Peter Zura’s 271 Patent Blog reports on the Congressional testimony [PDF] of the First Vice-President of the American Intellectual Property Law Association (AIPLA) concerning the average cost to prosecute and obtain a patent.
The Average Cost of Preparing a Patent Application:
- To prepare and file an original application of minimal complexity (10 page specification, 10 claims) by a firm the size of Sughrue Mion, PLLC (an IP boutique with over 100 IP professionals) $8,548.00
- Mechanical cases (relatively complex) $11,482.00
- Electrical/computer cases (relatively complex) $13,684
- Biotechnology/chemical cases (relatively complex) $15,398.00
The Average Cost of Filing an Amendment:
- Minimal complexity $2,244.00
- Mechanical case (relatively complex) $3,506.00
- Electrical/computer case (relatively complex) $3,910.00
- Biotechnology/chemical case (relatively complex) $4,448.00
The government fees for those filings are $1,030.00 (unless the Applicant is a small entity).
Wednesday the Government Accountability Office released a report [Summary] [Full Report] that found “it is unlikely that the [Patent Office] will be able to reduce the growing backlog simply through its hiring efforts.” The report provided, “The agency has also estimated that if it were able to hire 2,000 patent examiners per year in fiscal year 2007 and each of the next 5 years, the backlog would continue to increase by about 260,000 applications, to 953,643 at the end of fiscal year 2011.” Therefore the report stated, “Despite its recent increases in hiring, the agency has acknowledged that it cannot hire its way out of the backlog and is now focused on slowing the growth of the backlog instead of reducing it.”
The Software and Information Industry Association (SIIA) filed an amici curiae brief asking U.S. Supreme Court to hear a case where State sovereign immunity for patent infringement is at issue. The issue is whether a State waives its Eleventh Amendment immunity in patent infringement actions by regularly and voluntarily nvoking federal jurisdiction to enforce its own patent rights. The SIIA asserts that it is equitable for States to have immunity from damages for patent infringement while they are free to sue private sector organizations for violations of State held intellectual property rights. The SIIA joined the U.S. Camber of Commerce in filing the brief.
BMPG v. Calf Dept of Health Services, No. 07-956 [Docket Link] [SIIA Brief] [SIIA Press Release].
Joff Wild of IAM Magazine predicts that the Federal Circuit’s en banc rehearing of the In re Bilsk case signals a move to restrict the patentability of software and business methods. He predicts that the Federal Circuits decision will bring the United States closer in line with how Europe treats this subject matter.
He provides the following reasons:
- Its rare for cases to be heard en banc
- The Federal Circuit is aware that recently the U.S. Supreme Court has been placing limits on patent holders rights
- Congress is considering the Patent Reform Act and the Federal Circuit’s Chief Judge is opposed to the changes in the Patent Reform Act
Rule 35 [link, PDF] of the Federal Circuit Rules of Practice provides that an en banc rehearing is ordered by a majority vote of the active circuit judges. It states that en banc rehearing is not favored and ordinarily will not be ordered unless:
- en banc consideration is necessary to secure or maintain uniformity of the court’s decisions; or
- the proceeding involves a question of exceptional importance.
Here, the court may be answering the Board of Patent Appeals and Interference’s (Board) request for guidance in determining what is patentable subject matter under section 101. The Board stated in its decision [PDF] that “Several major analyses of statutory subject matter [under section 101] have been published recently.” The Board continued, “The USPTO is struggling to identify some way to objectively analyze the statutory subject matter issue instead of just saying ‘We know it when we see it.’ ”
It is possible that the Federal Circuit could provide a framework for determining patentable subject matter under section 101 without restricting the patentability of software and business methods. However, it may also be that the Federal Circuit will provide a section 101 framework that restricts software and business method patents.
A statement in a IBM patent application caught my eye and made me wonder whether the yet-to-be-released-results of the Federal Circuit’s en Banc rehearing of In re Bilski [Patently-O’s coverage] could effect the patentability of the claims in this application. In Bilski the court will consider, among other things, whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101.
The IBM patent application involves a method of reducing waiting-customer dissatisfaction by monitoring a waiting queue, calculating rewards based on the wait, and communicating the reward to the customer. A customer may be waiting on the phone, or at recreational, restaurant or lodging facilities. The IBM application provides, “although the concepts of the present invention are exemplarily discussed above as having been implemented as an automated system on a computer . . . [the] concepts of the present invention could be implemented completely devoid of computerization or automation of any kind.”
However, it is important to focus on what the application claims. Here, claim 1 provides:
A system for reducing customer dissatisfaction for waiting, said system comprising:a queue monitoring subsystem that detects an entry of a customer into a waiting queue;a reward computing subsystem that calculates a reward for the customer for being in the waiting queue; and a communication subsystem to communicate the reward to the customer, wherein at least one of said queue monitoring subsystem, said reward computing subsystem, and said communication subsystem is automated.
The IBM claim requires at least one of the steps to be automated–as for example–embodied in a computer, whereas claim 1 of Bilski does not:
A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.
Its not clear why Bilski did not add the requirement that a step be automated.
A patent application, published on January 31, shows Google is continuing to develop for the Chinese market. The application discloses a program for spell checking non-Roman character based languages, such as Chinese, Japanese, and Korean. Although the summary of the invention section provides that the program may cover any non-Roman based language, the dependent claims show the application is focused on the Chinese language.
The program identifies potentially incorrect inputs, identifies alternatives, determines the proximity between the potentially incorrect input and the alternative, and computes probabilities of possible correct “word” based on the proximity measurement and optionally on a context of the possible conversion. Then it determines the most likely conversion from all the possible conversions.
“Fault-Tolerant Romanized Input Method for Non-Roman Characters,” Wu et. al. (U.S. Patent Application No. 20080028303).
Tonight, the first Silicon Prairie Social was held at Mullenâ€™s Bar and Grill in Lisle, Illinois. Similar to the Tech Cocktail events in Chicago, the Silicon Prairie Social was designed to connect “tech professionals, entrepreneurs, service providers, Internet professionals, Web 2.0 and startup companies, the mobile industry, and mobile marketing professionals.” The goals of the event were to:
- Connect local people with others in their industry and build community
- Raise the profile of the Silicon Prairie through the publicity generated around the events.
- Foster investment and economic development in the region by showcasing local businesses, entrepreneurs, and startups.
Hereâ€™s a partial list of those I saw, met, or talked with:
This only scratches the surface of the 350 people in attendance of this sold-out event. Events like this help promote collaboration and innovation in the suburban technology community. I look forward to future silicon socials on the prairie.
Linux.com a has review of the Peer-to-Patent pilot, which I reported on earlier. Beth Noveck of the New York Law School, a leader in establishing the pilot, is noted in the article saying that the UK Patent office will launch a similar pilot for UK patents. She also expects that the European Patent Office will follow with a similar project.
Takeda Chemical Indus. v. Alphapharm Pty., Ltd., No. 06-1329, slip op. (Fed. Cir. 2007).
Alphapharm sought FDA approval to a market generic version of Takeda’s drug ACTOS (U.S. Patent 4,687,777), which is used to treat diabetes. Takeda sued Alphapharm and the district court rejected Alphapharm’s obviousness attack on the patent. The Federal Circuit affirmed. It found that KSR v. Teleflex did not eliminate the prima facie obviousness requirement that a challenger, in cases involving new chemical compounds, "identify some reason that would have led a chemist to modify a known compound in a particular manner."
Takeda and KSR
Citing its Pre-KSR precedents the appellate court stated when an obviousness challenge is based on a structural similarity between the prior art and the claimed compound, the challenger must show the “prior art would have suggested making the specific molecular modifications necessary to achieve the claimed invention.” The court noted the Supreme Court’s indication in KSR that while the TSM test cannot be rigidly applied, the test is not necessarily inconsistent with the Graham analysis.
Is the Federal Circuit’s requirement that a challenger identify a reason to modify a known compound consistent with KSR’s direction that the TSM elements not be applied in a rigid and mandatory way? The Court in KSR acknowledged that "it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." However the Court immediately thereafter cautioned that insights drawn by considering what reason(s) prompted the combination "need not become [a] rigid and mandatory formula."
Considering a reason that would prompt a person of ordinary skill in the art to combine the elements, is necessarily an art specific inquiry. The KSR Court recognized this by stating, "In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends." Will the Federal Circuit extend the Takeda requirement to other arts outside the chemical field?
Takeda’s Applicability to Software Patents
Many, including the Patent and Trademark Office Commissioner, note the particular difficulty that examiners have in finding prior art in the software field. This difficulty is part of the motivation underlying the Peer-to-Patent Pilot, which allows the public to contribute prior art relevant to software patent applicants. If Takeda is extended to software patents, it might be difficult for challengers to identify particular pieces of prior art which evidence a suggestion to combine elements. Challengers would likely argue more flexibility is necessary in showing the prima facie case of obviousness given the nature of the software art.
Previously I reported on the CSIRO v. Buffalo Technology case. There, the district court found CSIRO’s patent (No. 5,487,069) covered all 802.11a/g wireless technology and granted a permanent injunction against a wireless LAN vendor. CSIRO does not practice its patents, but instead seeks licenses from third parties. The court’s irreparable harm analysis is particularly interesting in light of CSIRO’s non-practicing status.
In eBay v. MercExchange, the Supreme Court provided that to obtain an injunction a patent holder must show (1) irreparable harm in the absence of an injunction; (2) inadequacy of money damages; (3) balance of hardship favors an injunction; and (4) the public interest would not be harmed by the injunction.
The irreparable harm portion of the analysis is generally where courts consider whether the plaintiff and the defendant are competitors or whether the plaintiff only licenses their patent rights to third parties.
Factor: Plaintiff’s Use of Additional Licensing Revenue to Solve Important Societal Problems
When a court issues an injunction, the plaintiff is able to obtain greater licensing fees due to the increased bargaining power that the injunction provides. The court emphasized the importance of the projects CSIRO would undertake with additional licensing revenue. The court found CSIRO used its licensing revenue to fund frontier projects. Those projects covered “areas of important research” including “addressing the increasing rate of obesity and the consequential increase of Type 2 diabetes, developing biomaterials that can be used to aid recovery from traumatic damage to the body, and examining the impact of climate change and mitigating its causes.” The court found this, among other things, supported a finding of irreparable harm.
What are the implications of this analysis? CSIRO is a Australian scientific research organization similar to the United States’ National Science Foundation. Can for-profit entities succeed in similarly arguing that they too would use increased licensing revenue to solve important societal problems? Will drug companies benefit from arguing their licensing revenues are to fund further research on particular life saving drugs? What about engineering firms and environmentally friendly products or defense contractors and counter-terrorism inventions? This particular aspect will not be determinative in the injunction analysis, but its interesting that the particular use of additional licensing revenue is a factor.