What Is Patent Prosecution?
Patent prosecution is (essentially) the process of arguing with the patent office about whether an invention is patentable. Patent prosecution professionals will notice that there is more to this sentence than immediately meets the eye. Below, we break things down, then proceed to answer some questions that flow naturally from our explanations.
Patent Prosecution Part I: “Arguing with the Patent Office”
Patent prosecution involves “arguing with the patent office” in the form of official USPTO Office Actions and the applicant’s replies to those Office Actions. Simply put, an Office Action is a written document that lays out the USPTO’s stance on whether an invention is patentable. The person/people/organization who submitted the patent application have an opportunity to respond to each Office Action. This process repeats until one of the following occurs:
- The invention is determined to be patentable;
- The same rejection is made twice and a Final Office Action is issued;
- The application becomes abandoned.
Each of the above listed events triggers certain requirements as to how the applicant must proceed. For instance, if an invention is determined to be patentable and the USPTO issues a Notice of Allowance, the applicant must proceed in a certain manner to obtain patent rights. These actions are within the realm of what is considered to be patent prosecution, but are more nuanced.
Patent Prosecution Begins Upon the Mailing of an Office Action
An Office Action is an official written correspondence from the United States Patent and Trademark Office that lays out the Patent Office’s stance on whether an invention is patentable. Once a patent application is filed, it is examined for patentability by the patent office. The results of the patent office’s examination are detailed in the Office Action.
USPTO Office Actions come in two important varieties: Final Office actions and Non-final Office Actions. The most noteworthy distinction between the two is that Non-Final Office Actions may be responded to as a matter of right with amendments and new arguments which will become of record, whereas Final Office Actions may be responded to more limitedly.
Upon Receipt of A USPTO Office Action, The Applicant Has An Opportunity to Respond
Upon receipt of a Non-Final USPTO Office Action that details the Patent Office’s stance on patentability, the Applicant has an opportunity to respond in writing. As noted above, only Non-final Office Actions may be meaningfully responded to. Except in specific circumstances, the first Office Action an applicant will receive is a Non-final Office Action (Final Office Actions are appropriate only where a claim has been rejected twice on the same grounds).
In response to a Non-final Office Action, the applicant may refute the Patent Office’s position either by amending the application or by presenting arguments in favor of patentability. If the patent examiner is persuaded, he or she may place the application in a condition for allowance. Some of the more common reasons that a patent application might be rejected are detailed below, along with an overview of how such rejections may be overcome.
Patent Prosecution Part II: “Whether An Invention is Patentable”
Patent prosecution involves arguing with the patent office (as described above) about “whether an invention is patentable.” The determination as to whether an invention is patentable is a statutory determination. Title 35 of the United States Code, subsections of which are often referenced using the prefix “35 U.S.C.,” contains the numerous Federal laws regarding patents. Title 37 of the United States Code of Federal Regulations (“37 C.F.R.”) expands further upon the contents of 35 U.S.C., and the Manual of Patent Examining Procedure details the specifics of how the USPTO – as a Federal Agency – operates in accordance with both 35 U.S.C. and 37 C.F.R.
The point is this: when arguing with the Patent Office about “whether an invention is patentable,” the substance of the disagreement is whether the disclosure complies substantively and procedurally with the law. Because the reward for such compliance is a limited monopoly, examination is strict. There are specific ways in which a patent application may be non-compliant with the law, and specific ways to refute assertions of such non-compliance. Patent prosecution involves “arguing with the patent office” about this.
Patent Prosecution Part III: “The Process”
Patent prosecution is a process. This is important because patent prosecution is not a “one and done” type of situation where an application is filed and a single, final determination is made regarding patentability. Rather, patent prosecution typically involves more than one back-and-forth between the applicant and the patent office. In fact, some patent procurement strategies revolve around using that back-and-forth to obtain the broadest protections possible.
There are, of course, consequences to this. For one, obtaining a patent can take a long time. Depending on the area of technology in which a patent is sought, it can take up to several months for the patent office to mail an Office Action. Additionally, that patent procurement entails more work than simply filing an application creates an additional cost beyond what first-time inventors might expect.
Patent Prosecution Part IV: “Essentially”
Patent prosecution is “essentially” the process of arguing with the patent office about whether an invention is patentable. Essentially is a key word here, because patent prosecution is more nuanced than this simple explanation might suggest. While the information contained herein is sufficient for many purposes, it is not all encompassing and is not a suitable substitute for the advice of a patent attorney where this distinction may impact legal rights.
Common Reasons That Claims Are Not Placed in a Condition for Allowance
Upon examination of a patent application, the patent office (by way of whichever patent examiner is assigned the application) will decide either that allowable subject matter exists within the application, or reject the claims. If any claims are rejected, the patent office will articulate via office action the reasons for rejection.
As with anything done regularly, those who practice patent prosecution find that certain reasons for rejection are more common than others. By far the most common are rejections under 35 U.S.C. §§ 102 and 103. In certain areas of technology, such as software and biotechnology, rejections under 35 U.S.C. § 101 are also common. Each of these rejections are described in greater detail below.
Rejections for Patent Ineligible Subject Matter Under 35 U.S.C. § 101
Rejections under 35 U.S.C. § 101 tend generally to arise where the subject matter sought to be patented is patent ineligible. The text of 35 U.S.C. § 101 is very broad, and was historically considered all encompassing. For a long time, § 101 rejections for patent ineligible subject matter were not common. Today they are a lot more common.
Effectively prosecuting patents in which § 101 rejections are a potential concern requires an understanding of the history of the Court’s treatment of rejections for patent ineligible subject matter under 35 U.S.C. § 101. It is also helpful to consider how patent prosecution practice has adapted to each step of its evolution. Below follows such an overview. For a more in-depth discussion, see our article dedicated solely to 35 U.S.C. § 101.
The Evolution of Patent Eligible Subject Matter Under 35 U.S.C. § 101: Diamond v. Chakrabarty
For a long time, the prevailing theory in patent prosecution was that pretty much everything is patentable, and the prevailing practice was not to worry much about 35 U.S.C. § 101. Both were reinforced by a 1980 United States Supreme Court decision called Diamond v. Chakrabarty.
In Diamond, a microbiologist (Chakrabarty) filed a patent asserting 36 claims directed towards a living bacterium. Diamond v. Chakrabarty, 447 U.S. 303, 306 (1980). The patent office (led by Diamond, its Commissioner) rejected Chakrabarty’s claims as patent ineligible under 35 U.S.C. § 101, asserting (among other arguments) that living things could not be patented. Id. The bacterium was designed to break down components of oil and was thus quite valuable within the petrol industry, so the case eventually ended up before the Supreme Court.
Diamond v. Chakrabarty Looked At Whether A Live Bacterium Could Constitute Either a “Manufacture” or “Composition of Matter”
After substantial analysis, the Supreme Court found Chakrabarty’s bacteria were indeed patent eligible subject matter under § 101. It concluded that “[Chakrabarty’s] discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under § 101.” Id. at 310. To arrive at this conclusion, the Court looked first to the text of 35 U.S.C. § 101.
Upon doing so, the Court was able to isolate the relevant issue to whether a bacterium could be considered either a “manufacture” or a “composition of matter.” The Court read the term “manufacture” in § 101 in accordance with its dictionary definition, and construed “composition of matter” consistent with its common usage. See Id. at 308. This remains largely the case regarding the meanings of each of these terms.
The Subject Matter Eligible for Patent Protections is Broad…
The Chakrabarty Court noted the significance of Congress’s use of such expansive terms are “manufacture” and “composition of matter,” concluding from their inclusion that Congress intended the scope of patent eligible subject matter under 35 U.S.C. § 101 to be broad. Id. In further support of its reasoning, the Supreme Court looked to the legislative history of § 101, tracing back its roots to Thomas Jefferson’s original 1793 Patent Act, where they found that the same expansive terminology had been used. Id. The Court noted as relevant that “[t]he Act embodied Jefferson’s philosophy that ‘ingenuity should receive a liberal encouragement.'” Id., quoting 5 Writings of Thomas Jefferson 75-76 (Washington ed. 1871).
Continuing along the historical timeline of patent legislation, the Court noted that revisions to the statute in 1836, 1870 and 1874 all included the same broad language of “manufacture” and “composition of matter.” Id. at 309. The Court further noted that “[i]n 1952, when the patent laws were recodified, Congress replaced the word ‘art’ with ‘process,’ but otherwise left Jefferson’s language intact.” Id.
To seal the deal, the Court found that legislative committee reports accompanying the above 1952 legislation expressed an intent to include as patent eligible “… anything under the sun that is made by man.” Id., citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952) (emphasis added).
… But Patent Eligibility Pursuant to 35 U.S.C. 101 is Not Without Limitations
While the Supreme Court’s decision in Diamond v. Chakrabarty decidedly favored a broad interpretation of patent eligible subject matter, the Court was careful to express that patent eligibility under § 101 is not without limitations. Importantly, the Court restated that laws of nature, physical phenomena, and abstract ideas are not patent eligible subject matter under 35 U.S.C. § 101.
The Court proceeded to distinguish Chakrabarty’s bacteria from the above noted ineligible classifications. In response, patent prosecution attorneys began drafting patents for subject matter considered to be on the fringe of ineligibility with these distinctions in mind, being careful to avoid unfavorable characterizations. This remained largely the state of § 101 practice for quite some time. During this period, rejections for patent ineligible subject matter under 35 U.S.C. § 101 were not common.
The Evolution of Patent Eligible Subject Matter Under 35 U.S.C. § 101: Alice Corp. v. CLS Bank International
In 2014, the Supreme Court handed down a landmark decision regarding 35 U.S.C. 101 and method patents in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Although Alice was not the first case in which subject matter was found to be patent ineligible under 35 U.S.C. § 101, it appears retrospectively to have been the proverbial straw that broke the camel’s back with respect to patent prosecution practice. Whereas Pre-Alice, § 101 was rarely a concern, Post-Alice, § 101 rules the day in certain technologies.
The Technology At Issue In Alice Involved Methods of Managing Settlement Risk
The patents at issue in Alice pertained to methods and an apparatus applied to financial matters and risk management which enabled the management of risk relating to specified, yet unknown, future events. This explanation is imprecise because the subject matter of the Alice patents is vast, spanning over 600 pages across four patents, including a total of nearly 250 claims and close to 450 sheets of drawings.
|Methods and Apparatus Relating to the Formulation and Trading of Risk Management Contracts||Methods of Exchanging an Obligation||Systems for Exchanging an Obligation||Systems and Computer Program Products for Exchanging an Obligation|
|139 Pages||157 Pages||157 Pages||157 Pages|
|39 Claims||75 Claims||84 Claims||47 Claims|
|101 Drawing Sheets||117 Drawing Sheets||117 Drawing Sheets||117 Drawing Sheets|
Broadly, the technology disclosed in the patents at issue in Alice relate to settlement risks in the “foreign exchange” market. The “foreign exchange market” is more commonly known as “ForEx” or simply “FX.” It involves trading pairs of foreign currencies, for example the United States Dollar at a set price relative to the Great British Pound. Whenever such a trade is made, there are four things that must happen:
- A buyer agrees to buy an asset at a given price;
- A seller agrees to sell the asset at that given price;
- The buyer transfers the agreed upon amount of money to the seller; and
- The seller transfers the asset to the buyer.
When there are relatively few buyers and sellers who are all in relatively close proximity to one another, this is easy. When there are millions of buyers and sellers positioned all over the world, it is hard. Most obviously, there is a risk that either the buyer will not actually hand over the money he owes or the seller will not hand over the asset. This risk is called “settlement risk,” and is what the Alice patents sought to manage.
Alice Corp. v. CLS Bank International Was Impactful to Patent Prosecution Because of Its Impact on Abstract Ideas
Following the Supreme Court’s holding in Alice, the likelihood of receiving a first office action with a rejection under 35 U.S.C. § 101 for patent ineligible subject matter increased by 31%. The Court in Alice found that the claims at issue were directed towards “abstract ideas.” Abstract ideas were always known to be unpatentable, but Alice clearly articulated a exactly what constituted an abstract idea while the patent prosecution world was watching.
The Court In Alice Adopted the Two-Part Test of Mayo Collaborative Services v. Prometheus Laboratories
The Court in Alice looked to Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), a similar case that it had heard recently. In Mayo, the Court articulated a two-part test for dealing with purportedly unpatentable abstract ideas. To paraphrase, the test is as follows:
- Is the claim at issue directed towards a patent ineligible concept?
- If so, is there something additional in the claim that transforms the nature of that claim into patent eligible subject matter?
The Court in Alice answered the first question in the affirmative, concluding that the claims in the Alice patents were directed towards the abstract idea of intermediated settlement, and then moved onto the second question. The Court concluded that the claims at issue in Alice merely required generic computer implementation, and that such generic computer implementation was not sufficiently transformative. As such, the claims were directed to abstract ideas and were patent ineligible pursuant to 35 U.S.C. § 101.
How to Overcome 35 U.S.C. § 101 Rejections in Patent Prosecution Post-Alice
Rejections under 35 U.S.C. § 101 for patent ineligible subject are beat by quality patent drafting. Patents today are drafted to disclose “something more” than an abstract idea to circumvent 35 U.S.C. § 101. Typically, this manifests via an extremely thorough specification section that contains every possible embodiment of the invention. This way, if a claim is rejected under 35 U.S.C. § 101, there is likely to be support to amend in the required “something more.”
Precisely how to best go about doing so is an area of debate among patent practitioners, and the specifics are largely proprietary to each firm/practitioner. How to best go about drafting claims for which § 101 may become an issue differs across technologies, as does the type information that is valuable to include in the specification. It is important to look at what is common in the technological sector at the time, and draft the application with this in mind.
Rejections for Lack of Novelty Under 35 U.S.C. § 102
One of the most common rejections that patent applications receive is a rejection under 35 U.S.C. § 102(a) for lack of novelty. Since the 2012 America Invents Act, these have come to be known as just “102 Rejections.”
If an application receives a 102 Rejection, the person examining it did not believe that the subject matter claimed was new or novel. Not surprisingly, the examiner can not just say this without any proof.
Proof comes in the form of prior art documents (35 U.S.C. § 102(a) describes several formats of prior art, each of which is discussed further below). If an invention is rejected under 35 U.S.C. § 102(a), it means that after reading the application and performing a prior art search, the examiner has found at least one prior art reference which existed before the then-rejected application was filed and also discloses each and every element of the claimed invention.
Prior Art Rejections Under 35 U.S.C. 102(a)(1): Issued Patents
An application may be rejected under 35 U.S.C. § 102(a)(1) because the claimed invention was patented prior to the filing date of the rejected application. Where this is the case, the patent office will cite an issued patent in support of its rejection. In the Office Action that contains the rejection, the patent examiner who authored it will break down their view of which elements of the patent correspond to and thus disclose each and every element of each claim. To overcome the rejection, the applicant’s response must convince the examiner that their arguments were wrong.
Prior Art Rejections Under 35 U.S.C. 102(a)(1): Printed Publications
An application may be rejected under 35 U.S.C. § 102(a)(1) because the claimed invention was described in a printed publication before the filing date of the rejected application. Where this is a case, the patent office will cite a printed publication in support of its rejection.
A printed publication can be pretty much anything, as long as it was (1) printed and (2) available to the public. A doctoral thesis could be cited as a printed publication, as might an article in a medical journal. As with any rejection under § 102, the cited printed publication must disclose each and every element of the claimed invention. If the patent applicant can convince the examiner that this is not the case, the rejection can be overcome.
Prior Art Rejections Under 35 U.S.C. 102(a)(1): Public Use
An application may be rejected under 35 U.S.C. § 102(a)(1) because the claimed invention was in public use prior to the filing date of the claimed invention. Public use means exactly what one would expect: the public was already using the invention before the applicant tried to patent it. Public use sufficient to bar patentability under § 102(a) can range from the inventor himself using the invention in public to instances where the invention had been known to the public for decades.
Evidence of public use can come in many forms. Depending on the nature of the invention, evidence of public use may be almost anything, ranging from an account in the bible to a photograph in the newspaper. Again, the cited reference must sufficiently disclose each and every element of the claimed invention.
Prior Art Rejections Under 35 U.S.C. 102(a)(1): The “On Sale” Bar
An application may be rejected under 35 U.S.C. § 102(a)(1) because the claimed invention was on sale prior to the filing date of the claimed invention. Importantly, it is the invention itself that must be on sale, not the rights to the invention (that said, it is possible to lose patent rights through an offer to sell the rights to an invention, so be careful and follow best practices!).
Known in the field as “the on-sale bar,” 35 U.S.C. § 102 rejections based on the claimed invention’s purported prior sale must include evidence the alleged prior sale. Such evidence may take whatever form the evidence is in, from catalog images to contracts and anything in between.
Prior Art Rejections Under 35 U.S.C. 102(a)(1): The “Otherwise Available to the Public” Catch-All
An application may be rejected under 35 U.S.C. § 102(a)(1) because the claimed invention was “otherwise available to the public” prior to its effective filing date. The term “otherwise available to the public” is intentionally vague: it was included as a catch-all. If a prior art document discloses the claimed invention, it will not be disqualified as prior art simply because it does not fit into one of the other categories. As always, the prior art document must disclose each and every element of the claimed invention to appropriately support a rejection under § 102.
Prior Art Rejections Under 35 U.S.C. 102(a)(2): Patent Literature Which Names Another Inventor
An application may be rejected under 35 U.S.C. § 102(a)(2) when the claimed invention was disclosed in patent literature (dated prior to the filing date) which names an inventor other than that named in the rejected application. For example, if Inventor A is the named inventor in the pending application and the examiner finds a prior art reference which discloses the entirety of the claimed invention and names both Inventor A and Inventor B, a rejection under 35 U.S.C. § 102(a)(2) would be appropriate.
There are unique scenarios where 35 U.S.C. § 102(a)(2) rejections tend to arise, each with a specific recourse. It is unlikely that a first time individual inventor would encounter a valid 35 U.S.C. § 102(a)(2) rejection.
Overcoming § 102 Rejections in Patent Prosecution
There are two ways to overcome a prior art rejection under 35 U.S.C. § 102: (1) disqualifying the underlying reference as valid prior art, and (2) convincingly showing that the cited prior art reference fails to disclose each and every element of the claimed invention.
A reference may be disqualified as valid prior if it can be demonstrated that the reference does not, in fact, pre-date the filing date of the invention. There are a myriad of ways to demonstrate this, but the patent office is pretty well trained and it is not often they make a mistake of this sort. It is, however, something worth keeping an eye on, because mistakes do happen and there are several instances where the mistake is more likely (e.g., § 102(b) exceptions, § 102(c) exceptions, etc.).
Most of the time, § 102 rejections are overcome by demonstrating that the cited prior art references fails to disclose each and every element of the claimed invention. If an element is present in a claim but is not disclosed in the cited prior art reference, a rejection under 35 U.S.C. § 102 is not proper.
In prosecuting applications where a § 102 rejection has been made, it is often useful to amend the claims. When the examiner appears to be correct that a prior art reference indeed discloses each and every element of the claimed invention, the rejection may be overcome by amending the rejected claim an additional element that is not present in the prior art, and arguing allowability in view of that amendment. Where the applicant believes the examiner is off base, it can be helpful to clarify the language of the claims to better articulate the missed distinction.
Rejections for Obviousness Under 35 U.S.C. § 103
According to 35 U.S.C. § 103, “[a] patent for a claimed invention may not be obtained … if the differences between [it] and the prior art are … obvious….” For obvious reasons (pun intended), § 103 rejections are sometimes known in the practice of patent prosecution as “obviousness” rejections.
While the above simplification leaves out some important parts of § 103, it is crafted to convey the most crucial concept underlying the rejection: obviousness. Stated most simply, inventions that are obvious variants of existing technologies are not patentable.
Now for the nuance…
Rejections for Obviousness Under 35 U.S.C. § 103 Are Supported By Combining One or More of the Prior Art Document-Types of § 102(a) to Arrive at the Claimed Invention
Much like rejections for novelty under § 102, a rejection for obviousness under § 103 is proper only if each and every element of the invention is disclosed in the prior art. The major difference between § 102 rejections and § 103 rejections is that § 103 rejections tend to rely on more than one prior art document as evidence that each and every element of the invention is disclosed in the prior art.
Example of a Rejection for Obviousness Under 35 U.S.C. § 103
Consider as an example an invention that claims Element A, Element B, and Element C. After conducting a search, the patent examiner assigned the application finds a first prior art reference that discloses Element A and Element C.
This first prior art reference is insufficient on its own to support either a rejection for obviousness under § 103 or a rejection for lack of novelty under § 102. Accordingly, if the first prior art reference is the only relevant prior art reference, the claims should be allowed.
If, on the other hand, the examiner finds also a second prior art reference which discloses Element B, then a § 103 obviousness rejection may be warranted (provided there is sufficient motivation to combine the teachings of the two prior art documents, among other things).
Continuing along these lines, consider a third instance where, after conducting a search, the patent examiner assigned the application finds instead of the above two references only a third prior art reference that discloses Element A and a fourth prior art reference that discloses Element B. Here, a § 103 obviousness rejection would not be appropriate, because only Element A and Element B were found in prior art.
In the last example above, the invention claimed an element that prior art failed to disclose (Element C). Therefore, the invention is both novel (no single prior art reference discloses all three elements) and non-obvious (no combination of prior art references disclose all three elements). Accordingly, barring other issues, the claims should be allowed.
Overcoming an Obviousness Rejection Under 35 U.S.C. § 103 in Patent Prosecution
The easiest way to overcome a rejection for obviousness under 35 U.S.C. § 103 is to convincingly (i.e., to the examiner’s satisfaction) show that the prior art cited in support of the rejection fails to teach, suggest, or disclose some element of the claimed invention.
To do this, one must first dissect the cited prior art documents to determine whether they genuinely each, suggest, or disclose each and every element of the claimed invention. If they do not, the rejection may be overcome by convincing the examiner of the applicant’s position as to why they do not. If they do, the rejection may be overcome by amending the claims to additionally claim some element that is not disclosed in the cited prior art documents. Precisely how to go about this is an art that careers are dedicated to.