Why KISS will save you CA$H

Until (and perhaps after) the dust settles, keeping your patent strategy simple is likely to be the most cost effective approach. As we all recognize, this is a period of turmoil in the US patent environment. Keeping track of the rules of the game when the Supreme Court, USPTO, and Congress are all making changes puts quicksand under our feet as we plot our patent strategies. By making our patent applications sharply focused on the individual, core innovations that make up our invention we can avoid the risks and costs of trying to comply with some of the uncertain rules either in place or on the table for discussion.

Consider, for example, the new USPTO rules limiting the number of continuation applications you can have in one family. In the past, when you made improvements to your invention, you might choose to file a continuation-in-part with at least one claim overlapping the subject matter of the original application (to gain benefit of the earlier priority date). With the new rules in place, you might not want to "use up" your limited number of continuation applications this way. Instead you might just file a new application with no overlapping claims, understanding that your published application will be prior art.

Similarly, many patentees have intentionally filed "omnibus" applications into which they have packed every new aspect of their invention, knowing full well that they will want to chop it up into divisional applications later. Again, this may no longer be the best approach since the number of divisional applications you can file by right depends on the actions of the USPTO. The alternative of filing several simple, "one invention" applications may serve you better.

If you still don't think you are going to have to pay an attorney significant dollars to help you navigate the new rules with a complicated patent strategy, see the 63 page FAQ document. on the patent office web site. We are sometimes our own worst enemy when we try to be "too clever by half". At least for now, KISS.

"I've got an invention, now what?"

Last week I spoke to a potential client who essentially asked me the question posed in the title: Now that I've invented something, what do I do next to protect my invention. Unfortunately, I needed to explain that, no, she didn't have an invention, she had an idea. An idea that, perhaps, with a bunch of development effort, might become an invention - in which case we could evaluate the pros and cons of filing a patent application.

We've all noticed problems in our daily lives and said something to the effect of "what is needed is a [fill in the blank] that would do [fill in the blank]. The difference between an idea and an invention is the difference between observing a need and filling that need. I wish my garden were lush and beautiful, but without a lot of sweat it will remain a weedy patch.

Previously, most people quickly passed from the idea stage to the "forget about it" stage as they realized A) they didn't know anything about how to implement their idea and B) they had no reason to think their idea would be a commercial success. More recently (this millennium), however, the very public, huge successes of certain ideas (think Google, Facebook, UTube), aided and abetted by television entertainment shows ("American Inventor" reality show, Good Morning America's "Mothers of Invention" contest) have changed people's perception of what they have. Novelty be damned, obviousness - what's that, let's patent this and make a bundle!

This desire to turn every idea into an invention is not limited to "amateurs". Often clever engineers get an ah ha moment and want to rush to the patent office. But again, without the usually hard effort of working through the details they often don't yet have an invention.

Changing the rules in the middle of the game

Last month the USPTO issued some rules changes that become effective on November 1, 2007. Some of these changes (see the patent office slide show at TechRoadmap Files) will result in significant extra expense for inventors. I'll list some of these rules changes below, but a key point that many people may have missed is that these rules will apply retroactively to many currently pending applications! That's right. If you filed an application, say, a year ago and have not yet had your First office Action On the Merits of your claims (a FAOM), that is, not an administrative office action, then the new rules apply to your application (unless your FAOM is mailed before November 1).

The two main rules changes are:

1. A patent is limited to 5 independent claims and/or 25 total claims by right. If you exceed this limit you must file an "Examination Support Document" justifying the excess claims. If you have co-pending applications with even one "patentably indistinguishable claim", then all the claims in all the applications count toward the 5/25 limit. The goal of this rule is to eliminate the virtually unparsable claim sets in some patents.
   
   You must submit a list of all commonly owned applications or patents that have:
   –An inventor in common with the application; and
   –A claimed filing or priority date within two months of the claimed filing or priority date of the application.
   
   Presumably the examiner will look for applications with a patentably indistinguishable claim.
   
   
   
2. An inventor is limited to only 2 continuing applications (i.e., a divisional, a continuation, or a continuation in part) and 1 request for continued examination. The goal here is to preclude effectively infinite pendency (See Lemelson)

Whether you agree with the PTO's goals, whether you think these rules will achieve those goals, the one thing you should probably disagree with is the application of these new rules to patent applications that have been caught in the PTO's molasses-in-January examination speed.

If you have an application on file that has more than the 5/25 claims and has not received its FAOM, you might want to take action now. Have your attorney check with the examiner. After the 11/1/07 deadline you will have to withdraw claims, file an ESD, or try to get it divided into several separate applications (in which case you can have 15/75 total claims).

Good Luck

House votes for changes

Ah well, not unexpectedly the House voted Friday to pass the patent "reform" legislation before it. I guess it will up to the Senate to throttle back the most questionable portions of the law. According to Greg Aharonian's Internet Patent News Service one of the provisions is that you/we, as patent applicants, must now "submit a search report and other information and
analysis relevant to patentability. An application shall be regarded as ABANDONED if the applicant fails to submit the required search report, information, and ANALYSIS in the manner and within the time period prescribed by the Director." [Greg's emphasis]

Up to now you were not forced to prepare a search report of any sort, never mind one in which an analysis was required. I always urge my clients to do at least a first cut prior art search so they don't waste their time and money preparing a patent application which is easily shown to be obvious or anticipated and to submit any findings to the PTO under the duty of candor.

What we don't need is to be forced to do an "analysis in a manner prescribed" by the PTO. Certainly, all submitted reports will say the invention is NOT anticipated or obvious; who would waste their time submitting an application along with a document that says "I think this invention is not patentable". So, okay, maybe this process reduces the PTO load by some factor by eliminating the real crap patent applications.

BUT what happens in all the rest of the cases. Does the PTO accept our analysis? No. Surely the PTO is not going to grant us patents based on OUR analysis. So what happens our analysis is judged "wrong" by the PTO. Isn't that potentially inequitable conduct - just like failing to live up to the duty of candor today? What happens if we miss some prior art that the PTO finds - is it an honest mistake or an attempt to pull the wool over the eyes of the PTO.

This requirement is not just an additional expense for the patentee (bad for the small company for sure) but also allows the PTO to disallow your patent on purely procedural grounds (instead of on the merits) and is clearly a purely arbitrary standard (how long is a piece of string?)

Slow-mo rush to problems

Tomorrow the House is scheduled to vote on a package of IP law "reforms". Although the bill has been pending or at least kicking around for a long time, it is being rushed to a vote in spite of (or perhaps because of) the general feeling that it is significantly flawed. Some people think the sponsors are pushing to a vote as a way to evade the growing chorus of complaints.

Although time is short, you might want to email your congressman and ask for a vote against the bill as it is currently written.

Some of the particular sticky points in the bill are:

• The Applicant Quality Submission (AQS) requirement would make applicants provide a search report of all relevant patent and non-patent literature.


• The bill would reduce or eliminate any enforceability of the existing "duty of candor" requirement.


• The bill would remove the Best Mode Requirement diminishing the
  worth of the U.S. patent system by eliminating the quid pro quo of the patent system, which is based on full disclosure of inventions to the American people in exchange for granting exclusive rights to the inventor for a limited time.


• We would move to a First Inventor to File rule. While bringing us in line with the rest of the world, it also "urges" inventors to invest in their patent applications earlier, perhaps causing budget problems for small entities.


• An Apportionment of Damages provision would limit damages for an infringer and might thereby undermine patents and encourage infringement.