BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

Tuesday, March 6, 2018, 9:07 AM

What Patent Attorneys, Patent Agents and Law Firms Need to Know about Communications with Clients

By Chris Kokoska and Chris Hall
Womble Bond Dickinson (US) LLP

Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”).  Such authorized practice includes both preparation and prosecution of patent applications as well as appeals and AIA review proceedings before Patent Trial and Appeal Board (“PTAB”).  Unfortunately, it has been unclear whether communications between patent agents and their clients are protected as privileged in proceedings before the USPTO or U.S. courts.  Recently, however, the USPTO and the Federal Circuit each has clarified that a patent agent’s communications related to his or her authorized practice are protected in the same manner as attorney client communications, such as those by patent attorneys. Specifically, in In re Queen’s University at Kingston,[1]  the Federal Circuit affirmed the privilege between patent agents and clients for communications reasonably connected to the preparation and prosecution of patent applications.  The USPTO, meanwhile, finalized rules in December further clarifying the scope of the privilege in AIA proceedings.[2]  Interestingly, while the court decisions don’t address privilege with respect to foreign jurisdiction patent practitioners,[3] the USPTO rules further provide for protection of privileged communications between foreign practitioners and U.S. practitioners or clients.[4]

Patent practitioners certainly appreciate the clarification from multiple authorities, but potential gaps in protection remain.  Notably, there may be a lack of protection for correspondence with foreign associates on matters not related to preparation and prosecution of patent applications.  In addition, protection may not be afforded in state courts, which are not bound by USPTO or Federal Circuit decisions.  In view of potential gaps in protection, many practices may choose to keep caution as the general rule for correspondence with patent agents.

By way of example, although the USPTO rules indicate that foreign associates will be given the same privilege in AIA proceedings as those that are afforded to patent attorneys, federal and state courts have not addressed whether communications with foreign patent practitioners will be afforded privilege.  So while communications between foreign patent practitioners and United States clients may be protected in proceedings at the PTAB, the same protections may not be provided in other countries, or federal or state courts.

Further, state courts are not bound by USPTO rules or Federal Circuit law[5].  Accordingly, to the extent a patent agent’s communications regarding his or  her authorized practice are at issue in a state court proceeding that can’t be removed to a federal jurisdiction, the communications may not have the same protection as that provided in a federal court or AIA proceeding.  Although the circumstances under which communications between a patent agents and a client would be discoverable in litigation in state court are limited, the potential admissibility in various states leaves a gap in the potential privilege. 
Lastly, communications that exceed the authorized practice of patent agents “fall outside the scope of patent-agent privilege”.[6]  The new USPTO rules state that the privilege is limited to those communications “reasonably necessary and incident to the scope of the practitioner’s authority.”[7]  The Federal Circuit decision in In re Queens goes even further to clarify that privileged communications are limited and privilege does not apply to those “communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement,” because such communications “are not reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.”[8]
Most patent agents do understand the scope of their role in providing a service to their clients.  However, it is imperative that attorneys supervising patent agents ensure that any work product or communications provided by a patent agent fall within the authorized scope of the patent agent’s work.  For instance, technical expertise provided by a patent agent may be worthwhile in an infringement, licensing, validity, or other legal analysis, but to the extent a patent agent is putting such opinions in writing, privilege may not protect such analysis in potential litigation.  Patent agents are not legally allowed to practice law outside of patent prosecution matters.[9]  However, under the direction of a patent attorney, a patent agent can perform research and draft written analysis, opinions or recommendations that the patent attorney then reviews, approves or edits, signs and communicates to a client, which is then a protected communication under the attorney-client privilege.  In contrast, communication directly between a patent agent and a client on matters that are outside of the scope of the patent agent’s authorized practice would not be protected.[10]
Patent agents often have been advised by supervisors to communicate directly with clients only on matters related to patent drafting and patent prosecution, and to route any other work to and from clients through a supervising attorney.  That policy, when followed, has long protected patent agents from accidentally straying into the practice of law that is not within the scope of a patent agent’s authorized practice and could cause trouble for clients and law firms alike.  But now, such caution and practice is seen as consistent with the treatment of patent agent-client and patent attorney-client communication.

The use of patent agents to prosecute patent applications in the United States confers several benefits to clients, such as cost reduction, and the provision of specific knowledge or expertise in specific technical areas.  While recent clarification from the USPTO and the Federal Circuit appear to offer the protection of privilege to certain authorized communications among patent agents and clients, the best practice for now, at least, is to continue limiting communication between clients and patent agents in view of assurances provided by the more certain and complete privilege provided to attorneys.  Additionally, as with patent attorneys, in many cases the best option is to continue to avoid emails or other correspondence by patent agents that could be harmful if discoverable later.  For example, even protected communications may become discoverable if privilege is later waived, intentionally or not.  As many attorneys are told when beginning their legal career, picking up the phone for a quick call is often the best option.  That being said, additional protection of patent agent correspondence should offer some comfort to patent practitioners and clients alike.

[1] In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).
[2] 37 C.F.R. § 42.57 (2017).
[3] See e.g., In re Queen’s.
[4] 37 C.F.R. § 42.57 (2017).
[6] In re Queen’s, 820 F.3d at 1301.
[7] 37 C.F.R. § 42.57 (2017).
[8] In re Queen’s, 820 F.3d at 1301-1302.
[9] Id. at 1315.
[10] In re Queen’s, 820 F.3d  at 1301.

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Thursday, January 18, 2018, 11:57 AM

Arguing Connections and Relationships in Patent Claims

During examination of claims in a patent application, claim rejections from the USPTO (United States Patent and Trademark Office) under 35 USC §102 and/or 35 USC §103 usually assert that one or more cited references show all of the elements in the claims.  It is usually not too difficult to find issued patents, patent application publications, or non-patent literature that shows many, or even all of the tangible elements that are in the claim, the so-called fundamental building blocks, components or pieces of an apparatus or that are used in a method.  But, is this sufficient for a proper rejection of the claims?

A well-written claim should be more than just a preamble and a list of tangible elements, and should also recite the connections or relationships among the tangible elements, and possibly the functions the tangible elements perform or are capable of performing.  These connections and relationships are also elements.  Possibly, it could be arguable that the connections and relationships are not tangible elements in the narrowest sense of tangible being something you could reach out and touch or hold in your hand.  But, the connections and relationships are tangible in the sense of being a real part of an invention.  A claim rejection that shows only the narrowly definable, physically tangible (touchable) elements of the claim has not shown all of the elements of the claim.

Facing such a rejection, the patent practitioner can argue that the reference(s) cited in the Office action do not show this connection or that relationship among the elements that are shown.  Where this gets subtle is that sometimes a reference shows several tangible elements and a relationship among these tangible elements, and another reference shows another tangible element and a relationship to some other tangible element in that reference.  But, where there is no relationship or connection shown between a tangible element in one reference, or a relationship between tangible elements in one reference, and the tangible element or relationship in another reference, that can be argued as not showing all of the elements and all of the relationships among the elements, in the claims.

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Tuesday, January 16, 2018, 9:02 AM

Patented Halloween, Thanksgiving and Christmas Inventions

Part of the enjoyment of Halloween and Christmas is seeing the clever decorations and novelties people come up with for these two celebrations.  But did you know, some of these are patented inventions?  With (belated) Season’s Greetings for you, however you celebrate the holidays or this time of year, the following are presented for your pleasure.

NOVELTY HALLOWEEN PUMPKIN, US 3,250,910 (Raymond R. Authier, issued May 10, 1966) has a plurality of face representations, each lighted differently from the other using a dry cell battery and an electric lamp bulb.  Safer than a candle, no doubt.  Life size Halloween novelty item, US 7,878,878 (Darren S. Massaro, issued February 1, 2011) has motion sensors, a voice recorder and speaker, and a reservoir of fluid with timed electromagnetic valve inside a head that allows fluid to expel out of orifices attached to a tongue when the item is approached.  Eek!  Halloween portable container, US 7,594,669 (Linda Acosta, granted September 29, 2009) is a portable apparatus with container element and cover element in the form of a Halloween object on a wheeled base, which may be pushed or pulled or maneuvered by a gripping element.  Presumably, this is for receiving treats while out trick-or-treating, and hauling back home. 

Toy stuffed animal having convertible configurations, US 6,962,517 (David Murray, issued November 8, 2005) emulates awakening when the user touches locations and activates a prerecorded message, and has multiple configurations with different head portions, reversible hands, paws or legs and a rear flap that is reversible as a coat or garment.  Appearance can be altered to dress the character in a festive holiday garment for Christmas, Easter, Thanksgiving, New Year’s, Independence Day, Halloween, Valentine’s Day, or St. Patrick’s Day.  Decorative lights with addressable color-controllable LED nodes and control circuitry, and method, US 7,131,748 (Dennis Michael Kazar et al., issued November 7, 2006) has switch settings and holiday color schemes for most major US holidays, including Christmas, Valentine’s Day, St. Patrick’s Day, Easter, Independence Day, and Halloween.

Fire safety Christmas ornament, US 4,113,020 (Anthony Panetta, issued September 12, 1978) is for a Christmas tree ornament containing fire extinguishing powder.  Remember when people used to put lighted candles on Christmas trees before the electric lights were invented?  Light strand Christmas tree for flagpole, US 8,678,615 (Gordon Ko, issued March 25, 2014) is a string light Christmas tree kit, raised with rope and pulley and supported from a flagpole.  Now, your Christmas tree is no longer at ground level.  Artificial Christmas tree, US 1,606,535 (Jakob Hojnowski, issued November 9, 1926) is an improvement on the artificial Christmas tree, and has exchangeable branches sections so that different types of trees can be simulated, and is readily assembled and disassembled.  You can reuse your Christmas tree.  Christmas tree vibrator, US 2,522,906 (Leo R Smith, issued September 19, 1950) imparts a slight two-dimensional vibration to the tree and its decorations, using an electric motor, thereby enhancing the appearance and obtaining a pleasing sound from the decorations so vibrated.  One hopes the ornaments don’t get vibrated right off of the tree.  Apparatus for the production of Christmas crackers, US 3,264,797 (Philip Steward Powling, issued August 9, 1966) presents an improved method of tying the ends of the Christmas cracker after forming shapes of various materials into a cylinder, filling the cylinder with novelties and favors and inserting a snap.  These are fun to open.

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Friday, September 29, 2017, 8:33 AM

Negative Limitations in a Patent Claim – Broad or Narrow?

Negative limitations, using words like “not”, “without”, or “excluding” in a patent claim, understandably make patent practitioners and clients nervous.  Generally, positive limitations are preferred and negative limitations are to be avoided.  Why is that?

Scope of positive claim limitations affects the claim in the same manner as it does the limitation itself.  A narrow claim limitation, positively stated, makes the claim as a whole narrower than a broader claim limitation affecting the same subject matter.  A broad claim limitation, as you might expect, makes the claim as a whole broader than a narrower claim limitation.

Negative limitations behave the opposite of this.  Excluding a narrow amount of subject matter makes the claim broader than excluding a broader amount of the same subject matter.  Excluding a broader amount of subject matter narrows the claim more so than excluding a narrower amount.

Claim scope analysis is vital when crafting a claim.  The above characteristics of negative claim limitations suggest a test for claim scope when using negative claim limitations.  Is what is being excluded narrow or broad?  Is what remains, i.e., what is still included in the claim, narrow or broad?  If the answers to these tests conform to the above characteristics of negative claim limitations, that suggests analysis is correct, and the patent practitioner now has a solid understanding of the scope of the claim and can proceed with writing more claims, etc.  If the answers to these tests are inconsistent with the above characteristics of negative claim limitations, or are counter to the intended scope of the claims, this suggests the claims should be rewritten or reworked, as there is a strong possibility of confusion for claim interpretation, or argument over claim scope.  That is an undesirable situation for patent prosecution and possible later tests in courts.

Whenever negative claim limitations are contemplated, it is wise to consider whether there are positive claim limitations that can more safely express a desired claim scope.  Instead of a claim limitation of “without requiring X”, would “independent of whether X is present” work?  Instead of “A and not B”, would a “B-less A” or “non-B A” do the job?  

A narrower, more extensive set of positive limitations could make it clear that the excluded element is not used.  Another solid tactic is to use well-written definitions in the specification to show that A is not equivalent to B, so that when the claims recite A, it is clear that the claims exclude B.  Claim amendment during prosecution to include part of this definition in the claim could progress the examination without needing negative limitations in the claim.

Sometimes, during patent prosecution, an examiner will turn up some close art, and the patent practitioner may need to carve around the art by amending the claims to include negative claim limitations specifically excluding some aspect of the close art.  An explicit limitation of “excluding X” or “without performing/executing/adding/etc. Y”, when the art shows X or Y, might well suffice, provided the above cautions are observed about scope.  But it could also be worthwhile to try writing variations on this, using positive limitations or positive ways of stating negative limitations, as outlined above, and then test each of these to see which one is most suitable.  One could even try amending each of three independent claims using a different tactic, to preserve breadth of scope.

Exercise caution with negative claim limitations.
Try using positive limitations with various wordings instead of negative claim limitations.
Definitions in the specification can be brought into the claims to exclude an interpretation or possibility.
Amending multiple independent claims using different tactics can preserve breadth of scope.
Test scope of various possibilities for claim limitations.  Scope, as a whole, for negative claim limitations behaves opposite that of positive claim limitations, i.e., the narrower the exclusion, the broader the claim.

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Friday, August 11, 2017, 8:35 AM

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

USPTO (United States Patent and Trademark Office) rejection of a patent claim, alleging the claim is not significantly more than an abstract idea under 35 USC §101, is a frequent and often frustrating occurrence during patent examination of claims in any technology that involves computers, controllers or processors.  Here is another useful strategy the patent practitioner can use in writing a response to an Office action, or an appeal brief.

Suppose a USPTO examiner has written a rejection that the claims amount to nothing more than the abstract idea of a mathematical calculation (or other abstract idea) plus the instructions to implement it on a generic computer, and are therefore directed to patent ineligible subject matter.  The patent practitioner could get into a back-and-forth argument with the examiner about whether or not claim limitations are significantly more than the abstract idea, wasting multiple cycles of examination because examiners can be very difficult to convince of this.  One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts.  But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”.

A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed).  Articulate a specific technological problem that the claims solve or are directed to solving.  Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.  Then, compare the abstract idea, for example “mathematical calculations” in and of itself, without the claim limitations that extend beyond the abstract idea, to the technological problem.  Does the abstract idea in and of itself, with or without a generic computer, solve the technological problem?  Of course not.  Does the abstract idea plus the claim limitations that extend beyond the abstract idea, solve the technological problem.  Yes, the combination of abstract idea plus claim limitations that extend beyond the abstract idea does solve the technological problem.  This means the claim as a whole amounts to significantly more than the abstract idea plus the instruction to implement the abstract idea on a generic computer.  This bright line test makes it very difficult for an examiner to prove that the claim is nothing more than an abstract idea implemented on a computer.  The examiner would either have to prove that the additional claim limitations are mere field of use limitations, which assertion is readily refuted through the above analysis, or that the claim as a whole does not solve the specific technological problem, which you have just demonstrated it does.  This carefully constructed argument passes logical rigor, and any attempts in further patent examination to defeat it can be addressed on a point by point basis with factually based logic.

Concrete statement of a specific technological problem that the claims solve or address lays a strong foundation for arguments of patent eligible subject matter under 35 USC §101.
Testing to see whether the abstract idea in a claim rejection solves the specific technological problem provides a basis for comparison with the claim as a whole.
Testing to see whether the abstract idea in combination with the claim limitations that are beyond the abstract idea solves the specific technological problem provides a comparison for the claim as a whole versus the abstract idea.
Once the abstract idea has been compared with the claim as a whole, in light of the specific technological problem, the conclusion can be drawn that the claim is significantly more than the abstract idea with instructions to implement it on a generic computer.

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Monday, May 1, 2017, 8:45 AM

Inherency and Patent Claims

A patent claim can be rejected for inherency over a reference.  An inherent property cannot be claimed, even if that property was not known at the time a prior art composition was disclosed or prior art invention was made.  But, what happens if a new invention makes use of an inherent property, and this new use is not known by others?  This is where the art of claims drafting comes in.
Claim limitations directed to an action that makes use of this inherent property could be argued as novel or unobvious, if the known reference(s) only disclose the original article, composition, process that results in a compound or article, etc., but do not disclose the new action that makes use of the inherent property.  Relatedly, claim limitations directed to a structure that makes use of an inherent property could be argued as novel or unobvious, if the known reference(s) explicitly or implicitly suggest the inherent property, but do not explicitly show or suggest a structure comparable to the claimed structure.

Whether arguments about novelty or unobviousness in such a case would be successful is going to depend on the inherent property itself and what can be deduced from the inherent property, as far as usage of the inherent property and structures that make use of the inherent property.
Here are a couple of generic, fictional examples.  Suppose it is inherent that the two different types of memory shown in a reference include fast memory and slow memory.  Even if the reference doesn’t explicitly say one of the types of memory is faster than the other, a claim to some structure that has fast and slow memory is readily rejected as inherent over this reference.  But, a claim to using the faster memory for some new function and using the slower memory for some other new function, or the structural combination of these functions and the memories, might be novel or unobvious over this reference, depending on what those functions are and whether how they make use of the faster and slower memories could be directly inferred from the reference(s).

Suppose it is inherent that some article or compound has some types of behavior or characteristics over various temperature ranges.  A claim to the article or compound exhibiting these types of behavior or characteristics at the various temperature ranges is readily rejected, even if the cited prior art reference(s) do not explicitly disclose these behaviors or characteristics, and they are later determined, because the article or compound itself is known in the prior art.  But, a claim to some use of one of these behaviors or characteristics of the article or compound at some specified temperature or temperature range, or a structure that makes use of one or more of these behaviors or characteristics over some temperature range might be novel or unobvious, if the prior art does not teach or suggest the use or the structure.

Keep in mind, apparatus claims can be directed to a structure, or a structure that performs a function (i.e., functional claiming), method claims are directed to a series or sequence of steps (or actions), and the associated claim limitations are what are compared to cited references during patent examination.  Writing the claim limitations, or amending them during examination, so that the claim limitations exhibit more than just the inherent characteristic(s) of a known material or known structure, for example by showing a new structure or new combination of steps or actions, is a strong strategy to take when faced with possible rejection over inherent characteristics.

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Monday, February 13, 2017, 8:36 AM

Recursive and Iterative Algorithms in Patent Claims

Some inventions operate in a recursive or iterative manner.  This could be so of a machine that repeats actions or functions on a single article or to produce multiple articles, or operates on data.

Software-based inventions, with computer programming sometimes execute recursive or iterative algorithms.  Even so, claiming for the invention might not need to invoke recursion or iteration, as the point of novelty might involve a characteristic or a function itself, and the repetition of that series of actions or functions is a necessary for the novelty.  In that case, it may suffice to mention recursion or iteration in a dependent claim.  Or not, if it really isn’t needed.

But, what if the recursion or iteration is important to the point of novelty?  How could that be represented in a claim, without the claim becoming overly complex and wordy, or worse yet, the claim resembling a software listing?  Below is a handy template for a claim that can be written compactly and elegantly, focusing on the recursion or iteration.

[Independent claim] 1.  A method of [performing a function], performed by [a machine, possibly a computer-based machine], the method comprising:
[some preliminary action, introducing input(s)];
proceeding, starting with the [input(s) or initial value(s) or state of the machine], to [perform a function] in an iterative or recursive manner, with [some intermediate parameter value or machine state] acting as a [initial value or state of the machine] for a next iteration, until [some condition is satisfied or a result is produced];
[some later action, making use of the result, output or end-of-iteration or recursion final state of the machine].

Claims written with the above template capture initial values, iterative values and results in the context of an iterative algorithm tied to a machine (which could be a computing machine of some sort, for computer-based algorithms).  Variations on this can be written for tangible media and for system claims.  This approach should pass muster for arguments and subject matter patent eligibility under 35 USC §101, because the algorithm and presumably tangible result are inextricably tied to the machine that is executing the algorithm, so that a computer is not a mere field of use limitation.

– Decide whether recursion or iteration is important to the novelty of an invention.
– If so, figure out what are the inputs, outputs, intermediate values or states that should be captured in the claim.
– The template provided above can be adapted for method, tangible media and system claims involving recursion or iteration as part of the novel functionality of a mechanical or computing machine.
– Emphasis on a useful result, and the necessity of the machine operating in recursion or iteration, in the claim is a vital part of this strategy.

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