effective patent application drafting and prosecution in light of recent in light of recent

Effective Patent Application Effective Patent Application

Drafting and ProsecutionDrafting and Prosecution

in Light of Recent in Light of Recent

Woods Patent Law, LLCWoods Patent Law, LLC

in Light of Recent in Light of Recent

DevelopmentsDevelopments

Thomas F. WoodsThomas F. Woods


..

Topics CoveredTopics Covered

BackgroundBackground

Recent Changes in the LawRecent Changes in the Law

Before WritingBefore Writing


Prior Art SearchesPrior Art Searches

Effective Application Drafting TechniquesEffective Application Drafting Techniques

Effective Prosecution TechniquesEffective Prosecution Techniques

SummarySummary

BackgroundBackground

Difficulty of drafting patent applicationsDifficulty of drafting patent applications

Patents have become more difficult to obtainPatents have become more difficult to obtain

Problems administering patent applications at the Problems administering patent applications at the

USPTOUSPTO

Recent changes in the lawRecent changes in the law


Recent changes in the lawRecent changes in the law

Economic pressuresEconomic pressures

A changed patent landscapeA changed patent landscape


Reductions in rates of Reductions in rates of

allowanceallowance

Woods Patent Law, LLCWoods Patent Law, LLCWoods Patent Law, LLCWoods Patent Law, LLC

Increasing PendencyIncreasing Pendency


Backlog of Pending Patent Backlog of Pending Patent

ApplicationsApplications


Total Pending ApplicationsTotal Pending Applications


Kappos at the USPTO

Kappos has significant patent experience

Changes at the USPTO are apparent

Better guidance re. KSR recently provided by the

USPTO


USPTO

Changes to the Examiner quota system

First Action Pilot Program

Patent Application Backlog Reduction Stimulus Plan

Patent Examination Corps Hiring

Recent growth in the Examiner Corps

Better searches

Backlog could begin to clear


Backlog could begin to clear

Implications for interviews and written communications

Appeals

Reversal rates in appeals have dropped precipitously

post-KSR

KSR is being applied frequently by the BPAI


The number of appeals has increased

Backlog at the BPAI has increased

Decreasing quality of BPAI decisions

Recent Changes in the LawRecent Changes in the Law


KSR Int’l Co. v. Teleflex, Inc. KSR Int’l Co. v. Teleflex, Inc.

KSR KSR is the most important decision regarding is the most important decision regarding obviousness in many yearsobviousness in many years

Upends decades of careful obviousness jurisprudence Upends decades of careful obviousness jurisprudence established by the Federal Circuitestablished by the Federal Circuit

Reaffirms traditional obviousness analysis of Reaffirms traditional obviousness analysis of Graham v. Graham v. John DeereJohn Deere


John DeereJohn Deere

Rigid application of the TSM test is to be avoidedRigid application of the TSM test is to be avoided

(TSM and MTC are not dead, however)(TSM and MTC are not dead, however)

New “common sense,” “obvious to try,” “finite number of New “common sense,” “obvious to try,” “finite number of predictable solution” and “ordinary creativity” standardspredictable solution” and “ordinary creativity” standards

Examiner must still articulate a reason or rationale to Examiner must still articulate a reason or rationale to support obviousness (support obviousness (GrahamGraham fact findings central)fact findings central)

KSR Int’l Co. v. Teleflex, Inc. KSR Int’l Co. v. Teleflex, Inc.

“Whether there was an apparent reason to combine the “Whether there was an apparent reason to combine the known elements in the fashion claimed;” analysis “should known elements in the fashion claimed;” analysis “should be made explicit.”be made explicit.”

KSRKSR is cited in 60% of BPAI decisionsis cited in 60% of BPAI decisions

USPTO Guidelines regarding the USPTO Guidelines regarding the KSR KSR decisiondecision


USPTO Guidelines regarding the USPTO Guidelines regarding the KSR KSR decisiondecision

Rates of allowance have dropped significantly in the Rates of allowance have dropped significantly in the wake of wake of KSRKSR

KSRKSR provides poor guidance regarding obviousnessprovides poor guidance regarding obviousness

The doctrine of missing elements remains black letter The doctrine of missing elements remains black letter lawlaw

The value of arguably overbroad claims continues to fallThe value of arguably overbroad claims continues to fall

Bilski et al. v. KapposBilski et al. v. Kappos

No dramatic changes affecting property rights

At least some business method claims are patentable

The machine-or-transformation test is not the sole test, but can provide “clues,” for determining the patentability of process claims under §101


of process claims under §101

Prohibition on patenting “abstract ideas” is re-emphasized, but with little guidance from the Court

For further guidance, look to §100(b), Charkrabaty, Benson, Flook, and Diehr

Ariad v. Eli LillyAriad v. Eli Lilly

En bancEn banc decision by the Federal Circuitdecision by the Federal Circuit

In Section 112, paragraph 1, the written description In Section 112, paragraph 1, the written description

requirement is separate from the enablement requirement is separate from the enablement

requirementrequirement

Primary application to pharmaceutical, biotechnology Primary application to pharmaceutical, biotechnology


Primary application to pharmaceutical, biotechnology Primary application to pharmaceutical, biotechnology

and some software casesand some software cases

Prevent patentees from claiming too muchPrevent patentees from claiming too much

Phillips v. AWH Corp.Phillips v. AWH Corp.

When interpreting claims, intrinsic evidence trumps When interpreting claims, intrinsic evidence trumps

extrinsic evidenceextrinsic evidence

Does the patentee “intend for the claims and the Does the patentee “intend for the claims and the

embodiments in the specification to be coextensive”?embodiments in the specification to be coextensive”?

Disclose more than one embodimentDisclose more than one embodiment


Disclose more than one embodimentDisclose more than one embodiment

Be careful in your choice of wordsBe careful in your choice of words

McKesson Information Solutions v.

Bridge Medical

What is a “related case”?

Disclosing existence of related applications is not


Disclosing existence of related applications is not

enough

If co-pending cases have “substantially similar” claims,

then cite rejections as well

Contemporaneously record assessments of prior art and

reasons why not cited

Drafting the Patent Application


Before WritingBefore Writing

Carefully consult with the inventorsCarefully consult with the inventors

Ask openAsk open--ended questions; let the inventors educate youended questions; let the inventors educate you

Data sheets, manuals, productsData sheets, manuals, products

What is the closest prior art of which the inventors have What is the closest prior art of which the inventors have knowledge?knowledge?


knowledge?knowledge?

Obtain a comprehensive disclosure of the invention Obtain a comprehensive disclosure of the invention ––with drawings with drawings –– from the inventorsfrom the inventors

What is the system within which the invention will What is the system within which the invention will operate?operate?

Understand what the invention is, and whether or not it Understand what the invention is, and whether or not it may be patentablemay be patentable

Prior Art SearchesPrior Art Searches

Prior art searches can be expensive, and carry risk and Prior art searches can be expensive, and carry risk and potential liabilitypotential liability

The importance of prior art searchesThe importance of prior art searches

Farming out prior art searchesFarming out prior art searches

Prior art search resultsPrior art search results


Prior art search resultsPrior art search results

Effective Drafting of the Effective Drafting of the

SpecificationSpecificationWhat is the invention? What is the invention?

Start with the claimsStart with the claims

Sections of the patent applicationSections of the patent application

Disclose methods and more than one embodimentDisclose methods and more than one embodiment

Incorporation by referenceIncorporation by reference


Incorporation by referenceIncorporation by reference

Reciting metrics and measurementsReciting metrics and measurements

More figures rather than fewerMore figures rather than fewer

Choose words carefullyChoose words carefully

Effective Claim DraftingEffective Claim Drafting

Draft surgical claims Draft surgical claims

How many references would have to be combined for a How many references would have to be combined for a

prima facieprima facie 103 rejection? 103 rejection?

Dependent claimsDependent claims

The postThe post--filing value of narrow claimsfiling value of narrow claims


The postThe post--filing value of narrow claimsfiling value of narrow claims

Consider the effects of reexaminationConsider the effects of reexamination

Cite the most relevant prior artCite the most relevant prior art

Prosecuting the Patent

Application


Application

Get Feedback from the Inventors

Especially helpful in difficult or complicated cases

Reduce client fees

You are likely to find out something you don’t know,


You are likely to find out something you don’t know,

either about the invention or the cited prior art

Opportunity to strengthen relationships with the inventors

and the client

Missing Elements

Most likely avenue for securing allowance

The “All Elements Rule” is black letter patent law

Pennwalt v. Durand-Wayland, Inc., 883 F.2d 931 (Fed. Cir. 1987) (en banc), affirmed by the Supreme Court in Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)


Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)

Pushes the Examiner into the KSR no-man’s land and sharpens the issues at hand

Other avenues: Newly updated USPTO KSR guidelines, teaching away, unpredictable or surprising results, level of ordinary skill in the art

Avoid or minimize pre-KSR unobviousness arguments

Interviews

Communication via paper is inherently deficient

More compact prosecution

Encouraged by Kappos

Number of interviews is up sharply


Number of interviews is up sharply

Examiners are ready to talk

Opportunity to develop relationships with individual

Examiners

Interviews

Impart a sense of urgency and importance

Find out what the Examiner is really thinking

Opportunity to discuss and analyze the prior art with someone else

You might learn something new


You might learn something new

The Examiner may have suggestions for amending the claims you would not have thought of or proposed

Consider requesting an SPE attend the interview

Related cases

Watch out for the requirements of McKesson

Identify related applications

Disclosing the existence of a related case is not enough

File complete copies of rejections and responses in


File complete copies of rejections and responses in

related cases having “substantially similar” claims

Keep continuations alive to obtain claims directed to

competitors’ products

Appeals

Requests for Pre-Appeal Conferences

Interview before filing an appeal brief

Call the Examiner’s SPE or Group Leader

Many appeal briefs are rejected on technical grounds


Many appeal briefs are rejected on technical grounds

Possibility of prosecution being re-opened after an

appeal brief is filed

Appeals can be used to limit costs and have other

advantages

SummarySummary

The The KSRKSR decision has significantly changed the U.S. decision has significantly changed the U.S.

patent landscape patent landscape

Patents have become more difficult and expensive to Patents have become more difficult and expensive to

obtainobtain

Consider not pursuing patent applications covering Consider not pursuing patent applications covering


Consider not pursuing patent applications covering Consider not pursuing patent applications covering

inventions of marginal patentabilityinventions of marginal patentability

Conduct thorough searches of the prior art before Conduct thorough searches of the prior art before

drafting and filingdrafting and filing

Patent applications must be carefully draftedPatent applications must be carefully drafted

Surgical independent claims are especially importantSurgical independent claims are especially important

Summary (cont’)

Carefully analyze and respond to rejections

Talk to the inventors

Talk to the Examiner


Focus on Missing Elements

Watch out for the requirements of McKesson

Carefully vet appeal briefs for technical errors before

filing

effective patent application drafting and prosecution in light of recent in light of recent

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