Practical Practice Notes – High tech Intellectual Property Legal Blog

Everyone is confused by the current state of software patentability

I have read CLS v. Alice a half a dozen times. I have read the follow-up cases, including Ultramercial v. Hulu (holding software patentable, opinion by Judge Rader) and its counterpart Accenture v. Guidewire (holding software as unpatentably abstract, opinion by Judge Lourie).

Greg Aharonian of the Internet Patent News Service collected some quotes from the judges in CLS v. Alice.

the patent-eligibility test has proven quite difficult to apply
Judge Lourie

the current interpretation of 101 is causing a free fall in the patent system
Judge Moore

our court is irreconcilably fractured
Judge Moore

we have propounded at least three incompatible standards, devoid of consensus, serving simply to add to the unreliability and cost of the system of patents as an incentive for innovation
Judge Newman

the intervening commotion [since Diehr and other decisions] leaves us with little, if any, agreement amongst us even though the statute as not changed a syllable
Chief Judge Rader

[o]ur opinions spend page after page revisiting out cases and those of the Supreme Court, and still we continue to disagree vigorously over what is or is not patentable subject matter
Judge Plager

courts could avoid the swamp of verbiage that is 101 by exercising their inherent power to control the processes of litigation [by focusing on 102, 103 and 112]
Judge Plager

Based on this, and the opinions, I have come to two conclusions. First, the Court of Appeals for the Federal Circuit is just as confused as I am about software patent eligibility. Second, the panel members you draw on the CAFC will determine whether a software patent will be upheld as valid or struck down as abstract. If you draw Judge Newman, Rader, Linn, and O’Malley, the software patent will live. If you draw Judge Dyk, Prost, and Reyna software is clearly abstract.

The Price of Globalization (Foreign Filing Licenses)

I have spent a couple of hours trying to figure out where I need to file a patent application, and I still don’t have a good answer. The scenario is pretty simple, and an effect of globalization. My US company client has a patent application that has five inventors. The inventors include on American national, a Chinese national, a German national, a Swedish national, and a Turkish national. I have been tasked with figuring out where we can file, to maintain the ability to file elsewhere internationally, and minimize the possibility of penalties.

The US has the most restrictive foreign filing license requirement. It requires that any invention made by a US national, or for a US national, be filed initially in the US or in the PCT with the US as the search authority. Alternatively, a foreign filing license could be obtained, without filing in the US. Failing to follow this rule will result in loss of patent rights, and can result in significant penalties including fines and potentially jail time.

China requires an initial filing in China, for any invention conceived or completed in China, or receiving a foreign filing license. However, that license may take up to four months to issue. The penalty for failing to do so, is loss of Chinese patent rights. Of course if state secrets are disclosed, more severe penalties may be imposed. But that is not a real risk in this case.

Germany requires a foreign filing license for any invention with a German inventor that has a secrecy aspect. Getting that license may take up to four months. The penalty is focused on disclosure of state secrets, and for that it is severe. It is unclear whether there are any penalties if you fail to seek a foreign filing license, but no state secrets are disclosed. At least one source said that these requirements only apply to national security related applications.

Sweden appears not to have any restrictions, at least in my review of their patent law. If you have any input on it, let me know.

Turkey appears to have no restrictions, at least in my review of their patent law. If you have any input, let me know.

This kind of project is only going to become more common, as global corporations have inventors in various countries, working together. If anyone knows of a good source that explains these laws, I would very much appreciate knowing about it. Otherwise, I’m just going to keep adding to my little spreadsheet, as I encounter inventors from various countries.

Major changes coming to Patent Practice in March: First to File and New Fees

In just over a month and a half, mid-March, two big changes — First to File and the USPTO Fee Adjustment — will shape the future of patent prosecution practice. Oddly, the Patent Office scheduled the change in fees three days after the American Invents Act’s last phase comes into effect on March 16, 2013.

First to File is becoming the law of the land for patents. In addition to granting the patent to the “first inventor to file,” the new rules have a number of other effects.

For the purposes of which law to apply, any case that “ever contains a claim that has an effective filing date on or after March 16, 2013” will be evaluated under the new rules. This means that you should consider very carefully the scope of your claims if you are converting a provisional application which was filed prior to March 16, 2013.

Some of the more important other effects include the expansion of the definition of prior art, to encompass foreign art.

Also, barring actions, such as sales, will also include foreign activity.

It is not clear whether the one year grace period, which does remain for the inventor’s own actions, applies to anything that does not include a “disclosure” of the invention. For example, would a sale or offer for sale that is private be barring? It appears from the language of the act that it would be, since the conditions which would block a patent include the claimed invention being “on sale,” while the exception is only for “disclosures.” The Patent Office has stated that they interpret disclosure as a generic term intended to encompass the documents and activities enumerated in AIA 35 U.S.C. 102(a).”

Furthermore, the Patent Office’s interpretation of the exceptions under 35 USC 102(b)(1)(B) are limited to “identical subject matter disclosed by the third party.” Thus, while nominally the grace period remains, it is only applicable for the inventor’s precise disclosure, and reprints of the same. For example, imagine an inventor that posted an article about their invention in a blog post, prior to filing the application. A blogger posted a link to the article and added an aspect that was not disclosed (e.g. “This could be implemented in way XYZ”). The Patent Office makes very clear that this aspect, e.g. the implementation detail added by the non-inventor blogger would be barred from being claimed as novel, even if the inventor had it in mind but did not include it in the article. Furthermore, potentially the entire disclosure could be removed from the grace period.

In addition to the First to File rules, starting March 16, 2013 (Saturday), the new fees will start on March 19, 2013 (Tuesday).

The new fees will increase second and subsequent RCE fees by $770, to $1700, and will increase the fee for the first RCE by $270 to $1200. The filing fee for a utility patent will also be increased to a total of $1600, while excess claim fees will be increased to $420/$80. National stage entry fees will also be increased, but only by $340, to $1480.

On a practical note, this appears to mean that if the client wishes to file in the PCT, it would be more cost effective to file directly in the PCT, and enter the US through the national phase. It also appears that it may be worthwhile to file a continuation, rather than a second or later RCE, especially given the recent change in priority handling of RCEs.

Legal Ethics Around LinkedIn Endorsements and Recommendations

I try to keep up with developments in Legal Ethics by following the Legal Ethics Forum’s blog. This post by Andrew Perlman about LinkedIn endorsements was interesting.

The question is whether the new “Endorse a skill” feature on LinkedIn could violate legal ethics rules. Andrew suggested that it may violate Rule 7.1 of the Model Rules, which states that:

A lawyer shall not make a false or misleading communication about the lawyer or the lawyer’s services. A communication is false or misleading if it contains a material misrepresentation of fact or law, or omits a fact necessary to make the statement considered as a whole not materially misleading.

I think there is a strong argument that these endorsements are not statements by the lawyer about his or her own skills, and thus falls outside the purview of Rule 7.1.

However, California has more stringent rules. California’s Rules of Professional Conduct address this in Rule 1.400. The item of particular interest, however, is the standards adopted by the Board of Governors. One of those standards states:

(2) A “communication” which contains testimonials about or endorsements of a member unless such communication also contains an express disclaimer such as “this testimonial or endorsement does not constitute a guarantee, warranty, or prediction regarding the outcome of your legal matter.”

A LinkedIn page would clearly constitute a “communication,” defined among other things in Rule 1.400 as “(2) Any stationery, letterhead, business card, sign, brochure, or other comparable written material describing such member, law firm, or lawyers; or (3) Any advertisement (regardless of medium) of such member or law firm directed to the general public or any substantial portion thereof.

Therefore, it appears that an attorney’s LinkedIn profile, in California at least, should include the express disclaimer proposed by the standards.

In an overly cautious move, I have updated my LinkedIn profile in light of this. I am also planning on contacting the attorneys at LinkedIn to see if they can make such disclaimers part of the default profile configuration, at least for attorneys.

What do you think?

Patent Term Adjustment: PTO Rule Change via the Courts

In Exelixis, Inc. v. Kappos in the Eastern District of Virginia, Judge Ellis stated that the USPTO’s interpretation of the patent term extension for length of pendency is incorrect.

The rule that controls patent term adjustments for application pendency is 35 USC § 154(b), and section 35 USC §154(b)(1)(B)(i) states:

(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States, not including-

(i) any time consumed by continued examination of the application requested by the applicant under section 132(b)

The Patent Office has interpreted this to mean that an RCE ends the term adjustment for delay by the Patent Office under Section B, regardless of when that RCE was filed.

Judge Ellis said this interpretation is contrary to the plain reading of the statute. The court stated that the statute was not ambiguous, and its interpretation was very strong. The court concluded:

The plain and unambiguous language of subparagraph (B) requires that the time devoted to an RCE tolls the running of the three year clock if the RCE is filed within the three year period. And, put simply, RCE’s have no impact on PTA if filed after the three year deadline has passed.

Though this decision may be appealed, it is significant. Exelixis got a 114 day additional term for its patent. Many other long-pending patents would likely receive equally large if not larger adjustments.

Patent owners can request a recalculation of the PTO’s Patent Term Extension for two months after a patent issues. The Request must be filed as described in MPEP 2735.

Therefore, my recommendation is that you review all patents that have issued in the last two months, and calculate the new patent term adjustment. For older patents, you have up to six months to appeal the determination to the District Court, so if you have a key patent that may get a few more years validity, this path may be an available option.

The new simple term extension calculation is as follows. First, determine whether your patent was pending for more than three years. If so, check whether an RCE was filed within the three years. If no RCE was filed in the first three years, then your patent term adjustment should be a day-for-day adjustment from the expiration of the three year period, until your patent actually issued.

I will update this post if an appeal is filed.

Information Disclosure Statement Submission After Issue Fee Payment (USPTO Pilot Project)

In an attempt to make the late submission of IDSes less costly, the Patent Office is instituting a pilot program to extend the ability to submit an Information Disclosure Statement under 37 C.F.R. 1.97(d) to after the payment of the issue fee. The pilot program starts on Wednesday, March 16, 2012, and is slated to end September 30, 2012. However, the process is somewhat complex, and unlikely to be much used.

The Patent Office issued a Press Release, and published the Federal Register Notice that includes all the rules.

Submission of such an IDS will require:

1. New transmittal form PTO/SB/09 which will be made available as a PTO form. (currently not there, I will update the link when it is added)

2. IDS including IDS submission fee ($180)

3. Declaration under 1.97(e)(1) or (2) that:

That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.

4. A Petition to Withdraw from issue after payment of issue under 37 CFR 1.313(c)(2), including fee ($130)

5. A Request for Continued Examination (RCE) form, including fee ($930/$465)

The Examiner will, upon review of the IDS, determine whether prosecution needs to be reopened. If so, the RCE will be entered, and prosecution will be reopened. However, the IDS fee will not be refunded.

If the Examiner determines that the IDS does not raise new issues, the Examiner will issue a Corrected Notice of Allowability, indicating that the IDS has been considered. The RCE fee will be refunded. There will be no need to respond to the corrected Notice of Allowability, the case will automatically progress to issue.

So the new policy effectively requires exactly the same process as you would use now, upon receiving a late reference, except that the Patent Office will treat the RCE request as conditional, and will refund the RCE fee if they determine that the references do not raise new issues.

As a general policy, we do not recommend the use of declarations under 1.97(e)(2) because it requires “reasonable inquiry” that no one associated with the case was aware of any of the references. There is a real risk that someone, maybe an inventor who is no longer with the assignee, was aware of a reference. However, a declaration under 1.97(e)(1) only requires is a reference from a foreign patent office in a computerpart foreign application. Unfortunately, that does not include related patent applications, whether U.S. or foreign, only references from foreign counterpart applications.

There are two potential advantages to this procedure. First, there is the savings of the RCE fee, a savings of between $750 and $285, since the IDS fee is now required). Second, any such submission will be placed on the examiner’s “expedited” stack. Currently the wait for RCE responses has been increasing drastically, due to the pressure on Examiners to reduce wait time for the first office action. Thus, being on the expedited stack may be a significant time advantage. Despite these advantages I don’t think this procedure will significantly change existing practice, or help with the excessive RCEs.

Impact of USPTO Proposed Fee Increases

The USPTO’s published fee increase proposal is going to have an impact on every patent department in every company. You can find the Patent Office’s discussion and a PDF with the fee increases on the AIA microsite. While some fees are untouched, and a few are even reduced, many fees are significantly increased.

Some of the major fee increases:

Many fees are increased by a small amount, those are not listed in the above table. The only noticeable fee reduction is for issue fees. If an application is publishes, the issue fee will be reduced by 50% compared to an issue fee for a non-published application. While publication will still cost $300, the savings of $1,080 on the issue fee is not insignificant. However, this change is not scheduled to start until January 1, 2014, almost a full year after the new fee increases become effective.

The increases in the filing fees, RCEs, and maintenance fees are going to have a large impact on patent budgets. If you budget for prosecution and maintenance fees separately, and I recommend you do, increase your estimates for both, starting in February of 2013. Since many companies set their budgets annually, make sure your next budget cycle includes the likely increases in patent costs.

For prosecution costs, if you work with an outside firm most of the cost is attorney fees. I would estimate that this fee increase will lead to an increase of overall costs by approximately 15% across the board. Of course, if you are handling prosecution in-house, you should be increasing your budget for PTO fees by at least 60%, given the inflation of filing, RCE, and appeals fees.

More significantly, you will need to increase your budget for maintenance fees. If your portfolio is evenly distributed in terms of status, then you should increase your overall maintenance fee budget by ~50%. If your portfolio is younger, with most of your issued patents at the first or second maintenance fee stage, increase your maintenance fee budget by ~35%. If your portfolio is older, more heavily weighted toward patents in their final maintenance fee stage, you will need to increase your budget by 60%. For an evenly distributed portfolio of 100 issued patents, the additional cost would be ~$45,500, raising the annual maintenance fee budget from ~$96,700 to ~$142,200.

While the Patent Office has not finalized these fees, I attended the public hearing and there appeared to be little interest in discussing changing these fees, or acknowledging their likely impact on innovation.

America Invents Act: Summary of Sections & Effective Times

The America Invents Act is going to be changing many aspects of patent prosecution and litigation. I have divided it into four segments, patent strategy, patent prosecution, post-issue owner’s rights, and post-issue third party rights. Each change to the patent law will impact one or more areas.

These changes have been partially implemented, in September of last year. Another large group of changes will be coming in September of this year. The fee changes proposed by the Patent Office, which appear to be non-negotiable despite the many hearings held, are going to be implemented in February of next year. I will make a longer post about the fee changes, and their impact later. And finally, in March of 2013, the First to File or Disclose rules, and the associated other rules, will be coming into play. As you can see, the September 2012 changes will mostly impact third parties, starting the post-grant opposition, and other changes.

This graph is a summary of the changes, their timing and the segments which they primarily impact.

Avvo and The Attorney

There are numerous attorney rating services out there, ranging from the peer ratings of Martindale-Hubbell, the answer-based ratings of LinkedIn, to the “neutral” ratings provided by services such as Avvo.

Avvo claims on its website that “It’s unbiased. Because ratings are calculated using a mathematical model, all lawyers are rated by the same standards.”

Multiple lawsuits have attempted to challenge Avvo ratings. The latest, Davis v. Avvo, 2:11-cv-01571-RSM (W.D. Wash. March 28, 2012) has been dismissed as Strategic Litigation Against Public Participation (SLAPP), and the attorney has been ordered to pay Avvo’s attorney fees as well as an additional $10K punitive damages, as described on the Technology & Marketing Law Blog. You can find numerous other examples of Avvo’s lawsuit history on that same blog.

So, suing Avvo is a bad plan. But is Avvo truly neutral? It is highly doubtful.

An easy example of this is my profile. When I first became aware of the service I looked myself up, and found that I was rated at 2 ½ stars for experience. A quick glance showed that another attorney at my firm, who started at the same time and had identical career path to mine, had 3 ½ stars for experience. Given that the “experience” rating depends, per Avvo entirely on “a lawyer’s years in practice” I found this surprising. When I contacted Avvo, via email, my rating was quickly updated. I now have four stars of experience, which apparently corresponds to my 15-years of practice as a patent attorney.

However, when I look at their “recommended” attorney (which appears directly next to my listing, and is someone who has paid for their listing), it appears that a Stuart James West, who graduated law school in 1998 and was admitted to practice in California in 1999 has 5 stars of experience.

Even more surprisingly, Kirupa Pushparaj, who graduated law school in 2007 and was admitted to the bar in 2008, apparently has a 5 star experience rating.

I would be very curious to have Avvo explain these discrepancies. In the meantime, I recommend ignoring Avvo ratings entirely.

US Patent Office PAIR Monitoring

There are numerous services to monitor Public PAIR. This is useful to monitor the status of one’s own cases, as well as the status of the cases of one’s competitors.

For one’s own cases, for example, if an After Final Amendment or a Petition is filed, it does not stop the clock for a response. Monitoring PAIR to ensure that any Advisory Actions or Petition responses are timely received is very helpful. Similarly, once an Issue Fee is paid, you have until the case actually issues to file a continuation application. While an Issue Notification is provided by the Patent Office, the Issue Notification is often provided days before the actual issue date. Therefore, it is worth monitoring PAIR to ensure that this information is obtained at the earliest possible time.

For one’s competitors’ cases, it is useful to know when cases are going to be issuing, or substantive office actions are received. As the post grant procedure comes into effect, starting on September 16 of this year, knowing right away that a competitor’s case is about to issue becomes even more important.

Of course, in any Reexamination, the timelines are tight, and having an extra few days by receiving the copies of any office actions or filings by the opposing party is useful.

These services range in cost. For example,

CE Status for example provides a PAIR monitoring for $180.00 per case per year.

Cardinal IP monitors public PAIR for $10 per case per month (e.g. $120 per case per year).

Questel provides PAIR monitoring, as well as monitoring international patent offices. I could not find pricing online. (If someone provides this data, I will update this)

Maxval also provides public PAIR monitoring for $60 per case per year.

Of course, it is possible to manually monitor PAIR as well. There is an advantage to doing so in-house, because it enables access to Private PAIR, rather than just to Public PAIR, as with the listed services. However, this is time consuming, and requires administrator time on a daily or weekly basis. Currently my Admin monitors PAIR on a weekly basis, on Mondays. The day of the week was selected because patents issue on Tuesdays, and I want to ensure I get even last minute issue notifications.

I’m working on writing a script to see if I can use Private PAIR with a script (though I may need to sign in manually). Does anyone know of a functioning script or application that works well, and isn’t too expensive?