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Table of content

Foreword Principle USPTO Writing rules Abstract Claims Description Examination Technical rejections Utility rejections Novelty rejections Obviousness rejections Negotiation Estoppel Final / non-final rejection Abandon Interview Filing date RCE Continuation Continuation in part Appeal Re-examination Burden of proof EPO Writing rules Abstract Claims Description Prosecution history Search Publication Examination Amendment objections Obviousness objections Novelty objections Opposition Appeal Burden of proof Divisional application Differences with USPTO Unity of invention Inventorship Prior art disclosure Objective technical problem Refusal or grant Opposition / re-examination Litigations PanIP re-examinations 5,576,951 Request Non-final action 6,289,319 Request Re-examination ordered Eolas re-examination Claims Trial Markman order Summary judgment Verdict Judgment order Post-trial order Re-examination Order Non final action HTML+ Interview request Interview summary Written response Dr Dobbs article Declaration by Doyle Second non-final action Toye paper Applicant’s response

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:

1. common principles of examination,

2. USPTO examination and re-examination,

3. EPO examination and opposition,

4. examples of re-examination (PanIP and Eolas patents).

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":

1. To be useful. The invention must have some application or utility or be an improvement over existing products and/or techniques.

2. To be novel. The invention must be demonstrably different from publicly available ideas, inventions, or products (so-called "prior art").

3. To be inventive or, to say it in another way, to not be obvious.

A patent application has two main sections:

1. The claims that point out and distinctly claim the subject matter which the applicant regards as his invention.

2. The description that explains how the invention is working. The description must enable a person of the art to reproduce this invention ("enablement"). The enablement demonstrates that the inventor owns the claimed invention. This is also a disclosure that allows anybody to freely reproduce the invention once the patent has expired.

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:

1. an abstract,

2. claims defining "in words the boundaries of the invention so that the public will know what the invention is and can avoid infringing it",

3. a description.

"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:

1. if a machine or apparatus, its organization and operation; [...]

2. if an article, its method of making;

3. if a process, the steps."

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:

• receiving input identifying an item; and

• instructing a software search agent to search for the item on the computer network in the respective data repositories of one or more of the electronic auctions."

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:

1. "receiving input identifying an item; and

2. instructing a software search agent to search for the item on the computer network in the respective data repositories of one or more of the electronic auctions."

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:

• Title: short, brief and specific.

• The field of the invention: a broad statement that should start with something like "The present invention relates to". In case of 5,838,906 it was "This invention relates generally to manipulating data in a computer network, and specifically to retrieving, presenting and manipulating embedded program objects in distributed hypermedia systems."

• Background information: what people will need to understand, search or examine the invention.

• Prior art: Problems that inventors have faced in this area and how they have attempted to solve them.

• Summary of the invention: How the invention solves one or several of these problems. What the applicant is trying to show is how his invention is new and different.

• Drawing and screenshots

• Detailed description: Must describe the invention parts in sufficient detail so that someone could reproduce at least one version (preferred embodiment) of the invention.

I show examination histories in the Patent search page (PanIP and Eolas) and in the Business Method page (MercExchange).

An examination is a workflow comprising the following steps:

1. The examiner is assigned a patent application.

2. He checks if the application is patentable, and more precisely if the patent application (1) complies with patent writing rules, (2) has a patentable (statutory) subject-matter, (3) enable a person of the art to implement the invention (enablement), and (4) is useful, novel and inventive and (5) if claims are supported by the description (have an adequate written description). If the application does not pass at least one of these tests the examiner makes a rejection, in which he explains the reasons for the rejection and may suggest changes. This is not uncommon that the examiner also suggests abandoning the application.

3. The applicant replies to the rejection in a document usually entitled Remarks. He can also amend the application. The amendment usually consists in claim changes (new claims, modified and cancelled claims) but can also include description or abstract changes.

4. The examiner analyzes the applicant’s answer. If he still considers that the application is not patentable the examiner makes another rejection. Then the applicant replies to the rejection and so forth.

5. At a given time the examiner finds that the application is patentable and issues a notice of allowance. Then a patent is granted to the applicant.

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."

The reference guide of examination is the section 700 of the Manual of Patent Examining Procedure (MPEP). You can download the PDF version or visit the HTML version.

It is useful to differentiate "technical" rejections and rejections for lack of utility, novelty or obviousness.

Technical rejections are:

1. non-compliance to writing rules like wrong claim numbering,

2. lack of enablement,

3. non-statutory subject matter: nowadays examiners apply again the Toma test, which consists in checking whether the invention is within the technological arts, and whether the invention produces a useful, concrete and tangible result; the MPEP also says: "[a]n invention that is not a machine, an article of manufacture, a composition or a process cannot be patented",

4. lack of adequate written description.

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":

1. "when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention",

2. when "an assertion of specific and substantial utility for the invention made by an applicant is not credible".

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:

• The applicant wants to be granted a patent with the widest scope.

• The examiner must allow only legitimate claims.

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.

I discussed the doctrine of equivalents in the patent search page and in the business method page.

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:

1. abandon the application,

2. request a face-to-face or telephonic interview with the examiner,

3. make a request for continued examination (RCE),

4. file a continuation application,

5. file a continuation in part application,

6. appeal.

There are four ways to abandon an application:

1. Formally abandon the application with an express or formal abandonment letter.

2. Fail to take appropriate action at some stage in the prosecution of a non-provisional application. A certain period is given to the applicant to reply to USPTO actions (for instance rejections). The applicant must either reply within the period or ask for an extension of time (in which case he has to pay an extra fee). Otherwise the application is removed from the Office docket of pending applications and therefore abandoned. The examiner should notify the applicant that the application has been abandoned by using Notice of Abandonment form PTOL-1432.

3. Fail to pay a fee

4. Fail to file a non-provisional application less than one year after the filing date of a provisional 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.

However, as you can see in the Patent Search page and in the Business Method page, this model does not represent the reality in most cases:

• Individual inventors cannot support the huge development and experimentation costs needed to invent. They rather identify areas uncovered by prior art in rapidly developing domains.

• Corporate inventors want to get patents for significant development efforts and to complement a patent portfolio regardless of the novelty and inventiveness of these efforts (proprietarian model).

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:

1. The grace period. The applicant can publish the invention up to one year before filing the application. To use this method the applicant has to be sure to be able to file the application in the year. Later the publication will be public prior art and he won’t be allowed to patent his invention.

2. The provisional application.

Provisional applications are defined in 35 USC 111: "Such application shall include:

1. a specification as prescribed by the first paragraph of section 112 of this title; and

2. a drawing as prescribed by section 113 of this title."

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."

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:

1. Ex parte re-examination called as such because only the patent owner and the USPTO participate to the re-examination. Ex-parte re-examination exists since 1980 and is the most frequently used re-examination procedure.

2. Inter partes re-examination called as such because third parties may participate in re-examination proceedings. Inter partes re-examination exists since 1999.

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.

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.

http://www.european-patent-office.org/new_hp/tb_applic/index.htm contains:

• The European Patent Convention. The most important part is IMPLEMENTING REGULATIONS TO THE CONVENTION ON THE GRANT OF EUROPEAN PATENTS.

• Case Law of the Boards of Appeal, in which is explained for instance the inventive step test.

• Guidelines for examination in the EPO, whose function is close to the function of MPEP for USPTO.

The EPO provides a free tool, PatXML to write patent applications.

A European patent must contain:

• a description,

• claims,

• an abstract.

According to Article 85 of European Patent Convention, "the abstract shall merely serve for use as technical information; it may not be taken into account for any other purpose, in particular not for the purpose of interpreting the scope of the protection sought nor for the purpose of applying Article 54, paragraph 3".

Rule 33 defines the form and content of the abstract:

1. The abstract shall indicate the title of the invention.

2. The abstract shall contain a concise summary of the disclosure as contained in the description, the claims and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention and the principal use or uses of the invention. The abstract shall, where applicable, contain the chemical formula which, among those contained in the application, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.

3. The abstract shall preferably not contain more than one hundred and fifty words.

4. If the European patent application contains drawings, the applicant shall indicate the figure or, exceptionally, the figures of the drawings which he suggests should accompany the abstract when the abstract is published. The European Patent Office may decide to publish one or more other figures if it considers that they better characterise the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by a reference sign, placed between parentheses.

5. The abstract shall be so drafted that it constitutes an efficient instrument for purposes of searching in the particular technical field particularly by making it possible to assess whether there is a need for consulting the European patent application itself."

The fifth sub-paragraph relates to the fact that the EPO public site indexes the title and the abstract but not the claims and the description. Therefore you can search for strings in the title or abstract but not in the claims and in the description. On the other hand you can get reliable results in searches for assignee, which is not the case for the USPTO.

Rule 29 says: "The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate claims shall contain:

1. a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art;

2. a characterising portion - preceded by the expression "characterised in that" or "characterised by" - stating the technical features which, in combination with the features stated in first sub-paragraph, it is desired to protect."

Rule 27 defines the content of the description:

"The description shall:

1. specify the technical field to which the invention relates;

2. indicate the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for the examination, and, preferably, cite the documents reflecting such art;

3. disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;

4. briefly describe the figures in the drawings, if any;

5. describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any;

6. indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry;

7. the description shall be presented in the manner and order specified in paragraph 1, unless because of the nature of the invention, a different manner or a different order would afford a better understanding and a more economic presentation."

The description of a European application may contain:

• An invention title, like in a USPTO application. This title should clearly and concisely state the technical designation of the application and should exclude elaborate names. The maximum number of characters allowed is 250.

• A technical field, like in a USPTO application.

• The background art, the same thing as the background information of a USPTO application. Indicates the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for the examination, and, preferably, cite the documents reflecting such art.

• A disclosure of invention. Discloses the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art.

• A description of drawings in a USPTO application.

• A best mode, the same thing as the preferred embodiment of a USPTO application. Describes in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any.

• A statement about the industrial applicability of the invention. Indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry.

PatXML suggests calling other embodiments "Mode(s) for carrying out an invention".

Consult the patent search page to see how to display the prosecution history of a European patent.

You should get something like this:

This prosecution history is actually a merger of two prosecution histories.

As you can see many entries relates to procedures (inventor names, fees). In the case above the examiner made objections in his examination report. Then the applicant amended the claims and description and replied to the examination report. The examiner found that either the applicant answer did not properly address the report objections or that amended claims raised new objections. Next the EPO scheduled oral proceedings. The applicant failed then to convince the examiner. The examiner refused the application.

In Europe the applicant does not have to cite relevant prior art. The EPO lists references in a search report, which is a prerequisite for the examination. This search report is not established and a "Declaration of Non Establishment of International Search Report" is issued if the subject-matter of the application is excluded from patentability under Article 52:

"§1 European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

§2 The following in particular shall not be regarded as inventions within the meaning of paragraph 1

• discoveries, scientific theories and mathematical methods;

• aesthetic creations;

• schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

• presentations of information.

§3 The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."

Note:

§3 means that you cannot patent a software or a business method invention only when its subject matter is a program, scheme, rule and method for performing mental acts.

"The European search report is drawn up on the basis of the claims with due regard to the description and any drawings. It mentions those documents available to the EPO at the time of drawing up the report which may be taken into consideration in assessing novelty and inventive step."

A report is a table with three columns:

1. The category. The most important categories are X that means "document of particular relevance: the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone" or "particularly relevant if taken alone" and Y "document of particular relevance: the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more search documents, such combination being obvious for a person of the art" or "particularly relevant if combined with another document of the same category".

2. The citation, for instance a patent number, the section and the page(s) in the patent specification or the URL of a document on the Web.

3. Relevant to claims no., which lists the claims for which this prior art is relevant.

You may feel that a search report with Xs and Ys is a kind of first non-final rejection, X meaning most of the time a rejection for lack of novelty and Ys paving the way for a rejection for obviousness over Y1 in view of Y2, Y3... When he receives the search report, the applicant can:

• withdraw his application, or

• file a preliminary amendment to the description, claims or drawings, and / or

• file substantive comments on the search report.

However "the European search report does not contain reasons and expresses no opinion whatever as to the patentability of the invention covered by the application." The examiner does not have to follow the search report and he can find other prior art. He also has to give reasons and to express opinion about the patentability of the invention.

The article 67 (1) of the European Patent Convention says:

"A European patent application shall, from the date of its publication under Article 93, provisionally confer upon the applicant such protection as is conferred by Article 64, in the Contracting States designated in the application as published"

where article 64 says:

"A European patent shall [...] confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State"

and article 93 says:

1. "A European patent application shall be published as soon as possible after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, as from the date of priority. Nevertheless, at the request of the applicant the application may be published before the expiry of the period referred to above. It shall be published simultaneously with the publication of the specification of the European patent when the grant of the patent has become effective before the expiry of the period referred to above.

2. The publication shall contain the description, the claims and any drawings as filed and, in an annex, the European search report and the abstract, in so far as the latter are available before the termination of the technical preparations for publication. If the European search report and the abstract have not been published at the same time as the application, they shall be published separately."

So the publication of a European patent application is not correlated to the search or to the examination result. It may happen before or after the search and before or after a patent has been granted. Article 64 shows an interesting aspect of EPO: European law does not replace the patent law of member states [litigations are still ruled by the courts of member states]. In the EPO framework a State only has to agree to confer to European patents the same rights as it confers to its national patents. Publication is important for two reasons:

1. It allows other parties to analyze the application. They have sufficient time to prepare an opposition.

2. It confers to the applicant a provisional protection.

Article 93 talks about the date of priority. This date is described in article 88 of the EPC, which says:

"An applicant for a European patent desiring to take advantage of the priority of a previous application shall file a declaration of priority, a copy of the previous application and, if the language of the latter is not one of the official languages [English, French, German] of the European Patent Office, a translation of it in one of such official languages. The procedure to be followed in carrying out these provisions is laid down in the Implementing Regulations.

The applicant may file its application in his national patent office. Then the priority document is made of a form filled by the national patent office that says that the application was filed at a certain date and of this original application. For an American application that is extended to European countries the process is essentially the same. The priority document is made of the first application (for instance a provisional application) and of a form filled by the USPTO that says that this first application was filed at a certain date.

When he received the search report the applicant files an examination request. This request starts the examination procedure. The guiding principle of this procedure is that a decision on whether to grant a patent or refuse the application should be reached in as few actions as possible.

When the examiner has objections to the application, he sends reasoned communications (written opinions) inviting the applicant to file his observations and, if necessary, to submit amendments to the description, claims and drawings. Reasoned communication is described by the communication with the applicant article of the examination procedure (VI.2.4), which reads: "Taking into account the documents (if any) cited in the search report and any further documents found as the result of the search referred to in VI.2.3 above, and taking account also of any amendments proposed, or comments made, by the applicant, the examiner should identify any requirements of the EPC which, in his opinion, the application does not satisfy. He will then write to the applicant giving reasons for any objections he raises and inviting the applicant within a specified period to file his observations or submit amendments."

When the applicant has replied, the examiner will then re-examine the application. If re-examination shows that there are good prospects of bringing the proceedings to a positive conclusion, i.e. in the form of a decision to grant and there are still objections to be met, the examiner must consider whether they can best be resolved by a further written communication, a telephone discussion or a personal interview. When the telephone is used to settle outstanding matters, a note must be made in the prosecution file, giving particulars and identifying the matters discussed and any agreements reached. Any matters on which agreement was not reached should also be noted and the arguments adduced by the applicant should be summarised. Such telephone discussions and personal interviews are informal procedures to not confuse with oral proceedings.

The applicant may at any time request oral proceedings. Article 116 EPC says: "Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings." The conduct of oral proceedings is described in the examination guidelines III.8.

The rest of the examination procedure is well described in the Part one of the Guide of applicant (http://www.european-patent-office.org/legal/guiapp1/pdf/g1en_net.pdf) which reads:

• "[161] The examiner may seek the advice of other members of the examining division whenever he sees fit. At the latest he will refer the application to them when a decision [grant or refuse) has to be taken."

• "[162] If the examining division is of the opinion that a European patent cannot be granted, it will refuse the application." The decision is issued by the examining division and not by the examiner only.

• "[163] If the application and the invention to which it relates meet the requirements of the Convention, the examining division will decide to grant a European patent provided that the requisite fees have been paid in due time and a translation of the claims in the other two official languages of the EPO has been filed in due time."

Note:

Now applicants also have the option of foregoing detailed preliminary examination. In such cases, the same examiner will carry out the search and the examination and the written opinion will be based on the examiner's search notes. The written opinion will therefore confine itself to core issues of novelty, inventive step and industrial applicability. The applicant will, however, have the opportunity of requesting a more detailed international preliminary examination if it chooses and this can be done up to the date for responding to the written opinion.

We list now the most important objections.

The article 123 EPC says:

1. "The conditions under which a European patent application or a European patent may be amended in proceedings before the European Patent Office are laid down in the Implementing Regulations. In any case, an applicant shall be allowed at least one opportunity of amending the description, claims and drawings of his own volition.

2. A European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.

3. The claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred."

Note:

Part C VI.5 of the Guideline for examination describes amendments. The most interesting section is VI.5.3 Additional subject matter, which says:

• "There is normally no objection to an applicant introducing, by amendment, further information regarding prior art which is relevant; indeed this may be required by the examiner (see II, 4.3 and II 4.18). Nor will the straightforward clarification of an obscurity or the resolution of an inconsistency be objected to."

• "An amendment should be regarded as introducing subject-matter [...], and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art."

"Determining whether or not the invention involves an inventive step depends on the specific details of each patent application and in particular the subject-matter of each claim. According to the circumstances, various factors are taken into account, such as:

• the unforeseen technical effect produced by a new combination of known elements,

• selection of particular operating conditions within a known range,

• the degree of difficulty the person skilled in the art must overcome when combining several known documents,

• and secondary considerations such as the fact that the invention solves a long-standing technical problem which there have been many attempts to solve."

The examiner uses a "problem-and-solution approach". In this approach, there are three main stages:

1. determining the 'closest prior art',

2. establishing the 'objective technical problem' to be solved, and

3. considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

"The closest prior art is that combination of features, disclosed in one single reference, which constitutes the most promising starting point for an obvious development leading to the invention. In selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention."

The objective technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. This problem may not be what the applicant presented as "the problem" in his application. To establish the technical problem to be solved the examiner studies the application, the closest prior art and the difference, also called "the distinguishing feature(s)" of the invention, in terms of features (either structural or functional) between the invention and the closest prior art. Features which cannot be seen to make any contribution, either independently or in combination with other features, to the solution of a technical problem are not relevant for assessing inventive step.

The examiner can reject an application just because its distinguishing features contribute to the solution of a problem in a field excluded from patentability. This means that it is not enough for an application to belong to a patentable field. The delta between the application and the closest prior art must also belong to a patentable field.

To check if the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person, the question to be answered is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This is called the Could-would approach.

Chapter IV of the Examination guidelines gives "Examples relating to the Requirement of Inventive Steps". These examples are illustrative, their list is not exhaustive and examiners are said to "avoid attempts to fit a particular case into one of these examples if it is not clearly applicable." These examples are entitled:

1. Application of known measures? An inventive step is recognized when a known working method or means when used for a different purpose involves a new, surprising effect or when a new use of a known device or material involves overcoming technical difficulties.

2. Obvious combination of features? An inventive step is recognized when the combined features mutually support each other in their effects to such an extent that a new technical result is achieved.

3. Obvious selection? An inventive step is recognized when the invention involves special selection in a process of particular operating conditions within a known range, such selection producing unexpected effects in the operation of the process or the properties of the resulting product.

4. Overcoming a technical prejudice? There is an inventive step if the prior art leads the person skilled in the art away from the procedure proposed by the invention.

With the problem-and-solution approach lack of novelty is usually the special case in which the invention is identical to the closest prior art. However this is not always true.

The content of European patent applications filed prior to the date of filing or priority date and published on or after that date is considered as comprised in the state of the art and therefore prejudicial to novelty but not for inventive step. The content of the earlier application(s) as disclosed is referred to for assessing novelty but is not considered in deciding whether there has been an inventive step in the later application.

A document entitled EPO OPPOSITIONS reads: "The European Opposition system provides a central inter partes revocation mechanism for revoking, or limiting, European patents in all designated states, after grant. [...] An unsuccessful Opposition does not usually close the possibility of a further attack in each designated state, but a successful Opposition is final and cannot be overturned in the designated states." The opposition procedure is described in the part V of the European Patent convention.

Within nine months from the publication of the mention of the grant of the European patent, any person may give notice to the European Patent Office of opposition to the European patent granted. There can be more than one opponent. Opponents are parties to the opposition proceedings as well as the proprietor of the patent. In that respect inter partes re-examinations are like oppositions.

In the event of an opposition to a European patent being filed, any third party who proves that proceedings for infringement of the same patent have been instituted against him may, after the opposition period has expired, intervene in the opposition proceedings, if he gives notice of intervention within three months of the date on which the infringement proceedings were instituted. The same shall apply in respect of any third party who proves both that the proprietor of the patent has requested that he cease alleged infringement of the patent and that he has instituted proceedings for a court ruling that he is not infringing the patent [Art 105(1) EPC].

Grounds for opposition are listed in the Article 100 EPC:

1. "the subject-matter of the European patent is not patentable within the terms of Articles 52 to 57 [patentability];

2. the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art [enablement];

3. the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed in accordance with Article 61, beyond the content of the earlier application as filed. [~ adequate written description]"

The opponent gives notice of opposition in a written reasoned statement that states at least one ground for opposition under Article 100 and indicates the facts, evidence and arguments presented in support of the ground. After receiving the notice of opposition, the EPO communicates it to the proprietor and checks that it is admissible. Then the patent proprietor is invited to file observations and, where appropriate, amendments. The opposition works the same way as the examination with differences related to the fact that instead of two parties (the applicant and the examiner) an opposition involves at least three parties (the proprietor, the opponent and the examiner):

• The examiner, opponent and the proprietor send reasoned communications (written opinions).

• The proprietor may submit amendments to the description, claims and drawings.

But

• Informal procedures such as telephone discussions and personal interviews are forbidden. Parties can only use the formal oral proceeding procedure.

• Amendments are allowed only if they are occasioned by grounds for opposition, including grounds not invoked by the opponent.

At the end of the opposition procedure, if the Opposition Division is of the opinion that

1. the grounds for opposition prejudice the maintenance of the European patent, it revokes the patent;

2. the grounds for opposition do not prejudice the maintenance of the patent un-amended, it rejects the opposition;

3. taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of this Convention, it maintains the patent as amended.

The appeal procedure is described in the part VI of the European Patent convention. Appeals are handled by a Board of Appeal whose members are independent. There are actually different types of board of appeals:

• The technical boards of appeal are responsible for appeals against decisions of the examining divisions concerning the refusal of European patent applications or the granting of European patents and for appeals against decisions of the opposition divisions. They normally consist of three members (two technically qualified and one legally qualified).

• The legal board of appeal deal with appeals against decisions of the Receiving Section and the Legal Division. They consist of three legally qualified members.

• The Enlarged Board of Appeal deal with cases referred by the other boards of appeal to ensure uniform application of the law and rule important points of law.

Any party to proceedings [the most important proceedings being the examination and the opposition] adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right [in case of opposition appeal the proprietor and the opponent are parties to the appeal] [Article 107 EPC]. Notice of appeal must be filed in writing at the European Patent Office within two months after the date of notification of the decision appealed from. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. An appeal has suspensive effect, which means that the contested decision does not yet become final and its effects are suspended.

In the examination of the appeal, the Board of Appeal invite the parties, to file observations. Like examination and opposition appeals are mostly conducted by written procedure prompting parties to send reasoned communications.

The general rule is that "if a material fact is not or cannot be proven, a decision is taken on the basis of who carries the relevant burden of proof: the fact that the real position cannot be established operates to the detriment of the party which carries the burden of proof for this fact."

It means that:

1. In examination proceedings, if the applicant showed sound reasons for doubting whether a cited document belonged to the state of the art, the examiner should not pursue the matter further when any further investigation did not produce evidence sufficient to remove that doubt.

2. In opposition proceedings, "the patent proprietor is given the benefit of the doubt if the parties make contrary assertions regarding facts barring patentability which they cannot substantiate and, furthermore, the EPO is unable to establish the facts of its own motion.”

3. In appeal proceedings, "the party's status as opponent makes no difference when it comes to assigning the burden of proof." So while in opposition proceedings, “the burden of proving that the objections [...] have been substantiated lay with the opponent [...], once the opposition division had decided to revoke the patent, the burden shifted to the proprietor of the patent, who had to demonstrate on appeal that the reasons for revoking the patent were not sound."

"The usual reason for filing a European divisional application is that the parent application does not satisfy the requirements as to unity of invention and the applicant is not content with limiting it [Guide for applicants 199].”

"A divisional application may be filed only for subject-matter which does not extend beyond the content of the parent application as filed. [...] It is deemed to have the same date of filing and priority date as the parent application [Guide for applicants 199]."

Rule 30 says "Where a group of inventions is claimed in one and the same European patent application, the requirement of unity of invention referred to in Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art."

Rule 29 further says "Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following:

1. a plurality of inter-related products;

2. different uses of a product or apparatus;

3. alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim.

This means in practice that European patent applications have fewer claims than their American counterparts and typically only one independent claim. If an application has unrelated independent claims the search examiner finds it, performs a prior art search only for the first independent claim and suggests to the applicant to file divisional applications if he wants to protect the subject matter of the other independent claims.

The American law endorses the principle that inventions are made by people and not by companies. An American patent lists inventors, their city and state but the assignee name and address are not necessarily the name and address of the company. They are commonly the name and address of the patent attorney. In Europe inventions are made by companies rather than by people. In a European patent the name of the company is necessarily correct. The list of inventors is usually as good as an American inventor list because European patents are usually also filed as PCT applications designating USA, and therefore include the inventor list that will be later used in USA.

In USA 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. Furthermore "patent applicants owe a duty of candor and good faith to the patent office and this duty exists throughout the entire prosecution of the patent. Breaching this duty may constitute inequitable conduct, which includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intention to deceive."

In Europe the prior art is listed in a search report produced by the patent office. So the applicant does not have to disclose the result of his prior art search. However, at the same time, the outcome of his application prosecution depends essentially on the closest art found by the office and on the difference between this closest prior art and his application.

A European examiner must establish the objective technical problem solved by the invention. The objective technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The objective technical problem is made of the distinguishing features and represents the remaining novelty of the invention. The objective technical problem may be the ground of two types of objections:

1. objections because the distinguishing features contribute to the solution of a problem in a field excluded from patentability;

2. obviousness objections.

In the American system there is no equivalent to the former type of objection. For obviousness the European and the American systems are quite similar. The American examiner also determines the remaining novelty. Then the European examiner uses a could-would approach, not very different from the Graham-Mc Deere test, to determine if the invention is obvious: "the question to be answered is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage."

The article 97 of EPC says:

1. "The Examining Division shall refuse a European patent application if it is of the opinion that such application or the invention to which it relates does not meet the requirements of this Convention, except where a different sanction is provided for by this Convention.

2. If the Examining Division is of the opinion that the application and the invention to which it relates meet the requirements of this Convention, it shall decide to grant the European patent for the designated Contracting States..."

In Europe the decision to refuse a patent application or to grant a patent is taken by the examining division. In USA the examiner can issue a final rejection or a notice of allowance but this is not exactly the same thing. In Europe like in USA, there is an appeal procedure to cancel a refusal / final rejection but the American applicant also has several continuation procedures to continue a prosecution after a final rejection.

In EPO wording a re-examination is the task performed by the examiner after an applicant has replied to a written opinion / reasoned communication. The EPO procedure that is the closest to a USPTO re-examination is the opposition. However the European opposition and the American re-examination are different.

"The European opposition system is adversarial, initiated by any third party, usually a competitor. The patent may be challenged on any patentability grounds: novelty, inventive step, or industrial application and there is no limit on the kinds of evidence admissible.” A European opposition is actually a peer review, which almost automatically (oppositions are more likely to be filed against important patents) ensures that the appropriate effort is made to check the quality of patents. It is not necessarily worth spending a large amount of time on each application when most will not be used and a patent office has limited resources (time, prior art databases...) to appreciate the novelty and inventiveness of a patent application. A European opposition has to be filed shortly after the patent grant (9 months) and its proceedings delay litigations. The idea is that a patent that faced oppositions and whose oppositions failed is almost necessarily a good quality patent.

"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." But as you can see in the examples below of ex parte re-examinations (PanIP and Eolas) the requester role is just to raise 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. The only admissible evidence is prior patents and publications and the requestor cannot challenge a decision of the examiner (for instance in the Eolas re-examination, the requestor could not reuse the OLE patents and prior art). A re-examination may happen after a court decision. Then the requestor cannot challenge this decision either (for instance, again in the Eolas re-examination, the requestor could not reuse a Wei browser that could have anticipated the invention.) Then only the patent owner and the USPTO participate to the re-examination [ex parte re-examination].

About this issue you may also read

• "Post-Issue Patent “Quality Controls”: A Comparative Study of U.S. Patent Re-examinations and European Patent Oppositions", a PowerPoint presentation by Stuart Graham, Bronwyn H. Hall, Dietmar Harhoff and David Mowery;

• "The Global Nature of Intellectual Property: Discussion" by Bronwyn H. Hall.

The EPO system looks superior. However, to put things in perspective I must briefly mention trials. The USPTO system is weaker partly because it has a strong litigation back end. The EPO has a very different background. In Europe:

• patent litigations are ruled by the courts of the member states according to their national law;

• a trial is much cheaper than in USA and usually passes unnoticed;

• the plaintiff, who does not expect to be awarded substantial damages, aims to stop the alleged infringer from using the patented invention.

These re-examinations were requested by the PanIP Group Defense Fund (PGDF) and by Debrand Fine Chocolates which was the most active member of the PGDF.

This re-examination takes place with an application number 90/006,625.

The requesters found that claims 1-4 and 5-10 of 5,576,951 were anticipated by printed publications:

• an article "Comp-U-Store system could change retail economics" published in July 1983 in Direct Marketing, available in the prosecution history of 90/006,623 (see 6,289,319 re-examination);

• the conference records of a "Globecom ’82 IEEE Global Telecommunications conference", published in December 1982, available in the prosecution history of 90/006,623 (see 6,289,319 re-examination);

• "Discount Store news, the Newspaper of the Discount Department Store Industry", published in February 1983, probably available in the prosecution history of 90/006,623 (see 6,289,319 re-examination);

• "Electronic Retailing - Emerging methods & Markets" by Walter Forbes, Comp-U-Card International, published in May 1983;

• "How Video will change the sale" by Ellen Kleinberg, Industrial Marketing, published in April 1981. Available in the prosecution history of 90/006,623 (see 6,289,319 re-examination).

I found this detailed list in a notice of references cited. These printed publications are not in the prosecution history of 90/006,625. I discuss their content in the section about the re-examination of 6,289,319.

Though 5,576,951 was filed on March 16, 1994 its priority date was May 24, 1984 because it was a continuation-in-part of a continuation of a continuation-in-part of a continuation-in-part of a continuation-in-part of an application. 5,576,951 contains 10 claims, two independent claims 1 and 10 and eight claims depending on claim 1. So requesters focused on claims 1 and 10 and compared elements of claims 1 and 10 to the corresponding structures in the cited printed publications. They found that all publications described all elements in claim 1 and 10.

Claim 1 claims a "computer search system for retrieving information, comprising:

• means for storing interrelated textual information and graphical information;

• means for interrelating said textual and graphical information;

• a plurality of entry path means for searching said stored interrelated textual and graphical information, said entry path means comprising:

• textual search entry path means for searching said textual information and for retrieving interrelated graphical information to said searched text;

• graphics entry path means for searching said graphical information and for retrieving interrelated textual information to said searched graphical information;

• selecting means for providing a menu of said plurality of entry path means for selection;

• automatic data processing means for executing inquiries provided by a user in order to search said textual and graphical information through said selected entry path means and for fetching data as a function of other data;

• indicating means for indicating a pathway that accesses information related in one of said entry path means to information accessible in another one of said entry path means;

• accessing means for providing access to said related information in said another entry path means; and

• output means for receiving search results from said processing means and said related information from said accessing means and for providing said search results and received information to such user."

Claim 10 claims a "computerized system for selecting and ordering a variety of information, goods and services, which comprises:

• a plurality of computerized data processing installations programmed for processing orders for said information, goods and services;

• at least one computerized station, said station including:

• a micro-processor;

• a device for displaying graphical and textual material;

• at least one mass memory device controlled by said micro-processor;

• means for addressing at least one of said computerized data processing installations, and for sending thereto and receiving therefrom, coded messages and batches of data;

• program means for controlling the display on said display device of inquiries and acceptable answers;

• user operated means for selecting at least one of said acceptable answers;

• means for accumulating a set of said acceptable answers;

• automatic data processing means for processing said set of answers as a function of other data;

• means for storing in said mass-storing device, interrelated textual information and graphical information;

• means for interrelating said textual and graphical information;

• a plurality of entry path means for searching said stored interrelated textual and graphical information;

• means, responsive to said means for processing, for executing inquiries provided by said user and for searching said textual and graphical information through said selected entry path means;

• said means for executing and searching, including means for addressing at least one of said installations and for retrieving data related to said answer; and

• means responsive to said means for processing, for transferring orders for said information, goods and services to said installations."

The re-examination was ordered and subsequently the examiner issued a non-final action. He found that another printed publication, "Implications of consumer information processing for the design of consumer information systems" by Gabriel Biehal, The Journal of consumer affairs, Vol 17, No 1 published in 1983, anticipated claims 1-4 and 6-10. The examiner further found that claim 5 was obvious over Biehal in view of the Globecom conference record.

This re-examination takes place with an application number 90/006,623.

The requesters found that claim 1 was anticipated by printed publications:

• Electronic Mall. The printed publication is a reference guide for electronic mall merchants published by the Advanced Media Group (AMG). The Electronic Mall was a service of Compuserve using Videotex.

• Comp-U-Store. An interview of E. Kirk Shelton (president of Consumer Electronic Services, a division of Comp-U-Card) for Direct Marketing Magazine.

• Discount Store News. Vol 22 No 3. Article about a Canadian company, Consumer Distributing that created an electronic catalog for Videotex users.

The requesters found that claims 3-6 were obvious over printed publications:

• Electronic Mall. See above.

• Comp-U-Store. See above.

• GlobeCom. '82 IEEE Global Communication Conference. Conference record. Vol 3 of 3.

• Discount Store News. See above.

in view of the following printed publications:

• Prestel. A Prestel manual. Prestel was a UK videotext service.

• Kleinberg. An article entitled "How the video will change the sale" by Ellen Kleinberg.

• Ivis. A manual about IVIS.

• P-o-p videodisk. An article entitled "p-o-p disk videodisks help clerks to sell more products" by Michael Gerry, published in January 1984.

• Browning. A story by Graeme Browning about a Videospond device. This device is like today kiosks with a stress on video.

• Improving Retail Productivity. The agenda of a conference.

At the time of writing all these documents and more were public:

• the Electronic Mall document,

• papers from a Viewdata conference,

• the interview of E. Kirk Shelton about Comp-U-Store for Direct Marketing Magazine, entitled "Comp-U-Store system could change retail economics",

• the Globecom '82 IEEE Global Communication Conference. Conference record. Vol 3 of 3,

• an article of Discount Store News Vol 22 No 3 about a Canadian company, Consumer Distributing, which created an electronic catalog for Videotex users,

• samples from a Prestel manual, including some screenshots,

• an article entitled "How the video will change the sale" by Ellen Kleinberg, published by Industrial Marketing in April 1981,

• a manual about a Digital product called IVIS and entitled "IVIS put the power of sight, sound, and touch in information picture." The scan is terrible. The IVIS program was running on VAX. It could use a DECtouch touch screen color monitor and a videodisk player,

• an article entitled "p-o-p disk videodisks help clerks to sell more products" by Michael Gerry, published in January 1984,

• a story of United Press International by Graeme Browning about a Videospond device,

• the agenda of a conference entitled "Improving Retail Productivity", with a subtitle "How retailers and suppliers can improve their use of stocks, space, staff and systems" on October 20th, 2003.

These written publications relate:

1. for the online aspect to the first end-consumer online service to be widely used, the Videotex,

2. for the video to presentation of video devices.

The Videotex was a standard that used to be popular in France (Teletel) and substantially less in UK (Prestel) and elsewhere. The reason was that the French Telco, France Telecom gave a Videotex device, the Minitel, for free to its subscribers. The Minitel differed from the Web in the following ways:

1. It was easy for a provider to make money with Minitel. France Telecom was collecting the money from the subscriber (this was on his phone bill).

2. The use cost of the Minitel was quite high for the subscriber (sometime $1 per minute.)

3. Graphics were terrible and screens were displaying 40 characters per line.

Though Videotex had fewer users than the Web it was providing essentially the same service and designers had to solve essentially the same problems.

Technically Videotex was involving the following equipment:

1. a central computer, typically an IBM mainframe (S370) running a transaction monitor connected to a database, with a network front-end (3725) or a minicomputer (VAX) connected to an X25 public network,

2. the public X25 network,

3. a Packet Assembler/Disassembler (PAD) to convert between X25 and asynchronous,

4. a dumb device with typically a 75/1200bps modem (V23).

The complication of the apparatus came from the necessity to minimize the bandwidth need and the device cost. However the main components, a public network, servers and clients were the same as for the Web. Usually Videotex inventions were not patented. However there is not so much public prior art for the following reasons:

1. lack of easy-to-use authoring tools and of standardized document formats;

2. tedious publication process and secrecy policy, the rare documents were kept secret;

3. lack of archiving and indexing means due to the cost of hardware and especially of hard disks.

On the other hand articles, presentations and guides were explaining the systems’ designs in more details than today for the following reasons:

1. people were not Intellectual Property aware;

2. there were no technical writers and no experience in the art of explaining just what is needed to use a system;

3. early adopters were technicians that had to convinced of the value of the implementation, a vendor had to explain how its system was working.

Requesters relied precisely on such documents.

Though 6,289,319 was filed on November 30, 1994 its priority date was May 24, 1984 because it was a continuation of a continuation of a continuation of a continuation of a continuation-in-part of an application. 6,289,319 contains 6 claims, the independent claim 1 and five dependent claims. So requesters focused on claim 1 and compared elements of claim 1 to the corresponding structures in the cited printed publications. They found that the following references described all elements in claim 1:

• Comp-U-Store.

• Discount Store News.

• GlobeCom.

Requesters further found that the Electronic Mall document described all elements in claim 1 and that claim 1 was obvious over the Comp-U-Store, GlobeCom, Discount Store News and Electronic Mall documents.

Claim 1 reads:

"An automatic data processing system for processing business and financial transactions between entities from remote sites which comprises:

• a central processor programmed and connected to process a variety of inquiries and orders transmitted from said remote sites;

• said central processor including:

• means for receiving information about said transactions from said remote sites;

• means for retrievably storing said information;

• at least one terminal at each of said remote sites including a data processor and operational sequencing lists of program instructions;

• means for remotely linking said terminal to said central processor and for transmitting data back and forth between said central processor and said terminal;

• said terminal further comprising means for dispensing information and services for at least one of said entities including:

• a video screen;

• means for holding operational data including programming, informing, and inquiring sequences of data;

• means for manually entering information;

• means for storing information, inquires and orders for said transactions entered by one of said entities via said means for manually entering information, and data received through and from said central processor;

• on-line means for transmitting said information, inquiries, and orders to said central processor;

• on-line means for receiving data comprising operator-selected information and orders from said central processor via said linking means;

• means for outputting said informing and inquiring sequences on said video screen in accordance with preset routines and in response to data entered through said means for entering information;

• means for controlling said means for storing, means for outputting, and means for transmitting, including means for fetching additional inquiring sequences in response to a plurality of said data entered through said means for entering and in response to information received from said central processor;

• said informing sequences including directions for operating said terminal, and for presenting interrelated segments of said operational data describing a plurality of transaction operations;

• said programming sequences including means for interactively controlling the operation of said video screen, data receiving and transmitting means; and for selectively retrieving said data from said means for storing;

• said means for storing comprising means for retaining said operational sequencing list and means responsive to the status of the various means for controlling their operation;

• said central processor further including:

• means responsive to data received from one of said terminals for immediately transmitting selected stored information to said terminal; and

• means responsive to an order received from a terminal for updating data in said means for storing;

whereby said system can be used by said entities, each using one of said terminals to exchange information, and to respond to inquiries and orders instantaneously and over a period of time.

The requesters further explained why they found that claims 3-6 were obvious over printed publications.

The examiner found that the requester raised a substantial question of patentability, and ordered the re-examination.

The re-examination of 5,838,906 takes place with an application number 90/006,831.

5,838,906 has ten claims. Claim 1 and 6 are independent. Claim 1 reads:

"A method for running an application program in a computer network environment, comprising:

• providing at least one client workstation and one network server coupled to said network environment, wherein said network environment is a distributed hypermedia environment;

• executing, at said client workstation, a browser application, that parses a first distributed hypermedia document to identify text formats included in said distributed hypermedia document and for responding to predetermined text formats to initiate processing specified by said text formats; utilizing said browser to display, on said client workstation, at least a portion of a first hypermedia document received over said network from said server, wherein the portion of said first hypermedia document is displayed within a first browser-controlled window on said client workstation, wherein said first distributed hypermedia document includes an embed text format, located at a first location in said first distributed hypermedia document, that specifies the location of at least a portion of an object external to the first distributed hypermedia document, wherein said object has type information associated with it utilized by said browser to identify and locate an executable application external to the first distributed hypermedia document, and wherein said embed text format is parsed by said browser to automatically invoke said executable application to execute on said client workstation in order to display said object and enable interactive processing of said object within a display area created at said first location within the portion of said first distributed hypermedia document being displayed in said first browser-controlled window."

Claim 6 reads:

"A computer program product for use in a system having at least one client workstation and one network server coupled to said network environment, wherein said network environment is a distributed hypermedia environment, the computer program product comprising:

• a computer usable medium having computer readable program code physically embodied therein, said computer program product further comprising:

• computer readable program code for causing said client workstation to execute a browser application to parse a first distributed hypermedia document to identify text formats included in said distributed hypermedia document and to respond to predetermined text formats to initiate processes specified by said text formats;

• computer readable program code for causing said client workstation to utilize said browser to display, on said client workstation, at least a portion of a first hypermedia document received over said network from said server, wherein the portion of said first hypermedia document is displayed within a first browser-controlled window on said client workstation, wherein said first distributed hypermedia document includes an embed text format, located at a first location in said first distributed hypermedia document, that specifies the location of at least a portion of an object external to the first distributed hypermedia document, wherein said object has type information associated with it utilized by said browser to identify and locate an executable application external to the first distributed hypermedia document, and wherein said embed text format is parsed by said browser to automatically invoke said executable application to execute on said client workstation in order to display said object and enable interactive processing of said object within a display area created at said first location within the portion of said first distributed hypermedia document being displayed in said first browser-controlled window."

Both claims describe ActiveX and Java applets. This snippet shows the HTML code used to call a Macromedia player to play a Flash file in Internet Explorer:

Here the external executable application is the program whose CLSID is D27CDB6E-AE6D-11CF-96B8-444553540000, the Macromedia player. A browser component parses the document to find the name of the remote file to play, myflash.swf, and calls the external application with this "movie" parameter. The external application utilizes the browser to interactively play the myflash.swf file in the browser window.

This is not very different from the way to display an image:

Browsers supported at the time of the invention plug-ins, which are external applications able to display a file identified with its extension. The novelty of 5,838,906 consists in two parts:

1. Allowing the page author to specify the browser application and parameters in a way more flexible than an extension. We may observe that extensions are a legacy of ear