Ongoing Issues in US Patent Law Under the Old Patent Laws (pre 9/16/2011) and the New Law

US Unique practice for continuing applications

Divisional applications – similar to other countries re Unity of Invention

Continuation applications – used to continue examination beyond “normal”. This is no more than a matter of encouraging the applicant to settle for less than all the protection the invention is entitled to. Takes the form of collecting more fees, as well as slowing down the examination process. The professional attorney overcomes this obstacle by simply refusing to settle for less. Continuation applications no longer get any priority treatment regarding timing of examination.

Continuation-in-part applications (CIP) – Contain new matter, but preserve priority date for “old” matter. Can be used effectively to prevent an earlier-filed application from being used against a later technological development; as long as pendency is maintained until the new CIP is filed.

“Effective filing date” is determined on claim-by-claim basis

According to the first date on which an enabling disclosure was present in an application.

Mixed filing dates often come into play in CIP applications.

Business method patents are coming under increasing scrutiny by the courts.

Requires careful claim drafting.

Standards, requirements are still very much a moving target.

Purely mental processes and abstract ideas are not patent eligible, but applications of mental processes or abstract ideas are.

Laws of nature are not patent eligible, but applications of laws of nature are

Merely reciting use of a computer does not make otherwise ineligible material patent eligible. However, eligibility may be found if use of the computer is found to be critical to the invention. But speed of completion of the invention by the computer, by itself, is not enough.

Claim interpretation: There are two general methods of interpreting patent claims.

One school of thought holds that a claim should be interpreted according to the “gist” of the invention.

A second school of thought holds that a claim should be interpreted according to the literal wording of the claim.

The US follows the latter school of literal interpretation of the words of the claims.

Mixed together in the two schools of interpretation is the concept of structure of the claim, itself.

Some countries favor a “2-part claim” structure where a preliminary paragraph which contains all that is old, and a final paragraph which sets forth what is new.

Other countries favor a claim structure which simply enumerates the various elements of the claim, as a “combination claim”.

In the US, a claim structure which contains, preliminarily, all that is old may be interpreted as conceding that the only novelty is in the “new” material subsequently cited, thus eliminating any prospect of novelty in the combination. And yet, many inventions are indeed novel combinations of previously-known elements, or where one of the previously-known elements has a slight modification.

Thus, claims to be examined in the US should, in most cases, avoid the “2-part claim” structure and should, rather, be written in “combination claim” format.

Multiple Dependent Claims

Acceptable according to the rules

Cannot depend from a multiple dependent claim

Examiners don’t understand them

Knowledgeable practitioners don’t use them in the US

Generally small entities (independent inventors and companies having fewer than 500 employees) pay government fees 50% lower than the standard fee. Applies to most, but not all, government fees.

Write a Reply or Comment