In the past, research was carried out primarily by employees who had an obligation to assign ownership of their inventions to the same employer. It was often the case that an employee conceived an improvement to another employee’s invention that might be deemed obvious (and, hence, unpatentable) in view of the original invention. To avoid such an unfair situation, U.S. patent law has long provided an exception to the normal requirement that all inventions be nonobvious.
This rule effectively disqualifies confidential information (subject matter) learned from other persons inside an organization (e.g., from other employees of the same corporation or university) from being used as “prior art” upon which an obviousness rejection is based. The rule does not disqualify subject matter that is prior art under the other sections of 35 U.S.C. 102, i.e., subject matter that is public knowledge, in public use in the U.S., on sale in the U.S., or patented or published information. Furthermore, the invention and the subject matter must have been commonly owned or subject to an obligation of assignment to the same entity at the time (before) the invention was made.
More recently, U.S. patent law was changed in recognition of the fact that collaborative research now frequently occurs in situations where researchers have an obligation to assign their inventions to different entities. The Cooperative Research and Technology Enhancement (CREATE) Act of December 10, 2004, protects the patentability of inventions of the employees of collaborating organizations. The CREATE Act is particularly important to those who rely upon collaborative research efforts among universities, non-profit institutions and for-profit companies as a source of patentable inventions.
The CREATE Act now effectively eliminates secret prior art in situations where (1) the claimed invention was made by or for parties to a written joint research agreement that was in place before the claimed invention was made, (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and (3) the patent application in which the invention is claimed discloses (or is amended to disclose) the names of the parties to the joint research agreement. If these conditions are met, a secret invention made by any of the collaborators before the date of the joint research agreement cannot be used in evaluating whether a later collaborative invention satisfies the nonobviousness requirement of the patent laws. In addition, an invention made in the course of the collaborative research cannot be used in evaluating whether another invention made in the course of the collaborative research satisfies the nonobviousness requirement of U.S. patent law.
The CREATE Act defines a joint research agreement (JRA) as a “written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.” A JRA may take the form of a research and development agreement, a Government Cooperative Research and Development Agreement (CRADA) or a material transfer agreement (MTA). If the JRA is recorded with the USPTO, only an excerpt containing each collaborator’s name, the date of the JRA, and a concise statement of the field of invention is necessary.
The CREATE Act is particularly important to organizations like small businesses and universities that benefit from the Bayh-Dole Act and the Small Business Innovation Research (SBIR) and Small Business Technology Transfer Research (STTR) programs. Establishment of a JRA is less difficult than arranging for common ownership or assignment of collaborative inventions before a joint research project begins. This allows small businesses and universities to more easily establish collaborative research programs with innovative partners.
Although the CREATE Act removes a major impediment to patenting the results of collaborative research, it is not a cure all. Research by either party to the JRA outside the scope of the JRA or subsequent to the expiration of the term of the JRA is not protected by the CREATE Act. Moreover, if the scope of the collaborative research is defined too broadly, a party may find itself contributing more than it would have desired to the collaboration. Conversely, if the scope of the collaborative effort is defined too narrowly, inventions made as part of the collaborative research may render unpatentable other inventions a party makes outside the agreement. For this reason, the scope of the collaborative research in a JRA should be sufficient to capture all potentially patentable subject matter arising from the collaboration, but not so broadly as to inadvertently include more than is desired. Moreover, the list of collaborating researchers and the scope of activity actually pursued should be periodically reviewed and the scope of the JRA amended before expansion of the project occurs.
In conclusion, the CREATE Act recognizes the importance of collaborative research among modern research organizations and may be used to protect the patentability of jointly-developed inventions. Care must still be taken, however, in following the requirements of 35 U.S.C. 103. Care must also be taken when U.S. patent applications are filed by different inventive entities on related, commonly-owned inventions because obviousness rejections under 35 U.S.C. 102(e)/103 may still be made.
If you are in need of a joint research agreement, I would be happy to refer you to an attorney with experience in this area of the law.
This is a great opportunity to learn about the Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) programs and to meet Federal program managers. With some coaching, Hawaii small businesses have a one in four chance of winning an $80,000 to $100,000 Phase I award to investigate the technical and financial feasibility of their new technology or job creation idea. If Phase I works out, they have a one in two chance of winning a $350,000 to $750,000 (or more) Phase II award to do prototyping and/or field trials of their innovation.
Much better odds than Las Vegas! You give up no equity in your business and you do not have to pay the money back if the concept does not work out.
Below is a description of the conference and a link to conference information. I have also posted general information on the SBIR and STTR programs on my website.
Hawaii SBIR & STTR Conference
November 16-20, 2009
Oahu, Maui, Hawaii Island
Funding for Early-stage Technologies and Innovations leading to Commercialization
SBIR has proven to be one of the most successful federal programs for technological advancement in
U.S. history, delivering more than 60,000 patents and hundreds of valuable innovations in agriculture,
defense, energy, health sciences, homeland security, space, transportation, and other fields.
The Small Business Innovation Research (SBIR) and Small Business Technology Transfer Research (STTR) programs
SBIR is a federal program that funds small businesses to develop high-risk innovations of critical need.
The U.S. SBIR is a three-phased program with awards usually up to $100,000 for developing a proof ofconcept in Phase I, and typically up to $750,000 for development work (often resulting in a prototype) in Phase II. Companies develop and market the SBIR product, attract outside investment and further commercialize in Phase III. Eleven federal agencies participate in the SBIR program: U.S. Departmentsof Agriculture; Commerce; Defense; Education; Energy; Health and Human Services; Homeland Security; Transportation; Environmental Protection Agency; NASA; and the National Science Foundation.
STTR is modeled on the SBIR program and stimulates technology transfer through cooperative research between small businesses and non-profit research institutions. UH researchers are encouraged to partner with small businesses to compete under the STTR program.
Conference Dates and Locations
November 16, 2009 (Monday) – OAHU, Hale Koa Hotel
November 17, 2009 (Tuesday) – MAUI, Maui Research & Technology Center
November 19, 2009 (Thursday) – HAWAII, King Kamehameha Hotel
November 20, 2009 (Friday) – OAHU, Honolulu, NEW Training Day included in Registration Fee
Session information can be found at www.htdc.org/sbir-conference-2009
- A rare opportunity to learn from and individually meet with federal SBIR managers from Washington,D.C. at one location
- A comprehensive overview of the SBIR/STTR programs and how you can participate
- Updates on the technologies and innovations the SBIR/STTR programs will fund this year
- *NEW* We want you to succeed with your federal grant or contract! At Training Day on 11/20:
SESSION 1: Federal cost accounting and how to pass an audit;
SESSION 2: Learn about strategic planning for your government-funded intellectual property
Who Should Attend the Conference?
- Entrepreneurs that develop new technologies or innovations
- Small businesses new to the SBIR/STTR program
- Experienced SBIR/STTR companies interested in learning about new SBIR/STTR initiatives and program changes
- University researchers interested in partnering with small businesses on collaborative R&D projects
- Any company interested in developing strategic alliances with successful SBIR/STTR awardees
- Consultants and organizations that provide business support to SBIR/STTR companies and applicants
To register and for more information about the SBIR & STTR Conference, visit: http://www.htdc.org/sbir-conference-2009/
Some inventors are lucky enough to be able to focus on inventing in a single field or technology area. Often, they generate lots of inventions that are related in some way. In the recent past, when the fees that the UPTO charges for examining related inventions were lower, it almost always made sense to cram as many simultaneously-invented inventions as possible into a single patent application and then attempt to entangle the inventions using linking claims (see my ”how to” article) to force the examination of as many claims as possible in each patent application. That usually resulted in lower overall costs over the lifetime of the patent. Now, other options must be considered.
If a patent application discloses and claims inventions that are deemed “independent and distinct” by the Examiner, the Examiner will place the claimed inventions in groups and require that the inventor elect a single group to be examined for the single filing fee paid by the inventor.
In some situations, it makes sense for the inventor select a particular group (e.g., one of his claimed methods), add some claims to the case to both link the elected group to another group (e.g., a product made in accordance with the method) and add some claims to the product itself. That approach can get expensive these days because the USPTO currently (2009) charges $110 for each independent claim over 3 and $26 for each independent and dependent claim over a total of 20 in each application. If one of the inventions is likely to be more valuable or is likely to be infringed first, it often makes sense to elect it for examination first. If all of the inventions are likely to have value, it often makes sense to elect a “method of making” group and then link the product to it as explained above.
If lots of claims (more than 3 independent claims and 20 total claims) are going to be needed to adequately protect an elected group, it can make sense to file divisional applications on each group, because the small entity filing, search and examination fee (3 independent claims and 20 total claims) is $545 these days (2009). Each divisional application can contain claims only to a single group that was identified by the Examiner. If claims are made to “independent and distinct” inventions in other groups or in none of the groups, then the Examiner will again require that the inventor select one of the identified groups. If the claims in the original application were well written and the grouping by the Examiner makes sense (in that each group clearly identifies an invention that is separately patentable), filing a “divisional” application has the advantage that the claims to the separately patentable invention cannot be rejected on the grounds of double patenting. Furthermore, no prior art that arises after the filing date of the original application can be used to reject claims in the divisional that were adequately supported in the original application.
If an inventor wants to claim an invention an invention that was disclosed in an original patent application (or in a subsequent patent application that is filed by the same inventor or inventors during the pendency of the original patent application or during the pendency of a subsequent patent application in a chain of such applications), then a “continuing” application must be filed containing claims to the invention. If new disclosure is introduced into the application, then the application must be filed as a “continuation-in- part (CIP)” application. Prior art that arises before the filing date of a CIP application can be used to reject claims to any inventions that are first adequately disclosed in the CIP application. A pending grandparent or parent, etc. patent application (if it has not been published more than a year before you file your CIP) cannot be relied upon by the USPTO to render your improved invention unpatentable. (See my “how to” article for details.) The 20-year term of a divisional, continuing or CIP application begins on the filing date of the first nonprovisional patent application in the chain, so there is a practical limit to the number of applications that can occur in any one chain, especially as average pendencies are increasing to 3, 4 and 5 years.
In order for a chain of priority applications to be created, each subsequent application must be filed before the abandonment, patenting or termination of court proceedings (if any) of at least one earlier-filed application in the chain. Moreover, a priority claim to all the earlier-filed applications in the chain must be present in each application as filed or added to each application within the later of 16 months after the filing date of the prior application in the chain or 4 months of the filing date of the later application. If such a claim is not made in time and the error is unintentional, a petition and fee (currently $1,410 in 2009) can be filed and the USPTO will accept the delayed priority claim (but the petition must be filed during the pendency of the application in which the error was made).
Each a subsequently-filed application must also meet the three criteria for adequacy of disclosure of a patent application on the day it is filed: written description, enablement and best mode (although best mode information need not be updated in later-filed continuing applications). If the subsequently-filed application does not contain (within its specification, drawings and claims) sufficient disclosure to meet all of these criteria for all of the inventions the inventor wants to eventually claim, it must incorporate by reference the disclosure of the previously-filed applications (or patents) in the chain that do. The incorporation by reference statement must appear in each application as filed and cannot be added later, but breaks in the disclosure chain are allowed. (An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date.) Incorporation by reference of disclosure from documents other than earlier patent applications or patents filed by the same inventor(s) must meet stringent rules.
In summary, in order to “keep your foot in the door of the USPTO,” that is, be able to claim an invention disclosed in a previous patent application in a subsequent patent application by the same inventor(s), AND in order to be protected from prior art that has arisen after the filing date of that previous application (called the “critical date”), both a priority claim must be made in the subsequent application as filed (which if unintentionally delayed can be added later) AND the subsequent application must either adequately disclose the claimed subject matter or must, as filed, contain an incorporation by reference statement to (1) a U.S. patent, (2) a U.S. patent application publication, or (3) a pending U.S. application that does adequately disclose the invention. Furthermore, abandoned applications less than 20 years old can be incorporated by reference (at the time of filing) to the same extent as copending applications, because both types are open to the public when the referencing application issues as a patent.
If an invention is not anticipated by or obvious in view of a patent or published patent application (including the inventor’s) (or any other prior art), then it can make sense to file an original patent application on that invention. This will safeguard the 20 year term of the patent in that the term will begin on the filing date of the nonprovisional application and the beginning of the term can be effectively delayed from beginning for up to 12 months by filing a provisional application first.
Why are all these patent applications necessary? Because U.S. patent law only allows one invention to be claimed in each issued patent. A claim to an entire assembly does not protect a subassembly. A claim to a method does not protect a single step in that method. Only if a person performs every step of a patented method or makes a structure containing all the elements of a patented structure is that person infringing a patent. Alternatively, if someone induces infringement by selling a product that can be used only to practice a patented invention, that person is contributing to infringement and the patent owner can enforce his or her patent by suing the person for patent infringement (suits that can cost each side $1+ million these days, by the way). So, patenting lots of separate inventions requires that lots of patent applications be filed and prosecuted.
If many valuable inventions have been invented, it is easy to see that the filing and prosecution of many patent applications (not to mention the enforcement of the issued patents) can exhaust not only the financial resources but the sanity of an inventor. Unfortunately, that is how the game is played. The key is to file patent applications only on valuable inventions. I explain how to value your invention on my website.
The ownership of inventions that are conceived or first actually reduced to practice in performance of a U.S. Government-funded experimental, developmental or research project by a small business (e.g., a person or company) or a nonprofit organization (e.g., a university) is controlled by the Bayh-Dole Act. With technology inventions (e.g., machines, articles of manufacture, compositions of matter and processes), it is clear when an invention becomes a “subject invention” and, thus, subject to the standard patent clauses of contract, grant or cooperative agreement. When plant inventions become subject to these clauses is the subject of this article.
The regulations implementing the Bayh-Dole Act state that “the term invention means any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code, or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.)” [37 CFR 401.2 (c)]. Thus, the following are deemed inventions under the Act: (1) technologies that can be protected with a provisional or nonprovisional patent, (2) designs that can be protected with a design patent, (3) asexually-reproducible plants that can be protected with a plant patent and (4) plant varieties.
The regulations also state that “the term subject invention means any invention of a contractor conceived or first actually reduced to practice in the performance of work under a funding agreement; provided that in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act [PVPA], 7 U.S.C. 2401(d)) must also occur during the period of contract performance.” [37 CFR 401.2 (d)].
A plant that is protectable under the PVPA (with a certificatesof plant variety protection) or under the Plant Protection Act (with a plant patent) is called “a new variety.” Unfortunately, the PVPA has been amended and no longer contains a section 41(d), but in the previous version of the PVPA, the “date of determination” meant the date when there has been at least tentative determination that the variety has been sexually reproduced with recognized characteristics whether or not the novelty of the characteristics has been determined. Under Bayh-Dole rules, the term “contractor” includes subcontractors and consultants because patent rights flow down to all parties.
The U.S. Supreme Court has determined that all plants (and plant parts) that are useful, novel and nonobvious and can be adequately described (i.e., comply with the written description and enablement requirements of U.S. patent law) are protectable with a provisional or nonprovisional (utility) patents. Thus, asexually-reproducible plants that can be adequately described are protectable with both a utility patent and a plant patent.
The terms “conception” and actual “reduction to practice” have different meanings in utility patents and plant patents. In utility patents, “conception” means the formation of a complete and operable invention in the mind of the inventor(s) and actual “reduction to practice” means the building of the invention (and testing it if testing is necessary to show that it has utility). In plant patents, according to the U.S. Patent and Trademark Office (USPTO) “conception” requires more than that the inventor “[become] become aware of the existence” of the new variety;” “he must be certain that it is a new variety” [Dunn v. Ragin, 50 USPQ 472 (Pat. Off. Board Interf. Exam. 1941)]. Actual “reduction to practice” is said to occur “when the new variety is actually reproduced [asexually] and it is determined that the progeny in fact possesses the characteristic or characteristics which distinguish it as a new variety” [Dunn v. Ragin]. Thus, in the world of plant patents, “conception” and “reduction to practice” are, in effect, necessarily concurrent (occur at the same time).
So, a plant that is protectable with a plant patent (for whatever reason) becomes a “subject invention” if at least tentative determination that the variety has been reproduced with recognized characteristics is made during the period of performance of the award (whether or not the novelty of the characteristics has been determined) and the new variety is actually reproduced (asexually) and it is determined that the progeny in fact possess the characteristic or characteristics which distinguish it as a new variety in performance of the award. A plant or plant part that is protectable with a utility patent (for whatever reason) becomes a “subject invention” if at least tentative determination that the variety has been reproduced with recognized characteristics is made during the period of performance of the award (whether or not the novelty of the characteristics has been determined) and the new variety is actually reproduced (asexually or sexually) and it is determined that the progeny in fact possesses the characteristic or characteristics which distinguish it as a new variety in performance of the award. A plant that is protectable under the Plant Variety Protection Act (for whatever reason) becomes a “subject invention” if at least tentative determination that the variety has been reproduced with recognized characteristics is made during the period of performance of the award (whether or not the novelty of the characteristics has been determined) and the new variety is actually reproduced (sexually) and it is determined that the progeny in fact possesses the characteristic or characteristics which distinguish it as a new variety in performance of the award.
It is important to note that a variety of actions can cause a plant not to be protectable under the various statutes. In general, the same rules apply to plant patents and utility patents (except that under plant patent rules the invention must be a distinct new variety and under utility patent rules the invention must be nonobvious). Under both a plant patent and a utility patent, if a plant is “ready for patenting” (which, in the case of a plant patent, requires asexual reproduction of a plant variety to show that it is distinct), a public use or (even a secret) offer to sell of the plant in the U.S. more than one year before a U.S. patent application is filed on the plant can bar patentability, unless the sale or public use is part of a documented experiment. Under the PPPA, different rules apply.
Hopefully, this article helps you understand when plant inventions become “subject inventions” that are subject to reporting, licensing and manufacturing rules under the patent clauses of Government funding agreements.
The United States Patent and Trademark Office (USPTO) has issued interim guidelines for USPTO Examiners to use in determining whether patent claims describe the kinds of things that can be patented, i.e., whether the claims describe “statutory subject matter.” The guidelines are “interim” because the U.S. Supreme Court has indicated that it will review the In re Bilksi decision of the U.S. Court of Appeals for the Federal Circuit that posited a “machine-or- transformation” test (M-or-T test) for statutory subject matter. The Court announced that a claimed process is patentable subject matter if “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or a thing.” The Court further stated that a machine or transformation must impose “meaningful limits on the claim’s scope” and must not be “insignificant extra-solution activity” (i.e., it must be “central to the purpose of the claimed process”).
This article suggests an approach to responding to an Office action that rejects patent claims to a business method under 35 U.S.C. 101 that guides the Examiner, step by step, through the interim guidelines.
First, I recommend that the response state that the applicant believes his claims describe statutory subject matter. In support of that assertion, analyze the claims in accordance with the Interim Examination Instructions for Evaluating Subject Matter Eligibility under 35 U.S.C. § 101, dated August, 2009.
1. Determine the meaning of the claim:
Indicate which claims are defined by structural limitations or process step limitations, and suggest that the Examiner refer to the Manual of Patent Examination Procedure (MPEP 2111) for instructions on how to determine the meaning of these types of claims.
Indicate which claims are “means plus function” claims and suggest that the Examiner refer to MPEP 2182 for instructions on how to determine the meaning of this type of claims.
Indicate which claims are “step plus function” claims and suggest that the Examiner refer to MPEP 2182 for instructions on how to determine the meaning of this type of claims.
If the Examiner has indicated in his Office action that he does not know what a “step plus function” claim is, you might state that the “step plus function” claims are written in the usual manner, with each step beginning with the phrase “a step for” (as required by MPEP 2181). You might also remind the Examiner that, when such language is used, 35 U.S.C. 112 requires that “an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Note that the applicant’s claimed structures and acts are supported throughout the specification and drawings as filed [although, if you want to be prepared for an appeal at this point, you can also point out where in the application (by page and line number and by figure and reference numeral number) each limitation is supported].
2. Determine if the claim as a whole falls within one of the four categories of invention, that is, the claim is directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter.
Give the numbers of the claims that are directed to a process.
Give the numbers of the claims that are directed to a machine (product).
Give the numbers of the claims that are directed to a manufacture (product).
If the manufacture claims are Beauregard claims, remind the Examiner that the Board of Patent Appeals and Interferences (BPAI) held in Ex Parte Bo Li, Appeal 2008-1213 (BPAI 2008) that Beauregard claims are considered statutory as “product” claims under 35 U.S.C. 101 and therefore constitute patent-eligible subject matter. Point out any claims that contain a Beauregard limitation. Refer the Examiner to MPEP 2106.01, I, which states: “When a computer program is recited in conjunction with a physical structure, such as a computer memory, USPTO personnel should treat the claim as a product claim” because that concept has not been superseded. Point out that the specification as filed makes it clear that the “computer readable medium” structures recited in the claims are not carrier waves, but rather they are non-transitory, tangible and readable by “a portable storage medium drive” and give the page and line number and the figure and reference numeral number where each limitation is supported.
3. Determine if the claim as a whole is directed to a particular application of a judicial exception (abstract idea, law of nature or natural phenomenon) or is directed to a judicial exception in its entirety:
(a) For Products: Point out that there is no judicially excepted subject matter present in product claims (give their numbers) and point out that the claims satisfy the previous steps of this analysis. Note that none of the claims recite a disembodied mathematical algorithm or formula. Assert that the product claims recite a computer programmed with executable instructions, and conclude, therefore, that the subject matter of the product claims is statutory.
(b) For Processes: If any of your claims meet the “particular machine’ prong of the M-or-T test, point out that a particular machine is recited in those process claims (give their numbers). Remind the Examiner that, for this reason, those process claims are tied to a particular machine and are limited to a particular practical application. Use the independent claims as examples, by pointing out, for example, that claim 1 requires “an apparatus that has been programmed with software to perform” the recited process and that other process claims contain similar descriptions of particular machines.
Remind the Examiner that the guidelines provide that “To qualify as a particular machine under the test, the claim must clearly convey that the computer is programmed to perform the steps of the method because such programming, in effect, creates a special purpose computer limited to the use of the particularly claimed combination of elements (i.e., the programmed instructions) performing the particularly claimed combination of functions.” Point out that all of the applicant’s method claims are tied to a particular machine or apparatus as required by In re Bilski, 2007-110, Maj. Slip op. (Fed. Cir. 2008).
If any of your claims describe a “transformation of a particular article to another state or thing” point that out, and note where in the application as filed the transformation is disclosed. The “particular article” may be a “physical object or substance” or “representative of physical objects or substances.” For example, transformation of an “electronic signal that is representative of any physical object or substance” meets this prong of the M-or-T test. “Purported transformations or manipulations of public or private legal obligations or relationships, business risks or other such abstractions” do not meet this prong of the M-or-T test. Conclude that the subject matter of those process claims is statutory.
4. Now that the subject matter eligibility analysis is concluded, the applicant looks forward to continued full examination on the merits of claims.
As usual, state that the applicant respectfully requests that a timely Notice of Allowance be issued in this case. Indicate that the Office action is respectfully submitted, sign and date it and you’re done.