Patent Law Practice Center

Prosecuting Patent Applications: Establishing Unexpected Results

Today’s guest post was written by Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP.

The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution before the U.S. Patent and Trademark Office in order to overcome a rejection based on obviousness under 35 U.S.C. §103(a).

I. General Comments

“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). (more…)

PTO to Effectively Extend Provisional Applications to 24 Months

The following was written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office will soon unveil a pilot program that is aimed at trying to provide inventors with some additional options with respect to moving from a filed provisional patent application to a nonprovisional patent application. USPTO Director David Kappos wrote about this in the November edition of Inventors Eye, see Providing Inventors More Time and Options. In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months.  That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

The Kappos Administration at the Patent Office has been criticized in some circles for even pursuing this path because it is too complicated, but such criticism smacks of a healthy dose of condescension if you ask me.  It seems far too paternalistic to believe that inventors and small businesses are not savvy enough to figure out what they want and what they need.  After all, the idea of attempting to extend the effective life of a provisional patent application was proposed to Director Kappos by an inventor.   (more…)

Fractus Patents Hit with Nine More Reexamination Requests

Here is the latest  installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

In our post of November 22, 2010, we described Samsung’s strategy for defending against allegations that it and several other cell phone makers infringe nine antenna patents owned by Fractus – specifically by vigorously defending in the Eastern District of Texas and requesting reexamination at the PTO against all nine Fractus patents.  Now it appears that co-defendant Kyocera has filed its own set of reexamination requests against the “Fractus Nine” (Inter partes Nos. (5) to (11), (13) below).  Not all the details of the new requests are publically available because these new requests were paper-filed and because of certain procedural problems.  It is quite likely, however, that these requests will be granted and merged with Samsung’s earlier reexaminations.

Also of interest is a request filed by Abbott Diabetes Care Inc. against a DexCom patent for transcutaneous analyte sensors.  Abbott and DexCom spared in reexamination over that technology in the past, for instance regarding U.S. Patent Nos. 6,931, 327 and 7,276,029. (more…)

US Supreme Court Accepts Microsoft Appeal in i4i Case

The following was sent in by Gene Quinn, of IPWatchdog and Practice Center Contributor.

Yesterday, the United States Supreme Court granted certiorari in Microsoft Corporation v. i4i Limited Partnership, with Chief Justice John Roberts taking no part in the decision or petition. The Supreme Court did not request the views of the Solicitor General, choosing rather to accept the matter with no input from the United States government.  The decision to grant cert. comes only days after the United States Patent and Trademark Office refused to grant reexamination of the patent in question.

Microsoft had filed an ex parte reexamination request on the patent in question, US Patent No. 5,787,449. The ‘449 patent exited reexamination unchanged. Microsoft then filed a second ex parte reexamination request, and it is this second request that was denied by the Patent Office on Wednesday, November 24, 2010. The denial of this second request means that the Patent Office did not believe there to be a substantial new question of patentability. (more…)

Hyatt v. Kappos: The En Banc Decision Makes Section 145 Actions More Attractive

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

Two weeks ago, the Federal Circuit handed down an en banc decision in Hyatt v. Kappos overruling a panel decision and substantially changing the rules for admitting evidence in a §145 action.  Although the decision has not attracted much attention, Hyatt may make §145 actions substantially more attractive and meaningfully alter the strategic landscape for those applicants who wish to pursue their claims beyond a BPAI rejection.

After an applicant’s claims are rejected by the BPAI, the applicant has two basic options—either appeal the  decision to the Federal Circuit, or bring an action in district court under 35 U.S.C. §145.  If the applicant elects to appeal the decision to the Federal Circuit, the appeal is heard on the administrative record created by the PTO and pursuant to the substantial deference standard normal in judicial review of expert administrative proceedings.  In a §145 proceeding, however, some new issues can be raised and (prior to Hyatt) some new evidence could be submitted to the district court. (more…)