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.”