Monthly Archives: March 2010

Pre-Appeal Brief Request for Review | Overview and Effective Uses

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The Pre-Appeal Brief Request for Review (PABR) provides an Applicant, whose patent application has been twice rejected, a means for obtaining formal review of outstanding Office Action rejections prior to the filing of an appeal brief.   The USPTO states that, “the goals of the program are (1) to identify the presence or absence of clearly improper rejections based upon error(s) in facts, or (2) to identify the omission or presence of essential elements required to establish a prima facie rejection.”


Overview

As annunciated by the USPTO, “the program is intended to spare applicants the added time and expense of preparing an appeal brief if a panel review determines an application is not in condition for appeal.”   The PABR may be utilized to review appealable issues (e.g., 35 USC 102/35 USC 103/35 USC 112 rejections | rejections involve substance) but not petitionable issues (e.g., claim objections: see 1.181 – Petition to the Director | objections involve form).

It is proper to utilize the pre-appeal brief process when clear error or factual deficiencies are present in one or more of the rejections of the outstanding Office Action.  Conversely, the Applicant should file an appeal brief and not request review through the PABR if the Applicant’s arguments will require an interpretation of the claims or prior art teachings.


Applicant Submission

1)    Notice of Appeal:   A notice of appeal (compliant with 37 CFR 41.31) must be filed concurrently with the PABR submission.

2)    USPTO PABR Request Form:   USPTO Form PTO/SB/33.

3)    Arguments:    The Applicant’s arguments detailing why review is being requested should be no longer then five pages (excluding the PABR Request Form).   Additionally, no claim amendments may be included therewith (including any claim amendments will result in the PABR submission being dismissed).   Further, the Applicant should refer to arguments already of record by particularly referring to the previously submitted arguments (e.g., “The arguments presented in Applicants response of January 1, 2010 at page 4, line 15 to page 5, line 5 ….”).


USPTO Post-PABR Filing Process

Once the pre-appeal brief request for review has been received by the USPTO, a Technology Center Art Unit supervisor will designate a panel of examiners who are experienced in the subject technology to review the PABR submission.  The panel of examiners will include “at least” a supervisor and the Examiner of record.

After the panel reviews the rejection(s)/Applicant arguments (without any further interaction with the Applicant), the panel will either: 1) allow the application; 2) reopen patent prosecution; 3) keep the application under appeal because at least one issue remains; or 4) dismiss the request due to a submission error (e.g., claim amendment included therewith, failing to submit notice of appeal, etc.).


Effective Use of PABR

Filing a pre-appeal brief request for review makes sense in many instances, especially when an Applicant’s arguments are being found unpersuasive by an Examiner and the Applicant believes that claim amendments are not required to overcome the rejection(s).   In such a scenario, the pre-appeal brief provides the Applicant with an opportunity to place their patentability arguments before a panel of examiners (which include at least one supervisor) prior to filing a full appeal brief.

Filing a full appeal brief is costly as its preparation requires a substantial amount of time.   Additionally, in view of the current backlog at the BPAI, an Applicant who files an Appeal Brief may incur a substantial wait prior to receiving an answer.   Such an extended wait may be detrimental for an Applicant who requires an expedient patent grant to achieve a specific business objective (e.g., securing additional venture capital, etc.).

Conversely, the time and cost required for the pre-appeal brief submission is minimal as a majority of the Applicant’s former arguments may be essentially re-asserted in the PABR (although new patentability arguments may be asserted as long as no claim amendments are included therein).   Additionally, if former arguments are indeed re-asserted in the PABR,  minimal (or possibly no) prosecution history is generated by such a filing.

Many patent practitioners that I know who utilize the PABR feel generally positively about it.   In many instances, the filing of the PABR may result in the rejection(s) being withdrawn and prosecution being re-opened.  If the PABR results in a rejection being withdrawn, such a result is positive as prosecution is able to move forward without the Applicant having to either file an appeal brief or amend the claims.

Generally, anticipation rejections included in an Office Action are easier to overcome during patent prosecution than obviousness rejections.  The aforementioned assertion is generally maintained in the Pre-Appeal Brief Review context, as arguments directed toward anticipation rejections usually enjoy greater success than arguments directed toward obviousness rejections.

As stated previously, the Pre-Appeal Brief request may be utilized only when clear error or factual deficiencies are present in one or more of the rejections of the outstanding Office Action.   The following items illustrate a few situations where the Pre-Appeal Brief Request for Review may be successfully utilized.

Anticipation/Obviousness – Fail to Consider Claim Recitation | Improper Correlated Claim Feature

For anticipation rejections, the Applicant will likely succeed if it is shown that the Office Action failed to entirely consider a claim recitation in the subject application (e.g., the office action does not correlate a claim feature in the subject application with that of a corresponding feature in the cited art or fails to consider all of the claim recitations).   Additionally, if a claim feature in the subject application is not met by a correlated feature in the cited art, the Applicant may obtain success in filing a Pre-Appeal Brief Request for Review.  Further, obviousness rejections which fail to consider a claim recitation(s) or improperly correlate a claim recitation, may be similarly overcome by filing persuasive arguments in a Pre-Appeal Brief Request for Review which point out the clear error or factual deficiencies which are present therein.

Obviousness – Teaching Away Arguments

An Applicant may be successful in overcoming an obviousness rejection if they further a persuasive “teaching away” argument.   “Teaching away” requires an explicit statement or teaching within one of the cited references which indicates that the proposed combination, as asserted by the Office Action,  would render the claimed invention (of the subject application) inoperable for its primary purpose.

It should be noted that if one of the references only describes disadvantages such as inefficiency or cost, a teaching away argument will be likely unsuccessful.   Accordingly, for a “teaching away” argument to be successful, an explicit teaching must be included within the cited art (e.g., a machine will be unoperable if element A is XYZ material, a process will be unoperable above temperature ABC, etc.).

The MPEP provides guidance regarding “teaching away” (MPEP 2141.02 – Differences Between Prior Art and Claimed or Invention) indicating that, “a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).   Further,  MPEP 2145 – D. References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose provides additional guidance regarding “teaching away.”

Contrastingly, for arguments which require the panel to interpret claim scope or what a person of ordinary skill in the art would understand with regard to cited art (e.g., especially if multiple interpretations are present) will likely not succeed, and instead should be included in a full appeal brief.

In summation, an Applicant should seriously consider filing a Pre-Appeal Brief Request for Review prior to filing an Appeal Brief.

Shortcut Table for Analyzing 35 USC 102

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To assist one in quickly analyzing 35 USC 102, the following “shortcut” table and accompanying commentary is herein provided for your convenience:

35 USC 102
A person shall be entitled to a patent unless:
Section Actor Action Timing Location
(a)
 Third-party Known or used Before invention USA




Third-party Patented or described in a printed publication Before invention Globally
_________
(b)
 Anyone (including inventor) Patented or described in a printed publication More than one year before filing Globally

Anyone (including inventor) Public use or on sale More than one year before filing USA

(c) Inventor Abandoned Invention

(d)
 Inventor Patented or subject of an Inventors certificate in Foreign country Foreign application filed more than twelve months before domestic filing. Foreign country

(e)

____



 Third-party

____

____

____

 (e)(1) – Publication by WIPO/USPTO.

(e)(2) – Patent

Domestic – USA: (Published or patented) AND filed before invention

PCT : 1) WIPO publication of an International Application (PCT), filed on or after 11.29.00) AND filed before invention; 2) designate U.S.; and 3) publish in English (if filed before 11.29.00, use Pre-AIPA rules – see below)

(f) Inventor Not the actual inventor

(g) Third-party (g1) Interference – another establishes they invented first and did not abandon, suppress or conceal.

(g2) Another invented first  in USA and did not abandon, suppress or conceal – “reasonable diligence” applicable here.


“Printed Publication”

The primary factors that must be examined for determining whether a reference qualifies as a  “printed publication” include: 1) dissemination; and 2) public accessibility.  (See MPEP 2128.01)


“Patented”

The term “patented” as used above in sections (a) / (b) / (d) refers to the date that a patent was granted (not the date that the patent application was filed).  (see MPEP 2126 – Availability of a Document as a “Patent” for Purposes of Rejection Under 35 USC 102(a), (b) and (d).


35 USC 102(e)

Section (e) is applicable to references which are either: 1) U.S. patents;  2) U.S. published applications (35 USC 122(b));  or 3) WIPO publications of  international applications (IA) filed under PCT Article 21(2) ( international application has an international filing date on or after November 29, 2000).

MPEP 706.02(f)(1) indicates that, “the 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 … If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined: (1) If the international application meets the following three conditions:  (a) an international filing date on or after November 29, 2000; (b) designated the United States; and (c) published under PCT Article 21(2) in English, then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).”

If the international application has an international filing date prior to November 29, 2000, the pre-AIPA rules must be followed which require:

  • U.S. Patents:    Allocate 102(e) date to either: fulfillment of 35 USC 371(c)(1)(2) and (4) or filing date of later-filed U.S. application (whichever is earlier).
  • U.S. Patent Publication/WIPO Publication (direct):   For U.S. patent publications and WIPO publications which result directly from the international application, no 102(e) date exists.    Instead, the publication date may be utilized for 102(a) or 102(b).
  • U.S. Patent Publication (benefit claim):   If a U.S. patent publication claims benefit to an international application filed prior to November 29, 2000, the actual filing date of the later-filed U.S. application is the 102(e) date.

The MPEP includes a convenient  35 USC 102(e) Flowchart for determining 35 USC 102(e) dates.   Additionally, it must be remembered that international applications (PCT) which fail to either publish in English or designate the U.S. WILL NOT be afforded a 35 USC 102(e) date, even if the international application claims benefit to an earlier-field U.S. application (non-provisional/provisional).   However, such a reference may instead qualify under 35 USC 102(a) or 35 USC 102(b) as of its publication date.

An earlier filing date (than the application filing date) may be afforded to the subject application if a benefit claim is properly made therein to: 1) a provisional patent application under 35 USC 119(e);  2) a nonprovisional patent application under 35 USC 120; or 3) an international application under 35 USC 365(c).

Further, it must be remembered that an earlier filed application must in all instances provide 35 USC 112, first paragraph support for the claimed subject matter of the later filed application.

The MPEP provides an extensive overview of 35 USC 102(e) (see MPEP 706.02(f)(1) – Examination Guidelines for Applying References under 35 USC 102(e)).   Additionally, the USPTO has provided the following guidance regarding this section: USPTO – Questions and Answers regarding 35 USC 102(e)


Overlap of 35 USC 102 Sections – Order of Application in Formulating a Prior Art Rejection

1)  35 USC 102(b)

One may have noticed that a reference can qualify for multiple sections of 35 USC 102; more specifically, some overlap between sections (a), (b) and (e) may arise.   In determining the order of application of the aforementioned sections in formulating a prior art rejection which is included in an office action, Examiners will typically apply 35 USC 102(b) first as this section is a “statutory bar” which is absolute (e.g., cannot utilize a rule 1.131 affidavit to overcome a 102(b) rejection).

2)  35 USC 102(e)

Next, 35 USC 102(e) will be typically applied as references here are treated as “special” (e.g., application filing date is used under certain circumstances).  It should be noted that a reference which is asserted under 35 USC 102(e) may be disqualified further to 35 USC 103(c) if the reference is: a) only prior art under 35 USC 102(e) (f), or (g); b) applied in a 35 USC 103(a) rejection; and c) the reference and subject application were commonly owned or subject to an obligation of assignment at the time of invention.

3)  35 USC 102(a)

A printed publication (e.g., patent publication) which is published (anywhere and “by another”) prior to the subject applications effective  filing date may qualify under this section.   Accordingly, if a reference is published prior to the effective filing date of the subject application, the aforementioned exclusion (35 USC 103(c)) will not apply as the reference will qualify under 102(a) (or 102(b) if published more than a year prior to the subject application filing).

If the aforementioned scenario arises, the Applicant may consider: 1)  “swearing behind” the 102(a) reference utilizing a 1.131 Affidavit or Declaration (CANNOT utilize 1.131 to swear behind 102(b) references), 2) arguing differences between claim recitations and the cited art; 3)  amending the claim(s); or 4) perfecting a benefit claim to an earlier-filed application (see also MPEP 706.02(b) – Overcoming a 35 USC 102 Rejection Based on a Printed Publication or Patent.

Further details regarding the foregoing may be found at MPEP 706.02(a) – Rejections Under 35 USC 102 (A), (B) or (E).

Provisional Patent Applications Examined

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Provisional Patent Applications

Although provisional patent applications may offer a few advantages, a number of items should be carefully considered if such a filing is elected to avoid any adverse consequences.


Background

1)  Establish Priority:   Provisional patent applications may establish an earlier “effective filing date” (or priority date) for a later filed: 1) non-provisional patent application; 2) application(s) filed in a foreign jurisdiction (non-U.S.); and 3) PCT application.

2)  Must Subsequently File a Non-Provisional Patent Application (12 months):   To avoid losing the priority date of the provisional patent application, a non-provisional patent application must be filed within 12 months from the filing date of the provisional application and must include a benefit claim to the provisional.   The benefit claim to the provisional must be filed within four months of the non-provisional patent application’s filing date or sixteen months from the provisional patent application’s filing date (whichever is later).   Additionally, the aforementioned 12 month period cannot be extended and the provisional application cannot mature into a patent as it becomes abandoned after the 12 month period.

3)  Not Examined / Published:   Provisional Applications are neither examined nor published by the United States Patent and Trademark Office (USPTO).  Additionally, because provisionals are not examined, Information Disclosure Statements (IDS) should not be included therewith.

4)  No Indication of Patentability:   Because provisional applications are not examined, the Applicant is provided with no indication of patentable subject matter.

5)  Can Not Claim Benefit to Earlier Filed Application(s):  A provisional cannot claim benefit to an earlier filed domestic or foreign patent application.

6)  Common Inventorship:    A provisional and subsequently filed non-provisional patent application must share at least one common inventor between both patent applications.

7)  Non-English Filing:   A provisional may be filed in a language other than English.   Further, a translation and statement that the translation is accurate does not need to be filed with the provisional (although it could be).   However, to claim benefit to a non-english provisional in the subsequently filed non-provisional, a translation and a statement that the translation was accurate must be filed within four months of the non-provisional filing or sixteen months from the provisional filing (whichever is later).   In view of the foregoing, an Applicant who has drafted a non-english patent application could file said application as a provisional and provide a translation, etc. at a later time.
8)  Claims / Oath or Declaration -  Not Required:   Claims may be filed in a provisional; however, they are not required.

9)  Design Patents:  Provisionals cannot be utilized with design patents.


Legal

A provisional patent application is a U.S. national application for patent which is filed further to 35 U.S.C. 111(b) (whereas a non-provisional patent application is filed further to 35 U.S.C. 111(a)).

MPEP 601 – Content of Provisional and Non-provisional Applications indicates that a provisional patent application must satisfy the following statutory requirements:

“(b) PROVISIONAL APPLICATION …

(A) a specification as prescribed by the first paragraph of section 112 of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application….”

Additional provisional patent application filing requirements (e.g., cover sheet, government contract requirements, etc.) are included in MPEP 601.


Advantages

1)   Patent Term Extension:    For applications filed on or after June 8, 1995, the term of a patent (other than a design patent) is 20 years from the date that patent application was filed.   (MPEP 2701 – Patent Term).    More specifically, as the 20 year patent term is measured from the non-provisional patent application filing date (rather than the provisional patent application filing), it is possible to extend the patent term termination date up to 12 months by filing a provisional application prior to the non-provisional patent application.

2)  “Patent Pending” Designation:   Once an Applicant has filed a provisional patent application, they may utilize the designation “Patent Pending” with their invention (e.g., conversations with others, product literature, etc.).   However, it should be noted that exclusionary (legal) rights are only obtained once a patent grant has been procured.

3)  Reduced Initial Costs / Obtain Market Feedback:   The government fees for filing a provisional patent application are actually quite minimal  ($220/$110- Small Entity : Current USPTO Fee Schedule).   In addition to the minimal government fee, a filed provisional application allows an inventor to “test the waters” and determine whether there is market demand for the invention.

4) Public Disclosure Safeguard – Foreign Filing:   Although the United States allows an Applicant to file a patent application within 12 months from a public disclosure (35 USC 102(b) – “(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,” many foreign countries do not provide such an exception.

Many foreign jurisdictions instead employ an absolute novelty bar in which a public disclosure or commercial activity negates an Applicants ability to file a patent application.   So what are an Applicants options if they need to present their invention publicly but are unsure whether foreign filing will be pursued?

Although one could choose to delay the public disclosure, an alternative option to possibly safeguard foreign rights is to file a provisional patent application prior to the public disclosure (the foreign application/non-provisional would need to be filed within 12 months of the provisional filing).

5)  Patent Prosecution – Secondary Considerations:    Further to item #3 above (“obtain market feedback”), if the invention receives a positive reception in the marketplace and enjoys eventual “commercial success,” these results may be beneficial in overcoming an obviousness rejection during the patent prosecution phase of the non-provisional patent application.   More specifically, the  Supreme Court in Graham v. John Deere outlined a number of primary factors that must be examined for conducting a non-obviousness analysis:  ( 1) scope and content of the prior art; 2) differences between the prior art and claims at issue must be ascertained; and 3) the level of ordinary skill in the art must be resolved ).

In addition to the aforementioned factors, the Supreme Court further annunciated that some “secondary considerations” may also be considered.   The court specifically stated, “such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”    In addition to the foregoing items, caselaw since Graham has identified the following items as “secondary considerations” :   praise by others, licensing activities, copying of the invention, etc.

In summation, although an Applicant will want to focus upon the primary Graham factors in furthering the non-obviousness argument,  the aforementioned secondary considerations could be additionally utilized.

6)   Non-Disclosure Agreements:     A quick review of many corporations invention intake policies reveals that they will not sign a Non-Disclosure Agreement (NDA) to review an invention.   However, once an Applicant has filed a a provisional / non-provisional application (or obtained a patent grant), there are no further concerns regarding NDAs due to the provisional application filing.


Considerations

1)   False Marking:    Although an Applicant may utilize the designation “Patent Pending” after a provisional patent application has been filed,  various consequences may arise if a product is marked or marketed with the aforementioned designation with the designation after the following events:  a non-provisional application is not subsequently filed within 12 months of the provisional application filing date or after patent expiration.

Regarding false marking, ( 35 USC 292 – False Marking) states that:

“(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.”

2)  Satisfy Statutory Requirements: As indicated above, although a provisional patent application is not required to contain any claims, it must satisfy various statutory requirements (35 USC 112, first paragraph / 35 USC 113) for the desired level of scope of the claimed subject matter in the subsequently filed non-provisional application.    The aforementioned point cannot be stressed enough … the provisional application and non-provisional application must each satisfy the same statutory requirements ( written description / enablement / best mode).

In view of the aforementioned requirement, many patent practitioners believe that unless the Applicant believes that the specification of the provisional could be filed as the non-provisional, the provisionals effectiveness may be minimal in obtaining an earlier effective filing date, and may even invalidate the patent (see point 3 below).

Although identical disclosures are not required in both the provisional and non-provisional applications, failing to provide sufficient statutory support (written description / enablement / best mode / drawings)  in the provisional for the claimed subject matter in the non-provisional could disallow the benefit claim to the earlier filed provisional.

Accordingly, in view of this requirement, it is uncertain whether a provisional filed with a few paragraphs of details and a rough sketch of one embodiment of the invention would satisfy the aforementioned statutory requirements if the later filed non-provisional application included a full claim set (~20 claims) and a few dozen pages of disclosure describing multiple embodiments.

3)  Statutory Bar – Effective Filing Date:  The statutory bar of 35 U.S.C. 102(b) denies a patent to an Applicant if the invention was in public use or on sale in the United States more than one year prior to the patent application filing date.   This is especially relevant in the context of provisional applications if a court determines that a non-provisional should not be afforded priority to a provisional.

Further to the foregoing, if such a use or sale occurs and a court holds that a provisional application should not be afforded priority due to inadequate statutory support (e.g, 35 USC 112, first paragraph – written description / enablement / best mode) for the later filed non-provisional patent application, the patent may be invalidated if the use or sale was more than one year before the non-provisional filing date (as the provisional filing date in such a scenario would not be relied upon).    See New Railhead Manufacturing, LLC v. Vermeer Manufacturing Company (Fed. Cir. 2002)).

4)   Later Patent Issue Date:    As provisional patent applications are not examined, the later that one files their non-provisional patent application (not later than 12 months from provisional filing), the later a patent grant may arise due to the delayed non-provisional filing.    Accordingly, for Applicants which require an earlier patent issue date for business purposes, it may be advisable to file a non-provisional rather than a provisional.

5)   Multiple Filing Fees:   In addition to the provisional patent application filing fee, the Applicant will additionally incur a non-provisional patent application filing fee.

6)   PCT / Foreign Filing Consideration:   Similar to a non-provisional patent application, a PCT or foreign application(s) must be filed within 12 months of the provisional filing date to claim benefit to the provisional.   As the PCT process is complex (and requires a blog post of its own), many additional details need to be reviewed and considered (preferably with a licensed patent attorney) if this particular route is chosen.

7)  Filing Multiple Provisional Patent Applications: Multiple provisional patent applications, directed toward various advancements of a single invention, may be filed for up to one year from the earliest provisional application filing date as said advancements are realized by the inventor(s).   Further, even if multiple provisionals are filed, a non-provisional must be filed within a year from the earliest provisional filing.

However, it should be noted that because each of the subsequently filed provisional applications will in essence describe some new inventive feature or advancement of the invention, various claim recitations of the non-provisional patent application may each possess different priority dates which correspond with the respective provisional that first describes said feature.