In Design Patents, Claim Language Matters

By Ryan Thelen, Associate

Often when a design patent application is prepared, the primary focus and effort of the drafting process is given to the drawings, while little thought is given to the wording of the actual claim.  However, the Federal Circuit recently issued a decision in a case of first impression in Curver Luxembourg, SARL v. Home Expressions Inc., 2018-2214 (Fed. Cir. Sep 12, 2019), in which the Federal Circuit highlighted how the words in a design patent claim can limit the scope of a design illustrated in a patent drawing.

Curver is the assignee of U.S. design patent no. D677,946 (’946 patent), which claims an “ornamental design for a pattern for a chair.”  However, the drawings of the ’946 patent do not show a chair and merely illustrate an overlapping Y design.  The term “chair” was added to the claim and title during prosecution as a result of an examiner objection to the use of the term “furniture part.”

Curver sued Home Expressions on the basis that Home Expressions sells baskets that incorporate an overlapping “Y” shape that infringes the ’946 patent.  The United States  District Court for the District of New Jersey first construed the scope of the ’946 patent to include the design illustrated in the drawings as applied to a chair, and then determined that Home Expressions’s baskets do not infringe under the “ordinary observer” test.  The District Court reasoned that the scope of the ’946 patent is limited to the article of manufacture listed in the ’946 patent, and found that an ordinary observer would not purchase Home Expressions’s basket with the ornamental “Y” design believing that the purchase was for an ornamental “Y” design applied to a chair, as protected by the ’946 patent.”

On appeal, Curver took issue with the claim construction aspect of the District Court opinion, arguing that the District Court improperly limited the scope of the claim due to the word “chair” in the claim, rather than focusing on the design shown in the drawings in which no chair is present.  35 U.S.C. § 171 permits patent protection for a “new, original and ornamental design for an article of manufacture” (emphasis added), yet no article of manufacture was illustrated in the drawings of the ’946 patent.  Thus, the issue before the Federal Circuit is how to construe the scope of a design patent in which the claimed design is illustrated in the abstract (i.e., is not applied to an article of manufacture in the drawings).

The Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”  The Federal Circuit cited various persuasive sources to support its decision, such as Gorham Co. v. White (Sup. Ct. 1871), Ex parte Cady (USPTO 1916), 37 C.F.R. § 1.15, and the MPEP.  The Federal Circuit specifically noted that 37 C.F.R. § 1.15 permits the scope of a design patent to be defined by a combination of the drawings and the language of the design patent.

This case makes clear that when filing and prosecuting a design patent application, applicants and practitioners should ensure that the claimed design is tied to an actual “article of manufacture,” and should carefully choose the words that will be used in the claim, description, and title.

USPTO October 2019 Update On Subject Matter Eligibility

By Tim Hirzel

The PTO’s Revised Patent Subject Matter Eligibility Guidance (2019 PEG) has been generally well received for providing a more reliable manner of applying the Alice/Mayo test used by the courts.  Even so, the 2019 PEG still left some matters unclear and the PTO has now responded to public feedback by providing further clarification in the October 2019 Update.  Below, we discuss the updates and how practitioners can use the updated guidance in practice.

Step 2A Prong One

In Step 2A Prong One, the 2019 PEG instructs examiners to evaluate whether a claim recites an abstract idea by a) identifying specific limitations in the claims believed to be an abstract idea, and b) determining whether the identified limitations fall within any of the three specific groupings of abstract ideas (mathematical concepts, certain methods of organizing human activity, and mental processes).

However, there was some question as to how explicitly limitations in the claims have to recite an abstract idea.  The October 2019 Update clarifies that “recites” should broadly be construed to mean that the claims either explicitly set forth the abstract idea or merely describe the abstract idea without explicitly using words that identify the abstract idea.  The PTO further clarifies that claims may recite multiple abstract ideas, which may fall in the same or different groupings, and that the groupings are not mutually exclusive (i.e., a single claim limitation may fall into more than one abstract idea grouping).

The October 2019 Update also provides clarification on what the three groupings of abstract ideas entail.

  • Mathematical Concepts – The 2019 PEG defines “mathematical concepts” as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The PTO interprets the courts as having declined to distinguish between types of math when evaluating claims for eligibility, and the PTO will do the same.  For example, math used to solve a particular technical problem (e.g., an engineering problem) will still be considered to fall within the mathematical concepts grouping.  However, a claim does not recite a mathematical concept if it is only based on or involves a mathematical concept.
  • Certain Method of Organizing Human Activity – The PTO clarifies that not all methods of organizing human activity are abstract ideas, and this grouping is limited to only fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people.
  • Mental Processes – Under the 2019 PEG, “mental processes” are concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. A footnote in the 2019 PEG indicates that a claim limitation is not a mental process when it “cannot practically be performed in the mind.”  The October 2019 update expanded on this and clarified that this is “when the human mind is not equipped to perform the claim limitations.”  The PTO reemphasized that claims can recite a mental process even if they are performed by a computer in the claim and further clarified that there is no requirement that the claim be performed entirely in the human mind to fall into the mental processes grouping.

The 2019 PEG also allows for the possibility that a claim limitation that does not fall into one of the three groupings of abstract idea may be still determined to be an abstract idea upon TC Director approval.  The October 2019 update indicates that the public will be notified once such an office action issues.  At this time, the PTO has not provided any such notification.

Step 2A Prong Two

In Step 2A Prong Two, the 2019 PEG instructs examiners to evaluate whether the claim as a whole integrates the abstract idea into a practical application and gives several considerations in making this determination, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The October 2019 Update reemphasized that this analysis considers the claim as a whole, and that the additional elements of the claim (i.e., those not identified as an abstract idea) are not to be evaluated separately from the limitations reciting the abstract idea.  Moreover, the PTO clarified that merely claiming a specific way of achieving a result is not a stand-alone consideration in Step 2A Prong Two and is not enough by itself to integrate the abstract idea into a practical application.  However, the specificity of the claims is relevant to the considerations related to using a particular machine, a particular transformation, and whether the limitations are mere instructions to apply an exception.

The October 2019 Update devotes lengthy discussion to how a claim improves the functioning of a computer or a technical field and provides a two-step procedure for how examiners are to perform this analysis.

  • Step One – Examiners are to evaluate the specification to determine if sufficient details are provided to establish the claimed invention provides an improvement to technology. However, there is no requirement that the specification explicitly recite the improvement.  The improvement is not relative to what is well-understood, routine, conventional activity in the field, but rather relative to existing technology.  Importantly, the PTO noted that an improvement to an abstract idea is not an improvement to technology.
  • Step Two – If the specification sets forth an improvement in technology, the claims must be analyzed to determine if the claims recite features that provide the improvement described in the specification. However, there is no need for the claims to explicitly recite the improvement.

Step 2B

In Step 2B, examiners are to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  The October 2019 Update itself provides almost no discussion or clarification of Step 2B other than to reemphasize that well-understood, routine, conventional activity will only be considered under Step 2B and not Step 2A.  However, the PTO provided Example 43 along with the October 2019 Update that shows how a claim can fail Step 2A but still be determined eligible under Step 2B.  Such an example was notably absent from the examples provided with the 2019 PEG.

Example 43 is a hypothetical based on the well-known Diamond v. Diehr case.  Example 43 is directed to a controller for an injection molding apparatus that repeatedly obtains temperature measurements of a mold, calculates an extent of curing completion based on the temperatures and an equation, and determines a percentage of curing completion.  Claim 3 specifies that the controller is connected to a means for temperature measuring (which is specifically interpreted to be an ARCXY thermocouple).  Under Step 2A Prong One, the claim is determined to recite a mathematical concept.  Under Step 2A Prong Two, the step of obtaining the temperature measurements is deemed to be insignificant extra-solution activity of data gathering and does not integrate the abstract idea into a practical application.  Notably, the fact that claim 3 uses an ARCXY thermocouple to obtain the temperature measurements is not considered in Step 2A Prong Two (not even to establish use of a particular machine).  Thus, claim 3 is determined to be directed to the abstract idea.

However, the consideration of whether the ARCXY thermocouple feature is mere insignificant extra-solution activity is reconsidered under Step 2B taking into account whether such extra-solution activity is well-known.  The PTO found that while use of ARCXY thermocouples is known in the aeronautical industry, the use of ARCXY thermocouples was not routine or conventional in injection molding apparatuses.  Because the ARXCY thermocouple resulted in better long-term performance, durability, and response time than other thermocouples, the result of using the unconventional thermocouple in the claimed manner amounts to significantly more than the abstract idea (i.e., mathematical concept) and the claim is patent eligible.

Key Takeaways

The October 2019 Update reinforces the idea that the best practice when drafting a patent application is to describe the invention as providing a technical solution to a technical problem.  In this way, should a Step 2A Prong One argument fail, practitioners can rely on a Step 2A Prong Two argument that the claims improve the functioning of a computer or other technology.  This argument seems to be the argument preferred by examiners and often cited by the courts as a basis for patent eligibility when there is a 101 issue.

Specifically, practitioners should keep in mind that examiners will heavily rely on the specification to determine if such a technical solution or technical improvement is provided.  The improvement should not be merely recited in a conclusory manner (e.g., an unsupported assertion that the invention provides a specific improvement), but should be explained in sufficient detail to tie specific features of the invention to the improvement.  Importantly, the claims should be drafted in such way to include the features that provide the improvement.  Examiners have often requested, or even required, that the claims explicitly recite the improvement to overcome a 101 rejection even though these claim features are often considered intended use or given little patentable weight.  The October 2019 update makes it clear this is not necessary.

The PTO also appears to narrow at least some of the three groupings of abstract ideas in Step 2A Prong One.  Practitioners should use this to their advantage when drafting applications to characterize features that may be arguably abstract in a way that avoids falling into the three groupings of abstract ideas.  For example, when appropriate, the application could describe the complexity of steps that may be arguably mental processes (e.g., determining steps, processing steps, analyzing steps, etc.) to establish that these steps cannot be practically performed in the human mind.  However, practitioners should be careful not to try to game the system by describing a simple step, which truly could be performed in the mind, as a complex step that cannot be performed in the mind because such a characterization could have unintended consequences for potential infringement and claim interpretation.  Moreover, if a feature truly could be performed in the mind, then there is most likely a better way to establish eligibility under Step 2A Prong Two or Step 2B.

The 2019 PEG stripped Step 2B of most of its previous considerations and moved them to Step 2A Prong Two.  While the 2019 PEG indicated that Step 2B was still a viable option to establish eligibility, there was little instruction on how practitioners could actually present a successful argument and no examples of succeeding under Step 2B were given.  Given this, examiners have been reluctant to seriously consider Step 2B arguments.  Although arguments under Step 2B are likely to remain an improbable way to overcome a 101 rejection in view of the of the October 2019 Update, practitioners should keep in mind that new Example 43 provides a manner of establishing an inventive concept and a rationale that can be used as a backup position under Step 2B going forward.  Therefore, practitioners should draft their specifications to highlight how their inventions differ from what is well-understood, routine, conventional in the field, even if it is a feature that is more tangentially related to the core invention that could be considered extra solution activity.

Overall, the October 2019 Update should help the PTO continue to provide more reliable subject matter eligibility analysis and clarify what kinds of arguments will successfully overcome a 101 rejection.

Why a Brief Response is the Best Response to an Office Action

By Rebecca Bachner, Associate

The Federal Circuit recently issued a decision that reminds us of the importance of always remembering prosecution history estoppel when presenting arguments in responses to the USPTO.  Specifically, in Amgen Inc v. Coherus Biosciences Inc., 2018-1993 (Fed. Cir. Jul. 29, 2019)) (“Amgen”), the Federal Circuit highlights how prosecution history estoppel can bar a patent owner from succeeding on its infringement claim under the doctrine of equivalents.

At issue was Amgen’s U.S. Patent No. 8,273,707 which was being asserted against Coherus for infringement.  During prosecution, the USPTO rejected Amgen’s claims as obvious in view of U.S. Patent No. 5,231,178 (“Holtz”).  In response, Amgen presented multiple different arguments.  First, Amgen argued that “the pending claims recite a particular combination of salts. No combinations of salts taught nor suggested in the Holtz et al. patent, nor [are] the particular combinations of salts recited in the pending claims taught nor suggested in this reference.” See Fed. Cir at pgs. 4-5.  Amgen further included a Declaration from the inventor of the ‘707 patent.  “The Declaration did not discuss any salt pairs other than sulfate/citrate, sulfate/acetate, and acetate/citrate—the only claimed pairs in the ’707 patent.”  See Fed. Cir at pg. 5.  The Patent Office issued another rejection and, in a final response, Amgen reiterated that Holtz did not disclose a combination of salts nor did Holtz disclose enhancing the dynamic capacity of an HIC column.  The Amgen patent issued after these arguments were filed.

Amgen filed suit against Coherus alleging infringement of the ‘707 patent under the doctrine of equivalents.  Coherus moved to dismiss Amgen’s complaint under Fed. R. Civ. P. 12(b)(6) stating that Amgen argued that Holtz did not disclose “one of the particular, recited combinations of salts.”  See Fed. Cir at pg. 7.  A magistrate judge issued a report that recommended that Coherus’ motion be granted due to prosecution history estoppel.  The report stated that Amgen “clearly and unmistakably—and indeed, repeatedly—indicated to competitors that it surrendered processes using combinations of salts different from the ‘particular combinations of salts recited in the . . . claims[.]’”  See id.  Therefore, the report found that “prosecution history estoppel bars Amgen from now attempting to reassert surrendered ground involving other combinations of salts.” See id.  The District Court adopted the magistrate judge’s recommendation and granted Coherus’ motion to dismiss.

At the appeal, the Federal Circuit agreed with the lower court’s dismissal.   The Court looked at the prosecution history and noted that “Amgen distinguished Holtz on the basis that Holtz did not teach or suggest the “particular combinations of salts” recited in Amgen’s claims.”   See Fed. Cir at pg. 9.  The Court further noted that “Amgen emphasized “particular” and referred to its particular salts three times in the span of two pages.”  See id.  As to Amgen’s argument that it distinguished from Holtz on the basis of increasing dynamic capacity, the Court states that “while Amgen did assert multiple reasons for why Holtz is distinguishable, our precedent instructs that estoppel can attach to each argument.”  See Fed. Cir at pg. 11.  Importantly, the Court stated that “[t]here is no requirement that argument-based estoppel apply only to arguments made in the most recent submission before allowance.”  See id.

This case is a strong reminder that everything written during prosecution can be used against the patent owner in later litigation.  The fact that “this particular combination” was a non-convincing argument, but still was used against Amgen with doctrine of equivalents shows how careful patent practitioners must be in drafting responses to the USPTO.  Each argument written down is part of the record that can be used against the ultimate patent.  As such, a high emphasis must be placed on having successful interviews with the Examiner.  Examiner interviews should be used at every stage of prosecution.  The Examiner interview is an invaluable way to receive feedback from the Examiner without adding to the written record.  Often, an agreement on claim language can be reached during the Examiner interview.  Based on the agreement, a response can be drafted in a way that minimizes the written record.  As such, Examiner interviews not only help with efficiency but are also a crucial part of obtaining high quality patents.

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Peter Glaser Team

How the Wrong Applicant Entity Status Can Doom Your Patent

By Peter Glaser, Associate

The Leahy-Smith America Invents Act, more commonly referred to as AIA, provided the USPTO with fee-setting authority to implement micro-entity status in addition to the previously implemented small-entity status. Both small-entity status and micro-entity status designations reduce fees for some patent filers. In general, small entities are entitled to a 50% reduction in fees and micro entities are entitled to a 75% reduction in fees. For example, the basic Utility filing fee for regular entities, sometimes termed ‘large entities’ is $300.00. In contrast the same filing fees for small entities and micro entities are $150.00 and $75.00, respectively.

The USPTO sets a set of requirements for patent filers to claim small entity status or micro entity status. In short, a small entity may qualify based on organization type (e.g., an entity that is a non-profit organization or that has fewer than 500 employees) and assignee status (e.g., an entity that has not assigned, licensed, or conveyed an interest in the invention to a non-small entity). For micro entities, the USPTO qualifications include each inventor not having been named inventor on more than 4 prior patent applications or have a gross income greater than 3 times the US median household income.

Generally, entity status is a matter of self-certification. For example, a patent attorney may file an assertion of small entity status or micro entity status for an inventor or other entity. However, the entity status must be updated if there is a change. For example, if an inventor files a patent application and qualifies as a small entity at the time of filing, but later assigns the invention to a large entity, a notification of loss of entitlement should be filed and regular fees paid thereafter.

The USPTO provides a good faith error safe harbor, but remedies are not provided for fraudulent or other non-good faith errors. A common way that entity status may change is as a result of a change in size of the patentee. In such a case, the Federal Circuit has held that when small entity status has been established in error and small entity fees have been paid in error, a patent holder can correct a good faith mistake (DH Technology, Inc. v. Synergystex International). Notably, the Federal Circuit indicated that the patent does not lapse as a result of an erroneous payment of fess and become unenforceable.

Another situation where entity status may be in question is when a patent license agreement is entered that could result in an applicant no longer being entitled to small entity status. In Outside The Box Innovations L.L.C. v. Travel Caddy, Inc, a lower court determined that an agreement between a patentee (that was a small entity) and a distributor (that was not a small entity) included a patent license clause that stripped Travel Caddy of small entity status with regard to the patent at issue. Here, the per curiam panel of the Federal Circuit found that it was reasonable for those involved in the patent prosecution to have believed that the agreement did not includes a patent license clause within the meaning of 37 CFR Section 1.27(a)(2). In a dissent, Judge Newman provided instructive guidance that an incorrect filing of small entity status should not be per se material to patentability.

Nevertheless, out of an abundance of caution, patent prosecutors and applicants can take some of the following steps to ensure an accurate assertion of entity status.

  1. Include questions regarding entity status in an initial invention disclosure interview questionnaire that is provided to inventors and/or applicants. Questions may include questions relating to company size, patent assignment status or licensing status, inventor household income, and the number of patents on which each inventor has been named.
  2. Following up with applicants and inventors regularly to determine whether answers to the above questions have changed.
  3. Maintaining comprehensive records of licensing agreements, joint inventorship agreements, research sponsorship agreements, and the like, and associating these records with patent family numbers.
  4. Performing a final check at issuance and at each maintenance fee payment date as to whether there has been any change to entity status. If a change has occurred, file a notification to indicate the status change.
The Pencil Test

How Reliable is the Pencil Test for Expediting the Patent Prosecution Process?

By Nathan Phares, Associate

Many patent practitioners and Examiners have spoken of the “pencil test,” which suggests that an independent claim is more likely to be rejected or is rejected as a matter of course if the claim is shorter than a pencil laid upon the claim.  Some point to the pencil test as a useful rule of thumb and suggest “padding” the length of the independent claim in hopes of improving the outcomes of prosecution.  However, drafting a lengthy independent claim may unnecessarily narrow the scope of the claim.  Does the length of the independent claim truly impact prosecution outcomes, or is the pencil test a myth?  We’ve analyzed the data, and we provide our conclusions below.

The data set we created for this analysis includes all patents that issued from applications filed post-AIA.  We limited the scope of the data set to electrical, mechanical, chemical, and biotech tech centers (i.e., Tech Centers 1600, 1700, 2100, 2400, 2600, 2800, 3600, and 3700).  For each patent, the data set indicates the number of Office Actions (OAs), the Art Unit and Tech Center, the length of claim 1 in total words and unique words, the length of the specification, and various other data (e.g., number of RCEs, Assignee, Agent, pendency, and so on).  We didn’t filter for unusually long or short claims – the longest claims (topping out at over 8,000 words!) and the shortest claims seem to generally be legitimate.

According to the data, first-OA allowances are slightly more likely with a longer independent claim than with a shorter independent claim, suggesting that the pencil test may be a factor in first-OA allowances.  Figure 1 shows a chart of the average number of total words in Claim 1 for buckets of the number of OAs.  First-OA allowances, which are associated with zero OAs, have a slightly longer first claim on average than second-OA allowances.  This relationship holds across all the Tech Centers we analyzed except TC 1600.  Figure 2 shows a chart of the average number of unique words in Claim 1.  In Figure 2, the same impact is present but is far less pronounced, indicating that total word count is more strongly correlated with first-OA allowance than unique word count.

 

Figure 1

 

Figure 2

The pencil test seems not to predict outcomes other than first-OA allowances: as the number of OAs before allowance increases, so does the length of claim 1.  This is the opposite of what the pencil test would suggest and may reflect the tendency to amend features into claim 1 over the course of prosecution in pursuit of allowance.

As the data shows, independent claims that include more total words tend to receive better treatment at the outset of prosecution, but outcomes are not clearly impacted by the pencil test as prosecution continues.  Therefore, the patent drafter should consider lengthening the independent claim if a first-OA allowance is the goal.  However, the data shows that the impact of the pencil test is mild at best, so the drafter should not rely on claim length alone to carry the day.  For example, the art unit where the application is assigned is a powerful predictor of the efficiency of the patent prosecution.  Therefore, the drafter should consider how the language used in the application may impact the assignment of the art unit.

It is important to note the limitations of the data set.  First, the claim lengths shown above are claim lengths of the issued patent, not of the patent application when it is first examined.  Thus, it is hard to tell whether the correlation between claim length and length of prosecution is due to the amendment of features into claim 1.  Second, we omitted patents associated with 8 or more OAs from the charts above, since the data set gets quite sparse after 7 OAs – for example, the 10, 11, 12, and 13 OA buckets collectively represent only 59 patents.  However, the trend shown in Figures 1 and 2 continues through the 9 OA bucket.

Matthew Allen, Harrity Team

Statements in Specification May Harm Patent Eligibility

By Matthew Allen, Associate

The Federal Circuit recently issued a decision that indicates how certain types of statements, made in an Applicant’s own specification, can undermine patent eligibility.  Specifically, in Solutran Inc. v. Elavon, Inc., U.S. Bancorp, 2019-1345, (Fed. Cir. Jul. 30, 2019) (“Solutran”), the Federal Circuit highlights how patent eligibility under 35 U.S.C. §101 might turn based on a specification’s background information and statements regarding proposed advancements, or benefits, of an invention .

At issue in Solutran is claim 1 of U.S. Patent No. 8,311,945 (’945 patent), which recites:

A method for processing paper checks, comprising:

a) electronically receiving a data file containing data captured at a merchant s point of purchase, said data including an amount of a transaction associated with MICR information for each paper check, and said data file not including images of said checks;

b) after step a), crediting an account for the merchant;

c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check s MICR information; and

d) comparing by a computer said digital images, with said data in the data file to find matches.

When analyzing the claim under part one of the Supreme Court’s Alice test, the Federal Circuit determined that claim 1 was “directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check.”  In making its determination, the court examined the purported benefits of the ‘945 patent.  Two benefits were identified in the specification: “improved funds availability,” and “outsourcing.”  However, the court noted that while two benefits were identified in the specification, the claims were not limited to an embodiment that resulted in both benefits, stating that “[t]he only advance recited in the asserted claims is thus crediting the merchant’s account before the paper check is scanned.”  In other words, because the claims did not include features that required “outsourcing,” the court considered the only relevant benefit to be “improved funds availability.”

The court determined that the claimed advance (“improved funds availability”) was similar to abstract concepts such as “hedging” and “mitigating settlement risk,” and that “[t]he desire to credit a merchant’s account as soon as possible is an equally long standing commercial practice.”  Thus, the Federal Circuit used the purported advance of the ‘945 patent, as indicated in the specification and supported by the claims, in determining that claim 1 was directed to an abstract idea.  The court also noted that its characterization of claim 1 was appropriate where “the abstract idea tracks the claim language and accurately captures what the patent asserts to be the ‘focus of the claimed advance over the prior art.’”  This further signifies the importance the court placed on the alleged benefits of the application.

When addressing step two of the Alice test, the Federal Circuit used the background of the ‘945 patent against the patentee by stating that “the background of the ’945 patent describes each individual step in claim 1 as being conventional. Reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) represents the abstract idea in the claim, making it insufficient to constitute an inventive concept.”  In other words, simply re-ordering admittedly known steps will not constitute an inventive concept for purposes of step two of the Alice test.  Thus, the court used the applicant’s own statements in the specification, indicating that certain steps are conventional, to find that the claim was not patent eligible.

This decision provides important lessons about drafting and prosecuting a patent application that may increase the application’s likelihood to survive a §101 challenge.  First, practitioners should make sure that benefits identified in a patent application are exhibited in the claimed embodiments.  The identified benefits should ideally be clearly technical.  Second, practitioners should ensure that the patent application does not include any statements that might be used to argue against the patent eligibility of the claims.  This may include considering whether a detailed background may do more harm than good.

Kenneth Hartmann Harrity Team

Technical Details are Needed to Avoid Patent Eligibility Issues for Patent Applications

By Kenneth Hartmann, Associate

Many patent practitioners have likely found success in overcoming and/or avoiding 35 USC §101 rejections since the USPTO’s Revised Patent Subject Matter Eligibility Guidance was released last January.  However, the Federal Circuit (“the court”) recently made it clear that continued attention and care should be given when drafting patent applications focused on payment systems and/or payment processing.

In Innovation Sciences, LLC v. Amazon.com, Inc. 2018-1495 (Fed. Cir. Jul. 2, 2019) (“Innovation Sciences v. Amazon”) the court determined that a claim to an “online method for a payment server to support online buying over the Internet” in U.S. Reissue Patent No. 46,140 (the ’140 patent) was ineligible under Step 2 of Alice.  More specifically, the court agreed with the district court that the claim was directed to the abstract idea of “securely processing a credit card transaction with a payment server” and that the claim lacked an inventive step, stating that the transmission of credit card payment information through the completion of a purchase are the same as those used in a “conventional Internet transaction system having adequate credit card information security” as admitted in the specification of the ’140 patent.

While Innovation Sciences argued that a “wherein” clause indicating the process involved a switch from a server with less security to a server with more security, the court held that that claim is directed to the abstract idea of “switching.”  The court further mentioned that the claim seeks to capture the broad concept of switching to a more secure server, rather than a “specific way of doing so.”  For Step 1 of the Alice test, the court indicated that the claim may have avoided being directed to an abstract idea if the claim and/or specification had indicated a specific way of carrying out the switch from a less secure server to a more secure server.

Patent applications directed to payments or other financial related processes will likely continue to receive the highest level of scrutiny with respect to patent eligibility due to the Alice decision being based on a financial/business method patent application.  The fact is, many of these patent applications and/or patents likely involve novel technical features, communications, and/or processes that were overlooked and/or not considered when the patent application was drafted.  In Innovation Sciences v. Amazon, the court specifically referred to a lack of detail with respect to switching between a less secure server and a more secure server.  In fact, the word “switched” is mentioned only ONCE in the specification and ONCE in a flowchart.  It is no wonder that the court found Innovation Science’s arguments regarding the switch between servers to be futile.

The ’140 patent claims priority to a patent application filed back in April 2000.  That was obviously a different era of patent preparation and prosecution.  Today, patent practitioners should consider and outline the technical aspects of processes (especially business method processes) without taking for granted that one or more steps of the process are inventive, in and of, themselves.  Clearly, the switch between servers, considered to be one step in the overall process for performing an online method for a payment server, involved its own processes and/or steps.  How/when was the decision made to switch the servers?  What parameters were used to select the new server?  How were those parameters analyzed to make the selection? What types of communications (and/or how many) were needed to perform the switch?  Again, it was a different era of drafting patent applications in 2000.  However, if the patent application drafter was able to predict the future, those are just a few example questions that, if answered in the claim and/or specification, would have improved Innovation Sciences’ case for patent eligibility.  Moreover, to have the best chances of success, patent drafters should continue to discuss the technical problems solved by these processes (and/or by the steps of the processes) and any corresponding technical benefits.

Joseph Falkiewicz Harrity Team

How to Protect Your Client’s Reputation While Also Protecting Their Intellectual Property (IP)

By Joseph “Josh” Falkiewicz, Associate

An attorney that drafts a patent application must consider a multitude of issues to provide strong protection for a client’s IP. The patent application should be accurate from a technical standpoint while also satisfying statutory requirements of patentability (e.g., 35 USC §101, §102, §103, & §112). At the same time, the drafting attorney must also consider how the publication of the patent application or patent may impact the client’s reputation.

Journalists often misinterpret the publication of a patent as a statement by the client regarding its current actions or future intentions. This can cause problems with how people perceive the client if statements within the patent mischaracterize the client’s approach to sensitive issues, such as privacy. Therefore, the drafting attorney should write the patent application in a way that positively reflects – or at least avoids negative reflection – on the client.

For example, a patent describing steps for obtaining and storing personal information of individuals might raise a variety of privacy concerns. Therefore, the drafting attorney should also include, as part of the written description, statements explaining that implementations described in the patent are compliant with privacy laws of one or more jurisdictions, that the personal information is collected only after obtaining consent, that encryption is used to protect the security and/or integrity of the personal information, and/or the like. To provide a more specific example, if the disclosed subject matter involves capturing images or video of a particular area (e.g., a loading dock, an office, a home, and/or the like), the drafting attorney should include an example in the specification that illustrates how an individual would consent to being monitored, an example showing how the image data or video data is encrypted before being transmitted over a network, and/or the like.

Furthermore, the drafting attorney may want to include, in the written description, one or more additional examples that describe how the disclosed subject matter handles situations involving non-consenting individuals. For example, a camera or a drone may capture an image of a loading dock to verify whether a product has been delivered. What happens if an image of the loading dock also includes an image of a non-consenting individual that was walking by? By providing a thorough description of these situations in the patent application, the drafting attorney can help create a positive reputation of the client by illustrating that the client cares about privacy of its customers. This approach also reduces the likelihood of a skeptical or an antagonistic reader promoting negative press about the client based on the patent.

Recent Court Decisions Weigh in on Prior Art Standard in Patent Law

By Jonathan Goodman

Is a printed publication that predates a patent application always considered prior art?  Many may think that a reference published, and available to the public, prior to a patent application’s filing date is prior art.  While this is usually the case, recent court decisions have highlighted exceptions to this standard.

Courts Clarify What Constitutes Prior Art

In GoPro, Inc. v. Contour IP Holding LLC,  2017-1894, 2017-1936 (Fed. Cir. July 27, 2018) (“GoPro”), the Federal Circuit determined that a catalog distributed at a trade show open only to dealers of action sports vehicles was prior art to patents relating to action sports video cameras.  Particularly, the Court noted that the trade show’s focus on action sports vehicles did not preclude persons of ordinary skill in the art from attending because a primary purpose of action sports cameras is for use on action sports vehicles.

GoPro clarifies that a printed publication disclosed at a trade show is publicly accessible within the meaning of section 102 even if the trade show is not aimed at persons of ordinary skill in the relevant art.  While GoPro takes an expansive view, practitioners seeking to overcome a printed publication distributed at a trade show, conference, meeting, or similar gathering may still find success arguing that the printed publication was not publicly accessible when there is no credible reason that a person of ordinary skill in the relevant art would have been in attendance.  For example, a slight change to the facts in GoPro, such as the cameras at issue being used for portrait photography rather than action sports photography, may have persuaded the Court to find that the catalog was not publicly accessible.

In Acceleration Bay, LLC v. Activision Blizzard Inc., 2017-2084 (Fed. Cir. Nov. 6, 2018), the Federal Circuit found that an article published on a university website was not prior art to later-filed patents because the website only indexed articles by author and year, and lacked a reliable search function.  Specifically, the Court noted that the test for public accessibility is not whether a reference has been indexed, but whether the reference was indexed in a meaningful way that would permit a person of ordinary skill in the art to locate it.

It is worth noting that the university website at issue in Acceleration Bay was from 1999 and may have lacked competent search functionality that is now commonplace.  Moreover, today, articles published on a website likely would be keyword indexed by a search engine, thus making it difficult to argue against public accessibility regardless of the manner of indexing performed by the website.  Nevertheless, practitioners should be mindful that articles published on a website are not necessarily publicly accessible if it can be shown that no meaningful indexing of the article was performed.  In particular, if an article is not keyword indexed by the publishing website or a search engine—which may occur if the website prevents pages from being indexed by search engine crawlers—it may indicate that the article was not publicly accessible.

Key Takeaways

Although not every printed publication is considered prior art under Section 102, the growing ease with which nearly all printed material is easily accessible online makes that determination less and less likely.  Thus, when filing and prosecuting patent applications, practitioners should be wary of withholding references from the USPTO in reliance on prior art exceptions, such as those implied by GoPro and set forth in Acceleration Bay.

Harrity Womens Workshop 2019

Harrity & Harrity Holds its 2nd Annual Women’s Workshop

By Elaine Spector

Harrity & Harrity just completed its 2nd Annual Women’s Workshop.  The workshop is part of Harrity’s Diversity Initiative, whose Diversity Mission is to “promote and nurture a respectful, highly engaged, family friendly, and inclusive culture that values the diversity of our talented team with diverse backgrounds, experiences, perspectives, skills/talents, and capabilities.”  Nine women, including recent law school graduates, current law students, and one research scientist with a Ph.D in electrical engineering, participated in a 3-day long workshop. The interactive programs included patent preparation and prosecution skills training, resume and interview preparation, and sessions with prominent women guest speakers in the intellectual property field.  The guest speakers ranged from IP partners at major law firms (both litigation and prosecution partners), former leaders at the U.S. Patent and Trademark Office, Chief IP Counsel and IP Counsel at major corporations, and leaders within Diversity and Inclusion organizations.

The participants were particularly interested in how these women navigated their careers in light of gender issues associated with working in a male-dominated profession as well as balancing career with life.  For example, Barbara Fiacco, President-Elect of AIPLA and litigation partner at Foley Hoag, indicated that her love for research and writing led her to a career in IP litigation, where she is thriving.  Ellen Smith, a partner at Sughrue Mion, shared her philosophy from her daughter’s school, “If there is no path, make your own,” as she described her experiences in navigating a different path for herself at Sughrue Mion while she was starting a family.

Cynthia Raposo gave us an inside look on how she helped develop the legal department for Under Armour before Under Armour was a household name.  Interestingly, Cynthia had moved back to a small firm to a part-time position in attempt to achieve a better work-life balance.  She began to do work for Under Armour and soon became their go-to lawyer for legal advice.  When offered the position to go in-house at Under Armour, she indicated it was too exciting an opportunity to turn down.  Cynthia was responsible for developing strategies for securing trademarks worldwide well before Under Armour would even enter those particular countries.

Other sessions included health and wellness issues in the practice of law, top career tips, as well as the very sage advice from our Harrity founders.  John and Paul Harrity both conceded that their best career advice includes reading as much as possible with a focus on continued learning.  We hope the participants had a great time, and we are looking forward to next year’s workshop!

Plan Before You File: 3 Key Considerations in Patent Preparation

By Daniel Jebsen, Associate

It’s Monday, and your client comes to you with an urgent request for help: there will be a disclosure of an invention on Friday, and they’d like to file a patent application before that disclosure.  No problem, you can prepare a patent application for filing in a few days.  Other than the details of the invention itself, what do you need to consider when filing a patent application?  One easily overlooked issue, particularly in such a rush scenario, is the impact of inventor location, residency, and citizenship on your patent application filing.

Many jurisdictions, including the United States (see 35 U.S. Code § 184), impose some type of restriction on first filings outside of the jurisdiction (i.e., foreign first filings).  Such restrictions can be imposed on, for example, applications for inventions made in a given country, applications by inventors who reside in a given country, and applications by inventors who are nationals of a given country.  Note: the World Intellectual Property Organization (WIPO) has posted a list describing known filing restrictions for some Patent Cooperation Treaty (PCT) contracting states.

Some jurisdictions with foreign filing restrictions allow foreign first filing only with permission from the patent office (i.e., after obtaining a foreign filing license).  However, the amount of time needed to obtain a foreign filing license can vary from days to weeks, or even months, depending on the jurisdiction.  Some jurisdictions, such as Russia, do not allow foreign first filings at all and, as a result, do not grant foreign filing licenses.  Therefore, a very early consideration in the patent application preparation process should be whether inventor location, residency, and/or citizenship will dictate timing and/or jurisdiction of your first filing.  These scenarios can become quite complex when inventors are located in, reside in, or are citizens of different countries, and even more complex when an urgent filing is needed.

For example, maybe Inventor A is located in, resides in, and is a citizen of Country X, Inventor B is located in, resides in, and is a citizen of Country Y, and Inventor C is located in and resides in Country X, but is a citizen of Country Z.

Here are three steps to take before filing a patent application that should help preserve your invention’s first-to-file status:

  1. Before filing a patent application, the first step is to identify whether Country X, Country Y, and Country Z impose foreign filing restrictions based on the inventor relationships to the relevant jurisdictions. In this example, assume that Country X imposes a foreign filing restriction on applications made in Country X, Country Y imposes a foreign filing restriction on residents of Country Y, and Country Z does not impose a foreign filing restriction on citizens of Country Z.
  2. The second step is to determine whether permission for a foreign filing can be requested from any of these jurisdictions that impose such a restriction. Here, perhaps permission for a foreign filing can be requested from offices of both Country X and Country Y.
  3. The third step is to determine an approximate amount of time typically needed for a request for a foreign filing to be reviewed and (hopefully) granted. In our relatively simple example, perhaps a foreign filing license can be obtained from the Country X office in 3-4 days, but a foreign filing license from the Country Y office may take 4-6 weeks.  An attorney licensed in a given jurisdiction may have strategies for trying to expedite the review/grant process.

As you can probably imagine, results of these inquiries can dictate where and how quickly the patent application can be filed.  In the above example, if timing is urgent, a first filing in Country Y after obtaining a foreign filing license for Country X may be a workable strategy.  Conversely, if timing is not an issue, a first filing in Country X after obtaining a foreign filing license for Country Y may be the way to go.

Of course, it is advisable to contact the relevant patent office or an attorney licensed in a given jurisdiction in order to ascertain detailed information for a given jurisdiction.

In summary, inventor location, residency, and/or citizenship can have a significant impact on timing and/or jurisdiction for a given filing.  Therefore, foreign filing considerations should be handled as early as possible during the patent application preparation process.

Kris Rhu Harrity Team

Using Data to Improve Patent Prosecution Performance

By Kris Rhu

How many office actions should I expect? Should I file an RCE or a Notice of Appeal? Is it worth filing a Pre-Appeal? These, among others, are common questions that practitioners may ask themselves during patent prosecution. In the past, they were mostly unanswerable questions. Now, using data analytics, we can get a better sense of how the patent prosecution process will go and be able to make an informed decision when a crossroad is reached.  Below, we will explore how to use statistics about a patent Examiner, which are based on public data provided by the USPTO, during patent prosecution.  I have provided example screenshots from Patentprufer, which was developed by Harrity & Harrity.

Examiner’s Allowance Rate

By looking at an Examiner’s allowance rate (i.e. allowance vs. abandonments), we can get a sense of the journey early on.  A high allowance rate is an indicator that the Examiner likely has no qualms about allowing applications, and that the Examiner likely will not stubbornly stick to poor rejections.  For these types of Examiners, if appropriate, it may be worth taking a more assertive initial position, including arguing that the rejections should be withdrawn or offering modest amendments.  If the Examiner’s allowance rate is low, you may want to consider substantial amendments, get the Examiner’s Supervisor involved early in the process, or anticipate the need to possibly file an appeal.

Office Actions per Patent, RCEs per Patent

A high office action (OA) per patent and/or RCE per patent rate may be an indication that reaching allowability will be challenging.  These types of Examiners likely are unafraid to combine three, four, or even five references to make prior art rejections.    To get a patent application allowed in a more efficient manner than an examiner’s statistics suggest, a more proactive posture may be needed from the beginning.

Examiner Interview Statistics

Generally speaking, it is beneficial to interview an Examiner as it gives a practitioner an opportunity to get a better sense of the Examiner’s interpretations of the application and the applied references, and an opportunity to explain the invention.  A high interview success rate (i.e. interviews that lead to an allowance in the next office action) may be an indicator that the Examiner uses interviews as opportunities for compact prosecution.  Some of these Examiners may even provide suggestions for amendments that would lead to allowance.  If the interview success rate is low for the Examiner, consider sending a substantive interview agenda with proposed amendments to maximize the chance of reaching an agreement with the Examiner.

A comparison of a patent Examiner’s final rejection allowance rate with and without AFCP may be an indicator of whether the Examiner takes the AFCP process seriously.  If there is a significant difference with those rates, the Examiner likely uses the allocated 2-3 hours to find a way to allow the application.  However, if the rates are similar, the Examiner likely uses pre-pilot procedures regardless of whether an AFCP is filed.

Pre-Appeal Statistics

Pre-Appeal statistics can be useful when deciding whether to file an Appeal Brief or a Pre-Appeal Brief.  A high rate of allowance and/or re-opening of prosecution when pre-appeals are filed may indicate that it is worth presenting arguments in a Pre-Appeal Brief.  However, a low rate of allowance and a low rate of re-opening of prosecution may indicate that it would be better to forego the pre-appeal process and go straight to appeal.

Appeal Statistics

Analyzing a patent Examiner’s appeal statistics may be useful in determining whether to file an appeal or an RCE.  If the Examiner’s rate of allowance and/or re-opening of prosecution after appeal is high, it may be worth appealing rather than filing an RCE and avoid narrowing claims unnecessarily.

If the Examiner’s board decision success rate is high, it may be an indication that the Examiner goes to the Board only when he/she believes that an examiner’s answer would be particularly strong.  If you receive a compelling examiner’s answer from these types of Examiners, consider filing an RCE rather than going to the Board.

Conclusion

Just like how data analytics has improved efficiency in other industries, using examiner analytics can improve the efficiency of patent practitioners and the patent prosecution process.

Eli Mazour Harrity Team

Why the Revised 101 Guidance Continues to be Important After Cleveland Clinic

By Eli Mazour

After the 2014 Supreme Court Alice decision, the judges of the Federal Circuit failed to reach a meaningful consensus regarding how the subject matter eligibility test set out in Alice should be applied.  As a result, new USPTO Director Andrei Iancu recognized that there was no practical way for examiners to navigate all of the patent eligibility decisions for each individual patent application.  To address this problem, the USPTO released the “2019 Revised Patent Subject Matter Eligibility Guidance.”

In the recent Cleveland Clinic Foundation v. True Health Diagnostics decision, a panel of the Federal Circuit invalidated claims related to cardiovascular testing under § 101 and stated that “[w]hile we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance” (Fed. Cir. 2019).  The decision caused consternation among some practitioners regarding the value of relying on USPTO guidance.

Director Iancu’s comments regarding Cleveland Clinic

This past Thursday, at the ABA’s annual IP conference, Iancu addressed those concerns.  First, he pointed out that Cleveland Clinic did not even mention the 2019 revised guidance.  Instead, Cleveland Clinic discussed Example 29 from guidance that was published by the PTO on May 4, 2016, which is almost two years before Iancu became the director.  Second, Iancu noted that Cleveland Clinic just stated that to the extent that Example 29 contradicts a court decision, the court decision controls.  In other words, Cleveland Clinic pointed out facts that were clear before the 2019 revised guidance was even released: 1) courts are not bound by guidance released by the USPTO and 2) incorrect guidance released by the USPTO would not override previous court decisions.  Cleveland Clinic did not in any way directly undermine the 2019 revised guidance.

Moreover, Iancu indicated a change in approach by the USPTO: instead of reacting to each new Federal Circuit decision that deals with § 101, the USPTO is now taking a look at the § 101 issue holistically.  And, Iancu argued that the Federal Circuit should address the § 101 problem through en banc decisions by the full Federal Circuit.  In totality, this suggests that a single Federal Circuit decision by a panel of three judges is unlikely to significantly change the USPTO’s approach set out by the 2019 revised guidance.

Practical tips for drafting & prosecution

As it stands now, USPTO examiners and PTAB judges are expected to apply the 2019 revised guidance for § 101 analysis.  In fact, ex parte appeal decisions that deal with § 101 are currently being reviewed at the PTAB to make sure that the 2019 revised guidance is being applied by PTAB judges.  Therefore, in order to ensure efficient prosecution and positive appeal results, practitioners should primarily rely on the 2019 revised guidance to overcome § 101 rejections.

However, when drafting new patent applications, practitioners should plan for the possibility of the Federal Circuit, the Supreme Court, or even possibly Congress taking a narrower view of patent eligibility.  Therefore, to the extent possible, patent applications should be drafted with all of the relevant court decisions in mind.  The goal should be for an eventual patent to be able to withstand – or even better yet avoid – the most stringent § 101 scrutiny during litigation.

Tim Hirzel Harrity Team

Summary of USPTO Revised Guidance on Subject Matter Eligibility

By Tim Hirzel

The PTO released their highly anticipated revised guidance on subject matter eligibility that take effect on January 7, 2019.  A summary of the guidance is provided below.  A more in-depth discussion can be found on our website HERE.

Summary of Revised Guidance

The revised guidance maintains the two step Alice/Mayo Test but revises the procedure for determining whether a claim is directed to a judicial exception (e.g., an abstract idea) under Step 2A by instituting a two-prong analysis.

  1. First prong of Step 2A – Examiners evaluate whether a claim recites an abstract idea.  Instead of a case law specific approach as previously performed, the PTO newly identified three groups of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes.  If any recited claim limitations fall within the three groups of abstract ideas, the analysis proceeds to the second prong of Step 2A.
  2. Second prong of Step 2A – Examiners evaluate whether the claim as a whole integrates the abstract idea into a practical application. A practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception.  The PTO gives examples based on case law that indicate practical applications, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.  If the claim does not integrate the abstract idea into a practical application, then the claim is directed to an abstract idea under Step 2A and the analysis proceeds to Step 2B.

Step 2B has not changed under the revised guidance and is still performed pursuant to the Berkheimer memo.

Our Impressions

  1. Under the prior guidance, Examiners would often dismiss any Step 2A arguments because their guidelines simply said a claim was directed to an abstract idea if any part of the claim recited an abstract idea.  The two-prong approach will make it much more difficult for Examiners to simply dismiss an Applicant’s Step 2A arguments.
  2. Applicants should now be able to avoid the necessity of debating case law with Examiners because the Examiners are not required to cite specific decisions in their rejections and only have to identify one of the three newly defined groups of abstract ideas. Instead, Applicants can now focus on the newly articulated “practical application” consideration in the second prong of Step 2A.
  3. While the examples of practical applications given in the revised guidelines are nothing new, the revised guidelines’ focus on the “practical application” consideration may make it easier to use these examples to effectively overcome the 101 rejections (without necessarily having to argue the case law behind the examples).
  4. The PTO broadly describing the case law as establishing a “practical application” consideration gives Applicants more leeway than relying on specific court decisions as done in the past.  For example, it may be easier to convince an Examiner on a technical level that claims “apply, rely on, or use the judicial exception” in a meaningful manner than to convince the Examiner that claims are similar to subject matter previously held by the courts to be directed to statutory subject matter.
  5. Any noticeable change in examination will depend heavily on how Examiners are trained to implement the new guidance.  Accordingly, it may be months before we fully realize how significant the changes will be to 101 rejections in practice.
Elaine Spector, Harrity Team

Elaine Spector on the 2018 AIPLA Annual Meeting and the Women in IP Law Breakfast

By Elaine Spector

The 2018 AIPLA Annual Meeting was held on October 25-27 in Washington, DC, and included the gathering of more than 2,000 diverse professionals in the field of intellectual property.  In addition to the numerous networking opportunities and education sessions, committees within the AIPLA conducted their committee meetings.

Perhaps the most enjoyable of these committee meetings was the Women in IP Law Breakfast meeting.  Despite being held on Friday morning of the conference at 6:45 AM, attendance was certainly impressive.  The full buffet breakfast helped!  But the breakfast is not the only reason we have seen such a surge in attendance.  The leadership of the Women in IP committee is forward thinking and inclusive.  What used to be a small breakfast, has turned out to be one of the most well attended sessions at the AIPLA, likely because of the programming and inclusiveness it provides.  By the way, men are invited too!

During the meeting, we discussed numerous committee issues.  But the one most dear to my heart is the AIPLA Women in IP Global Networking Event which I co-chair with Lucy Samuels.  The Global Networking Event is scheduled for April 4, 2019, of which my firm, Harrity & Harrity, is a proud sponsor in Northern, Virginia.  The Global Networking Event consists of a plurality of events held on the same day in various cities around the world. The hosts are responsible for choosing their type of event, sending out invitations to female AIPLA members in their area (the AIPLA provides a list), and of course inviting anyone else they would like. Each host event can include any activity the host would like such as a cocktail reception, dinner, guest speaker, or panel discussion etc. Each host is asked to join a brief teleconference call to connect and say hello to other hosts in different locations.  It is a wonderful event, and I strongly encourage women IP professionals to attend, or host in your area.

Please contact me if you are interested in attending in Northern Virginia, or if you would like to host in another area.

Harrity Blog

September 2018 – Creativity in Enhancing the Quality and Size of Patent Portfolios

By Nathan Phares and Kenneth Hartmann

One of the most challenging choices for an organization’s patent strategy is whether to focus on quality or quantity. A small number of high-quality patents may provide value and solid protection for some inventions, but innovation can occur at a fast pace, which may require rapid filings at a high volume. When presented with the challenge of increasing portfolio size without sacrificing patent quality or ballooning the budget, you, the patent practitioner (whether in-house or in private practice), may need to take creative steps to increase the number of ideas that are harvested from inventors, the number of patents that can be obtained for an idea or group of ideas, and the efficiency with which patents can be drafted. This article discusses several creative strategies to help grow a patent portfolio for your clients, whether they are a business unit of an organization or the organization itself. These creative strategies can be implemented prior to reaching the prosecution phase, both before patent applications are drafted and during the application drafting stage, without simply increasing patent expenditures.

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Eli Mazour Harrity Team

Dissecting Dissents for Ex Parte Appeals

By Eli Mazour and So Ra Ko

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge.

The PTAB decides thousands of ex parte appeals per year.  Each appeal is assigned to a panel of three Administrative Patent Judges (APJs).  While one judge is designated to write the initial opinion, all three judges are supposed to take an active role in adjudication before the final decision is issued.

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Top Patent Firms 2018

Top Patent Firms List 2017

By Paul Harrity, Rocky Berndsen, Jaclyn Jones & Matthew Maslink

Harrity Patent Analytics compiled a list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2017 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtained at least 50 utility patents. We made an attempt to correct for typographical errors. We did not eliminate company legal departments from the list.

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Top Patent Firms Badge 2017, Harrity

Peter Glaser Team

Changes in Patent Language to Ensure Eligibility Under Alice

By Peter Glaser and William Gvoth

When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice.

*Please note, citations were inadvertently omitted from the original publication of this article. Please contact the authors, directly, to obtain a version of this article including citations*

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ALA Diversity Seminar

Diversity: An Interview With John Harrity

By Mauricio Velásquez, MBA

At a recent Association of Legal Administrators, Washington, D.C. Chapter meeting, John Harrity, Managing Partner of Harrity & Harrity, spoke about his firm’s Diversity and Inclusion initiative. Harrity & Harrity is an innovative boutique patent law firm based in Fairfax, VA. When asked about his firm’s commitment to Diversity and Inclusion, he explained, “We believe that the ‘practice of law’ is advanced by a more diverse legal team – with diversity of background, upbringing, education, and perspective comes quality legal innovation. At Harrity & Harrity, we are committed to The Rooney Rule 2.0. This is a hiring practice that shows our firm’s commitment to diversity and inclusion is something that we take seriously; it’s something we’re very proud of.”

The Rooney Rule is a National Football League policy that requires league teams to interview minority candidates for head coaching and senior football operation jobs. But there was a flaw – the football team only had to interview at least one minority candidate for an NFL coach opening but could interview an unlimited number of other candidates. “The Rooney Rule is just not going far enough,” Mr. Harrity said, “we wanted to go much further and so we decided that for every opening – attorney or non-attorney – we are committed to interviewing a female or minority candidate for every male, non-minority candidate we interview.”

After his presentation, I asked Mr. Harrity what sort of benefits his current team could expect to see from their diversity efforts. “We are creating and nurturing a workplace culture that is inclusive, values differences, and is authentic, and we want our team to know we really care about them, their well-being, and their future. This will make us the patent law firm employer of choice. We are looking for good people from all backgrounds to help our team grow and to help us become the number one patent law firm.”

There has been recent press about the Mansfield Rule. This rule, introduced in 2016, requires that women and minorities comprise at least 30 percent of the candidates for leadership and governance roles, equity partner promotions, and lateral positions in law firms. Again Mr. Harrity countered, “Just like the Rooney Rule, we don’t think the Mansfield Rule goes far enough.”

Sandra Maxey, Chief Diversity Officer at Harrity & Harrity told me that “making the commitment is one thing, executing the everyday work of finding, hiring, and retaining divers talent is the real challenge. We are fully committed to diversity and inclusion at our firm.”

For more information about Harrity & Harrity’s Diversity Program, please visit their website (www.harrityllp.com/diversity). Please join Harrity & Harrity and the ranks of other law firms in implementing the Rooney Rule 2.0.

Mauricio Velásquez, MBA, is President and CEO of the Diversity Training Group based in Herndon, VA. He can be reached at 703-478-9191 or mauriciov@diversitydtg.com. DTG is in our 21st year of operation.

Diversity Semi

Editor’s Note: The Rooney Rule 2.0 was created in 2015 by the Diversity Committee at Harrity & Harrity, LLP. For a brief period in 2017, it was known as The Harrity Rule, however, after careful consideration, the name was changed back.

 

 

Harrity unmanned aerial vehicles

Unmanned Aerial Vehicle Patents: A Survey

By Peter Glaser

Although many think of unmanned aerial vehicles (UAVs) or “drones” as a modern development, UAVs have an extensive history dating back to the original development of lighter-than-air flight.  Initial attempts were limited by the technology of the age – an attempt by the Austrian empire to launch balloon bombs against the Venetian state failed when a shift in wind resulted in the balloon bombs returning toward the Austrian troops.  Early engineering efforts to support unmanned aerial flight included the development of radio-based remote control by Serbian-American Nikola Tesla, an “Aerial Target” developed in 1916-17 by Englishman Archibald Low, and an “AutomaticAirplane” developed in 1916-18 by Americans Elmer Sperry and Peter Cooper Hewitt.  Early attempts often ended in failure – Low’s Aerial Target crashed during all three test flights before being abandoned; Sperry and Hewitt’s Automatic Airplane successfully completed a single successful test flight of 1000 feet, but all completed test airframes were destroyed in subsequent crashes resulting in abandonment.

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Harrity Blog

Is It Really That Obvious? A Tale of Two Decisions

By William Gvoth & Paul Gurzo

On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, Imran Chaudhri, No. 2015-1975 (Fed. Cir. 2017) (Van Os) and In re: Ethicon, Inc., No. 2015-1696 (Fed. Cir. 2017) (Ethicon).  This article will tell the tale of these two decisions as well as highlight some of the questions that these decisions raise.

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Harrity Blog

Analysis of December 2016 USPTO Subject Matter Eligibility Examples

By Kris Rhu & Paul Gurzo

On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims, which can be found here.  The purpose of these examples is to give guidance on how claims should be analyzed using the 2014 Interim Guidance on Subject Matter Eligibility, recent Supreme Court and Federal Circuit decisions, and recent Memorandums published by the USPTO.  These examples seem to indicate that the power of §101 to restrict patentability has been whittled down since Alice and that the USPTO would like to reduce the number of §101 rejections for technological claims in light of court decisions post-Alice.  Below, we describe each example provided by the USPTO, explain the USPTO guidance for each example, and provide practical practice tips that practitioners can use to help reduce or overcome §101 rejections.

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Top Patent Firms 2018

Top Patent Firms for 2016

By Paul Harrity & Anna Yee (Originally published by IP Watchdog)

We compiled a list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2016 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtained at least 50 utility patents. We made an attempt to correct for typographical errors. We did not eliminate company legal departments from the list.

For the list from last year see: Top Patent Firms for 2015.

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Alice in Wonderland falling surrounded by playing cards

Alice on Dulany Street: How the PTAB Handles 101 in Ex Parte Appeals

By Eli Mazour & James Bennin

“The outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection.”

Previously, we analyzed ex parte appeal decisions by the Patent Trial and Appeal Board (PTAB) from the year following the Alice v. CLS Bank decision. At the time, we concluded that the PTAB is unlikely to reverse § 101 rejections based on Alice. We decided to revisit this conclusion based on ex parte appeal decisions from December 2016.

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