Is There Room for Improvement?

work in progress sign

“Given the overwhelming public interest” the patent office is seeking feedback on its existing subject matter eligibility guidance, which feedback may be submitted through October 15 via the Federal eRulemaking Portal. I think there is significant dissatisfaction with the state of section 101 jurisprudence, and it would seem that this request for feedback would be an excellent opportunity to provide suggestions to help move in a better direction. However, after considering the current guidance in context, I think there is a good case that the best that can happen is for the guidance to stay in its current form, and that any improvements should come from the courts, not the patent office.

Initially, it is important to recognize that, if the goal is to improve the clarity and certainty of the patent office’s treatment of section 101, is it very clear how to do this. In a report issued in April of 2020, the patent office noted that the uncertainty about determinations of subject matter eligibility decreased 44% with the introduction of the 2019 subject matter eligibility guidance. Comparing that guidance with interim eligibility guidance (and updates thereto) which preceded it, it appears that this uncertainty decrease flowed directly from the introduction of further structure and delineation between the different steps of the Alice/Mayo framework. For example, prior to the 2019 guidance, abstract ideas were to be identified based on comparing the claims of a subject application with the subject matter which had been determined to be ineligible by courts. By contrast, under the 2019 guidance, abstract ideas were identified by determining if they fell within the bounds of one of three enumerated groupings. Similarly, the 2019 guidance explicitly set forth a procedure for determining whether a claim which included an abstract idea was “directed to” that abstract idea, rather than treating identification of an abstract idea and determination of if a claim was directed to an abstract idea as being a single step. There is certainly opportunity for more changes in this direction. For example, the patent office could provide groupings for “practical application” and/or “inventive concept” the same way it did for “abstract idea” in the 2019 guidance. Similarly, it could split the analysis of step 2 of the Alice/Mayo framework into two prongs, the same way as the 2019 guidance did for step 1. Thus, if you want to improve clarity and certainty of patent prosecution, there is a clear approach that has proven successful in providing those results in the past.

The problem with trying to improve the current guidance by making changes similar to those made when the current guidance was adopted in 2019 is that the Federal Circuit is *not* on board with improving the clarity and certainty of section 101. To illustrate, compare the current guidance used by the patent office with the approach taken by the Federal Circuit in the recent case of CareDx, Inc. v. Natera, Inc., 40 F.4th 1371 (Fed. Cir. 2022). Under the current guidance, “[step 1 of the Alice/Mayo analysis] specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity. Instead, analysis of well-understood, routine, conventional activity is done [at step 2].” However, when CareDx’s attorney asserted that conventionality should only be considered at step 2, the Federal Circuit explicitly rejected that proposition: “CareDx also incorrectly characterizes our precedent as limiting the conventionality inquiry to step two. On the contrary, and as the district court recognized, we have repeatedly analyzed conventionality at step one as well.” CareDx, 40 F.4th at 1379. Accordingly, any changes the patent office makes to improve the clarity and certainty of section 101 are likely to widen an already troubling rift between the patent office and the courts.

While there are some areas where it can make sense for the patent office and the courts to apply different standards, determining eligibility under section 101 isn’t one of them. For example, while the patent office interprets more broadly than the courts, patent applicants can always foreclose overbroad interpretations using amendments. As a result, broad PTO interpretations shouldn’t deprive patentable inventions of protection, and the resulting patents are likely to be stronger and more precise than they would be otherwise. By contrast, if the patent office uses an approach to section 101 which is clearer and more certain than that used by the courts, the result would be weaker patents that are more likely to be invalidated by the courts. Indeed, we already have a concrete example of this in the case of  Cleveland Clinic v. True Health, 760 Fed.Appx. 1013 (Fed. Cir. 2019), where the Federal Circuit overruled the Examiner’s conclusion on section 101, even though it meant explicitly disapproving the relevant portion of the patent office’s then current guidance. Accordingly, while increased clarity and certainty would certainly be a welcome change for patent prosecution, if implemented by the patent office without court buy-in it would likely be detrimental to the patent system as a whole.

The bottom line is that, while the current request for comments may seem like a great opportunity to move subject matter eligibility in a positive direction, since the request wasn’t made by the courts, this is probably an opportunity it is better to let slip.

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Inspiring Arguments to Overcome Design Choice Rejections on Chemical Apparatus Inventions

“AU 1770 - Chemical Apparatus, Separation and Purification, Liquid and Gas Contact Apparatus”

Group Art Unit 1770 handles applications for chemical apparatus. As such, this unit typically deals with claims regarding mechanical devices whose functions and outputs are chemical.

Examiners use a fairly simple logic process when rejecting mechanical and chemical cases for obviousness: if every mechanical part (or chemical component) of a device is already known, combining them is simply a matter of design choice.

Making a case of obviousness prima facie, however, requires more. Here are some inspiring arguments for overcoming design choice rejections from the chemical apparatus unit:

Be on the Lookout for Impermissible Hindsight

“Impermissible hindsight” is a go-to phrase patent lawyers use to rebut obviousness rejections. But what is the proper use of an “impermissible hindsight” argument?

You might argue “impermissible hindsight” in response to a design choice rejection if, for example, the examiner has claimed obviousness based on two prior but hitherto-unrelated art references (A & B). If Reference A shows parts X and Y while Reference B indicates that part Z produces desirable effect Q and your application claims that parts X, Y, and Z together produce desirable effect R (analogous to but distinct from Q), the examiner may reject your application, claiming that assembling parts X, Y, and Z in order to produce  is simply a matter of design choice.

However, in arriving at this conclusion, the examiner has overlooked a key component of obviousness: If your client’s application is the only reference explaining that X, Y, and Z produce R and the examiner’s only rationale comes from your specification the rejection presumes impermissible hindsight.

This argument worked effectively in overcoming an obviousness rejection on an application for a fuel processor producing a mixture of propylene glycol and water. The fuel processor included an alternating stack of evaporator plates and hot gas plates configured so that the unheated side of each hot gas plate always shields the heated side from facing an evaporator surface.

Examiner Young rejected the claim as obvious based on a reference showing a fuel processor with stacked plates. She asserted that the specific configuration of alternating plates was simply a matter of design choice.

Attorney Frank Digiglio, from the law firm Scully Scott Murphy & Presser PC, pointed out that the examiner had found no reference which disclosed or suggested the desirability of the arrangement of plates taught in the claimed invention.

 U.S. Patent No. 10,926,239

Applicant respectfully submits that employing hindsight using Applicant’s disclosure as a blueprint to reconstruct the claimed invention from the teachings of the prior art is impermissible under the law. Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902, 907 (Fed. Cir. 1988); see also W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1552, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 854 (1984) (“To imbue one of ordinary skill in the art with knowledge of the invention when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher”). Thus, Applicant submits that the Examiner has failed to establish two design choices…

Gore is particularly helpful when arguing against hindsight. As the court stated in Gore, “[i]t is difficult but necessary that the decisionmaker forget what he or she has been taught … about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”

In this case, the examiner had found no reference conveying the desirability or equivalent functionality of configuring the plates as claimed. The applicant was able to overcome the rejection by pointing out that the examiner had inappropriately used the applicant’s own teachings against them, and the application went on to issue as  U.S. Patent No. 10,926,239

The takeaway from this case is that, while there may be something fundamentally human about understanding actions of the past through the lens of the present, examiners have a special responsibility to keep this hindsight in check when evaluating an invention’s obviousness. You can help move prosecution in a positive direction by pointing out when “impermissible hindsight” has crept into the examiners’ design choice rejections.

Design Choices Must be Choices Made Among Equals

Another requirement for design choice rejections is that the prior art and the claimed elements must perform equivalent functions and produce equivalent results. In other words, when the examiner asserts “design choice,” the choice between the prior art and the claimed invention must be nothing more than a substitution.

This makes sense. If two assemblies are known to perform the same function and to produce the same results, changing one for the other may be considered an obvious choice. However, many rejections skip this step, broadening obviousness beyond its intended scope.

Attorney Scott Baum, one of 3M’s in-house patent lawyers, used this argument in overcoming an obviousness rejection when he secured U.S. Patent No. 9,962,629. This invention was a degassing module for removing entrained or dissolved gasses from a high-pressure liquid. The module included an outer housing, an inner shell, and a shim between the housing and the shell between two seals.

Examiner Patel found two references that together described a housing, a shell, and a pair of seals as claimed. Although neither reference included incorporating a support shim, the examiner concluded that one of ordinary skill in the art might add a shim between the housing seal and the shell seal as a simple matter of design choice.

In response, the applicant argued that the examiner had failed to meet the standard for a design choice rejection. To begin with, much like our previous example, the examiner had exercised impermissible hindsight in interpreting the prior art’s proximity to the claimed invention: 

The Office asserts that Taylor and Boye are analogous inventions and that it would be obvious at the time of the invention to modify Taylor with the teachings of Boyle to provide at least one support shim between the housing and the shell to provide a sealing arrangement between the housing and the shell. … The Office’s error is Boyle does not disclose a support shim as alleged by the Office. Only by reading and understanding the Applicant’s problem and using impermissible hindsight can the office equate the inner sealing ring of Boye to Applicant’s claimed support shim.

This led to the second oversight by the Office: the prior art did not show a feature that performed an equivalent function or produced an equivalent result.

Applicants have discovered the source of a problem and seek to eliminate movement of the inner housing near the seal by use of a support shim. This prevents the shell potting interface from delaminating under high pressure. Boyle seeks to allow the inner housing to deflect and does not want a support shim to limit deflection so Boye uses an O-ring that slides on the surface of a collar to form the seal. … Thus, one of skill in the art would not substitute the inferior sealing method of Boyle designed for moving surfaces into Taylor whose cartridge sealing surfaces are not designed to move. … [I]n In re Gal, 980 F.2d 717, 719 (Fed Cir 1992), the CAFC has ruled that where the structure cited in the claim (shim) and the function it performs (limiting deflection and reducing stress concentration in the shell/potting interface) is different from the structure in the prior art (a sealing surface) and the function it performs (sealing with a mating O-ring) then rejecting the claim as a matter of design choice is not a sufficient rationale to substantiate obviousness.

In re Gal is very helpful in fighting design choice rejections. It clearly sets out the requirement that the alternative found by the examiner in the prior art provide a structure and function equivalent to the claimed elements. If it does not, it cannot be considered interchangeable with the claimed invention.

KSR’s Rationale Requirement to Overcome Obviousness

When the U.S. Supreme Court decided KSR Int’l Co. v. Teleflex Inc., many patent practitioners viewed it as negative for inventors. However, KSR does have helpful language that patent prosecutors can use to overcome design choice rejections.

Under KSR, the examiner must provide an explicit analysis of “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Although KSR expanded the potential sources of this “apparent reason” beyond the teachings, suggestions, and motivations in the prior art, the decision made clear that the examiner must still identify and explain the reason to support a prima facie case of obviousness.

While prosecuting an application directed to an air cleaner, patent attorney, Franco Serafini, from Themis Law, successfully argued this point. The application taught a device for removing airborne pollutants using a configuration of front and rear filters, combined with ionizer and collector grids suspended in a frame, by isolating members, for the purpose of reducing sound and coronal discharge generated by the grids. U.S. Patent No. 10,518,272

Examiner Jones rejected the claims based on two Japanese publications that showed ionizing air cleaners with ionizers and collectors in a frame. The examiner then asserted that suspending the grids within the frame was merely a design choice.

The applicant responded, first by emphasizing the functional difference between the separate and isolated grids described in the claimed invention and the molded frames, integral with grids, taught in the prior art. Because the applicant had provided for these differences in function, it was left to the examiner to offer rationale as to why someone would modify the frame molded around the grids in the references to suspend the grids as claimed. The response then turned to KSR to emphasize that the requirement that the examiner rationale as to why someone would modify the frame molded around the grids in the references to suspend the grids as claimed

In Maeda, the PTAB stated “Per se rules for determining obviousness are disfavored. In re Ochiai, 71 F.3d 1565  1571 (Fed. Cir. 1995). […] We discourage examiners from relying on ‘design choice’ because it is generally a mere conclusion, which is no substitute for obviousness reasoning based on factual evidence. Nonetheless, ‘design choice’ may be appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995).” Here, the Office Action has provided no rational underpinning to support the allegation of design choice, as required by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (cited in Maeda), nor any factual evidence. Moreover, as discussed above, Applicant has set forth reasons why using an elastic insulating material would provide a different function than in the prior art (reducing audible noise).

The takeaway from this case is that you can use KSR to push examiners to explain the rationale behind their rejection. There is a good chance the examiners may find that their logic does not stand up to scrutiny when written down, prompting them to allow the case.

Design Choice in Art Unit 1770

It is not surprising to see design choice given as grounds for an obviousness rejection in art unit 1770. Mechanical inventions often use conventional structures. But by focusing on the legal requirements for a design choice rejection, including equivalence in function and an explicit reason for the combination or modification, you you have a strong shot at overcoming these rejections.

These are just a few of the ways you can respond to an obviousness rejection based on the “design choice” rationale.

These cases were retrieved using Arguminer, a tool for finding specific issues for specific types of cases, art units, or examiners. You can find cases to help you prepare your next response using the Arguminer software. Contact IP Toolworks  for a demo of this powerful product.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Measuring Uncertainty

measuring tape
measuring tape

               Current subject matter eligibility jurisprudence is often criticized for increasing uncertainty. However, this raises the question: how can we measure uncertainty to know that it has increased? Until very recently, I thought that the uncertainty criticisms were based on conflating uncertainty with incomprehensibility. I always thought this was wrong, since the two are different concepts. That is, I felt it was relatively easy to predict whether an invention would or would not be treated as ineligible, but that the justifications given for the eligibility/ineligibility determinations were basically gibberish. Recently though, I learned that the patent office purported to have a quantitative measurement of uncertainty for subject matter eligibility, and so I decided to take a look.

In an article published in April of 2020, the patent office quantified uncertainty as a measurement which would be made on the level of individual U.S. patent classes, and defined the uncertainty for any particular class as that class’s inter-examiner variance in proportion of first office actions which included subject matter eligibility rejections. While I applaud this effort to make some kind of objective evaluation of uncertainty, I think an inter-examiner variance-based approach is fundamentally flawed, because it ignores the fact that any rejection based on subject matter eligibility is a sign of underlying uncertainty. To illustrate, consider an example of a subject matter eligibility question where there really is no uncertainty: whether you can patent a literary work. In this case, the answer is clearly no, and the result is that authors protect their literary works with copyrights, not patents. This is only to be expected. Preparing, filing, and prosecuting a patent application is an expensive and time-consuming proposition, and so, if something clearly can’t be patented, people (assuming they are constrained by time and/or money) won’t try to patent it. Thus, even if the proportion of applications treated as ineligible is consistent across examiners, every application treated as ineligible represents a case where two people (i.e., the examiner and the applicant) operating in good faith came to different conclusions when applying the same rules, and therefore where those rules produced uncertainty.

 

               A more accurate measure of uncertainty would consider the behavior of both applicants and examiners, and would account for all circumstances in which their actions reflected uncertainty, not just first office actions.  In this approach, each initial filing of an application, as well as every response which addressed rejections under section 101 should be treated as reflecting the applicant’s conclusion that the claims complied with the relevant rules as of the time of filing, including those of subject matter eligibility. Similarly, because the patent office follows the policy of compact prosecution, but can adopt a new ground of rejection any time before patent issuance, each substantive communication from the patent office would be treated as communicating a conclusion that the claims either do (if there were no rejections under section 101) or do not (if there were rejections under section 101) comply with the then current rules of subject matter eligibility. The level of uncertainty could then be calculated as the number of times the patent office and a patent applicant, looking at the same application and applying the same rules of subject matter eligibility, reached a different conclusion, divided by the total number of times patent applicants and the patent office, looking at the same application and applying the same rules, expressed (either implicitly or explicitly) any conclusion regarding eligibility at all.

 

               Ultimately, I don’t think there is a perfect measurement of the uncertainty in subject matter eligibility law. For example, while the approach I propose here improves on the patent office’s approach by considering the actions of both applicants and the patent office, it misses entirely the uncertainty determinations made by people who decided that subject matter eligibility is too unpredictable, and so decide not to file at all. Similarly, any approach will necessarily omit the uncertainty in whether a claim issued by the patent office will be upheld by the courts, since only a tiny fraction of patents are litigated, and courts use different rules for evaluating eligibility. However, regardless of the limitations, the level of uncertainty in subject matter eligibility determinations is an important topic, and so any effort to measure it should reflect both the actions of the patent office and applicants, as well as the fact that any section 101 rejections are a reflection of differences in opinion, and therefore of uncertainty in the system.

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Don’t trust the MPEP, Exhibit 2144.04(VI)(C): Rearrangement of Parts

The position that you should cite to the MPEP rather than case law is widespread among patent prosecutors. For example, in A Case for Citing to the Manual of Patent Examining Procedure, Patentably Defined argued that from a practical perspective, you were more likely to make headway with MPEP citations rather than relying on case law. He may be right, but it’s important to recognize that the MPEP is a tool (moreover a tool designed with examiners, not prosecutors in mind, as I’ve discussed previously). It’s important to keep in mind that using the MPEP to get a desired result is different from trusting the MPEP as an accurate guide to the law.

As an example of the pitfalls of trusting the MPEP, consider MPEP 2144.04(VI)(C). That section is part of the MPEP’s treatment of legal precedent as a supporting rationale for obviousness, and purports to specifically address the obviousness of a “rearrangement of parts.” In practice this section is often treated as a substitute for providing a reasoned explanation for why a particular configuration of parts would have been obvious at the time an invention was made. Indeed, the first case cited in that section – In re Japikse, 181 F.2d 1019 (CCPA 1950) – has become something of a panacea, allowing an examiner to treat claims as prima facie obvious as long as the claim’s components are found individually in the prior art.

            The problem with MPEP 2144.04(VI)(C) is that the proposition a “rearrangement of parts” can be treated as obvious as a matter of legal precedent is simply wrong. Instead, to establish a prima facie case of obviousness based on a combination of elements in the prior art, the law requires a motivation to select the references and to combine them in the particular claimed manner to reach the claimed invention” Eli Lilly v. Zenith Goldline Pharm., 471 F.3d 1369, 1380 (Fed. Cir. 2006) (emphasis added). Further Japikse, rather than being properly citable to establish that it is obvious to obtain a claimed invention by rearranging elements, should never be cited by anyone, ever, for any proposition related to obviousness. This is because, in addition to being inconsistent with cases like Eli Lilly, Japikse predates the 1952 patent act when obviousness (as opposed to the superseded standard “lack of invention”) was introduced into the law. The date on that case should be/should have been a red flag that the proposition it was being cited for may not be good law. However, when the MPEP is treated as a source of truth rather than a tool which can be applied as needed, red flags can fall by the wayside, and ludicrously incorrect propositions can take the place of established principles of obviousness.

            All this isn’t to say that the arguments in favor of the MPEP are invalid. For example, as noted in the Patentably Defined article, it’s safer and faster for an Examiner to allow a case based on an argument supported by the MPEP than to do so based on external caselaw cited by an attorney, and so staying within he bounds of the MPEP can have some concrete benefits. However, it is important to recognize that the bounds of the MPEP are not coextensive with the limits of the law, and if a patent prosecutor treats the MPEP as gospel, he or she may inadvertently turning their back on a path which could get their client to a better outcome in the end.

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Why Innovative Features Don’t Overcome the Prior Art

Having an examiner treat a feature which is absent from the cited art as insufficient to establish patentability can be a serious setback during patent prosecution. If the applicant amends the claim to address whatever issue was raised by the examiner (e.g., adding concreteness to claim language which the examiner stated didn’t actually require the feature due to the broadest reasonable interpretation rule), the result is that they will have spent a rejection/response cycle (and maybe even an RCE) to get where they would have been originally if the feature had simply been compared to the prior art. Alternatively, if the applicant stands firm and argues that the examiner was wrong to treat the feature as insufficient to establish patentability, they are setting themselves up for an appeal of what may have been an easy allowance if whatever reason the examiner gave for treating the feature as insufficient had been addressed or avoided. In either case, dealing with arguments about why a feature which isn’t part of the prior art should or shouldn’t be sufficient for patentability increases costs, delays prosecution, and may also reduce the ultimate scope of protection as a result of amendment or argument-based estoppels.

To determine how to anticipate and avoid these issues, I did a study identifying the reasons examiners used most often when arguing that features which are absent from the cited art aren’t sufficient to establish patentability. In this study, I examined recent (i.e., from 2019-2022) obviousness rejections from the database which powers IP Toolworks’ Arguminer software. I used natural language processing and clustering software to identify keywords and n-grams that were cited repeatedly by examiners in their rejections. I then manually correlated the most common keywords, n-grams and citations with specific doctrines used to treat features as insufficient to establish patentability, such as intended use or nonfunctional descriptive material. Finally, I applied these correlations on a technology center by technology center basis, so that the study could identify whether, and how, the doctrines by examiners differed between types of innovation.  

The study showed that drafting claims to reduce the risk that a feature which is absent from the prior art will be treated as insufficient to establish patentability requires a flexible approach which accounts for different doctrines which are likely to be applied during examination of different inventions. For example, while the most common argument overall for why a feature which was absent from the cited art wasn’t sufficient to establish patentability was that the feature was merely a recitation of intended use. However, for chemical inventions, the most common reason for treating a feature which was absent from the cited art as insufficient to establish patentability was that it was simply a matter of routine optimization. Similarly, while the argument that a limitation should not be given patentable weight because it recited nonfunctional descriptive material wasn’t in the top ten arguments overall, it was the third most commonly used argument for inventions in technology center 3600 (Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review). The most common doctrines used to treat features that are absent from the cited art as insufficient to establish patentability, and how those differed from technology center to technology center, are shown below:

 

Technology Center

Top Argument

Second Argument

Third Argument

1600 (Biotechnology and Organic)

Routine Optimization

Intended Use

Obvious to Try

1700 (Chemical and Materials Engineering)

Intended Use

Routine Optimization

Known Suitability for Purpose

2100 (Computer Architecture Software and Information Security)

Broadest Reasonable Interpretation

Intended Use

Obvious to Try

2400 (Computer Networks, Multiplex, Cable and Cryptography/Security)

Broadest Reasonable Interpretation

Intended Use

Obvious to Try

2600 (Communications)

Broadest Reasonable Interpretation

Intended Use

Obvious to Try

2800 (Semiconductors, Electrical and Optical Systems and Components)

Intended Use

Routine Optimization

Mere Change of Shape

3600 (Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review)

Intended Use

Broadest Reasonable Interpretation

Nonfunctional Descriptive Material

3700 (Mechanical Engineering, Manufacturing and Products)

Intended Use

Mere Change of Shape

Obvious to Try

 

Ultimately, there is no magic bullet to ensure that a feature (assuming it is absent from the cited art) will be sufficient to establish non-obviousness. However, by using data showing both common practices that are broadly applicable across the patent office, as well as idiosyncrasies associated with how the patent office treats particular types of invention, it is possible to identify doctrines which are most likely to be cited in a particular case, so that the claims for that case can be drafted to anticipate those objections and avoid them before they even come up.

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

RCEconomics

Coins stacked to create a bar graph
Coins stacked to create a bar graph

One of the things that I think has significantly improved both my quality of life and my success as a patent prosecutor is front-loading patent applications to avoid interminable cycles of RCEs. I  wrote about this previously in Get Off the RCE Merry Go Round, and I continue to stand by that article as excellent practical advice. However, I recently had an interaction which has led me to revisit the question of RCEs and consider whether there are scenarios where front-loading an application to avoid RCEs may not make sense.

The issue which leads me to revisit the RCE question is economics: specifically whether  avoiding RCEs became unfeasible when working with high-volume filers who set a limited budget for each office action response. An attorney I was corresponding with told me that in these cases, he found the budget was generally set too low to present arguments on all potential points of novelty in the initial office action response. As a result, it wasn’t unusual to file one, two, or even three RCEs, to incrementally address rejections as they were made until you ultimately found something that both the examiner and the client were happy with.

 

My intuition is that the economic argument for RCEs doesn’t make sense. Focusing purely on minimizing costs, filing a second (or third!) RCE seems counter-productive, since the cost for a second RCE is greater than the cost for simply filing a continuation with whatever amendments you would have included in the RCE. Additionally, even ignoring a continuation as an alternative to an RCE, each rejection-response cycle has a cost. Increasing the number of rejection-response cycles thus can be expected to increase the total cost of prosecution. However, intuition isn’t a particularly reliable guide, and the entities this attorney was talking about were quite sophisticated. I therefore felt it was worth actually working out the financial impact of incremental prosecution to determine if the economic argument really is a valid reason for an RCE.

 

To evaluate the financial impact of incremental prosecution relative to front-loading arguments, I created a simplified model of prosecution using the following assumptions:

  • An application has a fixed number of points of novelty.
  • Prosecution consists of presenting the points of novelty until the application is allowed or no points of novelty remain.
  • The cost to present a point of novelty is constant, regardless of whether the points are presented one at a time (as in incremental prosecution) or all at once (as in front-loading).
  • Every other office action is final, and so every other response requires submission of an RCE.

I also set the number of points of novelty at 6, since the other attorney said that incremental prosecution could lead to three RCEs, and if each response had a single point of novelty the lowest number of points of novelty which would require 3 RCEs is 6.

 

            Formally, this simplified model allows prosecution to be represented by a set of equations,[1] but even without formal analysis, the simplified prosecution model makes clear that neither incremental prosecution nor front loading is a strictly dominant strategy (again, considering only direct costs of prosecution). In cases where it is only necessary to present a few points of novelty before an application is allowed, the cost of incremental prosecution is lower, since front-loading involves making more arguments than are necessary. On the other hand, as the number of rounds of prosecution increases, the advantage of incremental prosecution in terms of cost for presenting points of novelty decreases, and the cost for RCEs begins to dominate. For applications which have three or fewer rounds of prosecution (and therefore no more than one RCE), the incremental approach may still be less expensive, since the fee for a single front-loaded office action response *may* exceed the expected cost of 1-3 aggressively capped incremental responses by more than the cost of a single RCE (i.e., by more than $1,360). However, if an application requires two or more RCEs under the incremental approach, it almost certainly would have been cheaper to front-load prosecution. Based on my correspondence with the other attorney, I would say that it is not at all uncommon for applications with aggressively capped office action response budgets to have two or more RCEs, meaning that the incremental strategy which leads to those RCEs is likely to be self-defeating in the long run.

 

            Ultimately, the decision of whether to file an RCE (or, more accurately, to adopt a strategy which is likely to lead to an RCE) will depend on more than just cost considerations. For example, the similarity of the prior art to the claimed invention, the importance of preserving patent term, and the likelihood of success on appeal are all factors that will play a role. However, my feeling is that the non-financial considerations will almost always come down in favor of avoiding RCEs. Additionally, given the analysis above, I think that even a purely cost based decision-making process should generally avoid RCEs, even though doing so may require paying more for individual responses.

 

[1] For the interested reader, those equations are:

TI = NR * CN + $1,360 * NR/(|NR-1| + 1) + $2,000 * (Max(0,(NR/2 – 1)) – (NR%2)/2)

TF = CN * 6

In which

TI is the total cost to a large entity for prosecuting an application using incremental prosecution

TF is the total cost to a large entity for prosecuting an application using front loading

NR: Number of rounds of prosecution, which I assumed is capped at six, since the application would theoretically either be allowed or abandoned after all points of novelty were presented

CN: Cost to present a point of novelty

How a Solo Inventor can (and Can’t) Identify if Their Patent Attorney is “Great” – Part 2

 

This is the second part of a two part series responding to Inc.com’s Seven Signs You’ve Hired a Great Patent Attorney. In Part 1 I dealt with the first three signs in the original article, which are focused on context, and explained my thoughts on things a great patent attorney could do to help a patent serve as an effective part of a larger business strategy. This part deals with the remaining four signs identified in the original article, and explains how a solo inventor can evaluate if his or her patent attorney has skills required to be “great.”

Evaluating Skills Requires Skill

I feel it is effectively impossible for a solo inventor to evaluate whether his or her patent attorney is competent as a lawyer. Patent law is a highly specialized field, and even someone just out of law school is likely to be able to dazzle a solo inventor with concepts that he or she has never seen before. In my experience, this can lead clients who are trying to evaluate the competence of their patent attorneys to focus on minutia which is unlikely to have any substantive impact, and which the client is likely to misunderstand in any case. For example, in a past case I had a client who corrected me because I addressed a paper using a salutation that didn’t match the examiner’s gender (e.g., “Dear Sir” with a female examiner). As it happened, that paper wasn’t for the examiner, but directed to another patent office official for whom the salutation was correct. This was easy enough to explain once the client brought it to my attention, but I think it is a good illustration of how easy it is for a client who isn’t familiar with the patent system to go wrong when trying to judge an attorney’s work product.

While I don’t think a solo inventor should expect to be able to evaluate a patent attorney as a lawyer, that does not mean that that a solo inventor can’t make any kind of judgement as to quality. The trick is to focus on the aspects of the attorney’s job where the client does have relevant expertise – i.e., the technology. For a patent attorney to effectively represent an inventor, the attorney needs to be able to understand the invention and describe it both completely and in enough detail for a reader to understand how to make and use it. Additionally, if the same attorney is both preparing and prosecuting the application, then he or she will also need to be able to understand related technology (e.g., prior art cited by an examiner) and explain how the inventor’s technology differs from what’s already available. While a solo inventor may not be competent to write a patent application, he or she will be able to evaluate the technical sufficiency of the application once it is complete. Similarly, if a patent attorney who is prosecuting an application can’t come up with arguments that an inventor feels make sense, this is a sign that the patent attorney may not have the technical expertise necessary to provide the “great” representation an inventor may want.

 

Beware of False Certainties in an Uncertain Process

Rather than acknowledging or accounting for this asymmetry between an inventor’s ability to make legal versus technical evaluations, sign 4 from the Inc.com article is actually something I would consider a red flag that an individual inventor might miss if he or she isn’t familiar with the patent system. Sign 4 was “[t]hey provide you with the total cost of getting a patent to issue.” While this may be a reasonable expectation for some kinds of services, it does *not* make sense for patents. Getting a patent to issue requires dealing with many factors which are outside of the attorney’s control (e.g., the examiner), and any attorney who can say “if you pay X then the patent will issue” is failing to convey the uncertainties that are inherent in the system. It is reasonable to provide things like an expectation of fees for particular tasks (e.g., responding to this rejection will likely cost this amount), or overall estimates for normal sequences of events (e.g., in general, drafting and prosecuting a patent application for this type of invention usually costs between this low and this high estimate). However, I would expect any “great” attorney to make clear that actual costs may diverge from these types of expectations or estimates based on various factors (e.g., if an impasse is reached that requires an appeal to break), and any attorney who “provide[s] you with the total cost of getting a patent to issue” is not providing the whole story.

 

Basic Competency Doesn't Equal Greatness

Signs 5 and 6 aren’t red flags in the same manner as sign 4, but they still don’t provide a good yardstick for telling if the patent attorney you’ve hired is “great.” Those signs are, respectively, “[t]hey treat provisional patent applications differently than non-provisional patent applications” and “[t]hey conduct interviews for office actions.” In both cases, I think the signs are good general guidelines. Provisional and non-provisional patent applications are treated differently by the patent office, and so it (usually) makes sense for them to be treated differently by the patent attorney who drafts them. Similarly, interviews are generally much more effective channels of communication than written responses (I addressed this in my article, 5 Tips to Having a Good Patent Examiner Interview, and so it usually (but not always) makes sense to conduct them when responding to an office action. However, these guidelines are so broadly followed that I don’t think they can reasonably be used to separate the “great” patent attorneys from the rest. To do that, an inventor would need to be able to do things like determine if the attorney’s treatment of a provisional versus a non-provisional was correct, or evaluate if the attorney did a good job conducting the interview. As mentioned above, I don’t think most individual inventors will have the familiarity with the patent system necessary to make these kinds of judgments, and so I don’t think that signs 5 and 6 would be helpful in determining if a solo inventor’s patent attorney is “great.”

 

Summing Up: What Does (and Doesn't) Matter

The final sign from the article – “[t]hey don’t run ads” – is something I think is simply irrelevant to whether a patent attorney is “great.” Patent law is a business. Just like any other business, some people advertising are lousy, and some people advertising are great. This simply reflects the fact that preparing and prosecuting patents is different from promotion, and activity (or lack of activity) in one doesn’t say anything about competence (or lack of competence) in the other. To treat advertising as a red flag would be tantamount to saying that being a patent attorney is different from being any other type of service provider. While I love to think that patent attorneys like me are in a unique class by ourselves, that simply isn’t true, and so disqualifying a patent attorney because he or she runs (or doesn’t run) ads, makes no sense.

The bottom line to this (and part 1) is that figuring out if you have a “great” patent attorney is hard, especially if you’re a solo inventor with little or no experience in the patent system. It isn’t impossible – an attorney who can help put your patent in the proper business context, and who demonstrates technical skills to understand and describe your invention is more likely to be great than one who can’t. However, there are no shortcuts, and numbered lists, while they may make for great headlines, tend to oversimplify things and can give a false impression of your patent attorney’s competence (or lack of the same).

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

How a Solo Inventor Can (and Can’t) Identify if Their Patent Attorney is “Great” – Part 1

If you’ve followed my previous posts on how to achieve success in the workplace, you know the importance I place on surrounding oneself with a great team. Hire people smarter than you, or at very least, who are exceptionally competent within their field. The problem is, it’s not always easy to gauge the caliber of potential collaborators outside of one’s area of expertise, especially if they are in a highly specialized practice, like patent law. That’s why I was so enthused to come across a recent article by Stephen Key, co-founder of InventRight, titled Seven Signs You’ve Hired a Great Patent Attorney . Unfortunately, after reading it, I felt that the signs listed in the article were entirely unsuited to allowing a solo inventor (i.e., the target audience for the piece, which was published on Inc.com) determine if he or she had hired a “great” patent attorney. And so, because I can’t just leave something like that alone, I decided to write my own guide on how an individual inventor can tell if their patent attorney is “great.”

Following the original article, I am organizing my recommendations into two categories. In this week’s post, I’ll focus on contextual factors, corresponding to the first three signs identified in the original article. Next week, I’ll turn to legal competence factors, corresponding the following three signs, along with a final sign, identified by Keys, which I think is entirely irrelevant to whether your patent attorney is great, and for which I do not have a corresponding recommendation of my own.

First 3 Signs of "Greatness": Address the Business context

The first thing I would generally expect a “great” patent attorney to do for a solo inventor with respect to placing the invention in context would be to advise the inventor on taking the right business steps so that his or her patent didn’t end up as an expensive conversation piece. In my practice, I have run into more than one solo inventor who is under the impression that, once he or she has a patent, major corporations will fall all over themselves to buy or license the invention. Any experienced attorney, and certainly any patent attorney who aspires to be “great” will know that this is not realistic. Even in cases where a patent is successfully sold or licensed, it is almost always in the context of an overall package which will include at least an implemented proof of concept, and will generally also include validation in the form of a business which uses the patented technology to generate income. This is something a solo inventor needs to be aware of. A great patent attorney will be able to advise their client on this point, and may also be able to provide concrete assistance, such as connecting a solo inventor with local incubators, implementation/marketing partners (depending on what strengths the solo inventor brings to the table), and investor organizations.

I would also expect that a “great” patent attorney would take active steps to make sure their patent to fits in with the inventor’s overall plan for exploiting the technology (if the inventor doesn’t have such a plan, this is something the attorney should help fix, as described in the preceding paragraph). There are different strategies for achieving objectives such as quickly getting patent pending status, quickly getting a patent, delaying costs, or minimizing the total amount spent. A great patent attorney will be aware of these strategies and be able to advise the client on the steps that fit best with the client’s business milestones (e.g., funding rounds, product launches) and objectives. In short, I would expect a great patent attorney to recognize that a patent is a business tool, make sure that their client understood that as well, and ensure that the tool fits in with the overall business it supports.

By contrast, signs 1-2 from the Inc.com article didn’t address the business context of a patent, and don’t seem to me to be particularly useful for helping a solo inventor decide if their patent attorney is “great.” The first sign was “[t]hey encourage you to investigate whether your invention already exists.” While it is true that you can’t get a patent on something that isn’t new, this is something I would consider to be a sign that someone has gone through patent law 101, not a sign that he or she is a “great” attorney. The second sign was similar. That sign was “[t]hey discuss the importance of performing a prior art search.” While prior art searches can be useful, I find that in many cases they don’t provide much benefit. This is because inventors are often experts in their field, and will only come to a patent attorney when they have satisfied themselves that they really have something unique. Discussing the pros (additional certainty) and cons (additional cost and delay) of such a search is important, but discussing the importance of a prior art search is not something I would consider to be a reliable sign that an attorney is “great.”

The only sign from the article that I felt arguably addressed the business context of a patent was sign 3, and I felt that sign was dead wrong. The sign was “[t]hey don’t play the fear card,” and the article explained the sign by stating

[i]nventors are already paranoid someone is going to steal their idea. Putting fear in your mind is a way of getting you to act faster than you might otherwise, which isn’t doing you any favors, because no sound business decision is made out of fear.

My problem with this sign is that there are many parts of the patent process that are genuinely scary, and a patent attorney who avoids discussing (or downplays) those aspects to avoid playing the “fear card” isn’t doing their client any favors. For example, if a client obtains a patent after withholding material information from the examiner, this can change the patent from a valuable asset into a time bomb, by laying the groundwork for competitors to argue it was approved as a result of inequitable conduct. For a patent attorney to be “great,” he or she needs to have open communication with his or her client, and if a patent attorney has never told you something that makes you nervous, I would consider that a cause for concern in and of itself, not a sign that they are great because “[t]hey don’t play the fear card.”

            The bottom line for me (at least for part 1) is that a great patent attorney will help his or her client maximize the value of a patent, and that this requires open communication to convey the (sometimes scary) realities of obtaining and commercializing a patent.

Stay tuned next week for my take on the remaining (legal competence) factors. 

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Request for Continued Examination | Get Off The RCE Merry-Go-Round

“It’s annoying to hear – your arguments are not persuasive or they are considered moot in the view of new grounds of rejection

Negotiating a Patent with the Examiner

Patent prosecution begins with filing a patent application before the USPTO. The examiner then sends an office action detailing the rejections based on prior art references, ineligible subject matter, etc.. In response to the rejections, you will be required to document your arguments and amend your claims as needed. These are tasks that require great attention to detail, and can be particularly daunting during the nascent stages of your career, when you are still learning to effectively analyze office actions and prepare winning responses

Once you have responded, it is of course possible that the examiner might not find your arguments persuasive, or might come up with new prior art references, and send you another rejection. Sometimes, this may lead to a rejection being denominated as a new ground of rejection, despite the core of the rejection not having been changed.  Despite all your efforts, after going back and forth on office actions, you land up with a final rejection. Then what do you do? You request for continued examination.

Request for Continued Examination (RCE)

Isn’t it ridiculously frustrating when the examiner says that either your arguments are not persuasive or they are moot in view of a new ground of rejection, particularly one that, at its core, was the same thing that you’d been fighting? After your final rejection, you might decide to file a Request for Continued Examination (RCE) under Title 37 of the Code of Federal Regulations (CFR) § 1.114. You will need to again make arguments and amend your claims in the RCE, but even this might be futile. 

In my early years as a patent prosecutor, the most exasperating part of the process for me was what I call the ‘RCE merry-go-round’. As per the USPTO patents pendency data in May, 2021, the average total pendency time of an application without RCE is 22.8 months. The pendency of applications which include at least one RCE is more than twice that, at 46.2 months. With an RCE, you can feel like you are going around in circles most of the time, without moving ahead in the prosecution process. This was one of the most frustrating aspects of my early career as a patent prosecutor, and discovering how to avoid it has made my patent prosecution substantially more rewarding.

Alternatives to RCE

In order to understand how I got off the RCE merry go round, I think it makes sense to start by looking at the alternatives.  To my mind, there are two: (1) abandon the application, or (2) appealing the rejection.  When I started my career, these seemed like false alternatives.  Abandoning the application obviously means that (absent continuations or other related cases) there will be no patent, while appeals are both long and expensive.  Additionally, abandonment and appeals both have a certain finality to them, while RCEs are like a siren song whispering that an allowance might be right around the corner.  However, one of the defining characteristics of a merry-go-round is that you can go around forever.  Accordingly, to get off the RCE merry go round, it is necessary to accept the alternatives, and I have found that the most palatable way to do this is to plan for them from the beginning and set your goal as having no RCEs.

Laying the Groundwork for an Off Ramp

To understand how to avoid the RCE merry go round, let’s work backwards from the point where you have received a final rejection.  If you are going to abandon the case, it would mean that whatever protection may be available is not significant enough to be worth fighting for.  For example, the examiner may have found a prior art reference that is so close that any innovative features that aren’t described in that reference aren’t commercially relevant in any case.  If you are going to appeal, it would mean that you have made all of the arguments that are worth making but still reached an impasse with the examiner.  The question then, is how do you get to the point where there are no arguments worth making on any commercially significant feature after only the second office action? I have developed two guidelines which have served me well, and which I believe are generally applicable to prosecuting cases while avoiding RCEs.

#1. Include All Your Points of Novelty in Your Claims

By including all of the features you may want to use to distinguish the prior art at the outset, you can avoid a scenario in which you end up having to file an RCE to add a limitation distinguishing a newly cited reference.  The result of this is that my claim sets generally look like trees, with broad independent claims and then multiple, relatively deeply nested sets of dependent claims.  For example, if there are multiple innovative ways of implementing a commercially significant feature, I will generally have a branch of dependent claims for each.  This way, if the potential to protect one branch is pruned off by the prior art, I can still point to another branch as innovative without having to make an amendment that could trigger a final rejection.  Similarly, if the claims recite all of the commercially meaningful novel features from the outset, then if I reach an impasse I can be confident that any additional tweaks will, at best, result in a patent directed to something that isn’t commercially significant.  In that situation it is easy to recommend an appeal, and to avoid getting on the RCE merry go round in the first place.

#2. Be Very Concrete

There’s a phrase in patent drafting called “picture claim.” This term is often used as a pejorative, but in actuality, it can be quite helpful to have a picture claim or two included in your claim set.  As they say, a picture is worth a thousand words but the real concept is not to have a lot of words but to have words that are very concrete. It means that your claims are going to very concretely focus on something that is

a.  Of value to your client (e.g., the preferred embodiment of their commercial product);

b.  Unlikely to be covered in a generic reference written by someone who didn’t actually implement your technology.  

Having this type of picture claim is useful because it can avoid getting trapped in multiple rejection-response cycles (and therefore RCEs) due to disputes over wording.  This is particularly critical because the broadest reasonable interpretation rule means that examiners are almost certain to prevail if there is a dispute on how a claim can be interpreted.  However, if you have a concrete claim at the end of your dependency tree, then you will be much less likely to be in a position where there’s a misinterpretation, and so you can be confident that any impasse is likely to reflect a substantive disagreement with the examiner which can’t be resolved by any amount of RCE-enabled tweaking.  Once again, you can straightaway head to the appeal route without getting on the merry-go-round.

Takeaway

That’s how I avoid getting on the RCE merry-go-round. I know, it absolutely increased my quality of life as a patent attorney. I used to feel that there must be something wrong with me that I could not seem to get my case allowed. I would make changes an examiner seemed to be comfortable with in an interview, just to have him or her issue another rejection and avoid addressing the changes I just made by saying they are moot in view of a new ground of rejection I felt didn’t change anything.  This was annoying and felt awful.  However, by using a logical approach that plans for appeals from the outset, if you reach an impasse you can be confident you did your best and not feel any temptation to continue to futz around. You can even reduce the number of appeals by avoiding certain obvious mistakes while responding to office actions.

You can also check out our tool, Arguminer, which analyzes your office action and matches it with responses most likely to put you on track for success. It’ll help you reduce the frustration of patent prosecution by providing proven arguments, which experienced attorneys have used to overcome their toughest rejections. I have been able to get past this unpleasant chapter of being trapped on the RCE merry-go-round during my career and I hope with the above guidelines, you are able to get off it too.

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Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”