logo

Category : patent basics

A Renewed Call: Repeal the Single Sentence Rule for Patent Claims

By Stephen B. Schott

Like all elementary school graduates, I learned that a single sentence should be short. One source suggests that a well-written work should average 20 to 25 word sentences.[1] With that as the guide, sentences averaging 50 words would raise the ire of a 3rd grade teacher. Those averaging 100 words would drive a sane person mad. And a 250 plus word sentence would drive even Proust to distraction.

But sentences of such prodigious lengths are commonplace in patent law. The offending sentences are patent claims.[2] These claims are a U.S. patent’s most important feature. It is here that the inventor, or more likely the inventor’s attorney, sets forth the “metes and bounds” that define the invention. The claims serve as property lines: Cross into those lines with your product and you infringe the patent.

With such importance placed on claims, you would expect them to be readable. You would at least expect them to have been the subject of the “plain English” movement, perhaps best summed up by Albert Einstein when discussing science: “Most of the fundamental ideas of science are essentially simple, and may, as a rule, be expressed in language comprehensible to everyone.” But the claims—despite the substantial time spent drafting and interpreting them—are not a place where the discerning reader finds linguistic respite.

Why do patent attorneys write claims this way? The simple answer is that even in a plain English advocate’s hands, patent claims are doomed to obfuscation by the very authorities that require them. The U.S. Patent and Trademark Office (USPTO) almost insists that claims be unreadable. In the USPTO’s own words: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.”[3] Thus, the plain English drafter can painstakingly weed every occurrence of “utilize.” And excise “said,” replacing it properly with “the.” And even strike “of the” in favor of possessives. But after all this careful work, the drafter may be left with an impenetrable sentence of a length not seen since Matthew begatted Jesus’s lineage back to Abraham.

The consequence of the USPTO’s “single sentence rule” requires the patent drafter to cram several paragraphs of description into a single sentence. The rule forces claim drafters to convert otherwise sensible sentences into multiple clauses beginning “wherein,” such as: “wherein the stringed instrument includes a vibrato bridge movable to vary the tension of each of said one or more strings wherein each of said one or more strings is connected at one end to the actuating means and wherein the actuating means is carried by the vibrato bridge.” In a patent attorney’s hands, the above clause contains reasonable usage. In the hands of any other person, that clause—part of the lengthier entirety of the claim—justifiably drives them apoplectic.

Your next question will probably be: “Why doesn’t someone do something about this clearly outdated rule?” Alfred A. Fressola, patent attorney, inventor, and principled-writer did. During his application’s prosecution, Mr. Fressola, equal parts aware of and perturbed by the USPTO’s single sentence rule, wrote a claim in verboten multi-sentence form. Upon examination, the USPTO examiner formally objected to the claim but also admitted that it was “clearer” than a similar single sentence variant.

Armed with the examiner’s admission and the knowledge that he was on the side of right-writing English peoples, Mr. Fressola petitioned the then-Commissioner of the USPTO, Harry F. Manbeck, Jr., to review the examiner’s objection to his multi-sentence claim. In denying Mr. Fressola’s petition, the Commissioner quoted the Manual of Patent Examination and Procedure (MPEP) and further drew on the weight of 150-plus years of singe sentence tradition. In doing so, he concluded that the single sentence nightmare is “the proper and only way of drafting a claim in compliance with the statutory requirement of 35 USC 112, paragraph 2.”

In addition to 150 years of single sentence history, the Commissioner stated that “the courts do not appear to have had any difficulty dealing with long claims.” The Commissioner went on to argue that “[t]he single sentence requirement promotes clarity and precision…by eliminating…multiple complete sentences.”[4] With such defenses of run-on sentences, it’s no wonder Mr. Fressola (according to him, to his partners’ bemusement) appealed the Commissioner’s decision from the USPTO to the U.S. District Court for the District of Columbia.

The D.C. Circuit gave Mr. Fressola’s case short shrift, deciding that the single sentence requirement was nothing more than a formal—not a substantial—requirement, and thus properly administered by the USPTO. Mr. Fressola—still the inventor here as well as defender of English and patent attorney—tired of his appeals on this point and eventually secured US Patent 5,617,332.[5]

It is a rare situation that someone would take the time to appeal the single sentence rule, allowing their patent application to languish for years in the administrative and court processes while challenging a clearly written—if wrong—requirement. But kudos to Mr. Fressola for being in the unique position to take up the challenge and follow it through.

Mr. Fressola’s position that Section 112 is best-served not by tradition, but by clarity in writing that “particularly” and “distinctly” describes the invention, makes sense. With the potential arrival of a new USPTO Director, I hope that Mr. Fressola’s sensible position becomes the rule. Writing claims in multiple sentences, while perhaps flouting 150-plus years of claim-drafting tradition, promotes clarity. It further complies with the statutory requirement that claims be “particular” and “distinct.” That such claims would differ from the international one-sentence norm would only place the United States at the forefront of a sensible change in patent claim-drafting rules. Not only would the patent bar be happier for it,[7] but so would the examiners who are charged with interpreting needlessly unreadable claims, as well as the judges and juries who examine claims in excruciating detail.

___
[1] Garner, Bryan. Garner’s Modern American Usage, 3rd Ed. 2009.
[2] To spare you some frustration, I have not included the entire text of one of these monstrosities in this article and for that, I accept your thanks.
[3] Manual of Patent Examination and Procedure (MPEP) Section 608.01(m) (the MPEP is guidebook that provides the procedure to be used by examiners when they examine patent applications).
[4] Section 112 requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” The Commissioner stated that courts “do not have difficulty” parsing long claims, and as proof, noted a civil action involving a 268-word claim.
[5] I beg to differ: I have often heard judges beg on their own and on their juries’ behalves for patent attorneys to take mercy on them and not overcomplicate things with dense writing.
[6] Mr. Fressola unsuccessfully appealed another aspect of his patent application, an omnibus claim, to the Court of Appeals for the Federal Circuit.
[7] A version of this article originally published in 2009. The bar’s response to it then was skeptical, so maybe I’m wrong and patent attorneys want less clarity. If so, it may put them at odds with their clients’ wishes.

New USPTO Director Andrei Iancu’s Pro-innovation Remarks

Following the last several years where Congress, the courts, and even the former U.S. Patent and Trademark Office Director were accused of being anti-innovation, the new director Andrei Iancu delivered these pointedly pro-innovation remarks yesterday. Innovators should applaud what some believe is an overdue return of a painful pendulum swing. Here is his introduction:

Dr. Eli Harari, an electrical engineer, always tinkered and invented things. He tells, for example, that he invented a new type of fishing rod, although he never fished.

“Imagine how much more successful you’d be,” his wife said, “if you’d invent in a field you knew something about.”

And so he did. Dr. Harari is credited with inventing the Electrically Erasable Programmable Read-Only Memory, also known as EEPROM, or “E-squared PROM.” This was in the 1970s, when Harari was working at a major corporation, where he was a star. But a few years later, he wanted to be on his own, to invent, to perfect, to commercialize. In his late 30s, he was also married and had a child. So in the prime of his career, with a family at home, Harari left his comfortable life with major corporations.

Seeding it in part with his own money, Harari started a company of his own. And he did not even draw a salary the first several months. He risked everything: his career, his finances, and his family. That first company actually did not work out well, but a few years later, Harari risked it all again and co-founded a new company, which he ultimately called SanDisk.

At SanDisk, Harari built upon his EEPROM technology, added critically important new inventions, and perfected flash memory data storage. And he obtained patents, including on how to turn memory chips into reliable systems. Harari’s flash technology came to be used almost universally in devices like digital cameras and cell phones. In 2016, Western Digital acquired SanDisk for $19 billion.

But think about it: without patents, how could someone like Dr. Harari risk everything, put aside his secure career at an established company, and strike it on his own?

As Dr. Harari told me, “The only asset you have is your idea. If you have no way to protect your idea, you are at the mercy of the next bad guy. The U.S. patent system is genius, really the bedrock foundation of capitalism.” Harari’s sentiment was echoed by President Ronald Reagan, who said in 1982: “Throughout our nation’s history, the patent system has played a critically important role in stimulating technological advances.”

How true that is.

Yet today, our patent system is at a crossroads. For more than just a few years, our system has been pushed and pulled, poked and prodded. The cumulative result is a system in which the patent grant is less reliable today than it should be. This onslaught has come from all directions. There has been major reform legislation, and proposed legislation. There have been massive changes brought about by major court cases. And the USPTO itself has taken a variety of actions in an effort to implement these changes. Plus, importantly, the rhetoric surrounding the patent system has focused relentlessly on certain faults in, or abuses of, the system—instead of the incredible benefits the system brings to our nation. We see the result of this years-long onslaught in your own study, the U.S. Chamber’s 6th Annual International IP Index.

I don’t need to tell this audience that the American patent system, which in prior years was deservedly ranked as the number one system in the world, in 2017 fell to number 10. And this year it fell further, tied for number 12. But make no mistake: we are still an elite system, a mere ¼ point away from the systems ranked 2-11.  And the United States remains the leader for overall IP rights.

Still, we are at an inflection point with respect to the patent system. As a nation, we cannot continue down the same path if we want to maintain our global economic leadership. And we will not continue down the same path. This administration has a mission to create sustained economic growth, and innovation and IP protection are key goals in support of that mission.

So, how do we reverse the trend? The good news is that reclaiming our patent leadership status is within reach.

For today, let me focus on two principal points:

  1. 1. Creating a new pro-innovation, pro-IP dialogue, and
  2. 2. Increasing the reliability of the patent grant.

First, we must change the dialogue surrounding patents. Words have meaning. Words impact perception and drive public policy. And for too long, the words surrounding our patent system have been overly-focused on its faults. A successful system cannot be defined by its faults. Rather, a successful system must be defined by its goals, aspirations, and successes. Obviously, errors in the system should be corrected. And no abuse should be tolerated. Errors and abuse should be identified and swiftly eliminated. However, the focus for discussion, and the focus for IP policy, must be on the positive. We must create a new narrative that defines the patent system by the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to society. And it is these benefits that must drive our patent policies.

At my swearing-in, I remarked that through the doors of the U.S. Patent and Trademark Office comes our future. And indeed it does, and it always did. We must celebrate that. From Thomas Edison to the Wright Brothers, from Stanley Cohen and Herbert Boyer to Steve Jobs, American inventors have fueled the imagination of our people for generations. We are a pioneering people who overcome large obstacles in order to realize our dreams and create prosperity. Inventors help make dreams reality, and American invention changes the world. Indeed, with American patents, humans made light, began to fly, treated disease, and enabled instant communications across the globe from tiny devices in our pockets.

And those patents also enabled these inventors to start companies and grow our economy. Our dialogue and policies need to be focused on these amazing achievements, and how we can encourage more of them. Take Walter Hawkins as another example: Hawkins, who in 1942 became the first African American scientist on staff at AT&T’s Bell Labs, developed the plastic coating that covers telephone wires, a more versatile, durable and eco-friendly alternative to the lead standard at the time. It was so durable, in fact, and so effective, that Hawkins’ invention enabled huge investments to bring affordable phone service across America, including rural areas, and to millions of people in the 20th century.

Inventor stories like Hawkins’ and Harari’s are those we need to tell.

This is the American patent system. This is the dialogue we need to have. And this should be the focus of our patent policy. This is how we incentivize innovation and growth. But, how exactly do we translate this into a better patent system?

Here’s a start: when we write, interpret, and administer patent laws, we must consistently ask ourselves “Are we helping these inventors?” Whether it’s an individual tinkering in her garage, or a team at a large corporation, or a laboratory on a university campus, we must ask ourselves “Are we helping them? Are we incentivizing innovation?

2 Minute IP: How Can I Get My Patent Faster?

By Stephen B. Schott

If you have questions, contact me.

If you want IdeaEsq delivered to your inbox, sign up for the daily or monthly newsletter.

How To Tell Someone to Stop Infringing Without Getting Sued

By Stephen B. Schott
An Article in Schott, PC’s IP Law for Startups Series

dreamstime_xs_4693108Dear Dr. Jones,

It has recently come to my attention that your product, the Gadgetron, may infringe our client’s [patents, trademarks, copyright]. In order to avoid a costly lawsuit, during which you would have to pay large sums of money and which could result in the loss of your business, my client is willing to offer you a nonexclusive license under the attached terms. If you execute the license and send the payment mentioned in section 4, we will consider this matter closed…

No one wants to receive a cease and desist letter like this and few people are all that excited about sending them. But if you send a cease and desist letter, it’s good to know the risks and how to craft one to avoid getting yourself hauled into court before you’re ready.

Sue me? No, I’ll sue you [for punitive damages you’re giving me]

It may seem unfair that someone who is infringing your intellectual property could sue you—but the Declaratory Judgment Act allows a party to bring an action for non-infringement or invalidity when “a case of actual controversy” exists between parties. The rationale is that the accuser should be allowed to clear their name and the declaratory judgment action (or DJ action as they are often called) allows a person accused of infringing to do just that.

The accused infringer has at least two advantages in a DJ action: (1) The DJ action allows the accused infringer to pick the court most convenient or advantageous to it, and (2) The accused infringer is suddenly on the front foot and may take the accuser by surprise.

What can you write in your cease and desist letter to avoid a DJ action?

If you own IP and want to send a cease and desist letter but avoid a DJ action, you must tread carefully: The courts have set a low threshold for what constitutes enough conduct to invite a DJ action. The Supreme Court’s Medimmune DJ test asks whether “the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” That’s a mush-mouth full of dependent clauses but the critical language is whether the accuser’s conduct creates “sufficient immediacy and reality” about a legal controversy. In layman’s terms: Are you afraid that you might get sued?

The courts have left a few breadcrumbs signaling how to avoid writing a letter that gives rise to a DJ action. The Supreme Court left a helpful hint in Medimmune:

[A] communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties.

The Federal Circuit gave another helpful piece of advice when it advised that an accuser may avoid a DJ action if it conducted pre-filing discussions under a confidentiality agreement, since discussions under such an agreement would be inadmissible. (3M Company v Avery Denison Corp.)

Thus, a letter written something like this could well avoid creating a “sufficient immediacy and reality” of a threat:

Dear CEO,

Our client is the owner of US Patent 6,332,840. While reviewing your website, we recently came across your product, the Awesome Toy.

We would like to discuss the patent and this product line and suggest that doing so would be best done under a confidentiality agreement [the confidentiality agreement should include a clause prohibiting either party from filing a lawsuit during some term—see Biomet, Inc. v. Bonutti Skeletal Innovations, LLC.], attached hereto. Please let us know if this is acceptable by returning the signed agreement to us, and we will countersign it and arrange a time to discuss this further.

Sincerely,

Matlock

Even a toothless letter like this might not avoid a DJ action because whether a case or controversy exists is decided on a case-by-case basis. But the above letter follows courts’ specific advice on how to craft a letter to avoid a declaratory judgment lawsuit, namely:

Cease and Desist Letter Ingredients to Avoid a DJ Action
(1) It identifies a patent and a product line, without accusation of infringement.
(2) It includes a nondisclosure agreement, which would mean that any conduct after the nondisclosure agreement’s signing (and during its term), such as a specific allegation of infringement, would not be admissible to support a DJ action.
(3) It might include a provision to specifically not sue for a period of time.

A letter that includes these may be safe to send, although I can’t say it enough: The bar for a DJ action is low and each case is decided on its own set of facts.

How low is the threshold to support a DJ action? Oh, it’s low alright.

dreamstime_xs_51369762Take the case of Hewlett-Packard Company v. Acceleron LLC as a warning when crafting your cease and desist letters.

On September 14, 2007, Acceleron sent a letter to HP identifying its patent and certain products of HP. So far, so good under Medimmune. Acceleron also requested an agreement that “all information exchanged between the parties will not be used for any litigation purposes whatsoever…or [that it] otherwise created any actual case or controversy regarding the enclosed patent.” Acceleron gave a two-week deadline for reply but did not specify what it would do if HP failed to respond.

On October 1, 2007, HP responded and suggested that it would not file a DJ action for 120 days in exchange for Acceleron agreeing not to file any action against HP during the 120 days.

On October 5, 2007, Acceleron responded with its own letter arguing that HP had no basis for a DJ action and again requested that HP respond within 2 weeks—again without threat of what it would do if HP failed to respond. Acceleron appears to be trying hard to avoid the DJ action in these letters, nevertheless, on October 17, 2007 HP filed a declaratory judgment action for non-infringement and invalidity of Acceleron’s patent.

Weighing all the facts, the court held that “it was not unreasonable for HP to interpret Acceleron’s letters as implicitly asserting its rights under [its] patent.” According to the court, Acceleron’s conduct permitted HP’s right to bring the DJ action:

  • Acceleron asserted that a patent is “relevant” to the other party’s specific product line
  • Acceleron imposed a “short deadline” for a response
  • Acceleron insisted that HP not file suit
  • Accelerant ignored HP’s request to not sue for 120 days
  • Acceleron is a licensing entity (i.e., a patent troll)

As was suggested in Medimmune, the Federal Circuit noted that “a communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties,” which supports the guidance that the toothless letter proposed above may avoid a DJ action.

What to do if you don’t want to write the toothless letter

dreamstime_xs_32521830If you don’t want to write the nonthreatening letter above but also don’t want your accuser to choose the forum in which to file a DJ action, you can file your own lawsuit first in the forum of your choosing. You don’t have to serve your complaint immediately, so if the accused infringer files a DJ action after your filing but before your filing expires, you will be in a lawsuit, but at least in a forum of your choosing.

If you have questions, contact me.

If you want IdeaEsq delivered to your inbox, sign up for the daily or monthly newsletter.

© Davisales | Dreamstime.comIndiana Jones Caricature Photo

The USPTO’s Alice-Based Patentable Subject Matter Hypotheticals with Boilerplate Responses

By Stephen B. Schott

www.masterplaques.comThe USPTO recently published hypotheticals to help guide applicants when defining patentable subject matter. Instead of just a case law review, the office provided claim drafting examples. While not legally binding, these provide a helpful roadmap for practitioners when addressing subject matter rejections. I’ve parsed the hypotheticals below and for each one, provided a sample argument that practitioners might make at the USPTO based on each of the hypotheticals that found claims to be patentable.

Because this is a longer article, I created a summary page of the sample arguments to overcome the USPTO’s subject matter rejections.

Patentable Subject Matter Eligibility Test

The USPTO applied the test that has become well-known following the Supreme Court’s Alice v. CLS Bank case.

Slide1

In each of the hypotheticals, the USPTO applied the three-part test pictured above and summarized below that follows the developing case law on this subject.

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? If no, the claim is does not patentable. If yes, move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? If no, the claim contains patent-eligible subject matter. If yes, go to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? If no, the claim is not patentable. If yes, the claim contains patent eligible subject matter.

Hypothetical 1: Removing Malicious Code From Emails

In this hypothetical, the email scanning operation is done in a quarantined memory sector. The hypothetical claim reads:

1. A computer-implemented method for protecting a computer from an electronic communication containing malicious code, comprising executing on a processor the steps of:
receiving an electronic communication containing malicious code in a computer with a memory having a boot sector, a quarantine sector and a non-quarantine sector;
storing the communication in the quarantine sector of the memory of the computer, wherein the quarantine sector is isolated from the boot and the non-quarantine sector in the computer memory, where code in the quarantine sector is prevented from performing write actions on other memory sectors;
extracting, via file parsing, the malicious code from the electronic communication to create a sanitized electronic communication, wherein the extracting comprises scanning the communication for an identified beginning malicious code marker, flagging each scanned byte between the beginning marker and a successive end malicious code marker, continuing scanning until no further beginning malicious code marker is found, and creating a new data file by sequentially copying all non-flagged data bytes into a new file that forms a sanitized communication file;
transferring the sanitized electronic communication to the non-quarantine sector of the memory; and
deleting all data remaining in the quarantine sector.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a process. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? NO because it is directed towards physically isolating a received communication on a memory sector and extracting malicious code from that communication to create a sanitized communication in a new data file. The USPTO points out that this solution is inextricably tied to the technology and thus not an abstract idea that fits into the judicial exceptions. Therefore, the claim is patent eligible.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 1 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because an email communication was isolated in a memory sector and thus inextricably tied to computer technology. In the current claim, the [claim element] is inextricably tied to computer technology, and is thus patent-eligible subject matter.

Hypothetical 2: E-Commerce Outsourcing System/Generating a Composite Web Page 

This hypothetical is based on DDR Holdings, LLC v. Hotels.com et al discussed in detail here.?????????????????????????????????????????????????????????????????????????

In the patented system, a customer who clicks on an advertising link is not transported from the host web page to the merchant’s web page, but instead is re-directed to a composite web page that combines product information associated with the selected item and visually perceptible elements of the host web page.

The claim is as follows: (The USPTO’s analysis considers two similar claims.)

19. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
(i) wherein each of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:
(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;
(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays:
(A) information associated with the commerce object associated with the link that has been activated, and
(B) the plurality of visually perceptible elements visually corresponding to the source page.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a machine. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? NO because “the claim addresses a business challenge (retaining website visitors) that is particular to the Internet.” The USPTO points out that the claim does not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” quoting the DDR holding. Therefore, the claim is patent-eligible. The USPTO (and Federal Circuit) went on to step 3 and thus it’s worth reviewing as well.
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? The DDR court and USPTO note that “’not all claims purporting to address Internet-centric challenges are eligible, “but in this case these additional limitations amount to more than simply stating “apply the abstract idea on the Internet.” Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 2 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because the claim addressed a business challenge (retaining website visitors) that is particular to the Internet, which is not among the judicial exceptions to patentable subject matter. In the current claim, the [claim element] also addresses a business challenge that is particular to the Internet, and is thus patent-eligible subject matter. And even if the claim were to be found to fit into one of the judicial exceptions to patentable subject matter, the additional limitations in the claim directed to [claim element] amount to more than simply stating “apply the abstract idea on the Internet.” See also DDR Holdings, LLC v. Hotels.com et al., 113 USPQ2d 1097 (Fed. Cir. 2014).

Hypothetical 3:Digital Image Processing  

?????????????????????????????????????????????????????????????????????????????????????????????????????????????????This hypothetical is based on Research Corporation Technologies, Inc. v. Microsoft Corp.

In the patented method, “the inventor has improved upon previous halftoning techniques by developing an improved mask called a “blue noise” mask. The blue noise mask requires less memory than previous masks and results in a faster computation time while improving image quality. The blue noise mask is produced through an iterative mathematical operation that begins with generating a dot profile with blue noise properties from an image at a 50% gray level using a blue noise filter. Subsequently, additional dot profiles are generated at differing gray levels. As pixels of the dot profile change across the gray levels, these changes are encoded in a cumulative array. Once all the dot profiles are built, the cumulative array becomes the blue noise mask.”

The claim is as follows: (The USPTO’s analysis considers 3 similar claims.)

1. A computer-implemented method for halftoning a gray scale image, comprising the steps of:
generating, with a processor, a blue noise mask by encoding changes in pixel values
across a plurality of blue noise filtered dot profiles at varying gray levels;
storing the blue noise mask in a first memory location;
receiving a gray scale image and storing the gray scale image in a second memory
location;
comparing, with a processor on a pixel-by-pixel basis, each pixel of the gray scale image
to a threshold number in the corresponding position of the blue noise mask to produce a binary
image array; and
converting the binary image array to a halftoned image.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a process. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? YES because “the mathematical operation of generating a blue noise mask is recited in the claim, [and thus,] the claim is “directed to” a judicial exception.”  Move to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? YES, for two reasons. First, “tie the mathematical operation (the blue noise mask) to the processor’s ability to process digital images. These steps add meaningful limitations to the abstract idea of generating the blue noise mask and therefore add significantly more to the abstract idea than mere computer implementation.” Second, “the claimed process with the improved blue noise mask allows the computer to use to less memory than required for prior masks, [resulting] in faster computation time without sacrificing the quality of the resulting image as occurred in prior processes [which in turn] produces an improved digital image. These are also improvements in the technology of digital image processing.” Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 3 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). In that hypothetical the USPTO pointed out that the claim was patentable because tying the mathematical operation to the processor’s ability to process digital images added significantly more to the abstract idea. In the current claim, [claim element] similarly ties the [algorithm] to the processor’s ability to [perform the claim element]. Further, in the hypothetical, the  USPTO notes that the algorithm allows the computer to use less memory than required for prior masks, which allows the computer to to use less memory. Similarly in the current claim, the [claim element] allows a computer to use less memory, which amounts to an innovation in computer technology that adds significantly more to the abstract idea. Thus, [claim #] is patentable subject matter.

Hypothetical 4: Global Positioning System

This hypothetical is based on SiRF Technology Inc. v. International Trade Commission.

In the patented system, the systems and methods in which a server wirelessly coupled to a mobile GPS receiver uses a mathematical model to solve for the mobile receiver position without receiving satellite positioning data or absolute time information from a satellite. These systems and methods improve GPS techniques by enabling the mobile GPS receiver to determine its position more accurately and improve its signal-acquisition sensitivity to operate even in weaksignal environments. In particular, the mobile GPS receiver is a mobile device that includes 10 examples: Abstract Ideas GPS antenna, a GPS receiver, a microprocessor, a display, and a wireless communication transceiver. Using mathematical formulas, the device calculates pseudo-ranges (estimated ranges from the GPS receiver to each satellite in view) based on PN codes received from the satellites, and the transceiver sends the pseudo-ranges to the server.

The claim is as follows: (The hypothetical considers 2 similar claims.)

1. A system for calculating an absolute position of a GPS receiver and an absolute time of
reception of satellite signals comprising:
a mobile device comprising a GPS receiver, a display, a microprocessor and a wireless
communication transceiver coupled to the GPS receiver, the mobile device programmed to
receive PN codes sent by a plurality of GPS satellites, calculate pseudo-ranges to the plurality of
GPS satellites by averaging the received PN codes, and transmit the pseudo-ranges, and
a server comprising a central processing unit, a memory, a clock, and a server
communication transceiver that receives pseudo-ranges from the wireless communication
transceiver of the mobile device, the memory having location data stored therein for a plurality
of wireless towers, and the central processing unit programmed to:
estimate a position of the GPS receiver based on location data for a wireless tower
from the memory and time data from the clock,
calculate absolute time that the signals were sent from the GPS satellites using the
pseudo-ranges from the mobile device and the position estimate,
create a mathematical model to calculate absolute position of the GPS receiver based
on the pseudo-ranges and calculated absolute time,
calculate the absolute position of the GPS receiver using the mathematical model, and
transmit the absolute position of the GPS receiver to the mobile device, via the server
communication transceiver, for visual representation on the display.

Following the steps above,

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a machine. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? YES because the claim recites mathematical operations. Move to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? YES because the combination of elements impose meaningful limits in that the mathematical operations are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 4 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). In that hypothetical, the USPTO pointed out that the claim was patentable because the claim improves an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Similarly, [claim element] improves [technology] and adds significantly more to the abstract idea. Thus, the subject matter is patent-eligible subject matter.

If you have questions, contact me.

If you want IdeaEsq delivered to your inbox, sign up for the daily or monthly newsletter.

Four Boilerplate Responses for Responding to Subject Matter Rejections Based on the USPTO Hypotheticals

By Stephen B. Schott

This is a summary of the sample argument sections of a longer article based on the USPTO’s subject matter-based hypotheticals.

Hypothetical 1: Removing Malicious Code From Emails

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 1 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because an email communication was isolated in a memory sector and thus inextricably tied to computer technology. In the current claim, the [claim element] is inextricably tied to computer technology, and is thus patent-eligible subject matter.

Hypothetical 2: E-Commerce Outsourcing System/Generating a Composite Web Page 

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 2 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because the claim addressed a business challenge (retaining website visitors) that is particular to the Internet, which is not among the judicial exceptions to patentable subject matter. In the current claim, the [claim element] also addresses a business challenge that is particular to the internet, and is thus patent-eligible subject matter. And even if the claim were to be found to fit into one of the judicial exceptions to patentable subject matter, the additional limitations in the claim directed to [claim element] amount to more than simply stating “apply the abstract idea on the Internet.” See also DDR Holdings, LLC v. Hotels.com et al, 113 USPQ2d 1097 (Fed. Cir. 2014).

Hypothetical 3:Digital Image Processing  

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 3 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on Research Corporation Technologies, Inc. v. Microsoft Corp, 627 F.3d 859 (Fed. Cir. 2010). In that hypothetical the USPTO pointed out that the claim was patentable because tying the mathematical operation to the processor’s ability to process digital images added significantly more to the abstract idea. In the current claim, [claim element] similarly ties the [algorithm] to the processor’s ability to [perform the claim element]. Further, in the hypothetical, the  USPTO notes that the algorithm allows the computer to use less memory than required for prior masks, which allows the computer to to use less memory. Similarly in the current claim, the [claim element] allows a computer to use less memory, which amounts to an innovation in computer technology that adds significantly more to the abstract idea. Thus, [claim ##] is patentable subject matter.

Hypothetical 4: Global Positioning System

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 4 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). In that hypothetical, the USPTO pointed out that the claim was patentable because the claim improves an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Similarly, [claim element] improves [technology] and adds significantly more to the abstract idea. Thus, the subject matter is patent-eligible subject matter.

If you have questions, contact me.

If you want IdeaEsq delivered to your inbox, sign up for the daily or monthly newsletter.

Can I get an international patent? PCT application basics.

By Stephen B. Schott
An Article in Schott, PC’s IP Law for Startups Series

???????????????????????????????????????????????????????????????“Can I file for an international patent?” This is a common question. There’s one simple answer and one extended one.

The simple answer is that there is no international patent. Patents can only be enforced in the countries where they are valid. There is one exception: a new patent called a European Unitary Patent that applies to many countries in Europe. With that limited exception, no granted patent can be enforced in more than one country.

The longer answer involves whether there is such a thing as an international patent application. And the answer to that question is yes. You can file an international patent application under the Patent Cooperation Treaty. This application is commonly called a PCT application. Within 30 months* of its filing, you may enter the PCT application into countries that are parties to the Patent Cooperation Treaty and undergo each country’s examination process.

Here’s a short summary of how the PCT application process works, including a timeline. Clicking on a box in the timeline will take you to a short description.

File a US or other national patent application. Many inventors start the patent process by filing in their local country. This establishes a date “0” on the timeline called the application’s priority date. Once you file any local application, including a US provisional application, you have 12 months to file a PCT application with a claim to the priority date.

File PCT application. A PCT application is generally written in the same format as a US nonprovisional application, so if you already filed your application in the US, it should require minimal attorney revision for filing in the PCT. Put another way, you should expect to pay a lot less in attorney fees when filing the PCT application if you filed a US nonprovisional application. The official fees due to governmental agencies, however, are much higher in the PCT. Filing a PCT application and prepaying all examination fees will cost about $3,500.00 for a large entity (larger companies) and $2,500.00 for a small entity (small companies).

You must file the application within a Receiving Office (usually in your own country) and identify a Search Authority (the examination group that will examine your application).

International Search Report and Written Opinion. After filing the PCT application, you will receive an International Search Report (sometimes called the ISR) and Written Opinion. The ISR is a summary of the references that an examiner found when searching for references related to your application’s claims and a summary of their relevance. The Written Opinion is a detailed report regarding the application, including an identification of any deficiencies.

PCT Publication. 18 months from the priority date, the International Bureau responsible for your application publishes your application for public viewing.

File a Demand for International Preliminary Examination. This step is optional. The deadline for filing a demand is 22 months from the priority date or 3 months from the issuance of the ISR and Written Opinion, whichever comes later. Often you will file a demand with a written response and amendments to your application in response to the ISR and Written Opinion.

International Preliminary Examination. The International Preliminary Examination Report (IPRP) is the Search Authority’s final conclusion on the patentability of your claims based on either your original application or amendments made by you during the process. The Search Authority will indicate whether the claims have novelty and inventive step (inventive step is similar to nonobviousness in the US). The Search Authority’s conclusion does not mean that you will get a patent in any country, but it can be an indicator that you will receive positive or negative treatment as you enter your application into individual countries.

Enter National Phase Applications. At this phase, you can enter your PCT application, largely as is or with amendments, into each individual country (or in Europe as a European Unitary Patent). You can even enter it in the US if you did not do so before. You will have to pay each countries’ filing fees, as well as each countries’ attorney fees to handle the filings, which can get quite costly. If you have questions, contact me.

If you want IdeaEsq delivered to your inbox, sign up for the daily or monthly newsletter.

* For Luxembourg, Tanzania, Uganda, the deadline is 20 months. For a few other countries the deadline is more than 30 months.