The Intellectual Property Spring 2015 i NSIDER A Publication of Volpe and Koenig, P.C. continued on page 2 Every company has a different business purpose for filing a patent. Some companies want to prevent their competitors from making a competing product, some want a patent as fast as possible to show potential investors that they own their technology, and others want a powerful patent that can drive licensing revenue into the company. Regardless of the business purpose, most applicants will say cost and timeliness are important factors during patent prosecution. By examining statistics on different art units and examiners, a data driven approach to patent prosecution strategy can help in minimizing cost and shortening the time to allowance. Evaluating the allowance rate of any art unit at the Patent and Trademark Office (PTO), and even analyzing the history of the specific examiner assigned to the application, can provide crucial insight into how your patent application will be examined. Increased knowledge of the PTO’s internal statistics will help you to make informed decisions that may shorten patent prosecution time and reduce cost while still allowing you to obtain a patent that suits your business purpose. As an example, even something as general as the art unit a patent application is assigned to for examination may have a major impact on the outcome of prosecution. Sampling statistics for a few different but related art units highlights the substantial differences in allowance rates and pendency times across units. For instance, art units 2464 and 2461 both handle applications relating to computer networks, multiplex communication, video distribution, and security. Art unit 2112 focuses on error detection/correction and fault detection/recovery. Inside this Issue Statistical Approach to Patent Prosecution................................ 1 Abstraction 101 – Software Patents and "Significantly More" ....................................3 Firm News ...................................6 % # + = <> - - < > Statistical Approach to Patent Prosecution By Wesley T. McMichael
Transcript
The Intellectual PropertySpring 2015
insiderA Publication of Volpe and Koenig, P.C.
continued on page 2
Every company has a different business purpose for filing a patent. Some companies want to prevent their competitors from making a competing product, some want a patent as fast as possible to show potential investors that they own their technology, and others want a powerful patent that can drive licensing revenue into the company. Regardless of the business purpose, most applicants will say cost and timeliness are important factors during patent prosecution. By examining statistics on different art units and examiners, a data driven approach to patent prosecution strategy can help in minimizing cost and shortening the time to allowance. Evaluating the allowance rate of any art unit at the Patent and Trademark Office (PTO), and even analyzing the history of the specific examiner assigned to the application, can provide crucial insight into how your patent application will be examined. Increased knowledge of the PTO’s internal statistics will help you to make informed decisions that may shorten patent prosecution time and reduce cost while still allowing you to obtain a patent that suits your business purpose.
As an example, even something as general as the art unit a patent application is assigned to for examination may have a major impact on the outcome of prosecution. Sampling statistics for a few different but related art units highlights the substantial differences in allowance rates and pendency times across units. For instance, art units 2464 and 2461 both handle applications relating to computer networks, multiplex communication, video distribution, and security. Art unit 2112 focuses on error detection/correction and fault detection/recovery.
Inside this Issue
Statistical Approach to Patent Prosecution................................1
Abstraction 101 – Software Patents and "Significantly More"....................................3
Firm News...................................6
% #+ =<> --< >Statistical Approach to Patent Prosecution By Wesley T. McMichael
2 Spring 2015 Insider Volpe and Koenig, P.C.
continued from cover
Art Unit
Total Pendency to Issuance or
Abandonment
Average # of Actions Per Issued
PatentAllowance
Rate
% Allowance Rate Before First Action
% Allowance Rate After
One Action
% Allowance Rate After
Two or More Actions
24643 Years,
8 Months, 8 Days2.2 82.98% 14.19% 35.71% 50.11%
2112 3 Years, 5 Months, 15 Days
1.4 83.95% 21.23% 48.00% 30.77%
24613 Years,
10 Months, 13 Days2.6 67.11% 5.91% 28.66% 65.43%
As shown in Table 1, total pendency is marginally shorter for art unit 2464 versus 2461, but art unit 2464’s allowance rate is dramatically higher. Art unit 2464 has an allowance rate of 82.98%, but art unit 2461 has an allowance rate of only 67.11%. Knowing which art unit a patent application has been assigned to can help an applicant set prosecution expectations and determine when to start off with narrowly focused claims in hopes of avoiding a likely rejection, or when to pursue the broad claim that will be invaluable in a licensing program.
Once prosecution of an application develops, statistical data becomes an even more useful factor in tactical decision-making. For example, examiner specific rates of allowance after a request for continued examination (RCE), appeal, or pre-appeal may be used in making decisions on whether to appeal or RCE. An appeal requires that the examiner write an answer responding to the appeal brief. Many examiners dislike writing briefs or are concerned about their records being overturned on appeal, and they may elect to reconsider their positions instead of letting cases go to the Patent Trial and Appeals Board for review. Though the costs for an appeal may look substantial, applications frequently do not make it to the Board. If a particular examiner dislikes writing briefs, this may be apparent from the allowance rate after a notice of appeal is filed, and the applicant can force the examiner’s hand by filing an appeal brief.
While it may be an expensive and time-consuming process to prepare an appeal brief, doing so may ultimately lead to a faster allowance at a lower total cost than filing RCE.
When prosecuting a patent application, it is important to look beyond the filing fees for a particular action and consider the application process as a whole to determine the most time- and cost-efficient strategy. Don’t merely press on, repeating the same arguments in hopes that the examiner will change his or her mind. Examine the statistics and work with the examiner to find a better way to achieve your business purpose and get critical patent applications allowed.
Table 1
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Abstraction 101 – Software Patents and "Significantly More"
By Todd A. Norton and Brandon R. Theiss
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1. BackgroundSection 101 of the Patent Act provides that an inventor may obtain a patent for any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof. This broad statutory grant has been judicially narrowed to exclude laws of nature, mental processes, and abstract ideas. These exclusions are necessary to prevent the granting of a patent that impedes innovation more than it promotes it, thereby thwarting the primary object of patent laws.
The judicially created exceptions for subject matter eligibility were originally thought to apply to claims directed to a process because a process feels less tangible. A process is an act or a series of acts or steps. As a result, this category of eligible subject matter has attracted a greater than usual amount of judicial attention culminating in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. The other categories of eligible subject matter -- machine, manufacture or composition of matter -- while existing in some physical or tangible form have been deemed under Alice to face equal scrutiny under the § 101 requirement.
2. Two-Part Analysis from Alice (the “Mayo Test”) The Supreme Court in Alice articulated a two-part test (the “Mayo Test”) for determining the eligibility of a claim directed to a computer implemented process based upon the framework presented in Mayo Collaborative Services v. Prometheus Laboratories, Inc. This test was further promulgated by the United States Patent and Trademark Office (USPTO) in the 2014 Interim Guidance on Patent Subject Matter Eligibility for comment with the period ending March 16, 2015. In the Guidelines, the USPTO analyzes case law from the decades of jurisprudence on § 101. This presentation demonstrates that each of the cases would have the same outcome today if decided under our current law (including the Guidelines).
As the courts and USPTO provide, the first step of the inquiry is to determine whether the claims at issue are directed to a patent-ineligible concept – an abstract idea, law of nature, or natural phenomenon. The second step is applied if the first step determines that the claims are directed to a patent-ineligible concept. The second step determines if “significantly more”
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is added to the law of nature or abstract idea to transform the nature of the claim into a patent-eligible application. If it is determined that the claims are directed to a patent-eligible concept in the first step or the claims are directed to “significantly more” than the law of nature or abstract idea in the second step, those claims are eligible for patent protection under §101.
In order to perform the first step in the analysis, a court must determine the concept to which the claimed invention is directed. This determination may be made by construing the claims. Claim construction is the process of defining the extent of the claims in a patent and the meaning of the terms of art within the claims. Prior to Alice, the Federal Circuit has stated that claim construction is not an inviolable prerequisite to a validity determination under §101. A detailed framework for performing claim construction can be found in the Federal Circuit’s decision in Phillips v. AWH Corp.
The USPTO uses the “broadest reasonable interpretation” of the claim as a whole in searching and citing art. In the Guidelines, it sets forth that the claim as a whole should be given the broadest interpretation prior to evaluating the question of subject matter eligibility. Once the determination of the scope of the claim is made, the claim may be evaluated to determine if it falls into the category of a law of nature or abstract idea. While the concept of an abstract idea is an abstraction, fundamental economic practices, methods of organizing human activities, and mathematical formulas are non-exclusive examples of abstract ideas.
The fact that a claim is directed at a law of nature or abstract idea does not necessarily render the claim ineligible for patent protection, as the inquiry under the second step is not complete. As the Court stated in Alice, at some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Therefore, once a claimed invention is determined to be a law of nature or abstract idea, the analysis proceeds to the second prong of the second step of Alice.
3. Significantly MoreIn the second step of the Alice analysis, a court or the USPTO must search for an inventive concept -- i.e., an element or combination of elements that is sufficient to ensure that the
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“Significantly more” may
be shown by:
• Using improvements to another technology or technicalfield
• Using improvements to the functioning of the computer itself
• Applying the law of nature orabstractideausinga particular machine
• Transforming an article to a differentstate
• Addingaspecificlimitationconfiningtheclaimtoa particular application or other meaningful limitations.
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patent in practice amounts to significantly more than a patent upon the ineligible concept itself. To accomplish this goal, the court first must examine the elements of the claim to determine if the claim adds additional features and, thus, represents more than a drafting effort designed to monopolize the law of nature or abstract idea. In the examination of the claim, it must be determined if the additional features are more than well-understood, routine, conventional activity. This evaluation is based upon the claim elements both individually and as an ordered combination. Further, the inclusion of “token post solution activity” or limiting the law of nature or abstract idea to one field of use does not constitute “significantly more.” The limitations also must represent something more than stating the law of nature or abstract idea while adding the words “apply it.” If it is determined that nothing more is added to the law of nature or abstract idea than routine or conventional activities, the claimed invention is ineligible for patent protection under §101.
Over the years, the courts and now, as set forth in the Guidelines, the USPTO, have provided insight into what is required to show “significantly more” than the law of nature or abstract idea. “Significantly more” may be shown using improvements to another technology or technical field, using improvements to the functioning of the computer itself, applying the law of nature or abstract idea using a particular machine, transforming an article to a different state, or adding a specific limitation confining the claim to a particular application or other meaningful limitations. On the other hand, limitations not rising to “significantly more” include “apply it” or mere instructions to implement the law of nature or abstract idea on a computer, adding well-understood activities known in the industry including generic computers, gathering data for the law of nature or abstract idea, or generally linking the law of nature or abstract idea to a field of use. In order to aid inventors and practitioners, the USPTO has provided examples of claims incorporating laws of nature and abstract ideas.
ConclusionAlice represented a unique situation from which the Supreme Court derived an intensive two-pronged inquiry into the “inventive concept” of a claimed invention. However, a court attempting to apply the two-pronged test derived from this unique situation will first have to grapple with figuring out the meaning and extent of claims needed to perform the intensive inquiry required by the Alice analysis. The USPTO has glossed over this issue by using its standard “broadest reasonable interpretation” rule.
While the test for patentability under §101 is at least starting to feel more concrete, the concepts of an “abstract idea” and “significantly more” still pervade the decision of patentable subject matter. Hopefully, further insight will be gained as the comment period for USPTO guidelines ends in March and with any further codification by the USPTO. For now, the examples and two-part analysis must be used to continue to forge our way forward in these cases.
4. For Additional Information
• Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 573 U.S. __, 134 S.Ct. 2347, 110 USPQ2d 1976 (2014)
• Laws of nature examples - http://www.uspto.gov/patents/law/exam/mdc_examples_nature-based_products.pdf
• Abstract idea examples - http://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf
Shareholder and 2013 Pennsylvania Super Lawyers “Rising Star” Wesley T. McMichael was elected to serve as a director on the board of Citizen Diplomacy International (CDI) of Philadelphia, formerly the International Visitors Council. The organization is part of a “citizen diplomacy” network of 95
councils in 48 states that receive established and emerging leaders from more than 120 countries who are visiting the U.S. as government guests.
Associate and 2013/2014 Pennsylvania Super Lawyers “Rising Star” Joseph P. Gushue has been elected shareholder. His practice concentrates on monetizing patent portfolios, including mining portfolios for valuable assets, developing licensing programs, conducting licensing meetings, and marketing portfolios for sale. His experience also includes patent prosecution, strategic patent port-folio development, and patent acquisition due diligence. He earned his J.D. from Villanova University School of Law and his Bachelor of Science degree in computer engineering from Pennsylvania State University.
Wesley T. McMichael Joins Citizen Diplomacy International (CDI) of Philadelphia Board
Associate Joseph P. Gushue Elected Shareholder
Volpe and Koenig on the Move
firm news
Anthony S. Volpe
Wesley T. McMichael
Joseph P. Gushue
Anthony S. Volpe to Receive Philadelphia University’s Leader of Innovation MedalAnthony S. Volpe, a firm co-founder and shareholder, will receive one of his alma mater’s highest honors at The Verizon Philadelphia University Evening of Innovation on May 9, 2015. The University’s President, Stephen Spinelli Jr., PhD, describes the accolade as one that will celebrate Tony both as a “nationally and internationally recognized leader in the field of intellectual property law” and as someone who demonstrates “a commitment to citizenship that stands as a model for the corporate community in Philadelphia and beyond.”
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InnovatIon
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Volpe and Koenig Awards $20,000 IPromise™ Grants to Dress for Success Mercer County and New Leash on Life USA
Established in 2007, the IPromise Charitable Giving Fund awards annual $20,000 grants to two qualifying non-profit organizations in the Greater Philadelphia and Princeton, NJ, areas. More than 80 applied for grants in 2014’s community development and animal welfare categories. Winners were selected from 10 finalists who presented their work to firm shareholders last fall. IPromise funding will support Dress for Success Mercer County’s Mobile Outreach Program, affording career enhancement and job search opportunities to disadvantaged women, and New Leash on Life USA’s Second Chance Companion Dog Program, bringing “at risk” shelter dogs into correctional facilities for care, training, and socialization by inmates. To date, the IPromise Charitable Giving Fund has presented $260,000 to deserving organizations.
Photo Left to Right: Associate Melissa Thompson, Executive Director Beth Collins, and Shareholder Jeffrey Glabicki with Dress for Success Mercer County Executive Director Debra Wachspress
Back Row, Left to Right: New Leash on Life USA’s Linda Loi, Shareholder Ryan O’Donnell, Frank Hayes, Executive Director Beth Collins, Robert Miley, and Shareholder Wesley McMichael
Front Row: “Noodles” with his new parents (left to right) Karen Shaw and Steven Gelman
Wesley T. McMichaelTodd A. NortonBrandon R. Theiss
Giving Back in Ways Big and Small Continued
The Volpe and Koenig family was delighted to hold our annual Toys for Tots holiday toy drive in November and December. We collected enough new toys to overflow two giant donation boxes! We sincerely hope the gifts brightened the lives of all the wonderful children who received them.
All of us at Volpe and Koenig were honored to sponsor Rowan University’s 2014 Calling All Angels Gala. Our sponsorship gift will support the University’s CARES Institute and its important work helping children who have experienced abuse and neglect.
Volpe and Koenig’s John O’Donnell readies Toys for Tots donation boxes.
Toys for Tots Holiday Tradition Proudly Continues
Volpe and Koenig Sponsorship Benefits Rowan University’s Child Abuse Research Education and Service (CARES) Institute
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Our President and CEO Jay Halt Jr. joined WOGL-FM’s Brad Segall for an in depth “Philadelphia Agenda” interview about the IPromise Charitable Giving Fund and 2014’s grant to New Leash on Life USA. Listen to Jay, Brad, and New Leash CEO/Founder Marian Marchese by visiting http://wogl.cbslocal.com/2015/02/02/philadelphia-agenda-with-brad-segall-417.
