Documents filed by our law firm at the USPTO

• Filed Non-Provisional Specification
• Filed Non-Provisional Drawings
• Declaration and Power of Attorney
• Preliminary Amendment
• Non-publication Request
• Filed Design Patent Specification
• Filed Design Patent drawings
• Filed Provisional Specification
• Filed Provisional Drawings
• Filed Provisional Cover Sheet
• Amendment in Response to a First Office Action
• Amendment After Final
• Assignment
• Certificate of Correction
• Information Disclosure Statement
• Petition for Extension of Time
• Petition for Revival of Application
• Replacement Drawings
• Requests for Continued Examination
• Terminal Disclaimer
• Transmittal Formal Drawings
• Issue Fee Transmittal
• Response To File Missing Parts

Responses from the USPTO

• Filing Receipt
• Updated Filing Receipt
• Notice of Missing Parts of Non-Provisional Patent Application
• Notice of Missing Parts of Provisional Application
• Notice to File Corrected Application Papers
• Notice of Omitted Items In a Provisional Patent Application
• Notice of Publication of the Application
• Restriction Requirement
• Ex Parte Quayle Action
• Non-Final Office Action
• Notice of Non-compliant Amendment
• Final Office Action
• Notice of Allowance
• Advisory Action
• Issue Notification
• Maintenance Fee Receipt
• Acknowledgement Receipt
• Filing Receipt
• Updated Filing Receipt

Documents filed by The Erickson Law Group in the United States Patent and Trademark Office

Filed Non-Provisional Specification

The filed Non-Provisional Specification is the text portion of the patent application, as filed in the United States Patent and Trademark Office on the filing date. The Non-Provisional Specification cannot be changed after being filed except for correcting clerical matters, clarifying that which is already sufficiently disclosed in the Non-Provisional Specification, or amending the claims.

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Filed Non-Provisional Drawings

The filed Non-Provisional drawings are the patent application drawings, as filed in the United States Patent and Trademark Office on the filing date. The Non-Provisional drawings cannot be changed after the filing date except for correcting drawing informalities or by submitting formal drawings prepared by a patent draftsman, in neither case can new matter be added to the drawings.

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Declaration and Power of Attorney

The Declaration is a legal document signed by the inventor or inventors that is filed by the Erickson Law Group in the United States Patent and Trademark Office. The Declaration states, among other things, that the inventor or inventors are the original inventors, that the invention has not been on sale for more than a year before the filing date and that the inventor or inventors understand their duty to disclose pertinent prior art (such as prior patents, prior publications, prior known devices, etc.) to the patent office during examination of the application. The Power of Attorney portion of this document gives the Erickson Law Group the authority to act on your behalf in filing and prosecuting the patent application. A Declaration must be filed in every patent application before the patent application can proceed to examination. The Declaration can be filed with the application on the filing date or can be filed within a few months after the filing date with a fee.

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Preliminary Amendment

A Preliminary Amendment is a document that is sometimes filed by the Erickson Law Group in the United States Patent and Trademark Office that makes changes to the Specification, the drawings, or to the claims that are to be effective before the application is examined by the United States Patent and Trademark Office examiner. The Preliminary Amendment is usually filed within a few months of the application filing date to make clerical corrections or to change or add claims.

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Non-publication Request

A Non-Publication Request is a document that is filed by the Erickson Law Group in the United States Patent and Trademark Office with the initial filing of the application that requests the United States Patent and Trademark Office to exempt the patent application from mandatory publication requirement because the applicant has agreed not to file corresponding foreign patent applications. If a Non-Publication Request is not filed, every Non-Provisional patent application will be published on the USPTO website at 18 months after the earliest filing date of the patent application. A non-publication request can be used to keep the contents of the application secret until the application is issued as a patent. This gives the applicant the option to either allow the patent to issue and become published, or to not allow the patent to issue and keep the invention as a trade secret.

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Filed Design Patent Specification

The filed design patent Specification is the text portion of the patent application, as filed in the United States Patent and Trademark Office on the filing date. The design patent Specification describes the drawing figures and typically can be changed for matters of form or language after filing at the United States Patent and Trademark Office as long as the changes are for correcting grammar, clerical matters or clarifying that which is already sufficiently disclosed in the design patent Specification.

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Filed Design Patent drawings

The filed design patent drawings are the design patent drawings as filed in the United States Patent and Trademark Office on the filing date. The design patent drawings cannot be changed at this point except for correcting drawing informalities or submitting formalized drawings prepared by a patent draftsman.

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Filed Provisional Specification

The filed Provisional Specification is the text portion of the patent application, as filed in the United States Patent and Trademark Office on the filing date. The Provisional Specification cannot be changed at this point except for correcting clerical matters, or clarifying that which is already sufficiently disclosed in the Provisional Specification. However, since Provisional applications are not examined by the United States Patent and Trademark Office, the need of making changes in the Provisional Specification generally does not occur.

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Filed Provisional Drawings

The filed Provisional drawings are the patent application drawings as filed in the United States Patent and Trademark Office on the filing date. The Provisional drawings cannot be changed after the filing date except for correcting drawing informalities or submitting formalized drawings prepared by a patent draftsman. However, since Provisional applications are not examined by the United States Patent and Trademark Office, the need of making changes in the Provisional drawings generally does not occur.

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Filed Provisional Cover Sheet

The Provisional application cover sheet sets forth inventor and application information required by the United States Patent and Trademark Office. If any of the information on the Provisional cover sheet is incorrect, a revised cover sheet can be submitted to the United States Patent and Trademark Office to correct the error.

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Amendment in Response to a First Office Action

In response to a first (non-final) Office Action (report from the USPTO Examiner) on the patentability of the application claims from the United States Patent and Trademark Office examiner, the Erickson Law Group has prepared and filed an Amendment to the application. A typical Amendment may make changes to the detailed description in the Specification, make changes to the drawings, and most often make changes to the claims. The changes to the claims are important in that it is the scope of the claims which represent the value of the patent. the Erickson Law Group makes changes to the claims which we feel are necessary to overcome rejections made by the United States Patent and Trademark Office examiner. Sometimes the changes are made to clarify the claims and other times changes are made to the claims to distinguish the claims from one or more prior art references cited by the examiner. The United States Patent and Trademark Office examiner will consider this Amendment and in a few months issue a Final Office Action or a Notice of Allowance. A Notice of Allowance is good news that means the examiner has agreed to allow the patent application to issue as a patent.

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Amendment After Final

In response to a Final Office Action by the United States patent examiner on the patentability of the application claims, the Erickson Law Group has prepared, and filed, an Amendment After Final. A typical Amendment After Final may make changes to the detailed description in the Specification, make changes to the drawings, and make changes to the claims. The changes to the claims are important in that it is the claims which represent the value of the patent. the Erickson Law Group makes changes to the claims which we feel are necessary to overcome rejections made by the United States Patent and Trademark Office examiner. Sometimes the changes are made to clarify the claims and other times changes are made to the claims to distinguish the claims from one or more prior art references. The United States Patent and Trademark Office examiner will consider this Amendment and in a few months issue an Advisory Action or a Notice of Allowance. The Advisory Action typically means that the examiner continues to reject the claims and requires that the applicant must either file an appeal to the Board of Patent Appeals or file a Request for Continued Examination. Either option requires fees paid to the United States Patent and Trademark Office. A Notice of Allowance is good news that means the examiner has agreed to allow the patent application to issue as a patent.

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Assignment

An Assignment is a transfer of ownership of patent rights from the assignor to the assignee. The assignor is typically the inventor or inventors and the assignee is typically the company that employs the inventor or inventors. To prevent fraudulent transfers of patent rights, the United States Patent and Trademark Office maintains a recordation system where Assignments are recorded and accessible to the public so that the true owner of a patent can easily be determined. the Erickson Law Group submits Assignments to the United States Patent and Trademark Office within a few months of the application filing date.

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Certificate of Correction

When the Erickson Law Group receives an issued patent we proofread the patent and if any significant printing errors are found we prepare and submit a Certificate of Correction to the United States Patent and Trademark Office. The Certificate of Correction is associated with the patent at the United States Patent and Trademark Office so that the correction becomes publicly known.

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Information Disclosure Statement

Each inventor and anyone involved in the preparation or prosecution of a patent application, including patent attorneys are under a duty to disclose pertinent, known prior art to the patent examiner who is examining the patent application. Failure to fulfill this duty can result in an unenforceable patent. To fulfill this duty, if pertinent prior art references are known, an Information Disclosure Statement is prepared by the Erickson Law Group and filed in the United States Patent and Trademark Office.

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Petition for Extension of Time

Each Office Action that is sent by the United States Patent and Trademark Office includes a time period for reply by the applicant. Depending on the type of Office Action, these time periods are typically one month, two months or three months. However, if the applicant needs additional time to respond, extensions of time are available for a fee. However, the total period of time to respond cannot be extended past six months from the date of the Office Action.

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Petition for Revival of Application

When a patent application becomes abandoned for failure to respond within the time limit set by the United States Patent and Trademark Office there are procedures to have the application revived or reinstated if a petition is filed with the appropriate fee.

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Replacement Drawings

If the United States Patent and Trademark Office objects to the drawings as filed in the patent application because of the drafting quality of the drawings, replacement drawings must be filed. This often occurs when, in order to save costs, informal drawings or attorney sketches are filed with the initial filing of the patent application. The United States Patent and Trademark Office allows for the applicant to file replacement drawings as long as the drawings substantially are the same as the informal drawings, only of a higher drafting quality.

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Requests for Continued Examination

Every patent application is first examined substantively in a Non-Final Office Action from the United States Patent and Trademark Office examiner. The applicant is given at least one opportunity to amend the claims and resubmit the claims in an Amendment and the United States Patent and Trademark Office examiner must examine the amended claims and either allow the claims or issue a Final Office Action. The applicant can respond with an Amendment After Final to the Final Office Action but the patent office examiner is not required to issue a further Office Action. The examiner can issue a cursory Advisory Action that states that considering the Amendment After Final would cause the examiner to conduct a further search and spend time further considering the claims, so the Amendment will not be “entered” (officially considered) by the examiner. One method of paying for the examiner to consider the Amendment After Final is to file a Request for Continued Examination with the associated fee. The examiner must then consider the latest Amendment and issue a new Non-Final Office Action. In other words, by filing a Request for Continued Examination and paying the fee, the applicant is entitled to have the Amendment After Final considered as well as one subsequent Amendment considered. In other words, by filing a Request for Continued Examination and paying the fee, the applicant is given two more tries to obtain allowance of the claims.

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Terminal Disclaimer

Patent application claims can be rejected over a prior-filed application or prior patent that is owned by the same person or company. This is called a “double patenting” rejection. To overcome such a rejection, the United States Patent and Trademark Office sometimes allows the owner of the patent to file a “Terminal Disclaimer” with a fee which requires that the owner agree in writing that the later filed application will become expired on the same date that the earlier filed application or patent expires and also requires that the owner maintain common ownership of both the later filed application and the earlier application or patent. The terminal disclaimer is prepared by the Erickson Law Group and filed with a response to the Office Action that sets forth the rejection.

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Transmittal Formal Drawings

If the United States Patent and Trademark Office allows an application to issue as a patent but objects to the quality of the drawings that were originally filed in the application, the United States Patent and Trademark Office may require that formal drawings be submitted at the time that the issue fee is paid. Typically, our firm handles the preparation of the formal drawings through an outside draftsman and transmits the formal drawings to the United States Patent and Trademark Office.

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Issue Fee Transmittal

At some point after a patent application is filed, hopefully, the United States Patent and Trademark Office will allow the application to issue as a patent. Before the application issues as a patent, a patent issue fee must be paid within three months after the United States Patent and Trademark Office notifies the applicant that the application is allowed. Once the Issue Fee is paid a patent should be printed and issued within 1 to 3 months.

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Response To File Missing Parts

There are times when a patent application must be filed in an expedited manner or before the filing fees have been pre-paid by the applicant. In such cases it is typical for our firm to file the patent application without the signed Declaration and without paying the filing fee for the application. Even though these parts are missing, the application is still granted a filing date and a Notice is sent by the United States Patent and Trademark Office to the applicant’s attorney to supply the missing parts.

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Responses from the United States Patent and Trademark Office

Filing Receipt

A filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. The filing receipt is usually included with a foreign filing license which gives the patent applicant permission to file the application in a foreign country.

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Updated Filing Receipt

An updated filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The updated filing receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. If the original application did not include a signed Declaration, after the signed Declaration is submitted, the updated filing receipt will have all of the proper inventor’s names listed.

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Notice of Missing Parts of Non-Provisional Patent Application

If the initially filed Non-Provisional patent application was filed without the filing fee or the signed Declaration, the United States Patent and Trademark Office will issue a Notice to File Missing Parts to the applicant’s attorney. This Notice indicates the total amount of fees due including the surcharge required for filing the missing parts. Our firm will prepare the Declaration for signature by the inventor(s) and submit the missing parts.

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Notice of Missing Parts of Provisional Application

If the initially filed Provisional patent application was filed without the filing fee, the United States Patent and Trademark Office will issue a Notice to File Missing Parts to the applicant’s attorney. This Notice indicates the total amount of fees due including the surcharge required for filing the missing parts.

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Notice to File Corrected Application Papers

If the initially filed patent application was defective in some manner such as failure to submit required information on a cover sheet or failure to supply sufficiently clear patent drawings, a Notice to File Corrected Application Papers will be issued by the United States Patent and Trademark Office. The applicant is given a period of time to supply replacement application papers.

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Notice of Omitted Items In a Provisional Patent Application

If a Provisional patent application indicates that certain pages are included but such pages are not included, the US patent office will issue a Notice of omitted items. The applicant is given a period of time to prove that such items were indeed submitted according to United States Patent and Trademark Office rules.

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Notice of Publication of the Application

Every Non-Provisional utility patent application is published 18 months after the earliest filing date of the application. Publication means that the application is available to the public on the United States Patent and Trademark Office website. The publication date may be an important date under some circumstances such as if an applicant needed to file a foreign patent application before the US application was published.

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Restriction Requirement

There are many times when the set of claims of a patent application include more than a single invention. For example, for cost savings, multiple inventions may be filed in the same application where the inventions are somewhat related. The United States Patent and Trademark Office examiner may refuse to do multiple patent searches for a single patent application. The examiner will then restrict the application to a single invention and require the applicant to choose which claims to prosecute in the application. The applicant is typically given one month to make his election. The claims that the applicant does not choose are called non-elected claims. The applicant is free to file one or more divisional applications on any non-elected claims and is given priority back to the original filing date.

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Ex Parte Quayle Action

Sometimes, in a first Office Action, the United States Patent and Trademark Office examiner decides that the claims are allowable except for some Specification or claim language that needs to be clarified. The examiner decides that examination of the application is closed because the examiner has allowed the claims and he issues what is referred to as an “Ex Parte Quayle” action. The applicant is typically given two months to make these corrections in a response to the Ex Parte Quayle Action.

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Non-Final Office Action

Typically a first Office Action is referred to as a “Non-Final Office Action.” In most first Office Actions at least some claims are rejected. The applicant must respond to the examiner’s rejection of the claims, and file an Amendment and make arguments to overcome the examiner’s rejections. The applicant is usually given a three-month period of time to respond to the Non-Final Office Action.
Because the Office Action is a Non-Final Office Action, the examiner must consider the applicant’s Amendments to the claims, do a further prior art search if required, and issue a further Office Action with a detailed examination of the amended claims.

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Notice of Non-compliant Amendment

If an applicant responds to a Non-Final Office Action or a Final Office Action with an Amendment that fails to address one of the examiner’s objections or rejections or is submitted in an improper form, the examiner may issue a Notice of Noncompliant Amendment. In some situations the examiner may give the applicant an additional month to make corrections. In other situations, the examiner may not give additional time and the applicant must pay a fee to extend the time period for the original response to file a corrected Amendment.

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Final Office Action

Once the applicant has responded to a Non-Final Office Action, the examiner must consider the applicant’s amended claims and arguments and issue a detailed examination of the amended claims. When the examiner makes his detailed examination he can issue a Final Office Action. A Final Office Action is not really final. The term “final” means that if the applicant files an Amendment After Final, the examiner will read the Amendment After Final but may or may not enter (officially consider) the Amendment After Final. If the examiner deems that the Amendment After Final would require a new search or raises new issues the examiner can refuse to enter (officially consider) the Amendments After Final. The examiner then will issue an Advisory Action refusing to enter the Amendment. At this point the applicant can either file a Request for Continued Examination to force the examiner to consider the Amendment After Final as a non-final Amendment, or can appeal the final rejection to the Board of Patent Appeals.

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Notice of Allowance

If the patent examiner determines after a search and examination of the claims originally filed, or claims amended during prosecution, that the claims are patentable over his search of prior art, the examiner will issue a Notice of Allowance. This is good news. The Notice of Allowance is sometimes included with a Notice of Allowability which states the reasons why the examiner has determined that the claims are allowable. The applicant is given three months from the Notice of Allowance to pay an issue fee in order for the patent to issue from the application.

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Advisory Action

If an applicant files an Amendment After Final in response to a final rejection by the examiner, the patent examiner will read the Amendment After Final and if it raises new issues or will require a further search, the patent examiner can refuse to “enter” (officially consider) the Amendment After Final. Also, if the Amendment After Final does not raise new issues but , according to the examiner, the Amendment still does not put the application in condition for allowance, the examiner can still reject the claims but officially enter the Amendment for purposes of appeal by the applicant. In either case the examiner issues an Advisory Action stating his position on the Amendment After Final. The Advisory Action does not reset the time for reply to the Final Office Action which remains the date of mailing of the Final Office Action. An Advisory Action requires some response such as: filing an appeal, filing an RCE, or filing a Continuation Application. If no response is filed, the application will become abandoned.

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Issue Notification

After the applicant has been notified of the allowance of his application, and after the applicant has paid the issue fee, the application is processed at the patent office for printing as a published patent. Within a few weeks before the issue date of the patent, the patent office sends an issue notification to the applicant informing the applicant of the patent number and of the upcoming issue date. This date may be important for applicants who wish to file another application (a “Continuation Application”) on another aspect of the same invention, before the earlier application issues as a patent which cuts off the possibility of filing such a Continuation Application.

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Maintenance Fee Receipt

Issued U.S. patents have required maintenance fees due at 3.5, 7.5 and. 11.5 years after issuance of the patent. When the maintenance fee is paid, the patent office issues an electronic receipt. If a maintenance fee is not paid the patent will lapse.

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Acknowledgement Receipt

Whenever a document or fee is electronically submitted to the United States Patent and Trademark Office, the United States Patent and Trademark Office generates an electronic receipt which acknowledges the submission of the document or fee.

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Filing Receipt

A filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. The filing receipt is usually included with a foreign filing license which gives the patent applicant permission to file the application in a foreign country.

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Updated Filing Receipt

An updated filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The updated filing receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. If the original application did not include a signed Declaration, after the signed Declaration is submitted, the updated filing receipt will have all of the proper inventor’s names listed.

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The article notes that currently, on average, it take more than 25 months to get a first office action from the Patent Office on a patent application and 32 months before an application issues into a patent. Moreover the article notes Secretary of Commerce Gary Locke acknowledged that “This [delay] has a direct, negative impact on America’s economic competitiveness–creating uncertainty for entrepreneurs and inventors.” Locke has a goal of reducing the average time period before first office action to 10 months, which is very aggressive. 

In the article, Eric explains that companies seeking to leverage intellectual property as a key asset to attract funding are on group that is impacted by the backlog. Read the whole article here [link].

• Legal matters: Find out what legal issues are there: To form a legal entity, apply for a Patent, Trademark, Copyright, and otherwise protect your intellectual property
• Marketing issues: How do you plan to market your new product?
• To produce, outsource or license? The ups and downs of producing the product
• Production: If you decide to produce, what should you do?
• Logistics: How do you make it available to customers?
• Financing: How do you plan to finance your new product introduction?

Find out more here [ link ]. Register for the workshop here [ link ].

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Patenting Software, Internet Technologies, and Business Methods in view of the Federal Circuit’s Decision in Bilski v. Doll

Presented at ISBA’s Intellectual Property Essentials and IP on the Internet

Chicago, IL

June 9, 2009

By Eric R. Waltmire

In October 30, 2008, the U.S. Court of Appeals for the Federal Circuit issued a decision that restricted but did not prohibit the patentability of software and business method related patents. Bilski v. Doll, 545 F.3d 943 (Fed. Cir. 2008). The case sets the standard for determining what is patentable in the fields of software and business methods. However, the U.S. Supreme Court recently granted writ of certiorari on the following questions:

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

[Bilski v. Doll, No. 08-1191.  556 U.S. _____ (2009)]

Until the Supreme Court rules in Bilski, this paper provides guidance on the patentability of software and business methods under the Federal Circuit decision and the decision from the Board of Patent Appeals and Interferences (BPAI). This paper will (1) review the facts of Bilski, (2) explain the holding of Bilski, (3) review prior and subsequent cases to illustrate what claims are allowable under Bilski, and (4) provide suggestions for claiming software based inventions in light of Bilski.

Facts

In Bilski, the invention at issue was a method of managing risk in a commodities market. The representative claim provided:

A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

 (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical aver-ages, said fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions

            [Bilski v. Doll, 545 F.3d at 949]

Analysis

The 35 U.S.C. § 101 provides five categories of patentable subject matter: process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. The Bilski claims were not directed to a machine, manufacture, or composition of matter.  So the question turned on what constitutes a patentable process. Specifically, the court addressed, in relevant part, (1) whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process, (2) when does a claim that contains both mental and physical steps create patent-eligible subject matter, and (3) whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101.

The court noted that the term “process” within the meaning of section 101 is narrower than the ordinary meaning of the word.  A process is not patentable it if claims abstract ideas, laws of nature and purely mental processes. Id. at 952. So the issue presented was whether Bilski was seeking to claim a fundamental principle or a mental process. Id.  The court noted that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. In order to distinguish between unpatentable law of nature or mathematical formula and patentable applications thereof, the court looked to the question of “whether the effect of allowing the claim would be to allow the patentee to pre-empt substantially all uses of that fundamental principle.” Id.

The court found that the only test for determining whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself was the machine-or-transformation test. Id. at 954. 

Machine-or-Transformation Test. The court’s machine-or-transformation test provides that a process is not patentable under section 35 USC 101 unless (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. Id. at 954. This test requires an explanation of what is a (1) “particular machine”, (2) a “transformation,” and (3) a “particular article.” 

Particular Article. The claims in Bilski did not involve a machine so the court’s analysis focused on the second part of the machine-or-transformation test. Regarding what constitutes a “particular article” the court stated, “Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.” Thus, a patentable process must transform physical object or substances.

Physical Objects Represented. When software manipulates data alone, the data must represent physical objects.  The court reviewed a prior case where a broad claim covered a process of displaying data variances from averages. However, the claim did not “specify any particular type or nature of data; nor did it specify how or from where the data was obtained or what the data represented.” Id. Another claim was found to contain patentable subject matter provided, “said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.” This claim was patentable because the data represented structure of bones, and other body tissues, which are physical objects. Therefore a process that transforms data representing physical objects is patentable. The court explained that the process claimed need not transform the underlying physical object that the data represented. Id. at 962. Where the claim does not involve a particular machine and the claim involves the transformation or manipulation of an electronic signal, the electronic signal must represent a physical object or substance. Id. at 964.

Insignificant extra-solution activity. Moreover, the court stated that the particular machine or the transformation of a particular article must be more than an “insignificant extra-solution activity.”  For example, in a previous case the court rejected a claim where it was merely an algorithm combined with a data-gathering step. The court noted “that, at least in most cases, gathering data would not constitute a transformation of any article.” The court continued, “A requirement simply that data inputs be gathered–without specifying how–is a meaningless limit on a claim to an algorithm because every algorithm inherently requires the gathering of data inputs.” Id. at 963.

Software and Business Methods Not Categorically Excluded.  The court did not exclude software or business methods from patentable subject matter. The court stated, “we decline to adopt a broad [patentability] exclusion over software or any other such category.” Id. at 960.  The court also stated “that business method claims (and indeed all process claims) are subject to the same legal requirements for patentability as applied to any other process or method.” Id. However, the machine-or-transformation test adopted by the court has a restricting effect over the type of software or business methods that are patentable, or at least restricts the way in which software and business methods may be claimed.

Pre-Bilski Decisions – Particular Machine.

A pre-Bilski Board of Patent Appeals and Interferences (BPAI) decision is relevant to the question of what is a “particular machine.” Ex parte Langemyr (2008-1495, May 28, 2008). The question is whether a general purpose computer is a “particular machine.” In each instance the board relied on the Supreme Court in Gottschalk v. Benson, 409 U.S. 63 (1972). Where the claims provided method for converting binary-coded-decimal (BCD) numerals into pure binary numerals for use with a general-purpose digital computer of any type.  In Benson the court held that the claimed method was directed to non-statutory subject matter, because “[tlhe mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”  The claim in Ex parte Langemyr provided, “1. A method executed in a computer apparatus for creating a model of a combined physical system having physical quantities . . .”  The Board found the claimed method is not tied to "a particular machine," but rather is tied only to a general purpose computer. At least when any and all computing systems will suffice, then a claim is not tied to a particular computer.

The Board of Patent Appeals and Interferences found in each that a general purpose computer is not a particular machine.  New software processes may not be patentable if they are tied only to a general purpose computer. Simply reciting a general-purpose computer does likely not qualify as a particular machine, at least according to the Board.

Post-Bilski Decisions

In Ex Parte Bo LI (BPAI 2008-1213) the board court found a Beauregard claim patentable under Bilski. A Beauregard claim is a claim to an article of manufacture embodied as a computer-readable medium. The claim in Ex Parte Bo LI included a “number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium.”  

In Ex parte Halligan (BPAI 2008-1588), the patent application provided in claim 119 a "programmed computer method" for identifying trade secret information. The computer program applies trade secret common law rules to determine if a given piece of information is a trade secret under those rules. The BPAI rejected the Halligan claims applying the machine-transformation test because the application lacked patentable subject matter under 35 USC § 101.

Halligan claims failed to transform a physical object because the claims involved legal rights and did not represent physical objects. Next, the BPAI found that claim 119 was not tied to a particular machine. The preamble of the claim provided a “programmed computer method.” However, the BPAI found “This recitation fails to impose any meaningful limits on the claim's scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.”  Moreover, the BPAI stated, “Were the recitation of a ‘programmed computer’ in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a ‘programmed computer.’”

Conclusion

Bilski does not stand for the proposition that software or business methods are unpatentable. When drafting a software or business method patent application, (1) draft claims tied to physical objects and show how physical objects transform from one state to the next, and/or (2) draft claims to show how the computer implements the invention through computer or machine activities, simply providing that the process is “executed [in/on/by] a computer” is alone not sufficient.  Also, note that simply adding extra-solution activities such as “data gathering” is alone not sufficient, instead show how machine grounded activities carry out the process. The Supreme Court may change or throw out the machine-transformation test, but until then following these suggestions will enable claims within within the present section 101 jurisprudence.

SCORE is a nonprofit association dedicated to entrepreneur education and the formation, growth and success of small business nationwide.  Click [here] find a list of all SCORE workshops.

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The Preservation Three Step: What Every Lawyer Should Know to Protect a Client’s Potentially Patentable Assets

“For an idea that does not at first seem insane, there is no hope.”

—Albert Einstein

by Eric R. Waltmire

The Sinking Realization.

How many times have you said or heard someone say, “I thought of that before?” when seeing a product or service for the first time? Many individuals and businesses have lamented in the same way. Follow the three steps provided in this article to ensure your clients gain from their creativity rather than lamenting at lost opportunities.

Many of your clients have potentially patentable ideas, processes, or devices. It is important for you to identify their potentially patentable assets. It is also important to know what steps your clients should take to protect their right to seek a patent on such assets before the client makes a final determination whether those assets should be patented. This article provides (1) an overview of what types of ideas, processes, and devices are patentable and (2) the steps your client should take to preserve the right to patent a particular invention before the client makes a final determination on whether to, in fact, patent the invention.

Innovation Deserves Protection. Bill English, an employee of Xerox’s Palo Alto Research Center (PARC), invented the first computer ball mouse in the 1970s.1 Not only was the mouse invented at PARC, but scientists there developed “object-oriented programming, networked com-puters, pop-up menus, user-friendly word processing, the graphical user interface . . . and icons.”2 Most people do not think of Xerox as a computer company, but rather a copier company. This perception is due to Xerox’s decision not to seek a patent on the mouse and related computer technology. We think of the mouse as associated with Microsoft Windows, PCs, or Apple’s Macintosh user interface. This is because Steve Jobs, the CEO of Apple, saw a prototype of the mouse and the graphical user interface while visiting a Xerox facility.3 Meanwhile, the researchers at PARC could not convince the executives at Xerox that their innovation would be commercially successful, despite many demonstrations. Xerox failed to seek patent protection and allowed the technology to languish. They were too focused on their copier business. Jobs later hired some of those Palo Alto researchers away from Xerox to help build personal computers with many of the features he first saw at Xerox, including the computer mouse.

Steve jobs said, “Basically they [Xerox executives] were copier heads that just had no clue about a computer or what it could do,”4 Jobs continued, “so they just grabbed defeat from the greatest victory in the computer industry . . . Xerox could have owned the entire computer industry today.”5 Xerox didn’t fail to innovate—their scientists at PARC were one of the most innovative groups—but they failed to adequately protect and commercialize their innovation. Following the steps in this article will help your clients avoid grabbing defeat from the jaws of their greatest victory.

What is a Patent? Before discussing what things are patentable, it is important to know what a patent is. A patent is a grant from a government that provides an inventor the right to exclude others from making, selling, using, importing, or offering an invention for sale for a fixed period of time. 6 For all utility applications filed on or after June 8, 1995 in the United States, the patent term extends 20 years from the earliest effective patent application filing date.7 In order to maintain utility patent rights for the entire term, the patentee must pay maintenance fees at 3.5 years, 7.5 years, and 11.5 years from the date the patent issues.

What’s Patentable? The scope of the patentable subject matter is so broad that the Supreme Court stated that anything under the sun that is made by humans, except laws of nature, natural phenomena, abstract ideas, and humans are patentable.8 This article focuses on utility patents. However, there are two other types of patents, design patents and plant patents. A design patent covers new, original, and ornamental design for an article of manufacture. Plant patents are for one who invents or discovers and asexually reproduces any distinct and new variety of plant. Section 101 provides five categories of patentable subject matter relevant to utility patents: (1) processes (methods), (2) machines, (3) articles of manufacture, (4) compositions, (5) a new use of one of the first four.9 An applicant need not designate a category when filing a patent application as long as the invention falls within one of the categories.

Legal Requirements. This article is designed to provide you with the steps to preserve patent rights before a final determination on whether to seek a patent is made. An in-depth analysis of each patentability requirement is outside the scope of this article. However, I will briefly touch on the basic requirements.

There are at least four legal requirements for an invention to be patentable. The invention must be novel, non-obvious, useful, and classifiable within a statutory class of patentable inventions. First, on the novelty requirement, the invention must be new compared with prior art. Prior art includes (1) patents or printed publication anywhere in the world, or (2) public knowledge, public use, or sale of the invention in the United States. Consider whether the invention is different in any way from the prior art.10 Second, the invention must be “non-obvious” in view of the prior art when viewed from the standpoint of one skilled in the specific technology involved.11 The legal concept of “obviousness” in patent law is a highly litigated legal concept which may not be the same as a non-patent lawyer normally understands the term. Consider whether the invention is sufficiently different from the prior art when considered by a person having ordinary skill in the area of technology related to the invention. It is very difficult to predict what the United States Patent and Trademark Office (USPTO) will consider obvious due to the multifactor, fact intensive, inquiry required in an obviousness analysis.12 Even very small improvements may be patentable. You should consult with a patent attorney before determining that an invention is obvious. The third factor is whether the invention has utility.13 This is an easy requirement. Ask if the invention is useful for something other than landfill. If it is, then it has utility. The last factor is whether the invention falls within a statutory class, as mentioned above: a process (method), a machine, an article of manufacture, composition, or new use of any of the previous four.

The Preservation Three Step. If you think your client might have an idea that is patentable, you should advise the client to (1) keep the invention confidential, (2) document the invention and the events surrounding the invention’s conception and testing, and (3) diligently pursue the invention. You may find it useful to provide this information to all of your business clients, not just the ones that obviously engage in product or service development. Innovation is not the exclusive domain of any one type of business, but may originate from any person. Your client should take these steps before the client makes a final decision whether to apply for a patent.

1. Keep it Confidential. The inventor should avoid what I describe as “disclosure activities” before a patent application is filed. Disclosure activities include (1) disclosing the invention publicly,14 (2) disclosing the subject of the invention to a third party that is not under an obligation of confidentiality,15 (3) using the invention commercially or publically, even if the no one is aware of the public use,16 and (4) selling or offering the invention for sale.17 In some foreign countries, “publicly disclosing” can be as little as telling one person who is not under an express or implied agreement of confidentiality.

The reason to avoid disclosure activities is that these activities could forfeit an inventor’s right to obtain a patent under U.S. and foreign law. The U.S. has a one-year grace period that provides a patent application must be filed within one year after one undertakes a disclosure activity with respect to the subject matter of the invention.18 However, most foreign countries require “absolute novelty” and do not provide this one year grace period. If there is even a slight chance that patent protection is needed in foreign markets, the inventor and those associated with the invention must avoid disclosure activities until an application is filed. In either case, the safest route is to maintain confidentiality until an application is filed in the U.S. Filing a patent application in the U.S. is generally not considered a disclosure activity that violates the absolute novelty requirement of foreign countries. One can normally file a foreign patent application within a certain amount of time after filing in the U.S.

There are exceptions that may avoid the consequences of disclosure activities—such as an exception allowing use of an invention for testing purposes—but the exceptions are nuanced and outside the scope of this article. However, a client should not be paralyzed by the paranoia that someone might steal the invention. An unexploited invention has only commercial potential—like the computer innovations at the Xerox PARC facility—and those who delay pursuing that invention may lose out to a diligent inventor, like Apple. An inventor may make select disclosures to individuals who are under an obligation of confidentiality. Moreover, taking steps to document the invention as described in the next section will further preserve the inventor’s rights.

2.Document the Invention. It is important for your clients to document the facts of the invention and the events surrounding the invention’s conception: (1) to combat possible future claims by others that they invented your client’s invention independently first, (2) to prove your client invented the invention before the date of a particular prior art reference (patent or printed publication), (3) to provide proof if your client’s invention is stolen, and (4) to provide proof if there is a dispute over inventorship between co-inventors.19 While documenting an invention is not required before filing a patent application, the following provides a best practice for firmly securing patent rights as of the date of conception of the invention.

Lab Notebook. The best way to record the conception and development of the invention is to use an inventor’s lab notebook. These notebooks are designed for inventors. They are sturdy, each page is numbered, and the pages are permanently bound. The lab notebooks usually have lines at the bottom of each page for signatures and dates of the inventors and the witnesses. Lab notebooks are available at Fisher Scientific (www. fishersci.com).20 Alternatively, a standard bound notebook with pages that can’t be temporarily removed—no loose-leaf binders—will work in place of a lab notebook. When using a standard bound notebook, number all the pages consecutively before making entries in the notebook.

Notebook Information. The notebook is a diary of the inventor’s technical work. The inventors name, address and date the notebook was started should be written on the front of the notebook. The following information should be included in an entry: (1) title of the invention, (2) purpose of the invention/what problem does the invention solve (3) description of the invention’s structure and function, (4) informal drawings and/or photos with components labeled and referenced in the description, (5) new features of the invention, (6) any other close existing approaches or inventions known to the inventor or client, (7) advantages of the invention over the previous inventions/developments, (8) description of any tests performed on the invention, (9) results of any building or testing of a prototype, (10) conclusions.21 Refer to the original entry by invention title and page number when recording subsequent entries. Entries should be primarily factual, with conclusions provided only when supported by facts.

Honestly Sign and Date Each Entry. Each entry should be signed and dated. The idea is not to be sneaky in an attempt to be perfect, but rather to establish an authentic record related to the invention. If the inventor made entries days before he or she signed them, then the inventor should include a statement to that effect, for example, “I wrote the above on June 10, 2008, but forgot to sign and date it until now.”22 If the inventor conceived or built the invention already and the entry was not made contemporaneously with conception or building, the inventor should state the honest full facts and date the entry as the date the entry is written and signed by the inventor. For example, “I thought of the above invention on December 24, 2007 while fixing the door at my Aunt Mary Herzog’s house, but I didn’t write any description of it until today when my attorney advised me of a good procedure for documenting inventions.”

Witnesses. Witnesses should regularly sign notebook entries. Choose witnesses that are impartial and not relatives or people that the inventor worked closely with on the invention.23 The witness must have the capability of understanding the invention. The witness is not required to understand the theory behind the invention, although such an understanding is a plus. The witness should read and understand the material that he or she is witnessing in the notebook. The witness should not be in poor health because the point of a witness is, in part, to testify later, if needed, as to the facts that he or she witnessed. The following should appear above the witnesses’ signature and date, “The following undersigned, have witnessed, and agree not to disclose the above confidential information.”24 Obtaining two witnesses is preferred because it makes the inventor’s case stronger. Moreover, the inventor’s patent attorney should not be a witness because a patent attorney may not represent an inventor and also be a witness for the inventor.

Invention Disclosure Document. An invention disclosure document may be used as a somewhat less preferred method of recording an invention. A lab notebook with regular honest and comprehensive entries is preferred because it presents stronger evidence of the facts surrounding the invention, conception, and development of the invention. The invention disclosure document is a separate blank sheet of paper that is headed by the inventor’s name and address.25 It contains the same information as is contained in an inventor notebook entry, and concludes with the signatures and dates from the inventor and witnesses.

3. Be Diligent. As mentioned above, many times inventors are so afraid someone might steal their invention that they refuse to talk to anyone about it, including a patent attorney. However, an inventor that sits on an invention may lose out to another inventor that is diligent. This is codified at 35 U.S.C. 102(g), which provides: “In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to the conception by the other.”

Let me explain that section. The reduction to practice (RTP) can be an actual or constructive. Actual RTP is where the inventor creates a working proto-type of the invention. Constructive RTP is where the inventor files a patent application on the invention. Section 102(g) provides when two people file a patent applications on the same invention the patent will be awarded to the inventor who was first to reduce the invention to practice, unless the other inventor conceived of the invention first and was diligent in reducing the invention to practice.

Although an inventor may “win” the patent race by documenting actual RTP of the invention, filing a patent application is the best protection. This is because the USPTO knows the date an application is filed. Therefore proving the filing date of an application is simple. However, proving the date of actual RTP is more involved, less certain, and more costly. Also, if a first-to-invent dispute arises, the opposing side—like in litigation—may dispute the documentation showing actual RTP. The law rewards inventors and companies who diligently pursue their invention and diligently seek patent protection.

Moreover, even when an inventor diligently pursues her invention, if she delays filing a patent application and her invention is disclosed in certain prior art more than one year before she files, she may lose her patent rights nonetheless. Therefore, being diligent includes diligently filing a patent application.

Conclusion. Every attorney should know how to preserve patent rights for a client’s potentially patentable innovation. To do so, advise your client to (1) keep the invention confidential, (2) document the invention and the events surrounding the invention’s conception and testing, and (3) diligently pursue the invention. Guiding your client on this straightforward dance will ensure your client is not a wallflower while competitors are busy on the innovation economy dance floor.n

1 Mouse 40 years old, and it still lets you push it around, Pittsburg Post-Gazette, January 05, 2008, available at, http://www.post-gazette.com/pg/08005/846863-371.stm.

2 Morgan W. McCall Jr., Taking a Lead on Innovation: Five common mistakes that hinder innovation and how to avoid them, Harvard Management Update, http://discussionleader.hbsp.com/hmu/2008/02/taking-the-lead-on-innovation-1.php; also published in Strategy & Innovation Newsletter, 2 Harvard Business Publishing 2, March/April 2004, available at http://harvardbusinessonline.hbsp. harvard.edu/b02/en/common/tem_detail.jhtml;jsessionid=AY2KSSMSD GPQOAKRGWDR5VQBKE0YIISW?id =S04030&referral=2341.

3 John Markoff, Xerox vs. Apple: Standard ‘Dashboard’ Is at Issue, New York Times, Dec. 20, 1989, available at http://query.nytimes.com/gst/fullpage.html?res=950DEFDC103BF 933A15751C1A96F948260&sec=&spon= &pagewanted=all; Alex Soojung-Kim Pang, Mighty Mouse, Stanford Magazine, Mar./Apr. 2002, available at http://www. stanfordalumni.org/news/magazine/2002/marapr/features/mouse.html.

4 Leander Kahney, Inside Steve’s Brain, 194 (Portfolio Hardcover 2008).

5 “Triumph of The Nerds,” Transcript of Television Program, available at http://www.pbs.org/nerds/part3.html.

6 35 U.S.C. § 154 (2008).

7 Id. Design Patents have a 14 year term beginning from the date the patent issues.

8 Diamond v. Diehr, 450 U.S. 175 (1981).

9 35 U.S.C. § 101 (2008).

10 35 U.S.C. § 102; Manual of Patent Examining Procedure (MPEP) §§ 2131-2138.06 (2008) available at http://www. uspto.gov/web/offices/pac/mpep/index.html (last accessed: 07/27/2008).

11 35 US.C. § 103.

12 MPEP § 2141.

13 Id. at § 2107.

14 Id. at § 2131(I).

15 Id.

16 Id. at § 2133.03(a).

17 Id. at § 2133.03(b).

18 35 U.S.C. § 102(b).

19 David Pressman, Patent It Yourself, 46-47 (13th ed., Nolo 2008). I read this book after some of my clients mentioned it. It provides a good overview of the patent process along with practical tips.

20 Id. at 49.

21 Id. at 59.

22 Id. at 49.

23 Id. at 53.

24 Id. at 55.

25 Id. at 54.