Intellectual Property Directions

Dennis Crouch, a associate professor of law at University of Missouri has compiled a table of the time to first office action for a variety of technology centers. That is, how long does it take the patent office to get back to you with their (no doubt obviousness-based) rejection of most or all of your claims.

For the technology centers he lists the time ranges from a low of 1.7 years for Manufacturing Devices to a high of 3.7 yearsfor a couple of un-important technologies - fuel cells, batteries, and solar. Now remember, this is the time between filing and your first office action. It can easily take another year before your patent issues and during all that time you have been unable to enforce your patent rights. Heck, you didn’t even know if you were going to have any patent rights.

Mind you, if you filed a provisional application first, then your patent application has been public after 0.5 years from the filing date of the regular application, so you fuel cell companies out there have had your proprietary information hanging around the street, so to speak, for a little over 3 years and counting.

I always tell my clients that the patent system is supposed to be a deal between the inventor and society. You get limited time control over your invention in exchange for teaching the rest of us all those juicy details. This bargain breaks down, I think, when your teaching is published 3 or 4 years before you know that you have control over your invention, if you ever do get that control. During that time your competitors have had the chance to build on your proprietary information to your disadvantage.

It makes one wonder if it’s still worthwhile applying for a patent in a fast moving technology area.

In April I mentioned that there was a constitutional challenge facing the PTO; that many of the Board of Patent Appeals and Interferences decisions might be nullified because many of the administrative judges sitting on that panel were, arguably, appointed unconstitutionally.

Apparently Congress and the President think they can wave a magic wand and retroactively make unconstitutional appointments okay. Wilmer-Hale reports:

On August 12, 2008, President Bush signed into law a statute intended to fix a perceived constitutional flaw in a 1999 statute governing the appointment of administrative law judges… Both the 2008 statutory fix and the 1999 statute raise constitutional questions of potential significance to those relying on BPAI or TTAB decisions issued over the past several years.

Wilmer-Hale further explains that the statue has 3 major provisions: first, giving the Secretary of Commerce the authority to appoint the administrative judges; second, giving the S of C the right to retroactively appoint a judge who had been appointed [arguably unconstitutionally] by the Director of the USPTO, effective on the date of the Director’s action - essentially waving a magic wand to make the unconstitutional appointments suddenly constitutional AND the decisions of the past 10 years valid; third, adding explicitly that the judges were de facto acting as judges and therefore their rulings can be accepted as valid (essentially because everyone at the time accepted the rulings as valid and it would be chaotic to go back and retry every case, given that the results would be the same, just with a now constitutionally appointed judge).

Don’t you wish you could solve your problems so easily! BTW, the 2nd and 3rd major provisions of this statute will probably also be challenged, so the PTO has only won this round.

Marcia Coyle of The National Law Journal is reporting that a new problem is brewing at the USPTO. It is possible that nearly 2/3 of the judges on the Board of Patent Appeals and Interferences - your first judicial appeal when an obstinant examiner rejects all your claims - may have been appointed unconstitutionally! If the Supreme Court so rules, then 8 years worth of rulings may be called into question.

Without going into details, the law defining the appointment process for these judges changed in 2000 and an analysis by Prof John Duffy (see http://www.patentlyo.com/lawjournal/files/Duffy.BPAI.pdf) suggests that the law is unconstitutional.

Of course, at this point we only know that a petition has been filed at the Supreme Court - let’s wait to get excited until they agree to hear the case.

Independent inventors and inventors at small companies are always so enthusiastic about their inventions. They are excited and want to get their patent so they can start marketing their product. We’re usually about 20 minutes into the conversation when I have to pop the question…”But does it work?”

What I’m really asking, with patent jargon stripped away, is whether the invention has been reduced to practice. The patent world views invention as a process that is spread out over a period of time, sometimes days but more typically months or even years. The invention process has three distinct phases: inspiration, perspiration, and reduction to practice. A (valid) patent can only be issued on an invention that has been reduced to practice - one that operates as described in the patent specification.

Overly enthusiastic inventors, abetted by sluggard examiners at the patent office, often want to file a patent application immediately after the “Ah ha” moment, the inspiration. Examiners, looking primarily for anticipation, obviousness, and specification support for the claims, often seem unworried about the actually functionality of the invention. And certainly there is no explicit proof of reduction to practice, of operation as intended, required in one’s patent application.

Skipping the reduction to practice (RTP) step, or at failing to document that step adequately, can cost you your patent. If you file before RTP, your application might not include modifications to your invention that are needed to make it work; those modifications might be just the tip-off opposing counsel needs to get your patent invalidated.

Or you might find yourself in the same shoes as HAROLD R. GARNER, who lost his interference battle because he could not prove his invention was reduced to practice at an early enough date. The examiner rejected his claims as anticipated by the earlier filed “Quate” patent. To provoke an interference with the Quate patent, Garner amended his application to copy the claims of the Quate patent. Garner, as the junior party, had the burden of establishing prior invention. It is important to remember that the law grants the patent to the person who is first to conceive of the invention AND diligently reduce it to practice.

According to the court decision, Garner attempted to establish his priority by submitting: (i) photographs of a device he allegedly built before the filing date of that prior art reference; and (ii) lab notebook pages that allegedly showed that the device worked. To corroborate his claim that he had built the device depicted in his photographs, Garner also submitted a one-page declaration of an independent party, John Fondon. The CAFC ruled that Garner’s submissions did not sufficiently corroborate his claim of actual reduction to practice. His photographs and lab notebook pages themselves do not prove operation and the Fondon declaration, alas, only states that Fondon saw the device shown in the photographs in Garner’s laboratory in November 1997. Fondon does not testify that the device operated or worked for its intended purpose. In fact, Fondon does not indicate that he ever saw the device operate. At most the Fondon declaration corroborates the existence of a device purportedly shown in the photographs. As the court said “corroboration of the existence of the device is not sufficient in this case to establish corroboration of reduction to practice. It is also necessary to corroborate that the device worked for its intended purpose.”

Have you ever rushed a patent application through before you actually proved your invention works? Have you ever tried to file a patent application, particularly a provisional application, on a concept? If so, consider that although the patent examiner may give you a bye regarding reduction to practice, failure to document that your invention works as intended by your filing date may result in saying “goodbye” to your patent rights.