Your Licensees’ Patent Marking Program is Also Your Concern

By McCord Rayburn, Associate

As an in-house IP attorney, you may take comfort in knowing that your patent marking program is thorough, well-established, and properly executed. You have standardized procedures to determine which patents cover which products. You monitor product release dates to ensure appropriate marking. You have set up a “virtual marking” website to take advantage of this form of marking established by the America Invents Act (AIA). You regularly update the virtual marking website to remove expired patents and add newly granted patents. Your patent marking program is a well-oiled machine. But what about your licensees’ patent marking programs? Do you know anything about your licensees’ patent marking programs? Do you even care about your licensees’ patent marking programs? Well, you should, and the Federal Circuit recently provided another opinion to remind patent licensors that a licensee’s failure to mark can be costly.

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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.

Getting To Know Your Patent Examiner Through Data

Law360 (June 13, 2019) — How many office actions should I expect at the U.S. Patent and Trademark Office? Should I file a request for continued examination 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, these were mostly questions that could not be answered by taking into account unique proclivities of different examiners. Now, using data analytics, we can get a better sense of how prosecution will go and be able to make an informed decision when a crossroad is reached.

Below, we will explore how to use public data about an examiner, provided by the USPTO, during patent prosecution.

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.

However, if the examiner’s allowance rate is low, you may want to consider including substantial amendments or anticipate the possible need to file an appeal as these types of examiners tend to combine three, four, or even five-plus references in their art rejections. If the allowance rate in the art unit is significantly higher than the examiner’s allowance rate, you may want to consider getting the examiner’s supervisor or a primary examiner in the art unit involved early in the process as it may be easier to reach an agreement with them than with the assigned examiner.

Office Actions Per Patent, RCEs Per Patent

A high office action per patent and/or RCE per patent rate may be an indication that reaching allowability will be challenging. These types of examiners also are likely unafraid to combine three, four or five-plus references to make their art rejections. Similar to examiners with low allowance rates, you may want to consider including substantial amendments, getting the supervisory examiner or a primary examiner involved, or planning to file an appeal. You may even want to check the supervisory examiner’s and primary examiner’s allowance rates when deciding whether to get one of them involved.

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 a chance to explain the invention.

A high interview success rate (i.e. the rate that interviews lead to an allowance in the next office action) may be an indicator that the examiner uses interviews for compact prosecution. These examiners are likely willing to provide suggestions for amendments that would lead to allowance or at least advance prosecution. For these types of examiners, you may want to be prepared to discuss multiple, different types of amendments to take advantage of their willingness to expedite prosecution. However, 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 an examiner’s final rejection allowance rate with After Final Consideration Pilot and his/her final rejection allowance rate without AFCP may be an indicator of whether the examiner takes the AFCP program seriously. If there is a significant difference with those rates, the examiner likely uses the allocated two to three hours in the AFCP program to find a way to allow the application. For these types of examiners, consider filing an after-final amendment with an AFCP request before deciding whether to file an RCE or a notice of appeal. 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 the examiner, the examiner’s SPE, and other panel members in the examiner’s art unit take the pre-appeals process seriously and that it is worth presenting arguments in a pre-appeal brief. However, a low rate of allowance and a low rate of reopening of prosecution after pre-appeal may indicate that it would be better to forego the pre-appeal process and go straight to appeal or go another round with an RCE.

Appeal Statistics

Analyzing an examiner’s appeal statistics may be useful in determining whether to file an appeal or an RCE. If the examiner’s rate of allowance after an appeal is filed is high, it may be worth appealing rather than filing an RCE and avoid narrowing claims unnecessarily. However, if the examiner’s rate of allowance after appeal is low, it is highly likely that your appeal will go to the Patent Trial and Appeal Board.

Since it may take a couple of years for the PTAB to pick up your appeal due to their backlog, you may want to make certain that your client is comfortable with going through with the appeals process and waiting rather than filing an RCE and possibly reaching an agreement with the examiner earlier. For these types of examiners, you may want to consider the examiner’s allowance rate and RCEs per patent rate to help you and your client in making this decision.

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 his/her 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, examiner analytics has the potential to improve the efficiency of patent practitioners and patent prosecution. Therefore, using examiner data in your practice may lead to better, quicker and cheaper outcomes for you clients.

By Kris Rhu

The example screenshots in this article are from Patentprufer, which was developed by Harrity & Harrity.