Friday, July 27, 2012

Applicant files computer application without drawings and loses petition arguing "drawings not required"

Takeaway: The Applicant filed a software patent application which referred to drawings, but the filing did not actually include the drawings. The PTO sent a Notice of Incomplete Application. In response, the Applicant filed a Preliminary Amendment with drawings, and a Petition to request that the application be granted a filing date as of the original filing date. The Petition argued that drawings were not required to comply with § 113, and cited  MPEP § 608.02.III, which says that a drawing is not required if the application contains a process claim ("process" or "method" in the preamble). The PTO denied petition, stating that "A review of the specification indicates that drawings are required." (Serial No. 12/362,457, available through Public PAIR.)

Details:
Application of Cornwall
Serial No. 12/362,457; Tech. Center 2800
(Available on Public PAIR)

On January 29, 2009, the Applicant filed an application titled "Endpoint Classification and Command Processing" (classified by the PTO as Communications: Electrical). No drawings were included with the filing.

On February 19, 2009, the PTO sent the Applicant a Notice of Incomplete Application. The Notice indicated that "a filing date has NOT been accorded ... for the reasons indicated below" and also included this statement:
Application was deposited without drawings. 35 U.S.C. 113 (first sentence) requires a drawing "where necessary for the understanding of the subject matter sought to be patented." Applicant should reconsider whether the drawings are necessary under 35 U.S.C. 113 (first sentence).
On April 20, 2009, the Applicant responded to the Notice by filing a preliminary amendment with drawings. The Amendment to the Drawings section read: "Five replacement drawing sheets including Figures 1-5 are included herewith."

On the same day, the Applicant filed a petition with the Office of Petitions to request that the application be granted a filing date as of the original filing (January 29, 2009). The petition argued that drawings were not necessary to the understanding of the invention since "all of the claims ... are directed to a method for 'identifying the features of an endpoint' and 'a method operative to collect packet data.' In support of the argument, the Applicant cited to MPEP § 608.02.III:
An OPAP formality examiner should not treat an application without drawings as incomplete if drawings are not required. A drawing is not required for a filing date under 35 U.S.C. 111 and 113 if the application contains: (A) at least one process claim including the term "process" or "method" in its introductory phrase;

Six months later, the PTO issued a Petition Decision which denied the request. The Petition stated:
A review of the specification indicates that drawings are required. Drawings are required under U.S.C. 113 for the understanding of the subject matter sought to be patented. The filing date will be the date of the submission of the drawings.

Two months after the Petition Decision, and ten months after the original filing, the PTO issued a Filing Receipt granting a filing date of April 29, 2009 (the date of the Preliminary Amendment with drawings). 

My two cents: It's pretty clear what happened here. This was a computer case, and the original specification referred to figures. So clearly the intention was to file with drawings, but the drawings were inadvertently omitted. (Unlike a chemical case, which I'm told are routinely filed with drawings.)  So the attorney was forced to argue "drawings not required." And even found an MPEP section that directly supported his position.

It seems weird that the MPEP specifically says you can get away with no drawings if you have a method claim yet the Petitions Office summarily denied the petition with the conclusory statement "a review of the spec indicates that drawings are required". [I know the MPEP isn't law, but still.]

Whether drawings are "required" is actually only part of the inquiry, because § 113 has two parts. The second sentence "addresses the situation wherein a drawing is not necessary for the understanding of the invention, but the subject matter sought to be patented admits of illustration by a drawing and the applicant has not furnished a drawing." (MPEP § 608.02.IV.) The MPEP goes on to explain that in such cases, the application should be granted a filing date, but the Examiner should require drawings under 37 CFR 1.81(c) or 1.83(c). 

That's the Applicant's scenario, exactly. Perhaps the petitions attorney was confused about the two prongs in § 113. In hindsight, maybe it would have helped if the Applicant mentioned this in the petition. "My app complies with the first sentence of § 113. And if it doesn't comply with the second, well, then, I still get a filing date." 

As an aside, I find it amusing to hear that a method claim in a software case requires a drawing "for the understanding of the invention." A flowchart depicting a sequence of three boxes with text mirroring the claims just doesn't do much to help me understand the invention. And I think I could write a perfectly enabling software patent application with no figures that should win on a petition like this. I would never do this in the real world, since there is no upside and a lot of downside. But from a purely intellectual point of view, I simply don't think all software applications require drawings to understand the invention.

8 comments:

  1. The rest of 608.02 III says "a drawing will be considered necessary under the first sentence of 35 USC 113 in all applications where the drawing is referred to in the specification and one or more figures have been omitted."

    Perhaps the Petitions Office was implicitly relying on this interpretation of 113?

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    1. Rusty, you got it in one! I missed that part.

      It's interesting to me that an Applicant isn't refused a filing date when he attempts to avoid drawings altogether (inferred from no reference to drawings in the spec). While at the same time the Applicant is charged a huge penalty, ie, no filing date, when he prepares drawings (inferred from having reference to drawings in spec) and then makes a simple mistake by forgetting to file them.

      Why the grossly disparate treatment?

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  2. It took the Applicant two months to respond with drawings? Ouch...

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  3. As usual, Karen raises very good points. In any event, drawings should have been filed ASAP.

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    1. >drawings should have been filed ASAP.

      As soon as the Applicant realized, certainly. For all we know, the Applicant didn't even realize until the Notice of Incomplete was received. [A good reason to check PAIR shortly after every filing, to make sure everything really was filed.]

      But yeah, the Applicant waited two months *after receiving the Notice*. That's a big deal, since the clock is still running on your filing date.

      Short of waiting on the client to provide drawings, I can't think of a good reason for such a long wait. If I had to guess, I'd say that the attorney didn't realize that a) filing date was not granted and/or b) drawings were missing.

      I can imagine an environment in which Notice of Incomplete is treated as Notice of Missing Parts, ie, not really requiring much attorney involvement. But as we see here, Notice of Incomplete is a *big* deal, especially when the Notice says "filing date not accorded".

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    2. Wish I knew more about the backstory. Surely if the spec actually referred to figures, they must have had some figures on hand. They could have immediately filed those and then petitioned for the earlier filing date. I can't fathom why they waited. For all we know, they fought for the earlier filing date because it would have helped them avoid a bar date. On the other hand, they might have told their client that they would not proceed any further unless the client paid down their balance. Still, this seems like a practitioner screw-up and a large client unpaid balance shouldn't get in the way of correcting a filing error.
      Also, I have enough experience dealing with the BPAI to know that they often don't get the law correct. As long as all the subject matter disclosed in the figures was described in the specification, there is no basis for the position that the filing was incomplete if those drawings truly were not necessary.

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  4. applicant dun goof'd based on ignorance and misunderstanding

    what else would you expect for a software patent application

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  5. This exact thing happened to me. I filed a Petition arguing drawings weren't required and noting the same MPEP section. Petition granted.

    Feeling lucky!

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