NEW PILOT PROGRAM - AFTER FINAL CONSIDERATION

On  May 19, 2013, the USPTO launched the After Final Consideration Pilot 2.0 (AFCP 2.0).  Using information obtained from the After Final Consideration Pilot (AFCP), which began on March 25, 2012 and ended May 18, 2013, the USPTO continues their on-going efforts toward compact prosecution.  The USPTO also continues to increase collaboration efforts between examiners and stakeholders. 

One of the goals of the policy of “compact” prosecution is to provide applicants with prompt and complete examination of their applications.  AFCP gives extra time for examiners to search and/or consider responses after final rejection.  If a response does not place the application in condition for allowance, the idea is the applicant will benefit from the extra time to schedule and conduct interviews to discuss results of searches and/or considerations.  Like AFCP, AFCP 2.0 also revised procedure for obtaining consideration and focuses the pilot on review of proposed claim amendments. 

AFCP 2.0 is scheduled to run through September 30, 2013, i.e., any request to consider a response after final rejection under AFCP 2.0 must be filed on or before September 30, 2013.

A response under 37 CFR §1.116  is required to become eligible for consideration under AFCP 2.0.  This includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one (1) independent claim that does not expand the scope of the independent claim in any way. 

You can find the Notice published in the Federal Register at 78 Fed. Reg. 29117.  Examiners will use their judgment to determine if the response can be fully considered under AFCP 2.0. 

If you received a final rejection under 37 CFR 1.116 and you believe further searching and/or consideration by the examiner will lead to allowance of your application then you may want to make a request for consideration under AFCP 2.0.   

For information on how to request consideration under AFCP 2.0, please contact Robert J. Sayfie by visiting www.sayfie.com or calling toll free at 888-468-0444.

Domain Name Disputes and Cybersquatting

 

            According to the Anticybersquatting Consumer Protection Act Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.  The person registering, trafficking, or using the domain name in bad faith is called a cybersquatter.  Typically, the cybersquatter then offers to sell the domain to the person or company who owns a trademark.

            In a recent case, the jewelry company Swarovski filed a complaint against a Mr. Derk Hond.  The case is, LLSwarovskiAktiengesellschaft v. Derk Hond Case No. D2013-0005.  The respondent, sometimes called a defendant, registered the domain name cheap-swarovski.net.

FACTS

            The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2013.  Swarovski uses the SWAROVSKI trademarks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries

LAW

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and

                        (iii) The disputed domain name has been registered and is being used in bad faith.

CONCLUSION

            The Panel orders that the disputed domain name be transferred to the Complainant.

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WHAT IS A PATENT TERM ADJUSTMENT?

The patentability of inventions is defined under Title 35 of the U.S. Code.   During the 1990’s Congress enacted the Uruguay Round Agreement Act and the American Inventors Protection Act (AIPA). 

In 1994, the Uruguay Round Agreement Act resulted in a patent term adjustment from 17 years to 20 years from the date a patent application is filed.  It also established Patent Term Adjustment (PTA).  The PTA was significantly amended with the enactment of the AIPA in 1999 and provided for a Request for Continued Examination (RCE).  These significant law changes led to litigation pertaining to the plain language of Title 35. 

The U.S. District Court for the Eastern District of Virginia has found in a recent case that the United States Patent and Trademark Office’s (USPTO) interpretation and application of the “RCE carve-out” provision of the PTA statue is contrary to law.  See Exelixis, Inc. v. Kappos, No. 1:12cv96 (E. D. Va. Nov. 1, 2012).

There is good chance that the USPTO will appeal the Exelisis decision, however, this holding prompts consideration for patentees owning patents issued within the past 180 days or applicants considering whether to file an RCE.

An unresolved question concerning the AIPA’s PTA provision is as follows:

            Whether 35 § 154(b)(1)(B) requires that an applicant’s PTA be reduced by the time attributable to an RCE, where, as here (Exelixis), the RCE is filed after the expiration of AIPA’s guaranteed three year period. 

The plain language of Section 154 fails to address and does not require that an applicant’s PTA be reduced by the time required to process an RCE that is filed after the expiration of the three year period. 

Per Exelixis, it is recommended that patent owners and applicants consider these tips:

(1) For any patents issued within the past 180 days, patent owners should evaluate those patents to determine if the underlying application involved an RCE filed after the three-year time period in order to determine whether they should seek a PTA; and

(2) Patent applicants should, if possible, wait to file an RCE until three years after the application filing date. An RCE filed before the three-year time period will preclude the applicant from obtaining additional PTA.

For further answers to patent law questions and your PTA , please contact The Patent Law Office of Robert J.Sayfie.

 

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Or call 1-888-468-0444

In Re Mouttet - a June 2012 case discussing obviousness

     After a non-provisional patent application is filed with the United States Patent and Trademark Office(USPTO), an examiner at the USPTO conducts a search, and in over 80% of the filed applications, sends an office action rejecting the application.

     The most typical rejection is due to “obviousness” under 35 U.S.C. 103.  Such an office action usually requires the applicant filing a response and amendment to overcome this type of rejection. 

     Under 35 U.S.C. 103(a), if a claimed invention, as a whole, would have been obvious to a person of ordinary skill in the field of the invention, the claims are rejected. Whether an invention would have been obvious to one of ordinary skill in the art is a legal determination based on underlying findings of fact. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007); In re Gartside, 203 F.3d 1305, 1316, 319 (Fed. Cir. 2000) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).

      The scope and content of the prior art, as well as whether the prior art teaches away from the claimed invention, are determinations of fact. See Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Furthermore, where “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, 550 U.S. at 416.

      Furthermore, a patent application may be rejected if it would have been obvious for one of ordinary skill in the field of the invention to take one invention and combine the elements of other patented inventions to yield predictable results.

     An inventor can rebut an obviousness rejection by showing that the prior art “teaches away” from the claimed invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326-27 (Fed. Cir. 2009). Based on facts, prior art “may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, the “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

      The Court of Appeals for the Federal Circuit recently decided In re Mouttet, 2011-1451, 2012 WL 2384056 (Fed. Cir. June 26, 2012). The decision affirmed a rejection by the Board of Patent and Interferences (“Board”) for all 20 claims in inventor Mouttet’s utility patent application No. 11/395,232, “Crossbar Arithmetic Processor.” Id. at 2. The application “discloses a computing device for processes such as addition, subtraction, multiplication, and division using nanoscale materials in a crossbar array.” Id. The Board upheld the original PTO Examiner’s rejection of the application under 35 U.S.C. 103(a) as unpatentable over five prior art patents. Basically, one patent contained all but three components of the claims provided in Mouttet’s application. Further combining the elements of the other prior art patents yielded the same results as Mouttet’s claimed invention—rendering it obvious. Id. at 5-6.

      The Board found that an ordinarily skilled artisan—in this case an electrical engineer—would have easily been able to substitute in the elements from one prior art patent with another to predict the claims included in Mouttet’s application. Id. at 10. “[T]he Board noted that there is no requirement that the examiner show how to physically incorporate [such substitutions] because obviousness focuses on what the combined teachings would have suggested. Id. at 11. Mouttet’s arguments on appeal were that (1) combing the elements of the prior art patents would have destroyed the principal of operation of the prior art; and (2) the prior art teaches away from the presently claimed invention. Id. at 13.

      The main prior art patent that rendered Mouttet’s claimed invention obvious utilized optical paths rather than the electrical paths included in Mouttet’s claims. Mouttet argued that substituting optical paths for electrical paths would have destroyed the principal operation of the prior art invention. Id. at 14. The Board disagreed, finding “that the principle of operation of [the] computing device is its high level ability to receive inputs into a programmable crossbar array and processing the output to obtain an arithmetic result.” Id.  The principal of operation can be accomplished via optical or electrical paths, and an ordinarily skilled electrical engineer would understand this.

     As for Mouttet’s argument that the prior art “teaches away” from the claimed invention, the board was not persuaded with this argument.  Whether prior art teaches away from a claimed invention is a question of fact. In re Napier, 55 F.3d 610, 613 (Fed.Cir.1995). Here, the prior art specifically discussed the differences in optical and electrical paths, noting that an optical path is the preferential embodiment. Discussing an inferior or non-preferential method does not “teach away” because “the mere disclosure of an alternative design does not teach away.” Id. at 17. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

     If an application does get rejected under 35 U.S.C. 103, the applicant may present arguments based on facts, and references should be included when making an argument that prior art teaches away from the claimed invention, or that the principal element of the invention would have been destroyed.

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Therasense’s Effect on the Inequitable Conduct Doctrine

Therasense’s Effect on the Inequitable Conduct Doctrine

     The Doctrine of Inequitable Conduct is a defense available in patent infringement actions suggesting that an applicant has an ethical duty to the United States Patent and Trademark Office. The defense requires the defendant to show that the applicant “intentionally withheld material information from or misled the examiner.” Black’s Law Dictionary (9th ed. 2009). In recent years, this doctrine has undergone a substantial transformation.

     Title 37 of the Code of Federal Regulations (37 C.F.R. 1.765) requires each applicant to exhibit “a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.” As a result of this obligation, applicants have tended to provide too much information to the USPTO in an effort to avoid allegations of fraud, misrepresentations and concealment of information. If an applicant does not provide enough information, he/she/it can become a prime target for a patent infringement lawsuit. This is where the inequitable conduct defense comes in. If Party A files a patent infringement action against Party B, Party B can counterclaim, alleging that Party A breached its duty of candor to the court by not disclosing enough information about his/her/its invention. Although effective once proven, this defense is difficult to prove in the first place. A successful defendant must show that the concealed or misrepresented information is 1) material, and 2) the applicant intended to deceive the USPTO. Intent is a difficult element to meet as it must be proven by clear and convincing evidence and “cannot always be inferred from a pattern of conduct that may be described as grossly negligent.” Kingsdown Medical Consultants, Ltd. V. Hollister, Inc., 863 F.2d 867, 872-73 (Fed. Cir. 1988).   

     Last year in Therasense, Inc. v. Becton, Dickinson & Co, the Federal Circuit did away with the “reasonable examiner” approach and established a “but-for” standard for determining materiality. 649 F.3d 1276, 1291 (Fed. Cir. 2011). The Court held that “the materiality required to establish inequitable conduct is but-for materiality.” Id. So in essence, “[w]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” Id. In a case of nondisclosure, the court, applying the preponderance of the evidence standard, “must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.” Id. at 1291-92. On the issue of intent, the court stated that intent cannot be inferred “solely from materiality.” Id. at 1290. Instead, it “must weigh the evidence of intent to deceive independent of its analysis of materiality.” Id. Although a court may rely on circumstantial evidence in making an intent determination, because of the high standard the plaintiff must meet (clear and convincing evidence standard), the specific intent to deceive must be “the single most reasonable inference able to be drawn from the evidence.” StarScientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008).

     The Therasense case is significant because it transformed the Inequitable Conduct doctrine in two respects. First, contrary to Driscoll v. Cebalo, 731 F.2d 878 (Fed. Cir. 1984), it held that “a finding that the misrepresentation or omission amounts to gross negligence or negligence under a ‘should have known’ standard does not satisfy this intent requirement.” Second, contrary to Am. Hoist &Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (Fed. Cir. 1984), a court “should not use a ‘sliding scale’ where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa.” Therasense, 649 F.3d at 1290. Following the case, the UPTO proposed to amend 37 C.F.R. §§ 1.56 and 1.555 to require submission of material information, as defined in Therasense. As of March 2012, the proposal has not gone into effect.

     Commentators believe that this case, based on the high standards a plaintiff has to meet, coupled with the America Invents Act, which was promulgated on September 16, 2011 by the U.S. Congress, will result in a reduction of the number of patents found to be unenforceable. It has been less than a year since Therasense was decided and the America Invents Act was enacted, so the effects have yet to be seen. Most provisions of the America Invents Act will become effective in the fall of 2012. What is clear at this time, however, is that district courts are now equipped with the knowledge pertaining to the application of the equitable conduct doctrine. The decision removed the ambiguity surrounding the standards to be applied in determining the two prongs of this defense and created clearer standards.

     In its first post-Therasense case, the U.S. Court of Appeals for the Federal Circuit applied the standards set forth in Therasense in the Powellv. Home Depot, Inc. in November of 2011. The district court hearing that case determined that the plaintiff had intentionally omitted a fact from the USPTO. On appeal, the Federal Circuit held that under the higher standard of Therasense, there was no inequitable conduct because the plaintiff’s conduct failed the “but-for” materiality standard. This case tends to show that the new standard allows for less judicial discretion, and instead will likely result in more consistent rulings on the issue of inequitable conduct.

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Considerations when Evaluating the Validity of a U.S. Patent

Considerations when Evaluating the Validity of a U.S. Patent:

1. Is the patent expired?  In the United States, utility patents are enforceable for a period of twenty (20) years from the filing date, if the maintenance fees have been paid.  Design patents are enforceable for 14 years after the grant of the patent.  Utility patents require three (3) maintenance fees to be paid to prevent the patent from being abandoned, at periods of 3.5, 7.5, and 11.5 years after issuance.  If the fees are not paid, then the patent is abandoned, and no longer enforceable.

2.  Have the maintenance fees been paid?  An inquiry with the proper division of the United States Patent and Trademark Office will allow you to determine if the maintenance fees have been paid.  If not, then the patent is abandoned, and not enforceable.

3.  Is the patent invalid under 35 United States Code, section 102?  For example, this code prevents a patent from being valid if:
     (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent;

     (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States;

     (c) he has abandoned the invention, or

     (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States.;

     (e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351 (a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language...

     The above statutes has a few other provisions that may cause a patent to be invalid.

     These considerations are only a starting point and a proper evaluation many times requires a thorough review of the applicant's filings, and office actions from U.S. Patent and Trademark Office .
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How does the new America Invents Act change the patent laws?

The America Invents Act was signed into law on 16 September 2011, however many of the key provisions do not become effective until 16 March 2013.

For example, for patent applications filed on or after 16 March 2013, he law will switch U.S. right to the patent from the present "first-to-invent" system to a "first-to-file" system.

The law also redefines the definition of prior art. Acts and prior art that prohibit a patentee from obtaining a patent will include public use, sales, publications, and other disclosures available to the public as of the filing date, other than publications by the inventor within one year of filing whether or not a third party also files a patent application.

Applicants that do not publish their inventions prior to filing will receive no grace period. The proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention will be repealed.  These are currently called “interference proceedings.”

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