Patent examination - USPTO
This page is about the patent examination process and particularly about the examination of software and business method patents in USA and Europe. I assume that the reader understands words and phrases like patent, business method or prior art. I also assume that the reader knows the structure of a patent and how to search patent applications in the US Patent and Trademark Office (USPTO) and in the European Patent Office (EPO) Web sites. To learn these prerequisites you can read Patent search on this site. I also present an example of patent trial and re-examination in the Business Method page of this site (MercExchange v. eBay) and another one (Eolas v. Microsoft) at the end of this page.
This page contains the following sections:
A patent is a property right ("the right to exclude others from making, using, offering for sale, or selling") granted by a government for a limited time (typically twenty years) to reward a "progress of science and useful arts". A patent has a subject matter, claimed in a patent application, like a land has a location.
A patent application must meet three conditions to be a "progress of science and useful arts":
A patent application has two main sections:
For the patent system to work the public must be able to check what is patented in order to settle licence agreements with patentees or to design around patents. For this reason patents have to be public. The public has also to think that licences are valid and to be able to determine their scope. Without rules allowing determining from the patent claims whether a process or method infringes a patent the public would not be able to know if they use a patent process or method. And without the presumption of validity a patent would be a legal paper that just says that if you use the patent process or method you may be sued and that a court may find then that the patent is valid.
Therefore patent offices must check that patent application follow writing rules and meet these three patentability criteria (usefulness, novelty and non-obviousness) plus a fourth criterion, patentable subject matter that I present now.
There are subject matters that cannot be patented. The general rule is that "laws of nature, natural phenomena, and abstract ideas" including mathematical algorithms cannot be patented and that patents shall be granted only for technical ideas. This question has been the object of debates in recent years, especially for biology, software and business method patents and particularly in Europe. I discussed this issue in the Patent search page and in the Business Method page. My opinion is that patents shall be granted for "anything under the sun that is made by man" whose usefulness, novelty, non-obviousness and enablement can be effectively appreciated by a patent office. This would exclude subject matters for which patent offices cannot build prior art databases and subject matters that can be found in a couple of days and disclosed in a short e-mail or article.
The patent office checking is called examination. Once it is granted a patent is presumed to be valid. So in case of dispute the burden of proof is on the defendant (the alleged infringer) and not on the plaintiff (the patentee) to the opposite, for instance, of criminal cases.
The reference guide for writing a patent is the Manual of Patent Examining Procedure (MPEP). Read in particular the Chapter 2100 Patentability.
A US patent is made of three sections:
"A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. If the patent is of basic nature, the entire technical disclosure may be new in the art and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product or composition, the abstract should include the technical disclosure of the improvement. [...] If the new disclosure involves modifications or alternatives, the abstract should mention by way of example the preferred modification or alternative.
The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
Where applicable, the abstract should include the following:
The function of claims is explained in 35 USC 112: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."
Here is an example of claim:
"A computer-implemented method of searching for an item in a plurality of independently operated electronic auctions interconnected by a computer network, each electronic auction having an associated data repository, the method comprising:
It has a preamble and a number of elements (phrases) that describe the claim limitations. There is infringement when another party use a system with each and every limitation of a claim. So the inventor must include the absolute minimal set of elements that differentiate a new invention over what came before. If US patents contain many claims, this is partly to increase the chances to get an optimal claim. When a claim contains many limitations, this is usually because the examiner rejected the first version of the claim for lack of novelty (it was anticipated by prior art) or obviousness and because the applicant added additional limitations to overcome the rejection.
This claim has a function, which is to search "an item in a plurality of independently operated electronic auctions interconnected by a computer network" and two steps:
Such claims are called means or steps plus function claims. They are so important that 35 USC 112 describes them: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."
So the precise scope of such claims is determined by the claim and by the description. There was a trial for infringement of the patent that contains the claim above. The court determined the meaning of words like item and also whether the steps recited a sequence. To learn more about this case you may look at the Business method page. For details about the construction of means plus function claims you may look at http://www.uspto.gov/go/og/con/files/cons089.htm and http://jip.kentlaw.edu/nart/2004/A-2.htm.
As implicitly stated by 35 USC 112 a claim may also recite structure, material, or acts. In this case the claim loses its function limitation. A claim for a popcorn dispenser was rejected because the claimed structure was the same as the structure of an oil can.
As a rule the examiner will give to a claim its "broadest reasonable interpretation consistent with the specification". The reason is that the applicant "always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified." In the same way "the words of the claim must be given their plain [ordinary and customary] meaning unless applicant has provided a clear definition in the specification." The clear definition exception means that an "applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning."
The description is made of:
An examination is a workflow comprising the following steps:
Note that the applicant can modify the application after filing and before examination in preliminary amendments.
37 C.F.R. 1.111(b) explains how the applicant should handle a rejection:
"In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. [...] A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section."
It is useful to differentiate "technical" rejections and rejections for lack of utility, novelty or obviousness.
Technical rejections are:
In case of "technical" rejections the examiner just reads the law and the relevant case laws. So the applicant must amend the application to address such rejections. Usually amending the claims is enough. In case of lack of enablement or of adequate written description the applicant may have to amend the description, which is more annoying. A description change may change the application’s subject matter. In case of dispute a court may find that the actual priority date is the date at which the change was made and not the date at which the application (or its parent) was filed.
Utility rejections are governed by MPEP 2107.01. "Deficiencies under the 'useful invention' requirement of 35 U.S.C. 101 will arise in one of two forms":
Utility rejections are close to technical rejections. Applicants amend applications to address such rejections in the same way as they amend applications to address technical rejections.
The applicant must list the prior art (patents, printed publications) relevant for the application. Even if the examiner may find other prior art, this is important because (1) "while the presentation at trial of a reference that was not before the examiner does not change the presumption of validity [see 35 USC 282], the alleged infringer’s burden may be more easily carried because of this additional reference" (2) a missing reference can raise a substantial question of patentability and therefore allow a re-examination to be ordered. So an alleged infringer can more easily demonstrate that the patent is invalid if the applicant omits relevant prior art in his reference list.
When the examiner finds that a claim is not novel, he writes that this claim is anticipated by a given prior art (usually a patent or an older patent application). It may be the consequence of a misunderstanding that the applicant can clarify in his answer. If it is not the applicant has no choice but to substantially modify the claim limitations.
The most complex case is the case in which the examiner finds a claim obvious. Then he usually writes that the claim is unpatentable over a given prior art in view of this and this other prior arts. The complexity comes from the fact that obviousness is not so easy to determine for the examiner or to refute for the applicant.
35 USC 103 "Conditions for patentability; non-obvious subject matter" says: "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."
To find if a claim is obvious the examiner uses a Graham test that comes from the court reasoning in Graham v. McDeere. The dispute was about a plow effective in rocky or glacial soils. The patent described an apparatus permitting plow shanks to be pushed upward when they hit obstructions. The court first observed that "a number of spring-hinge-shank combinations are clamped to a plow frame, forming a set of ground-working chisels capable of withstanding the shock of rocks and other obstructions in the soil without breaking the shanks" and that "the prior art as a whole in one form or another contains all of the mechanical elements of the parent." Then the court identified two differences between the patent and the closest prior art and found that the essential difference between the patent and prior art results was that the patent allowed the shank to flex under stress for its entire length. The testimony of petitioners' experts showed that the flexing advantages flowing from the patent arrangement were not, in fact, a significant feature in the patent and the court further found that "certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what the inventor did, i. e., invert the shank and the hinge plate."
The court gave the following demonstration: "Even though the position of the shank and hinge plate appears reversed in the closest prior art, the mechanical operation is identical. The shank there pivots about the underside of the stirrup, which in closest prior art is above the shank. In other words, the stirrup in closest prior art serves exactly the same function as the heel of the hinge plate in the patent. The mere shifting of the wear point to the heel of the patent hinge plate from the stirrup of closest prior art - itself a part of the hinge plate - presents no operative mechanical distinctions, much less non-obvious differences."
So obviousness is shown if a person with ordinary skill in the art and the same motivation (for instance the same problem to solve) as the inventor would (not could) have made the invention, given the prior art.
The examiner and the applicant have different, conflicting objectives:
An examination history is made of rejections, answers and amendments. The combination of conflicting objectives and of a cycle of proposals, rejections and amended proposals clearly denotes that an examination is a negotiation. Though applicants may sometimes misuse the examination procedures to wear out examiners, such negotiation is the simplest way to pass through knowledge and cultural barriers to achieve a common understanding. The patent attorney who represents the inventors may involve his client’s experts to address the strongest objections. The examiner also needs the applicant’s answers to familiarize with the invention domain.
The examiner and the applicant are required to cite relevant articles.
As we have seen most rejections (lack of adequate written description, lack of novelty, obviousness) relate to claims. In such cases the examiner and the applicant analyze specific claims, may interpret the claim language, and discuss of means plus function claim limitations. For novelty and obviousness rejections the examiner and the applicant also comment, quote and construe prior art.
Using essentially the same means to achieve essentially the same result is counterfeiting. This is called the doctrine of equivalents. However this doctrine of equivalents cannot apply when, to be granted a patent, the applicant amended his claims and gave in his remarks a narrow meaning to some words. This is called estoppel. Generally speaking, if someone states that something is so and, in reliance upon that statement, another person acts in a particular way, possibly to her detriment, then the person who made the statement is prevented, or estopped, from denying the correctness of the statement which she originally made. If the applicant could use without restriction the doctrine of equivalents for an amended claim he would deny the correctness of the amendment, which allowed the examiner to grant the patent.
The consequence is that the doctrine of equivalents widens the patent scope in a way that can be deduced only from the patent reading. To see to which extent a claim can benefit of the doctrine of equivalents the public must also read the examination documents. When they find that the examiner objected to a claim people must appreciate the objection and the claim amendment. If the applicant had to be more specific on some aspect then he is estopped on this aspect, which means that a process or system that only differs from the patent by this aspect does not infringe the patent.
Final / non-final rejection
A rejection may be non-final or final. A final rejection ends a cycle of examination. When he gets a final rejection the applicant can:
There are four ways to abandon an application:
The interview procedure is explained in 37 C.F.R. § 1.133(b): "In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§1.111 and 1.135."
An interview is the opportunity for the applicant and the examiner to clear up a misunderstanding. Examination interviews exist because of the weaknesses of written formal communication: documents are big, detailed and unable to stress on key points. The examiner and the applicant repeat themselves in their successive rejections and replies. The problem with interviews is that the public (and the parties in a later litigation) has no access to them and cannot appreciate the reasoning and the concessions made by the applicant. In ENDING ABUSE OF PATENT CONTINUATIONS Mark A. Lemley and Kimberly A. Moore wrote: "Unlike the rest of the prosecution history, which involves written correspondence and is therefore carefully documented, the interview is not transcribed and the interview summary that is completed by the examiner is often cryptic and uninformative." For the public this is frustrating. They see little progress toward an agreement throughout the prosecution, up to the interview, in which the application is suddenly allowed for issuance of a patent.
RCEs and continuation applications allow applicants to keep the benefit of the filing date of the first application. 35 U.S.C. 120 says:
"An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title [35 USC §112] in an application previously filed in the United States, or as provided by section 363 of this title [35 USC §363], which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application."
The US patent system endorses a model in which first an invention is made and then inventors file a patent application for this invention. According to this model, when two persons or two companies make the same invention this is the person or the company which invent first that is granted a patent and not, as in most countries, the person or the company which first filed a patent application.
The burden of proving that the invention was made at a certain time is on the applicant. The affidavit of a person who has an interest in the invention business is not acceptable. The testimony of a corporate employee or of a contractor who is making a substantial part of his business with the applicant is as reliable as the testimony of a mother in a crime trial. Therefore the applicant usually cannot demonstrate that he made the invention at a certain date and the patent system uses the filing date. The patent system provides two means to address this issue:
Provisional applications are defined in 35 USC 111: "Such application shall include:
35 USC 111 further says: "A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application."
These are minimal requirements. A design document or a feasibility study explaining the goal of a product, presenting its components and containing drawings is a valid provisional application for a software or a business method patent. A provisional application requiring almost no work (the applicant just has to fill the cover sheet reproduced at the end of 201.04(b) and to sign a check), a company has no excuse to not file it just after making the invention. Most provisional applications are of this sort. [Provisional applications are therefore useful for business intelligence or to understand the applicant motivation. Note that, for international applications designating a European country, if you do not find the provisional application in the USPTO site, you may try to find the "Priority document" on the EPO site.]
The model assumes that inventions are mind works existing on their own whose implementations cannot cover all the ways of practicing them and specifications are necessarily imperfect. An imperfect specification can be improved. So the US patent system logically provides means to improve specification while keeping the filing date, which are reissues, continuation and division applications. For instance inventors of software patents claimed in 1993 client / server systems. After the Web advent they filed continuation and divisional applications claiming Web application systems. The subject matter of their inventions was to display a certain sequence of forms using certain data and computations to achieve some purpose and not client / server programming which was known art. In Kingsdown Medical Consultants v. Hollister, the Federal Circuit further explained:
"It should be made clear at the outset of the present discussion that there is nothing improper, illegal or inequitable in filing a patent application for the purpose of obtaining a right to exclude a known competitor’s product from the market; nor is it in any manner improper to amend or insert claims intended to cover a competitor’s product the applicant’s attorney has learned about during the prosecution of a patent application. Any such amendment or insertion must comply with all statutes and regulations, of course, but, if it does, its genesis in the marketplace is simply irrelevant and cannot of itself evidence deceitful intent."
I consider the different forms of continuations in the next sections. In this section I consider reissues and division applications.
The section 201.6 of the MPEP says: "A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or division." To say it in a different way when the claims of a continuation cover essentially the same scope as the original application in a more appropriate way, a division application consists in reusing the stuff of the application description with claims covering a different scope. For instance MercExchange filed a divisional application that eventually was granted as 6,202,051 for a system "facilitating internet commerce through internetworked auctions" whereas the original application (subsequently 5,845,265) was about a consignment nodes’ system.
A reissue application is an application for a patent to take the place of an unexpired patent that is defective in some one or more particulars. The maximum term of the original patent is fixed at the time the patent is granted. While the term may be subsequently shortened, e.g., through the filing of a terminal disclaimer, it cannot be extended through the filing of a reissue. 37 CFR 1.173 says: "An application for reissue must contain the entire specification, including the claims, and the drawings of the patent. No new matter shall be introduced into the application. No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent."
The request for continued examination procedure was created precisely to allow applicants to reopen the examination of an application after a final rejection "by the simple expedient of paying a fee".
A continuation application is a "second application for the same invention claimed in a prior non-provisional application and filed before the original prior application becomes abandoned or patented."
Continuation in part
A continuation-in-part application is a new "application filed during the lifetime of an earlier non-provisional application, repeating some substantial portion or all of the earlier non-provisional application and adding matter not disclosed in the said earlier non-provisional application."
35 U.S.C. 134 says: "An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the administrative patent judge to the Board of Patent Appeals and Interferences" by filing a notice of appeal. Then the applicant must file an appeal brief as described in 37 CFR 1.192.
The reasoning is as follows. The USPTO makes many decisions of a discretionary nature which the applicant may feel deny him the patent protection to which he is entitled. The differences of opinion on such matters can be justly resolved only by prescribing and following judicial procedures. Where the differences of opinion concern the denial of patent claims because of prior art or material deficiencies in the disclosure set forth in the application, the questions thereby raised relate to the merits, and appeal procedure within the Office and to the courts is handled by a Board of Patent Appeals and Interferences (BPAI) which includes the Director, the Commissioner for Patents, the Commissioner for Trademarks, and administrative patent judges appointed by the Director. If they do not relate to the merits the questions thereby raised are petition-able matters for the Commissioner of Patents.
Re-examination is an alternative to litigation in the Federal Courts, allowing invalidating a patent like a court, but at a cost lower than Court proceedings, and with an expedited procedure.
There are two types of re-examination:
In this section we focus on ex parte re-examination. The 2201 section of the MPEP contains a flowchart showing its proceedings. 37 C.F.R. 1.510 explains how to request a re-examination: "Any person may, at any time during the period of enforceability of a patent, file a request for reexamination by the Patent and Trademark Office of any claim of the patent on the basis of prior art patents or printed publications."
For a re-examination to be ordered the requester must have raised substantial new questions of patentability notably based on prior patents and printed publications that were not discussed or that were improperly presented in the examination. If the re-examination is ordered the patent owner is expected to make a statement as specified by 37 C.F.R. 1.530 (b) that reads "the order for reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability including any proposed amendments the patent owner wishes to make" and (c) that says that "any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations."
The examiner examines the patent in light of the prior art patents or printed publications submitted in the re-examination request. He can issue actions and final actions that are like rejections and final rejections. The patent owner replies to an action like he would reply to a rejection with remarks and amendments. A final rejection closes the prosecution. To avoid the invalidation of the patent (or at least of a part of its claims) the patent owner may use the appeal procedure described above.
Burden of proof
In the patent office, the burden of proof is on the examiner to show why an invention does not deserve patent protection. In court, the burden of proof is on the alleged infringer to prove that a patent is not valid, and in the re-examination, the burden is on the patent office.
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