Read these blogs for Alice § 101 rejections

I work primarily in the computer and electronics arts, so I deal a lot with § 101 rejections in the wake of Alice v. CLS Bank. I haven't found any magic bullets for overcoming these rejections, but I have found some bloggers that feature posts on this topic.

Here are a few of my favorites:

•     The Software Intellectual Property Report ("Reporting from the nexus of software and intellectual property law" from Bejin Bieneman PLC)
•     BilskiBlog ("Analysis and Commentary on patent eligibility and patent strategy", from Fenwick and West)
•     USPTO Talk ("Observations about US patent examination and prosecution from a patent practitioner")
•     Software Patents Blog ("Software Patent Law Blog", from Schwegman, Lundberg & Woessner)

Blogs covering AIA Inter Partes Review, Post Grant Review and Covered Business Method Review

My blog covers the A in PTAB – meaning that I discuss cases where the Applicant has appealed an Examiner rejection during prosecution. The T in PTAB stands for Trials, and it looks like these Trials proceedings are big business, because I've found quite a few blogs that cover PTAB activity.

Here's a quick list:

US PTO Litigation Alert
Patents Post Grant
Reexam Link
IPR-PGR
PTAB Trial Blog
IPR Petition Denied
Post Grant AdvocATor

A bit more background for those of you that aren't familiar with PTAB Trials. The jurisdiction of the Board was enlarged significantly by the AIA. The PTAB still handles appeals of Examiner rejections during prosecution  and appeals during ex parte reexamination. But the PTAB now also handles Inter Partes Review, Post Grant Review and Covered Business Method Review.

Inter Partes Review (commonly abbreviated as IPR) is analogous to old inter partes reexamination – though there plenty of differences. Post Grant Review is like Inter Partes Review, but is limited to patents filed under AIA rules and to a 9-month period after issuance. Covered Business Method Review is like Post Grant Review – except that filing date is irrelevant and it is limited to "covered business methods." This link summarizes the differences in chart format.

In the past, I've found a lot to learn from reexamination appeal. Applicants tend to go into more detail in their arguments, as reexamination is an expensive process with higher stakes. This is even more true for IPR and its brethren, so I'll be blogging about IPR, PGR and CBM decisions from time to time, if I see some good stuff.

Federal Circuit decision reminds prosecutors to pay attention to entire chain in claim to priority

The Federal Circuit decision Medtronic Corevalve v Edwards Lifesciences deals with priority claims and underscores the importance of making sure each application in the continuity chain has a proper reference to the entire chain. 

Ryan Alley covered this decision on his Federal Circuit blog. Read Ryan's post here: 
Medtronic Corevalve v. Edwards Lifesciences – Family & Priority Lessons

Ryan's blog is valuable to me because he always offers insight as to how a decision affects patent prosecutors. Here, Ryan suggests that in reviewing the chain of priority claims, we look at the actual specification and any amendments applied, and not rely on Filing Receipts or PAIR data. Ryan also reminds us that a defect can be cured during the application lifetime by a Petition to Accept Delayed Benefit Claim, or by reissue if the defective application has already issued.

Blog Posts of Interest

If you're not a regular reader of Ryan Alley's blog, you should be. Ryan covers Federal Circuit cases, with a sharp focus on the aspects that interest patent prosecutors. For example, his recent post on 
In re Abbott Diabetes examines how the Federal Circuit limited the Board's expansive view of Broadest Reasonable Interpretation. And his recent post on Apple v. Samsung discusses the ramifications of using "each" in the context of "plurality."

I've always thought the Federal Circuit's application of 112P6 to software claims was illogical, but never sat down to write a cogent article about why. Kip Werking did a great job of explaining why the Federal Circuit's position is nonsense in his post The Illogic of the Algorithm Requirement for Software Claims at IP Watchdog. 

Property, Intangible, a blog written by in-house counsel Pamela Chestek, covers ownership of IP. Her recent post Assignment of a Continuation-In-Part discussed some tricky issues that can arise in drafting assignments to cover CIPs.

Later this week I'll have a guest post about a post-Therasense district court case involving declarations and inequitable conduct.

Federal Circuit blog with prosecution focus

A new blog has come to my attention: the Ryan Alley Intellectual Property Law Blog. The focus of the blog so far is Federal Circuit decisions, but with a twist: the posts are written from a patent prosecutor's point of view. For example, Ryan's post on last week's Ultramercial v Hulu decision was subtitled "Claim Drafting Lessons," and the post on CBT Flint v. Return Path (indefiniteness) was subtitled "Prosecution Errors."

I particular like Ryan's blog because each post includes a Lesson section and a Commentary section. I welcome Ryan to the blogosphere and look forward to future posts.

Blog posts that pose interesting questions about claim scope

Blog Posts that pose interesting questions about obscure aspects of claim scope:

• IPBiz wonders if including a claim in a provisional can lead to prosecution history estoppel?
• PatentPoints wonders if including reference numbers in a claim can narrow claim scope?

I haven't researched these topics, so don't know the answers, or if clear answers even exist. I read a lot of case law, and I haven't come across these topics before.

New Federal Circuit patent decisions blog

Lots of blogs discuss new patent decisions from the Federal Circuit, so there is probably something for everyone. I find some of them to be too academic for my taste, others are too cutesy, and still others have too many long quotes.

I've found a relatively new Federal Circuit decision blog that I particularly like: Speedy Federal Circuit Briefs. The blogger is C. Allen Black, a patent attorney in Pennsylvania. The blog's format is like a case outline, with sections for Issue, Findings, Lower Court's Disposition and Findings on Appeal. The author usually ends each post with one or two sentences of "Allen's Observations." Another nice touch is that the author posts "No new opinions" when appropriate, which means I don't have to wonder whether I missed something on a particular day.

Prior art is a term of art

Recently I blogged about an inequitable conduct argument involving an inventor characterization of a drawing as "prior art." Specifically, the accused infringer cried "inequitable conduct" for non-disclosure of a drawing in an invention disclosure form, when that drawing was characterized in the disclosure as "prior art." (See my post here.)

The district court in that case ignored the infringer's argument, but why give the infringer any ammunition by using the term "prior art" in the disclosure context? Certainly we want inventors to provide a list of any references they're aware of which may be relevant – but an attorney should be involved in the determination of what is or is not prior art.

The post Keep Your Story Straight: Five Important Patent Terms from the blog IP Law for Startups agrees with me, noting that:

“Prior Art” is a legal conclusion that should be made by an attorney, a judge, or the USPTO. An inventor runs the danger of making an “admission” that a reference is Prior Art – when in fact it is not. 

List of daily BPAI decisions

I found a great resource for those of you interested in BPAI opinions: a list of daily BPAI opinions. This list is much more useful than going to the BPAI site, because the list includes basic information for each opinion. This basic information includes:

• the technology center; 
• the outcome (reversed, affirmed, affirmed-in-part);
• the type of appealed rejections;
• the name of the law firm; 
• the name of the Examiner; and
• case law cited by the BPAI.

This great resource is compiled by James Long, a registered U.S. patent attorney who currently works for the Jianq Chyun Intellectual Property Office in Taiwan.

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.

Usefulness of Pre-Appeal Brief Conferences

The just-n-examiner blog has a new discussion (here) on the usefulness of the Pre-Appeal Brief Conference (PABC). just-n-examiner wonders:

Why would an attorney/applicant go to the time and expense of requesting a pre-appeal conference without first requesting an interview with the examiner?

The post is about examiner interviews as much as PABCs, so read the post even if you never do appeals. And be sure to read the comments thread which includes answers from practitioners as well as input from other examiners.

just-n-examiner has been on my personal reading list for a long time. I just added it to My Blog List here on All Things Pros.

Does squishing an eyeball qualify as "transforming an article"?

I recently discovered the Patently-unOBVIOUS blog. One of the older posts covers the BPAI decision Ex parte Roberts, which contained an interesting 101 rejection. The decision predates Bilski v. Kappos, but it's still relevant today.

The application was about obtaining eye measurements for laser surgery. One of the method claims included steps for obtaining the measurements and correlating the data. The BPAI affirmed the 101 rejection: no transformation and no machine.

Patently-unOBVIOUS makes the interesting point that the claim should be interpreted as inherently applying pressure to the eyeball, and that this should qualify as a transformation of an article. 

My take on this is that the Board did not think as carefully about the claim as Patently-unOBVIOUS did, and would not have affirmed the 101 if they realized that the claim required movement of the eyeball. I say that because another claim explicitly recited "perturbing the cornea," and the Board did not apply a new 101 rejection for that claim.


Check out the full post at Patently-unOBVIOUS, which has the catchy title The Punched Drunk Eye of Schrodinger's Cat.


As a postscript, the Applicant in Ex parte Roberts reopened prosecution after the adverse appeal decision. In addition to amending in an attempt to overcome the affirmed prior art rejections, the Applicant has also tried several different tacks to overcome the 101 rejections. None of them have worked: the Examiner twice rejected different varieties of a computer-readable medium claim, then rejected a method claim which explicitly recites a computer system in the body.

Interesting Bilski Posts

It's been three weeks since Bilski v. Kappos was released, and I've been deluged with blog posts, client alerts, and seminars that amount to nothing but Yet Another Rehash of Bilski.

Still, some folks do have interesting things to say about Bilski. Here are links to a few posts that I think offer A Twist on Bilski rather than Yet Another Rehash of Bilski.

• IP Lawyers: Enough about Bilski Already! Instead, Start Spending Time on Things that Create Value for Your Clients
• Bilski, Babbitt and Baloney 
• 3 x 3 Blind Bilski Justices 
• Is 101 Redundant? 
• A Mere Mortal's Guide To Patents Post-Bilski (Or Why §101 Is A Red Herring)

Reducing IDS paperwork

The new patent blog PharmaPatents has an interesting post here called "Three Easy Solutions to the McKesson Problem." This post suggests several steps which the PTO could implement to reduce the burden of filing IDSes.

If you didn't realize how serious the burden can be under existing PTO rules, read the article "The Exponential Burden of McKesson" (here) in Intellectual Property Today. The article details the costs of cross-citing pending applications and Office Actions in those applications, as some practitioners think is prudent under McKesson Information Solutions, Inc. v. Bridge Medical, Inc.

Unconventional views on what to include in a patent specification

Speaking as someone who drafts patent applications and also looks at those drafted by others, it appears to me to be common patent drafting practice to:

• Avoid discussing the prior art.
• Avoid discussing advantages of the invention — even when qualified by "embodiments." 
• Avoid a clear statement of the inventive aspect(s).

The specific reasons behind these choices are beyond the scope of this post, but suffice it to say that the reasons are grounded in Federal Circuit case law.

Interestingly, there are practitioners out there who go against conventional wisdom, and advocate violating one or more of these rules. Here are three interesting blog posts which not only suggest taking a different approach, but make a case for why their approach is a good idea.

• In How to Effectively But Safely Tell the Story of the Invention, Gene Quinn of IPWatchdog suggests (carefully) explaining why the invention is patentable.
• In Improve Your Chances of Obtaining a Patent at a Reasonable Cost and Time by Demonstrating the “Wow Factor", Jackie Hutter of IP Asset Maximizer Blog explains why the invention is subjectively deserving of patent protection.
• In A CEO's Lament, Bruce Horwitz of Intellectual Property Directions suggests avoiding "patentese" and not trying to obscure the invention.

Patent prosecution resources: blogs with argument boilerplate

Michael E. Kondoudis runs the Patentably Defined blog. Michael's posts offer a lot of advice on making arguments in prosecution, including quite a bit of argument boilerplate.

Found Persuasive is a relatively new blog run by the folks at Leonard, Patel, & Olsen, P.C. They describe their blog as "patent prosecution strategies and templates for the patent practitioner." Click on the "Prosecution Topics" link to find boilerplate arguments for a variety of rejections.

New blog: Florida Patent Lawyer

I find most of BPAI decisions that I blog about through various random methods. But in the case of Ex parte Denison, credit goes to the Florida Patent Lawyer blog -- he discussed the Denison decision here.

I've added this newcomer blog to my blog reader. Not only does it discusses patent prosecution topics (rare), Florida Patent Lawyer covers a nice mix of other topics too, including TTAB decisions and ITC decisions. In short, stuff that you won't find on every other patent blog.

Reexam/Reissue Blogs

I recently found two blogs related to reexamination and/or reissue topics.

Patents Post Grant is a new blog from the law firm Oblon, Spivak which covers reexamination and reissue. It offers lots of practice tips as well as coverage of BPAI, district court, and federal circuit cases involving reexam and reissue.

The Reexamination Center blog seems to post mostly about reexams that were recently granted by the PTO, and requests at district court to stay litigation pending reexam. But in addition to the blog, the website also includes a lot of information about the reexam process (FAQ, mistakes to avoid, etc.).

I've bookmarked both these sites for the next time I deal with a post-grant issue.

Specialized Federal Circuit patent blogs

A lot of blogs cover Federal Circuit patent decisions, but I like to know a little of the backstory too. For that I turn to PATracer, a blog written by two patent litigators. PATracer is different because it covers a case before the decision is issued. This PATracer post on Prometheus v. Mayo is a good example of the type of coverage you'll find: arguments made by both parties, info about the district court decision, and about the oral arguments. While some of the cases on PATracer involve appeal for non-patent issues (jurisdiction, standing, etc.) others do involve substantive patent issues.

Another Fed Cir blog focuses on oral arguments: 717 Madison Place. I've never had a particular interest in oral arguments, but I found this blog interesting enough to add to my Google Reader.

Two newly discovered patent blogs

It's interesting to hear about issues from an in-house point of view. So I'll definitely be reading these two blogs which I recently discovered.

American IPA
"Occasional thoughts on US patent practice" from an in-house patent attorney.

Property, intangible
A blog about ownership of intellectual property rights, written by an in-house IP attorney.