In recent months there has been much discussion of the USPTO’s decision to open satellite offices in Dallas-Fort Worth, Denver, and Silicon Valley. The Detroit office opened in July 2012 and hosts about fifty examiners and ten administrative patent judges (APJs). A location has been selected for the Dallas-Fort Worth office and the site selection
USPTO to Require Means Plus Function Claims for Software Related Patents?
Functional Claim Drafting Practices Considered by USPTO
Despite public misconceptions to the contrary, software is not patentable. Of course, aspects of software, or “software related” patents exist in which an otherwise statutory apparatus or product is claimed that includes computer implemented functionality. In an effort to enhance the “quality” of these software related patents, the USPTO issued a notice last Thursday in the Federal Register entitled: Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software Related Patents.
The Notice “sets forth several topics to begin the Software Partnership discussion. The first topic relates to how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language.”
Reading through the tea leaves, the USPTO appears quite interested in exploring means-plus-function claiming with the software community. Since this style of claiming directly links the disclosed structure of the patent specification (algorithmic in the case of computer implemented features), it may be that the Office is proposing to rein in the scope of software claims by requiring the more narrow claim type. Thus, the “enhancement in quality” may result in future software related patents becoming more difficult to assert based on their narrower scope. To this end, the USPTO proposed the following talking points for the upcoming roundtable:
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AIA Technical Amendment Receives Final Rubber Stamp
H.R. 6621 Clear All Congressional Hurdles
Late last week, the Senate passed H.R. 6621 with amendment (passed days earlier by the House). The Senate amendment removed the provision requiring a USPTO report on the remaining pre-Gatt patent applications (i.e., “submarine patents”). The pre-Gatt provision was the only one that drew any opposition in the
USPTO Solicits Comments on Small Claims Court for Patent Disputes
Business-to-Business Initiative Drives Government Interest
Small technology companies and start-ups face a daunting task in enforcing their intellectual property due to the cost prohibitive nature of patent litigation. In year’s past academics and major bar associations would often brain storm as to how these market participants (as opposed to NPEs) might be able to cost effectively get a fair shake in the U.S. patent system. Back in 1989, an idea was floated that perhaps the government could help out by establishing a small claims court of sorts to allow such small players an opportunity to prove their case.
For example, where relatively small amounts of licensing revenue/damages are at stake, (e.g., 3 million or less) it is frustrating for small organizations to be faced with a legal bill of equal value to the potential recovery. Although these goals are far from clear in this week’s Federal Register Notice (here), the USPTO is soliciting commentary on the concept of creating a small claims court that would be voluntary in nature, likely exclude NPEs, and focus on small (a few million or less) business-to-business disputes
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Technical Amendment to AIA Passes House
Technical Amendment Passes First Hurdle
Yesterday, the House considered H.R. 6621, a bill to correct and improve certain provisions of the America Invents Act, under a suspension of the rules requiring a two-thirds majority vote for passage. The bill was passed 308-89.
Rep. Rohrabacher spoke out against the GATT study aspect of the Bill
Third Party Submissions in Published Patent Applications
USPTO Reports Early Popularity….But Will it Last?
The America Invents Act (AIA) provides patent challengers with the most robust mechanisms ever offerred to challenge a U.S. patent at the USPTO. Yet, these challenges come at significant cost. A far lesser known provision of the AIA permits challengers to submit prior art materials to the USPTO before the patent even issues…in some cases, anonymously, and for free.
As of September 16th, for any pending application, 37 C.F.R. § 1.290 provides that a third party may submit written prior art, together with an explanation of relevance, to the USPTO. The submission must contain (1) a concise description of relevance, in some cases, a $180 fee, and (2) a statement affirming compliance with the necessary statute (35 U.S.C. 122). As to timing, the submission must be filed before a notice of allowance, or if not allowed, before six months after publication or rejection of any claim, whichever is later. Thereafter, the examiner should consider the submitted art in the usual manner.
In essence, Rule 290 is designed to improve and replace the old Rule, 37 C.F.R. § 1.99 submissions. Rule 290 provides a larger submission window, and, perhaps more importantly, an explanation of relevance is permitted. When considering that a party’s first submission is free, and may be filed anonymously, the option appears quite attractive. However, early adopters of this new mechanism may find that, as always, “you get what you pay for.”
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What’s With All The RCE Filings?
USPTO Seeks Input to Address Growing RCE Inventory
Request for Continued Examination (RCE) filings are largely a creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of RCE filings has increased significantly. This is largely the result of the Office switching the priority of
USPTO Seeks Insight Into Business of Patent Ownership
AIA Creates Dilemna for USPTO on Patent Ownership
This past Monday, the USPTO issued a Notice in the Federal Register entitled Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term (here).
In a nutshell, the agency is currently struggling to promulgate regulations to unravel the complex business relationships behind many patent assignments (i.e., real-party-in-interest). For example, some large patent aggregators may create subsidiaries or exclusive licensee arrangements that are not captured in current assignment records of the USPTO. Yet, the new prior art defintions of the AIA demand transparency in this regard.
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CAFC Contemplates De Novo Review of USPTO Claim Constructions
Court Troubled by Own Inconsistent Precedent
As explained very recently by Director Kappos, the USPTO has a well established practice of applying a broadest reasonable claim interpretation (BRI) in proceedings before the USPTO. For this reason, Director Kappos explained that although the AIA was silent on the type of claim analysis to be applied in the new post grant proceedings of the Patent Trial & Appeal Board (PTAB), BRI was deemed necessary for, inter alia, administrative consistency.
Yesterday, in Flo Healthcare Solutions, LLC. v. Kappos, the CAFC advanced a similar consistency theory in questioning whether or not USPTO claim constructions should be reviewed under a de novo standard, as is the court’s routine practice. Or, whether the USPTO’s constructions should be entitled to a different, “reasonableness” analysis as enunciated in some of the court’s more recent precedent. (decision here)
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Juror Confusion Over Patent Laws to Doom Apple Samsung Verdict?
Juror Bias/Confusion Alleged in Apple Samsung War
Back in August I explained that the record verdict in the now infamous Apple/Samsung patent row may have been the result of a confused jury foreman. In public statements made shortly after the verdict, the jury foreman explained to Bloomberg (here), that his “aha moment”