Archive for the ‘USPTO’ Category

The USPTO issued updated guidance on Patent Subject Matter Eligibility (i.e. things you can get a patent for in the US) at the end of July.

The materials are fairly dense and help address some of the criticisms raised by applicants. Further explanations of the approach are provided as well as an expanded list of examples.

Reading between the lines, it appears the USPTO is moving towards a position that is harmonised with European, Chinese and UK approaches on excluded subject matter.

Having a relatively simple mind, I found the following page from the guidance summary useful.

Stuff What You Can't Patent

Following on from my post here, the President of the EPO has decided that an applicant will not need to file search results under R.141(1) EPC if the priority application was first-filed in one of:

  • US,
  • UK, or
  • Japan.

These will be exchanged between the patent offices automatically. In most cases, US, British and Japanese attorneys (and the majority of their clients) can thus let out a sigh of relief.

As set out here, this adds to the exemptions available when the search reports were drawn up by the EPO (e.g. EPO search on international or national applications).

Still from January it is worth checking the state in which a  priority application was filed as a general procedural step.

Patents can be an expensive business. However, there are a number of ways you can reduce the fees for a new application.

Today: claims fees.

Many national patent offices punitively price excess claims fees to make their jobs easier during examination. It is fairly easy to be caught out by this practice and see your official fees double for fairly little return.

Stack of Euros with thanks to Andres Rueda

Stack of Euros with thanks to Andres Rueda

In Europe excess claims fees are due for all claims over 15.  The 16th to 50th claims have fees of 210 euros each. Each  claim over 50 has a fee of 525 euros. (Correct as of 6 August 2010 – see here for current fee schedule).

In the US excess claims fees are due for all claims over 20. Each claim over 20 has a fee of 52 dollars.  Independent claims in excess of 3 have a fee of 220 dollars. Multiple dependent claims get hit with a 390 dollar fee. (US fees are reduced by half for a small entity – correct as of 6 August 2010 – see here for current fee schedule).

If you are thinking about filing a patent application in Europe or the US, and the issue has not been raised, ask your patent attorney about whether there are any claims fees payable on your application. If there are you may wish to reduce the number of claims within your claim set, remove multiple dependencies or reduce the number of independent claims. Often dependent claims of limited value can be cut (e.g. claims of the form: “and the result is displayed on a display device…”).

If possible aim for a maximum of 15 claims in Europe and a maximum of 20 in US.

If further possible aim for no multiple dependencies and a maximum of 3 independent claims in the US.

An excellent summary of the Peer to Patent programs at OpenSource.com:

http://opensource.com/law/10/7/collaborating-patent-examinations

See my comment at the end of the article.

Another day, another fluster online about a US patent granted to a well-known company.

This time the company is Google and the patent (7,668,832) is directed towards “controlling serving of an ad using its relevancy to a request” using “geolocation information“.

How NOT to interpret a recently granted patent (as demonstrated by most web-related news sites):

  1. Don’t refer to the claims of the patent in the news article, even though these define the scope of legal protection.
  2. Perhaps instead quote a section from the “Field of Invention” or “Background of Invention” sections (these sections respectively locating the patent subject-matter in a technology field and broadly describing what has been before – neither section gets to the heart of the invention).  Quoting from the “Background of Invention” is particularly favoured as this section is typically drafted broadly and typically is of the least relevance to the claimed invention.
  3. If you do locate the claims of the patent, summarise their subject-matter in a single sentence (even though they may in practice comprise several paragraphs of essential features), e.g. “patent on location-based ads” – wherein the independent claims actually require at least: –
  4. A computer-implemented method for controlling serving of an ad using its relevancy to a request, the method comprising: a) accepting, by a computer system including at least one computer, geolocation information associated with the request; b) comparing, by the computer system, the accepted geolocation information associated with the request with geolocation targeting information associated with the ad to generate a comparison result; c) determining, by the computer system, the relevancy of the ad using at least the comparison result; d) controlling, by the computer system, the serving of the ad, for rendering on a client device, using the determined relevancy of the ad; e) determining, by the computer system, whether the ad has geolocation price information corresponding to the geolocation information accepted; and f) if it is determined that the ad has geolocation price information corresponding to the geolocation information accepted, then determining, by the computer system, a score using at least the geolocation price information, otherwise determining, by the computer system, the score using at least general price information of the ad, wherein the act of controlling the serving of the ad further uses the score of the ad, and wherein the geolocation targeting information associated with the ad corresponds to an area defined by at least one geographic reference point.
  5. (In the present case, the latter features concerning a “score” appear to restrict the scope of the patent. This presents the possibility of a design-around.  However, the claims are sufficiently broad to require careful consideration if working in this area.)
  6. Gain lots of comments from Internet users about how “patents destroy creativity” and allow “big corporations to shut-out hard-working all-[insert country] inventors / start-ups” (even though it is nigh-on impossible to obtain a granted patent with a scope as broad as that insinuated in the article and you can equally argue patents allow “hard-working all-[insert country] inventors / start-ups” to compete on an equal footing with “big corporations ).
  7. Ignore all possibility of licensing; even if company X did obtain a broad patent to Y, if you were a small start-up you could still request a reasonable licence from X. Whether they would be willing to grant such a licence is another issue but several countries allow compulsory licensing where a reasonable licence is unobtainable.

There has been a bit of a stir in the online community on hearing the news that the Facebook team (Zuckerberg et al.) have been granted a patent (US 7,669,123).  The patent has claims directed to “displaying a news feed in a social network environment”.

As with many reports concerning patents, there has been a lot of misinterpretation (“Facebook patents news-feed”) of the facts. Hence, I will try to remedy some of that below:

  • A patent appears only to have been granted in the US.
  • When analysing a granted patent the first place to start is the independent claims that set out the scope of legal protection.  In this case the independent claims are 1, 16 and 24.  They are directed to the standard set of “method”, “system” and “computer readable medium”.  Each independent claim has a similar feature-set.
  • Claim 1 specifies:
  • 1. A method for displaying a news feed in a social network environment, the method comprising:
  • monitoring a plurality of activities in a social network environment; storing the plurality of activities in a database;
    generating a plurality of news items regarding one or more of the activities, wherein one or more of the news items is for presentation to one or more viewing users and relates to an activity that was performed by another user; attaching a link associated with at least one of the activities of another user to at least one of the plurality of news items where the link enables a viewing user to participate in the same activity as the another user;
    limiting access to the plurality of news items to a set of viewing users; and displaying a news feed comprising two or more of the plurality of news items to at least one viewing user of the predetermined set of viewing users.

  • As you can see, this requires several steps over-and-above simply “providing a news feed”.  However, at first glance, the claim seems pretty broad; I can foresee several “news feeds” implemented by parties other than Facebook falling within the claim.
  • The filing date is 11 August 2006.  It appears that a fair few documents were cited as prior art.  However, the US Examiner was convinced of patentability.  If the online community is concerned they could possibly locate relevant art pre-dating the filing date.  I can see arguments brewing over the precise meaning of “in a social networking environment”; does this cover project management or calendar applications?
  • It will be interesting to see whether Facebook decide to enforce the patent against anyone.  My gut feeling is that there could be relevant prior art out there that was not presented to the US Examiner.

…may result in a longer gap between filing an RCE and receiving the next Action (see link below):

http://www.patentlyo.com/patent/2009/10/nudging-against-rce-filings.html