June 2010
DigiTimes
Authored by Richard V. Burgujian, Esther H. Lim, and Ningling Wang
Obtaining a strong, valuable U.S. patent remains a challenging task requiring an understanding of both technology and the latest legal requirements. In the United States, patent practice is complex and evolves constantly as precedent-setting cases are decided by courts. Thus, those seeking a quality patent in the United States should be aware of practical considerations and strategies in preparing and obtaining a U.S. patent.
Introduction. U.S. patent applications undergo a process of “prosecution” in the U.S. Patent and Trademark Office (USPTO) before issuing as a patent. During patent prosecution, a USPTO examiner evaluates the patent application for conformance with various formalities. The examiner also determines whether the claims, which define the legal scope of the invention, are patentable. Patent prosecution proceeds as an interactive process between the examiner and the applicant or the patent attorney or agent representing the applicant.
The interactive process of patent prosecution builds up a written record called the file history of the application. The file history is an important part of an issued patent and is considered to be intrinsic evidence, along with the patent itself, used in determining claim scope in any later litigation involving the issued patent. For example, in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), the U.S. Supreme Court stated that any amendments to the claims made during patent prosecution may limit claim scope under the doctrine of equivalents.
A well-prosecuted patent application should not only result in claims with appropriate scope, but also leave a clean and coherent file history. Patent claims with appropriate scope and a clean and coherent file history are the foundation of a strong and enforceable patent. Taiwan companies should be aware of general strategies and considerations when prosecuting U.S. patent applications to obtain a strong, enforceable patent. Following are several practical considerations and strategies:
Strategically use examiner interviews. It is the USPTO’s policy that all correspondence with the examiner during prosecution of a patent application is in writing, and that correspondence forms part of the file history. Consequently, an applicant needs to be careful when interacting with the examiner and should avoid stating anything in writing that might later adversely affect the issued patent. However, being too careful may limit the applicant’s ability to argue patentability and/or limit the applicant’s choices to explore alternative claim amendments. An oral interview with the examiner may provide a strategic solution for this type of situation.
The USPTO encourages applicants to conduct an interview with the examiner when the interview can serve to clarify specific issues, lead to a mutual understanding between the examiner and the applicant, and advance prosecution. As such, the applicant has a large degree of freedom to explain the invention during the interview, with less concern about the file history, because only limited details of the interview may be recorded.
To effectively utilize the interview, the applicant should be prepared to discuss not only issues addressed by the examiner’s rejections of claims, but also alternative claims or claim amendments. The applicant can try to obtain the examiner’s opinion on current claims as well as alternative claims or claim amendments that the applicant may wish to propose. Under such conditions, the interview can quickly lead to allowance of the patent application without creating an undesirably limiting written record.
Preparing for and conducting interviews may cost more than filing a response in the USPTO. However, it is often an effective method to advance the prosecution of a patent application when used skillfully and, by leading to allowance of the application, may save cost in the long term.
Ensure patentable subject matter. Recent developments in U.S. patent law reflect a trend of setting higher standards for patentability. For example, in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the U.S. Supreme Court made it easier for the examiner to establish obviousness of claims based on a combination of prior art. Further, in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), cert. granted sub nom. Bilski v. Kappos, 129 S. Ct. 2735 (2009), the Court of Appeals for the Federal Circuit held that claims directed to a method of managing the consumptive risk costs of a commodity sold at a fixed price are not directed to patentable subject matter because the method is not tied to a machine or does not transform an article to different state or thing--a new standard referred to as the “machine-or-transformation” test. Although the United States Supreme Court is still reviewing the Bilski decision, applicants, in the meantime, are well advised to consider related prosecution strategies.
For example, in order to ensure that an issued patent contains claims capable of withstanding such higher standards of patentability, the applicant needs to prosecute claims in a manner consistent with the most recent developments in patent law. For example, in the case of some method inventions, the claimed subject matter needs to be tied to a machine, such as a computer, or to include a certain form of transformation. Also, when arguing the patentability of claims over prior art during prosecution, the Supreme Court’s KSR decision should be considered. For example, after KSR, arguments solely focusing on lack of motivation to modify or combine prior art references may not be effective.
Amend or argue less. During prosecution, especially when responding to rejections based on prior art, the applicant should set a goal of doing less. That is, the applicant should only present arguments and/or amendments necessary to overcome the prior art rejection. The less the applicant puts in the written record, the more flexible the patentee can be when enforcing the patent.
To do less, the applicant should avoid over-distinguishing prior art. For example, if the examiner cites a prior art reference with features F1 and F2 but only correlates feature F1 to a claim element A, the applicant only needs to argue that element A is different from feature F1 to overcome the prior art reference. The applicant does not need to further argue that A is also different from feature F2. Otherwise, if feature F2 is argued, the feature F2 may be unnecessarily excluded from the scope of the claim and may prevent the claim from covering a product or process that includes feature F2 in a later patent litigation.
To do less, the applicant should also avoid over-arguing distinct elements recited in a claim. For example, assume a claim includes claim elements A and B, and the examiner rejects the claim by asserting that claim elements A and B correspond to prior art features F1 and F2, respectively. To overcome the rejection, the applicant should choose a stronger argument regarding either claim element A or claim element B, but not both. Because one distinct element is enough for establishing patentability, arguing both elements only introduces into the file history more arguments that may be used against the issued patent in later litigation, and with only marginal benefit.
Prepare for appeal. Most foreign applicants, including large foreign companies, often shy away from the idea of appeal to the Board of Patent Appeals, due to cost as well as unfamiliar procedural considerations. However, as part of patent prosecution, an appeal is not unusual and can be used to the applicant’s advantage when planned carefully.
One significant advantage of appeal is that it may break an impasse between the applicant and the examiner, when the examiner is not persuaded by the applicant’s amendments or arguments. The examiner is required to draft an answer to the appeal brief and the examiner’s work will be critically reviewed first by his supervisor and later by the Board. In short, the examiner will be under pressure during the appeal process, which may cause the examiner to more seriously consider the applicant’s position, which may result in the examiner reopening prosecution or allowing the application.
The applicant should also carefully consider what to appeal. There may be many unresolved issues in the final rejection, and the applicant needs to look at all the unresolved issues and determine what issues would be worth appealing. To maintain focus in the appeal, the applicant should minimize the issues to be appealed, and ideally only select the most important issues or the strongest arguments for appeal. The remaining issues should be resolved with the examiner before the appeal, such as in an interview.
Seek qualified patent counsel. Because of the complexities of patent prosecution procedures and frequent changes in U.S. case law, Taiwan companies should consider retaining qualified U.S. counsel to provide guidance and legal services. A well-prosecuted patent application should yield a strong, enforceable U.S. patent that can be a great asset to its owner.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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