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Rationale C. Use of known technique to Rationale C. Use of known technique to improve similar devices (methods, or improve similar devices (methods, or products) in the same way.products) in the same way.

"[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."

KSR at 1396.

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Findings to support obviousness:1) a finding that the prior art contained a

“base” device upon which the claimed invention is an improvement;

2) a finding that the prior art contained a “comparable” device that was improved in the same way as the claimed invention; and

3) a finding that one of ordinary skill could have applied the known “improvement” technique in the same way to the “base” device and the results would have been predictable.

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Reasoning: The claim would have been obvious because the technique for improving a particular class of devices was part of the ordinary capabilities of a person of ordinary skill in the art, in view of the teaching of the technique for improvement in other situations.

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Rationale D. Applying a known technique to a known Rationale D. Applying a known technique to a known device (method, or product) ready for improvement to device (method, or product) ready for improvement to yield predictable results.yield predictable results.

"[T]he claimed subject matter may involve [] the mere application of a known technique to a piece of prior art ready for the improvement."

KSR at 1396.

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1) a finding that the prior art contained a "base" device;

2) a finding that the prior art contained a known technique that is applicable to the base device; and

3) a finding that one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results.

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Reasoning: The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.

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Rationale E. "Obvious to try" – choosing from Rationale E. "Obvious to try" – choosing from a finite number of predictable solutions.a finite number of predictable solutions.

"When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense."

KSR at 1397.

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1) a finding that there had been a recognized problem or need in the art including a design need or market pressure to solve a problem;

2) a finding that there had been a finite number of identified predictable potential solutions;

3) a finding that one of ordinary skill in the art could have pursued the known potential options with a reasonable expectation of success.

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Reasoning: The claim would have been obvious because "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense."

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Rationale F. Known work in one field of endeavor may Rationale F. Known work in one field of endeavor may prompt variations of it for use in either the same field or a prompt variations of it for use in either the same field or a different one based on design incentives or other market different one based on design incentives or other market forces if the variations would have been predictable to one forces if the variations would have been predictable to one of ordinary skill in the art.of ordinary skill in the art.

"When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability."

KSR at 1396.

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1) a finding that the scope and content of the prior art, whether in the same or different field of endeavor, included a similar or analogous device.

2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device.

3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art.

4) a finding that one of ordinary skill in the art, in view of the design incentives or market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable.

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Reasoning: The claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.

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Rationale G. TSM TestRationale G. TSM Test


1) a finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings;

2) a finding that there was reasonable expectation of success.

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Rationale G. TSM TestRationale G. TSM Test

Reasoning: The claim would have been obvious because a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success.

DEALING WITH THE CHANGING LANDSCAPE OF PATENT LAW Suffolk University Law School Annual IP Conference...

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