Monday, September 13, 2010

Interesting blog posts

  • Over at PharmaPatents, Courtenay Brinckerhoff has a post "Pharma Cases Dominate New USPTO Obviousness Examination Guidelines." Courtenay doesn't just summarize the pharma cases in the guidelines, she also provides her insight.
  • At the Intellectual Property Directions blog, Bruce Horwitz has an interesting post "Summary Judgment - What should your application include?" Bruce makes a case for including Background and Summary sections in patent applications.
  • Bruce writes the post in reaction to a recent opinion, from patent searcher Greg Aharonian, that Background and Summary are nothing but trouble. Greg's "Internet Patent News Service” newsletter is distributed via listserv – subscription instructions are here.
  • On a recent comment thread on PatentlyO, I ran across a very insightful statement about claim drafting: "the art of claim drafting is being vague to exactly the right extent." (Read the full comment here.) I'll add my own variation: the art of claim drafting is being vague to exactly the right extent and in areas that have been carefully considered. In other words, using the word "connected" is good if you've considered that it might be interpreted as directly or indirectly connected. If you haven't thought about this, it's vague in a bad way. 
Related posts: I've mentioned the Intellectual Property Directions blog before. At this post here, I mentioned  another post by Bruce Horowitz about what to include in a patent spec, which I characterized as "unconventional." I don't always agree with Bruce, but I welcome opposing points of view that are reasonable and well-explained, as his are.


    1. Bruce doesn't make a good argument, in my view.

      The requirement for the specification is section 112. There's nothing in 112 that says you have to have a background, or any other section, other than the claims. Theoretically, since claims can often supports and enable themselves, you could file an application including nothing but claims (not even drawings).

      There are PTO rules stating that a background and a summary "should" be included. (37 CFR 1.77 and 1.73). That language pretty clearly indicates that these sections are encouraged, not required, by the agency - as evidenced by the fact that the PTO has issued many patents without one or both.

      More importantly, this is an agency rule that doesn't affect the patentability defenses under 35 U.S.C. 271. The CAFC has been very clear in the past that minor omissions and clerical errors on the part of applicants, if they get past the PTO, and don't affect 271, are excused (i.e. filing a continuation one day late). I can't imagine the CAFC ever saying that a patent failed 112 because it lacked a summary or background.

      There is a good reason for including one or both of these sections, which was discussed on the GreedyIP board, and is not mentioned by Bruce: some foreign jurisdictions require them. Thus, you can potentially get into new matter trouble unless you have one or both in foreign jurisdictions. I don't know anything about foreign patentability requirements, and the thread died at GreedyIP without resolution of what was better (including or excluding these sections).

      In any case, and especially if you are not filing abroad, I think that Bruce is a being overly worried (or not worrying enough about the damage that these sections can do). I see virtually zero benefit to including a background section.

      Karen has previously mentioned (I believe) the benefit, from a background section, of quickly getting the examiner to understand the novelty and nonobviousness of the subject matter. However, it's not clear to me that:

      1. this can't be done adequately off the written record, or at least outside the original disclosure; and

      2. that it is more efficient for the Examiner to understand the invention.

      Regarding 2, there are other things that relate to the speed of examination: the length of the claims (most importantly), the strength of previous arguments, the number of previously withdrawn rejections, the number of RCEs filed, the number of appeals, etc. Over the years, I've gotten a distinct impression that the PTO likes to put up a fight for 2 or 3 rounds of prosecution before deciding that the application should generally be allowed with reasonable amendments. This isn't always the case, but mostly. And this happens whether the examiner understands the invention or not. In many cases, the Examiner’s failure to understand the invention works in your favor, not against, because a poorly understood invention is more difficult to reject.

    2. Bruce's post said "I sure don’t want to be the (losing) test case whose patent is invalidated in court for lack of a background or summary."

      The way I look at it, there is tons of case law showing bad things that can happen when you have a Summary and/or Background. And I agree with Kip that there is no basis in the statute or in case law for a district court to find a patent invalid for lack of a summary or background.

      So to me, Bruce's position is overcautious. But I also appreciate that every attorney draws the line in a difference place, and Bruce's position is very reasonable. In particular, the type of "harmless" Summary and Background that Bruce describes reduces the risk of having those sections used to limit your claims.

    3. Kip Werking said:
      >However, it's not clear to me that: ...
      >2. that it is more efficient for the Examiner
      >to understand the invention.

      Interesting. Kip points out that many of the barriers to getting to allowance seem unrelated to the Examiner's understanding of the invention. So that one of the few things practitioners have in our favor is hard-to-understand. Take that away, and Examiners will have an even easier time rejecting.

      Definitely counterintuitive, but if you start out with a cynical view of the examination process, it makes a certain amount of sense.

      Of course, if you believe that examination is a purely cooperative process between applicants and examiners, then you're probably appalled by this way of thinking.

    4. >one of the few things practitioners have in
      >our favor is hard-to-understand.

      I'm just being honest. I wouldn't go so far as to say that practitioners should take positive steps to obstruct an examiner's understanding of the technology (which sounds like inequitable conduct).

      I am just observing the (tragic) reality that improving the examiner's understanding that delay, rather than accelerate, the issuance of a Notice of Allowance.

      For example, an examiner with a good understanding of the technology, but a bad understanding of the law (steeped in a culture of "reject, reject, reject") can still force you to appeal applications that should otherwise be allowable. It might even be easier for the examiner to force you to do that if he/she understands the tech better. And many or most examiners are persons of less than ordinary skill in the art.