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For the first post of the New Year, I thought I’d break tradition a bit. Instead of looking forward and listing all the things I’m hoping for in 2009, I’ve decided to look backward and commemorate an anniversary.

Three years ago this week (January 3rd), the Patent and Trademark Office published the controversial continuation and claim limit rules (read the original Promote the Progress post here).

Three years! Can you believe it?

Since that date, the patent community has lived under an inescapable cloud of doubt as to whether the right to claim a properly disclosed invention would be severely limited by agency rule-making. While we’ll soon have an answer from the Court of Appeals for the Federal Circuit regarding the legality of the continuation rules, the “final” answer on the issue of limiting the right to claim an invention - independent from these rules - might not be known for some time. The philosophy and clout of the next Director, the political climate that develops under the new Administration, and the willingness of the 111th Congress to consider the issue under the patent reform banner will certainly influence the issue.

But this is an anniversary, so let’s reflect a bit. Even though these three-year old rules have yet to become law, their enormous impact on the patent community is undeniable. Most owners of large portfolios of applications made an effort to review their applications to determine if any continuation filings should be made ahead of the original Halloween deadline. These efforts required a significant investment of time and money that, if the rules die in the end, might have been completely unnecessary.

And the Office, no doubt, has spent a small fortune defending the rules.

More importantly, though, the impact of the proposed rules goes way beyond time and money. Over these past three years, I’ve had the opportunity to talk to practitioners and other patent stakeholders around the country and from all sections of the community (private practice, in-house, small company, large company). One thing is clear - the rules have contributed significantly to the deterioration of the sense of partnership between stakeholders and the Office that seemed to exist just a few short years ago.

Happy Anniversary!

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Understanding the timing of these two cases is important. On October 30, 2008, the court announced its much-anticipated decision in In re Bilski in which the court adopted the machine-or-transformation test for patentability of processes under 35 U.S.C. 101. The court heard oral arguments for Classen after oral argument for Bilski but before publication of the Bilski opinion. This timing means that members of the Classen panel were likely debating the Bilski issue and/or reviewing the Bilski opinion at the time of the Classen oral argument (The court sat en banc for Bilski).

Indeed, listening to the Classen oral argument clearly shows that Judge Moore was intensely interested in the patentability of mental processes at the time. She initiated a discussion on the issue by asking counsel for the patentee to ignore the non-mental immunizing step of the claim at issue (”yes, clearly you’re absolutely right…these are not exclusively mental process claims.”). Counsel entered into an academic discussion with Judge Moore only reluctantly and eventually offered an interesting perspective on why such claims should be patentable (just because you can’t enforce a patent doesn’t mean you should be prevented from getting the patent).

Then, after this fascinating discussion, the court issued its one paragraph opinion that summarily dismisses the claims as unpatentable. To support this holding, the court pointed only to Bilski. This would be unremarkable, of course, if the claims at issue in Classen were pure mental process claims. But, as is clear from the oral argument, the claims included a non-mental step (immunizing). Indeed, as mentioned above, Judge Moore had to hypothetically remove this step from the claim in order to entice counsel into the patentability discussion in the first place.

So what became of the non-mental immunizing step? We really have no idea. But, considering the lack of discussion in the Classen opinion and its non-precedential status, we know that an open question exists as to whether a non-mental step (particularly, a known non-mental step) in a process claim that can otherwise be performed mentally is sufficient to confer patentability.

How’s that for an interesting one paragraph opinion?

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Nevertheless, from a practical standpoint, these chemicals are similar in the sense that a pure sample of a single compund can be separated from broader chemical mixtures. An enantiomer can be purified from a racemate containing both spatial isomers (the d- and the l-isomers). Similarly, antibodies with binding specificity for a particular antigen can be purified from an antisera containing immunoglobulins of various antigen specificities.

Interesting, then, that patent law answers the following question for these chemicals in an entirely opposite manner:  Does a disclosure of a broader chemical mixture containing the specific chemical (one particular enantiomer, or an antibody with a defined antigen specificity) anticipate the specific chemical?

More than two years ago, the Court of Appeals for the Federal Circuit told us that the answer is “yes” for antibodies. This week, we learned that the answer is “no” for enantiomers.

Consider this - this week, in Sanofi v. Apotex, the Court of Appeals for the Federal Circuit flatly rejected an argument that the disclosure of a racemate, along with general statements indicating that “the compounds have enantiomers and that the enantiomers are included in the invention,” anticipated the claim to the separated enantiomer. The court noted the strict nature of anticipation law, which requires a “specific description as well as enablement of the subject matter at issue” before anticipation exists. In this case, mere knowledge that a separation can be conducted is not anticipation: “The knowledge that enantiomers may be separated is not ‘anticipation’ of a specific enantiomer that has not been separated, identified, and characterized.” Enablement was troublesome, too, because of “the known difficulty of separating enantiomers….”

Two years ago, the court considered the anticipatory effect of a disclosure of an antisera to be completely different. In Nichols Institute v. Scantibodies Clinical Laboratory, the court concluded that the disclosure of an antisera (the general mixture of immunoglobulins) anticipates a specific antibody isolated from the antisera because the antisera inherently discloses the antibody. “We also hold…that the abstract anticipates the asserted claims, because no reasonable juror could have found that the abstract does not inherently disclose the claimed antibody.” Enablement didn’t present a significant issue, apparenly because antibodies can be separated from antisera using well-known purification/separation techniques.

The distinction between the two cases appears to lie in the purification techniques.  Antibody purification is carried out according to “well-known” techniques (I can attest to this), while there is a “known difficulty of separating enantiomers.” With this in mind, it seems likely that Nichols Institute represents the eventual destination for enantiomers - once separation techniques become well-known, the disclosure of the racemate will likely anticipate the separated enantiomer just as the disclosure of an antisera anticipates a specific antibody separated from the antisera.

For now, though, the “known difficulty” of separating enantiomers from the racemate leaves us with Sanofi.

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Here’s one to add to the list. This week, in two separate cases, the Court of Appeals for the Federal Circuit pointed to the Abstract section of a patent as supportive of a narrow claim construction.  That’s right - the Abstract - the section that is intended to “enable the…Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.” (37 C.F.R. 1.72(b))

In iLOR v. Google (read the PTP review here), the Court noted that the Abstract said exactly what the proposed narrow limitation required: “[w]hen the cursor has remained near the hyperlink for a predetermined time period, a toolbar is displayed….”

Same thing in Netcraft v. eBay (read the PTP review here), where the Abstract plainly stated that “[t]he provider creates access to the Internet for the customer” (there the issue was whether the disputed term required the provision of internet access). The court even rejected the argument that the Abstract was actually a holdover from the parent application, noting that “the common specification, including the Abstract, consistenly describes the invention in terms of a third party providing internet access to customers.”

Use of the Abstract to support a narrow interpretation of the claims is not new, of course, and it’s important to note that the court did not rely solely on the Abstract in either of these cases. Nevertheless, they should serve as a reminder that the potential for such use is alive and well. Prosecutors should take the opportunity to remind themselves to draft their Abstracts with three things in mind:

• the requirements for the Abstract (150 words),
• the purpose of the Abstract (to enable a quick determination of the nature and gist of the technical disclosure (not “the invention“), and
• the potential impact of the Abstract on the claims.

Happy drafting!

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The Bolten memo is apparently set to be ignored, though.  According to this New York Times article, no less that twenty ‘highly contentious’ rules are set to be finalized after the soft November 1 deadline and before inauguration day.

Will we see any new regulations in the patent arena?  Not likely.  Although the ‘highly contentious’ draft IDS and Markush claim regulations remain in limbo, the Dudas-directed PTO has previously indicated that it does not intend to finalize these rules. Also, we’ve passed the 60 day deadline that accommodates the typical lag time for new rules to become effective before inauguration and provides opportunity for a new President to modify or delay last ditch regulations.

Certainly anything is possible, though.  Remember that the Office recently resurrected the Practitioner Maintenance Fee regulation after it sat dormant for five years.

Cross your fingers.

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Each feed is used in the same way - if after reading the overview of an opinion you want to delve into it a bit deeper, just click a link to read the full opinion or the Promote the Progress review. You can also click a link to download a .pdf of the opinion and another to listen to the oral argument.

So what’s the difference between the two feeds? The opinion overview in the first feed provides a bibliographic overview of the opinion, including an annotated listing of keywords. In the second feed, the opinion overview is the overview paragraph from the Promote the Progress case review.

Here’s a bit more information on each feed:

1. Bibliographic summaries of patent opinions

I prepare a bibliographic profile of every patent related case from the Court of Appeals for the Federal Circuit and the Supreme Court of the United States. The profile includes basic identifying information (case name, court name, docket number, decision date), opinion-related information (panel, opinion author, number of and authors of any supplemental opinions filed), and substantive information (topical keywords).

The Bibliographic Summaries feed delivers all of this information to you, providing an easy way to scan the latest patent caselaw to determine if further review is needed. Trying to keep up to date on a particular patent law topic? This feed lets you easily scan all new patent opinions for your keyword…and gives one click access to a variety of opinion-related tools on Promote the Progress for those you determine warrant further attention.

The following is an example entry from the Bibliographic Summaries feed:

Example entry in the Bibliographic Summaries RSS Feed

2. Summaries of Promote the Progress case reviews

Each casereview on Promote the Progress includes a concise summary paragraph that provides an overview of the major substantive topics addressed in the opinion. The Case Review Summaries feed delivers the summary paragraph to your feed reader or email inbox for each new review posted on the site. Scan this feed for bite-sized topical treatment of the latest patent caselaw…an easy and efficient way to stay up to date.

Each entry in the feed also includes one click access to the opinion-related tools on Promote the Progress, making it easy to explore the reviews you determine warrant more attention.

The following is an example entry from the Case Review Summaries feed:

Example entry in the Case Review Summaries RSS Feed

After much testing and feedback (thanks to all of those who helped!), both of these new feeds are now available for subscription by email or by feed reader.

Head over to the rss feeds page to sign up. The blog feed is there, too, so be sure to subscribe to that as well if you’re not receiving it already.

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Read more about Ryan’s story in this Stuff article.

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Enjoy!

1.  Dennis Crouch on the Patent Office’s blocking of search engines via robots.txt files

Dennis has really found something interesting here.  For those of you that don’t know, robots.txt files help webmasters control the ability of bots to access particular content areas on a particular web server.  The use of such files is standard practice in the web development arena and their mere presence is not worrisome.

You can read all about these files on robotstxt.org (the about page is particularly informative).

But, the robots.txt file uncovered by Dennis shows that the Office has instructed all bots to refrain from accessing all content on the server hosting decisions of the Board of Patent Appeals and Interferences.  Bots, of course, can ignore the directives of robots.txt files, but all reputable search engines no doubt follow them strictly, which means that none of the BPAI decisions are being indexed.

This begs the question:  Is the Office, through this search engine blocking practice, failing to meet it statutory duty of “disseminating to the public information with respect to patents and trademarks?”  (35 U.S.C. §2(a)(2))

2.  Peter Zura on Barack Obama’s Transition Team member Reed Hundt - No fan of the U.S. patent system

All patent stakeholders are wondering what changes the forthcoming Obama administration will bring to the patent system.  Peter connected a few interesting dots on the issue.  Turns out, Reed Hundt, a Lead on President-elect Obama’s “Economics and International Trade Agency Review Team,” thinks “America’s patent system is a mess.”  Oh, and he has more than a few radical ideas on how to fix it.  How radical?  Read Peter’s article.

3.  Gene Quinn on Unequal Treatment at the United States Patent and Trademark Office

Gene observes that, even in the wake of KSR v. Teleflex, a two-tiered system in the Office is granting patents on inventions that are “clearly obvious” while denying patent protection to more worthy inventions:

“The Patent Office is not only treating similarly situated individuals differently in violation of the law, but they are also spending needless time addressing stupid inventions while meaningful inventions languish. This is not only terrible, it is recklessly stupid given our current economic crisis.”

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