Archived News Posts
Old news posts that no longer appear on the main page of FoundPersuasive are listed below.
By: Sheetal S. Patel
On June 28, 2010, Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy, issued a memorandum in response to the Supreme Court's ruling in Bilski v. Kappos. The memorandum acknowledged that the machine-or-transformation test is not the sole test for determining patent-eligibile subject matter under 35 U.S.C. § 101. However, the memorandum latched onto the Supreme Court's statement that precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are patent-eligible processes under 35 U.S.C. § 101. As a result, the USPTO appears to again be latching onto the M-or-T Test as the only test for subject matter eligibility and has now instructed Examiners to continue to examine patent applications for compliance with section 101 using the existing guidance concerning the M-or-T Test. In sum, Examiners are instructed to continue to examine (e.g. reject) process claims under the M-or-T Test to determine patent-eligible subject matter, thereby allegedly placing the burden on Applicant to explain why process claims recite patent eligible subject matter.
Based on the memorandum issued by the Acting Associate Commissioner, Robert W. Bahr, it appears that the USPTO does not want to revisit Office Actions that have already been issued, or change its processes with respect to how subject matter eligibility will be addressed for new Office Actions. These instructions effectively prohibit the Examiner from using any other test, except the M-or-T Test, when determining whether a process claim recites patent-eligible subject matter. This is noncompliant with the Bilski decision, and in fact, the memorandum explicitly contradicts the Supreme Court's explicit statement that the M-or-T Test is not the only test for determining subject matter eligibility under 35 U.S.C. § 101. It does not seem possible to present a prima facie case by applying a test that is not all-encompassing. As such, merely applying the M-or-T Test is not dispositive and doesn't meet the USPTO's burden for allegedly demonstrating that subject matter is not patentable. As the Supreme Court stated, "[t]he Court is unaware of any "'ordinary, contemporary, common meaning,'" Diehr, supra, at 182, of the definitional terms "process, art or method" that would require these terms to be tied to a machine or to transform an article" (Slip Op. at 7). It does not appear that the USPTO has digested the Supreme Court's decision in its entirety, because this is not what the Supreme Court stated with respect to determining patent eligible subject matter. Rather, the instructions contradict the opinion. However, Applicants should expect to continue to receive rejections based on the M-or-T Test, at least in the interim until new guidelines are issued.
To view the memo in its entirely, please click Here.
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After an arduous 7.5 month wait, certainly the longest in recent memory, the much-anticipated Bilski decision has finally arrived. In its decision, the en banc Court of Appeals for the Federal Circuit (CAFC) held that a "claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing." This is the so-called Machine-or-Transformation (M-or-T) Test. The CAFC's In re Bilski elaborated on the requirements for meeting both prongs (which were borrowed from the Benson test). First, the machine or transformation "must be central to the purpose of the claimed process." The CAFC held this means that the machine or transformation in question must "impose meaningful limits on the claim's scope" and not "be insignificant extra-solution activity." With respect to the transformation prong, the CAFC held that the transformation only qualifies as patent-eligible subject matter if it transforms a certain type of "article." What constituted "articles" and what transformations qualify under the test were left unclear by the decision. The CAFC decision created questions in both the software and biotech industries as far as what inventions may qualify as patentable subject matter and how best to claim them. In the case of software, while the USPTO has instructed Examiners that tangibly embodied software constitutes a special purpose machine, many Federal District Courts have not taken this position.
As expected, it appears that the Supreme Court has, in essence, hit the reset button. The Court held that the M-or-T Test, while a test, is not the sole test for determining the eligibility of patentable subject matter. At a glance, the test seems to go the way of KSR before it, taking the more strict CAFC test and broadening it.
The Supreme Court affirmed the CAFC's decision that Bilski's claims did not recite patent-eligible subject matter, but held that the M-or-T Test is not the only test. "The §101 patent-eligibility inquiry is only a threshold test" (Slip Op. at 5). "The Court is unaware of any ordinary, contemporary, common meaning of 'process' that would require it to be tied to a machine or the transformation of an article" (Syllabus at 2). "The Federal Circuit incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test. Recent authorities show that the test was never intended to be exhaustive or exclusive" (Id. at 3). "This Court has "more than once cautioned that courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed'" (Slip Op. at 6). "The Court is unaware of any "'ordinary, contemporary, common meaning,'" Diehr, supra, at 182, of the definitional terms "process, art or method" that would require these terms to be tied to a machine or to transform an article" (Id. at 7). Also, the Court also held that business methods are not precluded as patentable subject matter per se. Rather, "[s]ection 273 ... clarifies the understanding that a business method is simply one kind of 'method' that is, at least in some circumstances, eligible for patenting under §101" (Syllabus at 3).
Also as expected, the Court held that Bilski's claims are directed to abstract ideas. "The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook" (Slip Op. at 16).
The M-or-T Test has been struck down as the sole test or determining patent-eligible subject matter, and methods are not required to be tied to a machine to be patent-eligible. Also, the Court confirmed that at least some business methods still qualify as patent-eligible subject matter. Further, as expected, Bilski's claims were held to be directed to abstract ideas. A more complete case summary will follow in the near future.
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Today, the USPTO announced that it has been working with representatives of the patent Examiners' union, the Patent Office Professional Association (POPA), to better
align the performance standards of patent Examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent
applications. The proposed changes, if adopted, are geared to increase the quality of patent examination and to reduce the backlog of pending patent applications.
Director Kappos stated, “[t]he change identified by the joint task force will better align examiner goals with those of the agency, better define expectations and
measures for success, and encourage mentoring and training – all while ensuring transparency and clarity.” Some of the proposed changes to the Performance
Appraisal Plan (PAP) include:
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Establishing a “Stakeholder Interaction” element that emphasizes routine use of interviews to facilitate compact prosecution and timely responsiveness to requests
for personal interviews;
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Revising the performance standards to include a single quality element for all Examiners, increasing the focus on examination quality and improve the transparency
of how quality is measured; and
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Revamping the workflow element to provide examiners more opportunities to use their professional discretion to manage their own workflow.
If these proposals are approved, the new performance standards could be implemented as soon as the 2011 fiscal year. For more information, please click
Here.
As promised yesterday by Director Kappos, the USPTO proposed three patent processing tracks today. The USPTO is seeking public comment on this new patent examining
initiative. The USPTO seeks to provide Applicants with greater control over the speed with which applications will be examined and to promote greater efficiency in
the patent examining process. The Director stated:
We recognize that the traditional ‘one-size-fits-all’ examination timing may not work for all applicants. By allowing applicants greater control over the timing of
examination, the USPTO will be able to deploy its resources to better meet the needs of innovators. We look forward to input from the public as we shape this
proposal.
Under the new initiative, the following three tracks are proposed:
Track I: prioritized examination. Under Track I as proposed, Applicants would be required to pay a fee set to recover the cost to the agency of maintaining the
planned pendency of non-prioritized applications. The USPTO aims to provide a first Office Action on the merits within four months and a final disposition within 12
months of prioritized status being granted for Track I applications. No indication was provided as to what fee range may generally be considered as a reasonable
starting point for discussion.
Track II: traditional examination under the current procedures.
Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.
For applications based on foreign priority, no action would be taken by the USPTO until the agency receives a copy of the search report, if any, and first Office Action
from the foreign Office as well as an appropriate reply to the foreign Office Action as if the foreign Office Action was made in the application filed in the USPTO.
Following or concurrent with the submission of the foreign Office Action and reply, Applicants may request prioritized examination or obtain processing under the
current procedure. The USPTO alleges that this proposal would increase the efficiency of the examination of these applications by avoiding or reducing duplication of
efforts by the Office of first filing and the USPTO.
The USPTO asserts that the proposed three track initiative would decrease overall pendency in four ways:
1. increased resources in Track I would result in increased output;
2. reuse of search and examination work done by other offices would result in greater efficiency;
3. Applicants who chose Track III because their applications were of questionable value might ultimately not pursue their application examination; and
4. Applicants with applications first filed abroad might ultimately not pursue their application examination.
A public meeting will be held on July 20 at 1:30 p.m. at the USPTO’s Madison building to discuss the initiative.
The USPTO announced it would eliminate the fee for the petition to participate in Patent Prosecution Highway (PPH) programs. The elimination of the PPH petition fee
is expected to encourage greater PPH participation by patent Applicants. USPTO Director David Kappos stated “Patent Prosecution Highway programs have great potential
to reduce unnecessary duplication of work between offices, reduce pendency and improve quality.” He further stated, “By eliminating the petition fee, we expect
to see more applicants take advantage of PPH.” To view the USPTO press release, please click
Here.
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Director Kappos issued a memorandum on May 17th discussing the Patent Prosecution Highway program (PCT-PPH) between the USPTO and the Korean Intellectual Property Office (KIPO).
To view the memorandum, please click Here.
The PCT-PPH pilot program will commence on June 1, 2010, and last for two years, ending on May 31, 2012. The USPTO and KIPO reserve the right to either extend the
duration of the program or terminate the program early.
In order to participate in the program, Applicants must meet ten conditions that are enumerated and discussed in detail in the Director's memorandum. The requirements
seem to be rather complex and are quoted below.
(1) The relationship between the corresponding U.S. application for which participation in the PCT-PPH pilot program is requested and the PCT application must satisfy
one of the following requirements: (a) The U.S. application is a national stage entry of the corresponding PCT application; (b) The U.S. application is a national
application which forms the basis for the priority claim in the corresponding PCT application; (c) The U.S. application is a national stage entry of another PCT
application (which can be filed in any competent receiving office) which claims priority to the corresponding PCT application; (d) The U.S. application is a national
application claiming foreign/domestic priority to the corresponding PCT application; or (e) The U.S. application is a continuing application (continuation, divisional, or
continuation-in-part) of the U.S. application which satisfies one of the above (a) through (d) scenarios.
(2) The latest work product in the international phase of the PCT application corresponding to the U.S. application, namely, the WO/ISA, or the WO/IPEA, or the IPER,
indicates at least one claim in the PCT application has novelty, inventive step and industrial applicability.
(3) There must be claim correspondence between the applications: (a) All of the claims in each U.S. application for which a request for participation
in the PCT-PPH pilot program is made must sufficiently correspond to or be amended to sufficiently correspond to one or more of those claims indicated as having
novelty, inventive step and industrial applicability and be free of any observation described in Box VIII in the latest work product of the corresponding PCT
application; (b) Claims are considered to "sufficiently correspond" where, accounting for differences due to translations and claim format requirements, the claims in
the U.S. application are of the same or similar scope as the claims indicated as having novelty, inventive step and industrial applicability and free of any
observation described in Box VIII in the latest work product of the corresponding PCT application, or the claims in the U.S. application are narrower in scope than
the claims indicated as having novelty, inventive step and industrial applicability and free of any observation described in Box VIII in the latest work product of
the corresponding PCT application; and (c) In this regard, a claim that is narrower in scope occurs when a claim indicated as having novelty, inventive step and
industrial applicability and free of ally observation described in Box VIII in the latest work product of the corresponding PCT application is amended to be
further limited by an additional feature that is supported in the written description of the U.S. application. The claim(s) with the narrower scope must be written in
dependent form in the U.S. application for which participation in the PCT-PPIH pilot program is requested.
(4) Substantive examination of the U.S. application for which participation in the PCT-PPH pilot program is requested has not begun.
(5) Applicant must file a request for participation in the PCT-PPH pilot program and a petition to make the U.S. application special under the PCT-PPH pilot program.
(6) Unless already filed in the U.S. application for which participation in the PCT-PPH pilot program is requested, applicant must submit a copy of the latest
international work product, WO/ISA, or WO/IPEA or IPER, which indicated that the claim(s) has/have novelty, inventive step and industrial applicability along with an
English translation thereof if the copy of the latest international work product is not in the English language.
(7) Unless already filed in the U.S. application for which participation in the PCT-PPH pilot program is requested, applicant must submit a copy of the claims from the
corresponding PCT application which were indicated as having novelty, inventive step and industrial applicability in the latest work product of the PCT application
along with an English translation thereof and a statement that the English translation is accurate if the claims are not in the English language
(8) Applicant is required to submit a claims correspondence table in English.
(9) Applicant must submit an information disclosure statement (IDS) listing the documents cited in the international work products (ISR, WO/ISA, WO/IPEA, IPER) of
the PCT application corresponding to the U.S. application for which participation in the PCT-PPH pilot program is requested (unless such an IDS has already been filed
in the U.S. application, in which case applicant may simply refer to the previously filed IDS and indicate in the request for participation in the PCT-PPH pilot
program when the IDS was previously filed in the U.S. application).
(10) The request for participation in the PCT-PPH pilot program and all the supporting documents must he submitted to the USPTO via EFS-Web and indexed with the
following document description: "Petition to make special under PCT-Patent Pros Hwy."
Once the request for participation in the PCT-PPH pilot program and special status have been granted, the U.S. application will be taken up for examination by the U.S.
examiner before all other categories of applications except those clearly in condition for allowance, those with set time limits, such as examiner's answers, and
those that have been granted special status for "accelerated examination." Accordingly, while the requirements appear to be stringent, meeting these requirements may
well be worthwhile for qualifying applications where rapid allowance is desired.
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The USPTO announced the expansion of its Project Exchange program to all Applicants. Under the expanded Project Exchange program, any Applicant with more than
one application currently pending at the USPTO that was filed prior to the inception of the program can receive expedited review of one application in exchange for
withdrawal of an unexamined application. The expanded Project Exchange program will provide Applicants with multiple filings greater control over the priority with
which their applications are examined, and enable priority applications to be examined on an expedited basis. For more information, please click
Here.
Director Kappos provided further comments regarding the Ombudsman Pilot Program on his
Blog. The Director indicated that one of the USPTO's strategic priorities is
improving relations with its stakeholders and that the Ombudsman Pilot Program is intended to assist in meeting that priority. The Director stated:
At times, when I am speaking with patent practitioners and applicants, they share their frustrations with the patent process. Examples include cases where the
examination process has stalled or where applicants are unsure of the appropriate person to contact for assistance. At other times an applicant or attorney may simply
need assistance getting connected with the USPTO employee who can assist them with a particular issue.
The Director has dubbed the program as a "pressure relief valve" for Applicants.
The program uses TC ombudsman representatives who are Suprevisory Patent Examiners (SPEs) and Quality Assurance Specialists (QASs) to field questions and concerns from
the public and to work with appropriate USPTO employees to facilitate responses. Issues should usually be addressed within five business days, and confidentiality will
be ensured when requested. Further information on the Ombudsman Pilot Program can be found
Here.
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The Department of Justice, the Federal Trade Commission (FTC), and the USPTO announced on May 10, 2010, that they will hold a joint public workshop on the intersection
of patent policy and the competition policy and its implications for promoting innovation. The workshop will be held on May 26, 2010, at the USPTO’s campus at 600
Dulany Street, Madison Building Auditorium, Alexandria, VA. The general public and the press are invited to attend and view the proceeding. Seating will be on a first-come,
first-served basis. To view the full USPTO post, please click
Here.
Director Kappos thanked the community for comments on how top reengineer the Manual of Patent Examining Procedure (MPEP) on his
Director's Forum blog. The Director noted that certain information suggested
by the community may be included alongside existing content, including:
- Examples of cases showing both sides of a rule;
- Examples of reasons to combine that are sufficient to support obviousness;
- Examples with case citations including active links to decisions;
- Guidelines for when requirements are satisfied; and
- Definitions.
The Director further noted that "[p]eople also suggested that we re-organize content to reduce redundancy, provide links from sections to other related sections,
and provide better indexing and search tools."
The Director indicated that the following outside contributions to the content of the MPEP would be helpful:
- Encouraging readers to post comments about the current text, on a section-by-section basis, to point out errors, make clarifications, and add examples of
interpretations and links to case law and other materials;
- Posting preliminary content and then encouraging the community to comment on this new content before it becomes official ... This might include a wiki section for
adding additional content;
- Periodically summarizing and following up on the comments on each section, both to ensure those with merit are acted upon, and to keep the comments on each
section from becoming too cluttered; and
- Providing a way for the community to discuss and debate topics such as how to interpret recent court decisions.
The openness of the Kappos administration to encourage and adopt suggestions from the practicing community suggests a higher quality product when the next version of
the MPEP is issued.
The USPTO announced today in the Federal Register that two roundtables will be held and requests for comments will be solicited in an attempt at enhancing overall patent quality
(to view the Federal Register Notice, click Here).
The Notice states
As part of this initiative, the USPTO is conducting two roundtables to obtain public input from organizations and individuals on actions that can improve patent
quality and the metrics the USPTO should use to measure progress. The roundtables are open to the public. The USPTO plans to invite a number of roundtable
participants from among patent user groups, practitioners, industry, independent inventor organizations, academia, and government. Any member of the public may
submit written comments on USPTO patent quality enhancement and metrics as well as on any issue raised at the roundtable.
The first roundtable will be held at the Los Angeles Public Library—Central Library, (located at 630 W. 5th Street, Los Angeles, California 90071) on Monday, May 10,
2010, beginning at 1 p.m. Pacific Daylight Time (PDT) and ending at 5 p.m. PDT. The second roundtable will be held at the USPTO (located in the Madison Auditorium on the
concourse level of the Madison Building) on Tuesday, May 18, 2010, beginning at 8:30 a.m. Eastern Daylight Time (EDT) and ending at 12 noon EDT.
Written comments can be sent to patent_quality_comments@uspto.gov. "Because comments will be made
available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments." For further
information, the USPTO instructs inquiring parties to contact Elizabeth L. Dougherty, Office of Patent Legal Administration, Office of the Associate Commissioner for
Patent Examination Policy, by telephone at (571) 272–7733 or by e-mail at elizabeth.dougherty@uspto.gov.
At the First Annual Board of Patent Appeals and Interferences (BPAI) Conference on April 7, Chief Judge Fleming stated that Appeal Brief compliance review will be
performed by paralegals and headed by Krista Zele. Attorney John Darling of Nixon Vanderhye, who attended the conference, provided the following details:
I attended the first annual BPAI conference at the PTO on April 7. Chief APJ Fleming stated that the review of the briefs for compliance with the rules will be
performed by paralegals. Krista Zele is the supervisor of the paralegals. I have spoken with her before about some of my appeals and she is very knowledgeable and
responsive. I have confidence she will run the review process well.
Mr. Darling also noted that Reply Briefs will go directly to the BPAI.
Mr. Fleming also stated that reply briefs would also go to the BPAI directly, thus doing away with the examiner spending 2+ months sending out a one page notice
that the reply brief has been received and the case forwarded to the BPAI (or forgetting to send the notice and having the BPAI remand it back to the examiner). This
should easily cut about 3+ months of pendency off appeals.
These look to be further positive changes to the patent system in the Kappos administration's ongoing, and laudible, efforts to increase USPTO efficiency and
responsiveness.
On April 7, 2010, Director Kappos issued a memo (to view the memo, click
Here) indicating that the Enhanced
First Action Interview Pilot Program will be extended for another six months (until October 1, 2010). The program would have otherwise expired on April 1, 2010.
Director Kappos enumerated four benefits that the program provides:
(1) the ability to advance prosecution of an application;
(2) enhanced interaction between Applicant and the Examiner;
(3) the opportunity to resolve patentability issues one-on-one with the Examiner at the beginning of the prosecution process; and
(4) the opportunity to facilitate possible early allowance.
To participate in the program, Applicants should complete the Request for First Action Interview Form (PTO/SB/413C), which can be found
Here. For an application to be eligible for the
program, the application must contain 3 or fewer independent claims and 20 or fewer total claims. Also, the application must not contain any multiple dependent claims.
Further, Applicants should keep in mind that by submitting the form, they are waiving their right to make an election with traverse in the event that there is a
restriction requirement.
Justice John Paul Stevens has announced that he will be retiring after the current session of the Supreme Court. Justice Stevens is turning 90 this year, making him the
oldest Justice on the Supreme Court. Justice Stevens was appointed by Gerald Ford and has served for almost 35 years. He was confirmed 98-0 by the Senate, which seems highly
unlikely for his replacement.
Justice Stevens is considered to be part of the "liberal bloc" of the Supreme Court and it seems likely that President Obama will appoint someone with at least a moderately
liberal record to take his place. Accordingly, it doesn't seem that the makeup of the Court with respect to partisan issues will change. It is unclear who his replacement
may be and what his or her views are towards intellectual property. However, some of the names that have been tossed around by the media in early speculation include Diane
Wood (7th Circuit Court of Appeals), Merrick Garland (D.C. Circuit), Janet Napolitano (Secretary of Homeland Security), Jennifer Granholm (Governor of Michigan) and Elena
Kagan (Solicitor General).
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As indicated by Director Kappos in a post on his blog last week, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) posted the top eight reasons
that Appeal Briefs are non-compliant on the USPTO website (to view the post, please click
Here). After reviewing
the post, it seems the most common reason is where a section of the Appeal Brief is missing. 37 C.F.R. §§ 41.37(c)(1)(i)-(x) contain the items that must be present in an
Appeal Brief. For instance, while an evidence appendix and related proceedings appendix are generally not needed in an Appeal Brief, pages with an appropriate heading
stating that these appendices are not included in the Appeal Brief are required for compliance, at least prior to the new appeal procedure. Whether not including these
sections would constitute a minor formality is unclear, so it is safest to include all sections.
The next most common reason listed is where sections of the Appeal Brief are defective or incomplete. The sections highlighted in the Chief Judge's post are Related
Appeals and Interferences (ii), Status of Claims (iii), Status of Amendments (iv), Summary of Claimed Subject Matter (v) and Claims Appendix (viii).
Related Appeals and Interferences: In most cases, there will be no related appeals or interferences. Nonetheless, the section should be included and
should indicate that no such appeals or interferences exist.
Status of Claims: Appellant must provide (1) a statement of the status of all claims in the proceeding (e.g., rejected, allowed or
confirmed, withdrawn, objected, canceled) AND an identification of those claims that are being appealed.
Status of Amendments: This section should contain the status of amendments filed subsequent to final rejection of the claims. However,
amendments in a Response to a final Office Action that have not been entered by the Examiner should not be presumed as entered.
Summary of Claimed Subject Matter: All of the independent claims involved in the appeal should be included here with a citation for each claimed
feature. Also, every means-plus-function and step-plus-function claim on appeal must be identified and each corresponding structure, material or act defined in the
specification should be included. The post by the Chief Judge still indicates that the citations should refer to the page and line number of the
specification, which is stated in the C.F.R. Accordingly, where the specification contains page numbers and paragraphs only, it is safest to cite the page
number, paragraph and line of the paragraph to ensure compliance. However, it seems that a citation to a paragraph that fails to specify a line number may qualify as a
non-substantive defect and may not cause the Appeal Brief to be held as non-compliant. Further, Applicants should cite to the application itself and
NOT to the Pre-Grant Publication thereof.
Claims Appendix: Only the claims actually on appeal should be listed here.
Per the reasons provided by the Chief Judge of the BPAI, including all of the sections and meeting all of the requirements for an Appeal Brief set forth in 37 C.F.R.
§§ 41.37(c)(1)(i)-(x) is naturally the safest route to compliance. It is possible that the new appeal procedure will not be as lenient in practice as it appears at first blush.
Regardless of the standard that the BPAI adopts for what constitutes a non-substantive defect, Applicants can take comfort in the knowledge that the application of whatever
standard develops will be more uniform under the new procedure.
Today, the Court of Appeals for the Federal Circuit ("CAFC") affirmed that a written description requirement separate from the enablement requirement exists under
the first paragraph of 35 U.S.C § 112. For the full opinion, please click
Here.
The CAFC held that
If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written
differently. Specifically, Congress could have written the statute to read, "The specification shall contain a written description of the invention, in such full,
clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same," or "The specification shall contain a written description
of the manner and process of making and using the invention, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make
and use the same."
(Ariad Pharmaceuticals et al. v. Eli Lilly and Company, Slip Op. at 11). The CAFC, quoting Montclair v. Ramsdell, 107 U.S. 147, 152 (1883), noted that
it was their duty to give effect, if possible, to every word and phrase of a statute (Id.). Thus, the written description requirement was held to be a separate
requirement from enablement.
However, while upholding a separate written description requirement, with respect to "possession", the CAFC stated that
The term 'possession,' however, has never been very enlightening. It implies that as long as one can produce records documenting a written description of a claimed
invention, one can show possession. But the hallmark of written description is disclosure. Thus, “possession as shown in the disclosure” is a more complete
formulation.
(Id. at 24). Accordingly, the specification itself must demonstrate possession of the claimed invention. As such, basic research by universities cannot be
patented; research alone is unpatentable. Rather, the research must be reduced to some concrete, disclosed form. While universities may initially view such a
ruling as disadvantageous, patents on abstract ideas are impermissible even without the Ariad decision. Hopefully, the Ariad decision will encourage
further cooperation between corporations and universities to more quickly reduce research into practical forms and to eventually commercialize inventions.
As expected from their previous dissents, Judges Rader and Linn took the position that there is not a separate written description requirement. However, the majority
ruled that separate requirements for enablement and written description exist, with a slight clarification of the written description standard from showing "possession"
to "possession as shown in the disclosure". A more thorough analysis of the case will follow shortly. For a background of the Ariad decision,
please use the navigation menu on the side of this site under
Archived Content 
Potential Ariad Outcome, or click
Here.
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On March 10, 2010, the USPTO and UKIPO (United Kingdom Intellectual Property Office) announced a commitment to develop joint action plan to assist in reducing patent
application backlogs (click Here to view the press release).
As noted in previous FoundPersuasive posts, a primary motivation of Director Kappos is to reduce the patent application backlog, having been tasked to do so by
Secretary of Commerce Gary Locke. The USPTO and the UKIPO have both committed to develop a plan to optimize reuse of work on patent applications that are filed jointly
at the USPTO and the UKIPO. Likely, art-based rejections made by one Office will be reused to the extent possible in rejections by the other.
It appears that reducing backlogs may have a significant economic benefit as well. Per the USPTO press release, a UKIPO study indicates that patent backlogs may
cost the global economy as much as $11.4 billion per year. In the press release, Director Kappos also indicated a belief that "[e]very quality patent application that
sits on the shelf represents jobs not created." Work-sharing efforts are one way to attempt to reduce the backlog. While Director Kappos stated that previous
work-sharing efforts by the USPTO have been applicant-driven, it appears that the USPTO has taken a strong interest in work-sharing between patent offices. Accordingly,
this model of work reuse may be expanded to other countries in the near future who perform quality patent examination. Canada, for instance, with its rigorous requirements
to become an Examiner and high quality, seems to be a good candidate.
The USPTO work-sharing program, if sufficiently expanded, would also have cost-saving benefits for PCT applications that will enter the national stage in multiple
particiating countries. Applicants could reuse much of the reasoning regarding why a claimed invention differs from the cited art in responding to
art-based rejections, taking into account local requirements. Such reuse should reduce the time required to respond to similar rejections in Responses filed in various
participating patent offices, thus reducing overall cost for legal services.
In summary, the work-sharing agreement between the USPTO and the UKIPO should lead to minor reductions in patent backlogs. If the program works, agreements with patent
offices of other nations may be established, further reducing backlogs. Additionally, PCT Applicants should see cost reductions commisurate with the number of copending
applications they have pending before participating patent offices.