WebPatent Journal

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).
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 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 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).

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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.

Q.E.D.