In a recent article, the European Patent Office (“EPO”) announced that its opposition division has maintained the existence of the “frozen sperm” patent owned by XY Inc. in Colorado. In the announcement (link below), the EPO announced that European Patent No. EP1257168, directed towards a method of cryopreservation of sperm samples, will remain active but will be “restricted in scope” based upon the European Patent Convention. This particular patent gained notoriety in Europe as it initially claimed all types of sperm cells (human and animal), invoking several oppositions of the issued patent. Although the formal opposition division decision is yet to be published, it appears that the patent itself will no longer contain any claims relating to frozen sperm cells. A link to this patent (via esp@cenet) is provided below, where the claims in their original format may be viewed.

EPO Announcement: LINK
EP1257168 (via esp@cenet): LINK

In a recent press release, the World Intellectual Property Organization (WIPO) highlighted its upcoming conference in Dubai to emphasize its strong concern regarding counterfeiting and piracy. As noted in the WIPO press announcement (link below), “The Fourth Global Congress on Combating Counterfeiting and Piracy” will be held from February 3-5, 2008, including governmental officials from Dubai, the United Arab Emirates, WIPO, and “representatives of other international intergovernmental organizations, governments, regional and national enforcement agencies and business [] to identify solutions to the escalating problems of counterfeiting and piracy.” Some of the sessions include “Health and Safety Risks Counterfeit Products Pose to Consumers; Raising Awareness of the Full Economic and Social Costs of Counterfeiting and Piracy; The Growing Problem of the Sale of Counterfeit and Pirated Products over the Internet; and, Strengthening Cooperation and Collaboration at the Global Level.” Details on this session, including all topics and speakers, are available at the second link below.

WIPO Announcement: LINK
Program Website: LINK

A ruling by the UK High Court appears to have paved a way for expanded patent protection in the UK similar to that generally available by the European Patent Office (“EPO”). In November, 2006, the UK Intellectual Property Office (“UK IPO”) issued a “practice note” to state that computer programs alone generally did not constitute patentable subject matter. According to the Financial Times (UK, link below), the decision by the UK High Court noted that the UK IPO was “incorrectly applying the law in automatically rejecting claims for computer programs,” noting that the EPO allows applicants to patent computer programs “if they can demonstrate some sort of innovative technical effect.” The new standard appears to be whether or not the computer program makes a substantive inventive contribution, notwithstanding the format in which the program is distributed (computer disc, internet download, etc.). According to the IP Kat Blog (article link below), Judge Kitchin of the High Court recognized that it was “highly undesirable to have provisions of the [European Patent Convention] construed differently at the EPO as compared with the courts in the different contracting states,” further noting that “decisions of the Boards of Appeal should be highly persuasive.” Formal guidance has not yet been issued by the UK IPO on this matter.

Financial Times (UK) News Article: LINK
IP Kat Blog Article: LINK

Earlier this month, the Court of Appeals for the Federal Circuit (“CAFC”) decided an appeal based upon the use of commonly-used claim terminology, affirming-in-part, reversing-in-part, and remanding the case back to the district court. In Baldwin Graphic Systems, Inc. v. Siebert, Inc., the CAFC reviewed the lower-court’s claim construction, and confirmed a number of items related to specific claim language. A selection of quotes from the opinion relating to the use of common claim terminology is provided below.

“a” or “an”:

“[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” (quoting KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000))

“That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention.”

“The exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one.”” (see KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000))

“An exception to the general rule that “a” or “an” means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” (see Abtox Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997); see also Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996))

“Because the initial indefinite article (“a”) carries either a singular or plural meaning, any later reference to that same claim element merely reflects the same potential plurality.”

“the” or “said”:

“The subsequent use of definite articles “the” or “said” in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning.”

“[T]he use of a definite article (“said” or “the”) to refer back to an initial indefinite article does not implicate, let alone mandate the singular.”

Baldwin Graphic Systems, Inc. v. Siebert, Inc.: LINK

The USPTO announced yesterday that as of June 1, 2008, it will no longer accept an oath or declaration as complying with 37 C.F.R. § 1.63(b)(3) unless it includes an acknowledgment that the declarant has a duty to disclose information material to patentability under 37 C.F.R. § 1.56. This particular announcement (“Duty of Disclosure Language Set Forth in Oaths or Declarations Filed in Nonprovisional Patent Applications,” link below) was signed yesterday by Jon Dudas, the Under Secretary of Commerce for Intellectual Property and the Director of the U.S. Patent and Trademark Office, and provides some background as to the general procedure under 37 C.F.R. § 1.63, and how that procedure will change as of June 1. Specifically, by issuing this notice, “the Office is putting applicants and their representatives on notice that compliance with the express language of 37 CFR 1.63 will now be required,” and that “to the extent the Reply to Comment 38 in the 1992 Final Rule authorized the continued use of the “material to examination” and “in accordance with 37 CFR 1.56(a),” language, this authorization [] is hereby rescinded, and reliance on the Reply to Comment[] 38 will no longer be accepted.” The full USPTO, as well as the CFR sections referenced herein, are provided below.

USPTO Announcement: LINK
37 C.F.R. § 1.56: LINK
37 C.F.R. § 1.63: LINK

On Friday, the Canadian Intellectual Property Office (CIPO) announced a few revisions to its online filing procedure, providing applicants with additional flexibility during the process. According to the CIPO news release (link below), the CIPO online patent application allows applicants “who intend to claim small entity status” to sign the petition electronically with a “low level signature,” noting that the low level signature allows the applicant to “sign” a special section of the form. The CIPO also announced its plans for additional revisions to the online application form, including addition of a “declaration of entitlement” section that is currently submitted by applicants via mail or fax even though the remainder of the application is filed online. No specific date has been provided for the implementation of this latter change.

CIPO News Release: LINK
CIPO Online Filing Information Website: LINK
CIPO “Declaration of Entitlement” Form: LINK

The USPTO released a trio of notices this week regarding a specific aspect of its 21st Century Strategic plan, namely a procedure to partner with other intellectual property office to share search results and reduce the duplication of efforts. One particular procedure, the Patent Prosecution Highway (“PPH”), has had noted pilot successes and appears to be quickly expanding.

The first notice pertains to the Canadian Intellectual Property Office (“CIPO”) and its desire to participate in the PPH program. In the notice (link below), details on the pilot PPH program are provided, noting in particular that the initial one year pilot will begin on January 28, 2008. A number of scenarios and corresponding graphs are provided, showing the procedural differences depending on what type of application is filed and when it is filed in relation to each participating country.

The second PPH notice (link below) pertains to the Korean Intellectual Property Office (“KIPO”) and its participation in a pilot PPH program with the USPTO. Similar to the details provided within the CIPO notice, the USPTO/KIPO pilot program will begin on January 28, 2008, will last at least one year, and will have different processes depending upon the type and time an application is filed.

The third notice regarding the PPH relates to the participation of the United Kingdom Intellectual Property Office (“UK IPO”) PPH pilot beginning last September. The USPTO and the UK IPO have agreed to tweak the PPH pilot program, specifically regarding PCT filings and electronic submissions. According to the USPTO/UK IPO notice (link below), both offices “agreed to modify the pilot program to (1) permit certain applications based on PCT filings (where the PCT application does not contain any priority claim) to quality for participation in the PPH pilot program, and (2) require that the request for participation in the PPH pilot program and all the supporting documents be submitted to the USPTO via EFS-Web.” More details on these modifications are provided in the notice itself, noting that the changes also take effect on January 28, 2008.

USPTO CIPO PPH Notice (PDF): LINK
CIPO Website: LINK
USPTO KIPO PPH Notice (PDF): LINK
KIPO Website: LINK
USPTO UK IPO PPH Notice (PDF): LINK
UK IPO Website:LINK
USPTO PPH Website: LINK

Although this particular warning was first issued in June, 2006, the European Patent Office re-issued an updated warning to patent applications regarding solicitations from patent registration organizations. The reissued warning (from January 8, 2008, noting the original June 29, 2006, warning date – link below) notes that “[n]umerous applicants and patent proprietors have informed the European Patent Office that firms and individuals using names, abbreviations or emblems that appear to be official have been inviting them to register patents in unofficial registers or publications.” These registration (and publication) organizations may actually do as they say, i.e. they may add a particular application to a “registry” or a “publication” that they either control or have access to, but such “registries” or “publications” have no official legal effect, and as such, no actual legal value to an applicant. A client of my firm recently contacted me regarding correspondence he had received from one of these organizations (actual organization name withheld, but starting with the initials “I.B.F.”), whereby the organization offered to list his PCT application in an international “registry” for a $1,633.50 fee. Although this organization notes that it is not affiliated with the USPTO and that the documentation is a solicitation, the organization uses the words “Bureau” and “International” it its name, and regardless of the registered attorney or agent who filed the application on behalf of the inventor, the organization sends the “service” documentation directly to the inventor. For additional information these warning provided by various patent offices, please see the links below.

EPO Warning: LINK
German Patent Office Warning (in German): LINK
UK Patent Office Warning: LINK
WIPO Warning: LINK

On Friday, the USPTO issued a press release confirming my earlier post (January 4, 2008, link below) regarding the implementation of the reCAPTCHA system. According to the USPTO press release (link below), “[t]he reCAPTCHA deployment was an immediate response to a system outage problem caused by bots.” Over the last couple of months it has sometimes been difficult, if not impossible, to access Public PAIR because of these “bots,” and in response the USPTO has implemented technology based upon “an industry-accepted security feature to ensure that humans, and not bots, are accessing computer programs.” The USPTO further notes that it “continues to explore long-term solutions to address the need for open access to the data by the Intellectual Property community,” as the USPTO is “committed to providing access to all available patent data to the public whenever required, and we are continuing to explore all alternatives to meet that goal.”

January 4, 2008 DDIP Post: LINK
USPTO Press Release: LINK
USPTO Public PAIR Webpage: LINK

If you have ever conducted patent business with the USPTO through its EFS-Web system and provided the USPTO with your e-mail address, you likely received a letter of gratitude from the Commissioner of Patents himself. John Doll, the present Commissioner of Patents for the USPTO, praised its e-Commerce customers, noting in part that “[t]he success of our electronic filing system, EFS-Web, could not have been achieved without the dedication, patience, time and effort contributed by our customers and stakeholders.” Although I still conduct some business with the USPTO by mail and fax, the majority of my own transactions with the USPTO are electronic, especially given that the time it takes to upload documentation for filing has reduced significantly over time, making most, if not all, EFS-Web transactions quick and easy to perform. I have included a number of EFS-Web links below for your convenience.

USPTO EFS-Web Help & Tutorial Webpage: LINK
USPTO EFS-Web FAQ Webpage: LINK
USPTO EFS-Web Benefits Webpage: LINK
USPTO EFS-Web Tutorials Webpage: LINK
USPTO EFS-Web Webinar Archive Webpage: LINK

--

Dear Valued Patents e-Commerce Customer,

Due to your commitment and support of the United States Patent and Trademark Office’s (USPTO) e-Commerce initiatives, the USPTO made tremendous strides in 2007. Together, we have achieved a significant goal by making electronic submissions of new patent applications and follow-on papers easier for the intellectual property community.

The success of our electronic filing system, EFS-Web, could not have been achieved without the dedication, patience, time and effort contributed by our customers and stakeholders. Due to the widespread usage of EFS-Web, the USPTO exceeded its fiscal year 2007 goal and received nearly 50 percent of all patent applications electronically. We know it isn’t easy to change an existing process, which makes us even more grateful that you have chosen to adopt EFS-Web.

We would like to thank you for also taking the time to provide the agency with feedback on all of our systems by participating in pilot programs, feedback questionnaires, and focus sessions. Your voice has helped drive the success of the USPTO and its e-Commerce goals.

We welcome your feedback as we continue to plan and implement new e-Commerce initiatives in 2008. Please send an e-mail to EFS.Training@USPTO.gov if you have any suggestions you would like to share. I look forward to the future and how we can continue to improve the patent prosecution process and the quality of patents in the new year.

Best wishes for a prosperous new year.

Sincerely,

John Doll
Commissioner for Patents

United States Patent and Trademark Office

Back in October, 2006, I compiled data regarding how quickly the U.S. Patent Office issues utility patents (link below). I began with the issue date of U.S. Patent No. 4,000,000 (December 28, 1976), and looked at how many days it took to issue the next 100,000 patents. I took increments of 100,000 patents through U.S. Patent No. 7,100,000 (issued on August 29, 2006), and calculated the number of days between each 100,000 patents issued. As could be expected, it took longer to issue patents earlier on, noting that the highest figure (658 days) occurred between the issuance of U.S. Patent No. 4,100,000 (July 11, 1978) and U.S. Patent No. 4,200,000 (April 29, 1980).

As I was curious to see how recent statistics compared to this information, so I obtained the newer data from the USPTO website, as well as older data to shorten the increments between data points from 100,000 utility patents to 50,000. The data shown in the graph above (click to open a larger version) begins with U.S. Patent No. 5,500,000 (issued on March 19, 2006), and ends with U.S. Patent No. 7,300,000 (issued on November 27, 2007), providing the number of days between issuance of 50,000 patents based upon the milestone patent numbers 5,500,000, 5,550,000, 5,600,000, and so forth. The last data point is the number of days between issuance of U.S. Patent No. 7,250,000 (issued July 31, 2007), and U.S. Patent No. 7,300,000, namely 119 days.

With the exception of a couple of 140 day increments, the number of days between the issuance of 50,000 U.S. patents appears to be around the 110 day range. Since U.S. Patent No. 5,500,000, the highest number of days between the issuance of 50,000 patents is 168 days (between U.S. Patent No. 5,600,000 and 5,650,000), and the lowest number is 91 days (between U.S. Patent No. 5,950,000 and 6,000,000). The last six data points (after the last of the two relatively recent 140 day increments) are 98 days, 98 days, 105 days, 112, days, 119 days, and 119 days, respectively. The average of the last ten data points is 115 days, while the average of the last twenty data points is 112 days.

October, 2006, DDIP Post: LINK

Starting this month, the USPTO has implemented a new technology on its website in an attempt to curb "disruptive use" of at least one of its online databases. If you are a heavy user of USPTO database resources like I am, you likely also experienced a number of instances in the past couple of months where Public PAIR was either extremely slow or completely inaccessible. Public PAIR (available at the link below) is the USPTO’s free patent application information retrieval system where users can access available documents pertaining to pending patent applications, issued patents, and abandoned patent applications. Common uses of Public PAIR include searches to identify status information for pending patent applications, access to documents within an application’s file history, and the identification of one or more additional patent applications within the same "family" of a particular patent application. The USPTO has identified common uses as including the ability to "[v]iew bibliographic data, status, file history, PDF file images ("IFW"), continuity, foreign priority, patent term adjustments & extensions, text & TIFF images of published applications & patents, maintenance fees, and online ordering of copies."

In the last couple of months, it appears that the use of automated programs (to obtain and perhaps download Public PAIR information and documentation) had significantly decreased overall public access to the same information. The USPTO introduced a "PAIR Usage Policy" stating that "To maintain general availability of USPTO information and services provided on the Internet, any activities or operations that cause a denial or diminution (decrease) of services to other customers, whether generated automatically or manually, may result in the Office’s denying access to the Office Internet resources to the offender." In response to this automated access, the USPTO implemented technology from Carnegie Mellon University called reCAPTCHA, which, according to the reCAPTCHA website (link below), "helps prevent automated abuse of your site (such as comment spam or bogus registrations) by using a CAPTCHA to ensure that only humans perform certain actions."

CAPTCHAs (short for "Completely Automated Turing Test To Tell Computers and Humans Apart") have been in use for a number of years now where the ability to use computers to access databases, online retail websites, and other resources has either hindered general public use of those same resources or has caused an unfair advantage by allowing automated access to those resources faster and more frequently than the public may have. If you have ever tried to purchase concert tickets online that are made available at a pre-announced time, and despite your best and quickest efforts you can only obtain last-row tickets, you understand what impact this type of technology can have.

The current use of reCAPTCHA allows Public PAIR users to choose which method of verification code entry to use at any particular time. The default method is the use of a stylized and somewhat difficult to read font to create two words that the user would need to type in before obtaining access to Public PAIR. The second method is the use of an audio challenge, whereby a series of numbers is read to the user with enough "feedback" and other background noise to make it somewhat difficult to hear the numbers being read to the user. As is the case with other websites utilizing this or a similar technology, if the user incorrectly enters the challenge information, a new challenge is provided to the user. So far, the only difficulty I have experienced with the reCAPTCHA verification system is that after successfully entering challenge information (both types of challenges), I was provided with a subsequent challenge when I should have instead been granted access to Public PAIR. This was only a periodic phenomenon and may have been browser-specific. However, once I was granted access, I had very quick access to the information I was looking for. Hopefully the implementation of this technology will allow patent practitioners and other members of the public to have quick and uninterrupted access to this useful database.

Public PAIR: LINK
USPTO’s Patent Electronic Business Center Webpage: LINK
reCAPTCHA Website: LINK

As noted in the December 26, 2007, Federal Register (link below), the USPTO has decided to revise some of its publication formats effective January 1, 2008. Specifically, the USPTO has discontinued its separate weekly publication of USPTO notices in paper form, and it has also discontinued its annual publication of the consolidated listing of notices pertaining to USPTO practices and procedures, which was also published in paper form. Instead of paper-form distribution, starting this year the USPTO will publish these notices electronically. In addition, and as a result of these changes, the volume and page numbers previously shown in the weekly publications will be carried forward to the electronic notices so that the overall readability will be “enhanced” and so that the public may easily be able to cite specific sections of the electronic notices. According to the USPTO notice, these changes are part of the “Presidential E-Government Initiatives” to “utilize technology in ways that will improve how Federal Agencies serve the public.” The electronic notices (the USPTO’s electronic Official Gazette (“eOG:P”)) will be available at the USPTO link below, along with all eOG:P notices since January, 2007.

Federal Register Excerpt: LINK
USPTO Electronic Notices Webpage: LINK