12:01 Tuesday

Wait One Day, Lose Two Days! Not Free!

Today brings the best teaching example I've seen on the importance of promptly responding to Office Actions.

Every patent practitioner knows that there are statutory periods to respond to USPTO Office Actions. Typically, they are six months. Miss those deadlines and you could be up a creek, needing to petition to revive your application, if you can.

However, the PTO generally reduces these to a "shortened statutory period" of three months (two, for certain actions). So if you're late, you simply pay an increasing fee for each month you are delayed, up to the statutory limit. And unless you: a) work only with clients/inventors who respond promptly to your emails (and pay their bills on time); b) don't ever work on litigation matters; c) never take a vacation; and/or d) have been lucky enough to never be jammed with a crisis of someone else's (or even your own) making; then you have almost certainly availed yourself of this "convenient" option provided by the PTO. (In fact, certain litigious patentees in pre-GATT days were known to always use the maximum allowed extensions, to keep an application pending as long as possible.) That first extension month is yours for the low, low price of $150 – and if you are a small entity, it's $75. What a bargain! See 37 CFR 1.17(a).

But there is a bigger price, of course: patent term. Most of us (?) appreciate that these delays can negate extra patent term that would otherwise have been granted under Patent Term Adjustment for PTO delays. Fewer, however, seem to take into consideration the more obvious problem that a delayed response also delays the issuance of the patent. Every day you wait to file that response is, in theory, a day the Examiner is not acting on it, and one more day until that Notice of Allowance arrives.

Combining these costs can yield disastrous results. Enter today's patent, stage right:

U.S. Patent No. 8,110,187 Purification and characterization of cytotoxic lymphocyte maturation factor and monoclonal antibodies thereto Assignee: Hoffman-LaRoche, Inc. Issued: February 7, 2012 Filed: October 8, 2002 Continuation-in-part of ... 07/455,708, filed Dec. 22, 1989. USPTO Delay: 1,057 days Applicant Delay: 392 days Total PTA Adjustments: 665 days.

Commentary: First things first: this patent is DOA. Like the Army patents discussed here a while back, Roche's patent expired a few months ago. Twenty years from the priority date (12/22/1989) plus 665 days PTA = October 18, 2011. Oops. The difference in this case, however, is that the Applicant's delay was solely responsible for the stillbirth. Here's how:

Pretend that Roche had filed all its responses without extension, but that the PTO still had its delays (and that the Examiner's docket was uniformly distributed during that time). Then the patent probably would have issued about 392 days sooner, or January 11, 2011. That is still more than twenty years from the priority date, but there would have been 1,057 days of PTA extension, resulting in an expiration date of November 13, 2012 (normal expiration of 12/22/2009 + 1,057 days). Total patent term would have thus been 672 days (11/13/2012 minus 1/11/2011). Coulda, woulda, shoulda.

So, instead of having two years of an enforceable patent, Hoffman-LaRoche has nothing but the receipts it spent on prosecution. And those receipts probably aren't small – there were three appeal notices, two RCEs and one 453-page submission in an unsuccessful attempt to provoke an interference. Add to this that three different law firms were involved (it was originally filed by the erstwhile Pennie & Edmonds firm, passing briefly through Jones Day, to its current location), along with the clarifications in PTA calculations following the Wyeth v. Kappos case, and perhaps there is some understanding as to how the expiration date issue might have gone undetected.

But all the Applicant delay here occurred by April 2009. At that point, with the terminal date in sight, Roche pressed forward with an Office Action response and full appeal briefing to the BPAI. By the time the reply brief was filed in October 2010, it was a foregone conclusion that the patent could not issue with any term. (Prior to the appeal, Roche could have received a maximum of 226 days extension, to August 5, 2010. Roche gained an additional 439 days for its appeal pendency, and only then because the appeal eventually succeeded in reversing the rejections.)

Bottom line: 392 days of delay results in the loss of 672 days of term for Roche. Valium, anyone?

There are certainly times when extensions are necessary, and even useful. But we need to be mindful of their consequences with respect to term, especially in fields where a single day of a patent's life could have significant value.

Sign of the Times: Topps' Method of Trading Baseball Cards

The small pharmacy a mile from my childhood house was a frequent summer bicycle destination for me growing up. That's where my friends and I would go to buy packs and packs of Topps' baseball cards. I still remember opening a wrapper in 1978 to find a Pete Rose--while he was in the middle of his 44 game hitting streak. I hear that card in mint condition might fetch 20 dollars. (Mine--now bent and missing corners--maybe gets a buck.)

So it was nice to see a few weeks ago that Topps obtained its first utility patent in almost seven years (only its sixth utility patent in 30 years). Moreover, this is Topps' first patent that has nothing to do with chewing gum or candy -- it's...get this...a business method patent:

U.S. Patent No. 7,797,194 Method and apparatus for offering for sale collectibles on primary and secondary markets Assignee: The Topps Company, Inc. Issued: September 14, 2010 1. A method of facilitating an issuer of collectibles to manage an offering of collectibles for sale, each of the collectibles having a predetermined condition, said method comprising the steps of: a) initially offering for sale the collectibles to potential purchasers for a period of time set by the issuer; b) receiving orders from the ordering potential purchasers; c) allocating the offered collectibles among selected of the ordering potential purchasers; d) facilitating steps a), b) and c) by a programmed computer; and e) maintaining the condition of the collectibles during steps a), b) and c), whereby the allocated collectibles are of the predetermined condition and the issuer may guarantee the condition of the allocated collectibles, wherein step b) offers an initial offering of collectibles, and there is further included the step of offering for sale selected of the allocated collectibles on a secondary market at the direction of the purchasers of the allocated collectibles.

Commentary: Great. I suppose this means that my kids may not be trading actual baseball cards: instead, they'll be trading futures in baseball cards. Then again, if "personal seat licenses" are now the norm for ticket holders, then why not introduce children to similar concepts early on, right? At least it gets them to think of these cards as the investments they really are, rather than just things to put in your bike spokes so they will make cool ratchety noises. (Sorry, Pete.)

Of course, there's one immediate shortcoming, in my opinion. The patent talks about an "IPO" for a card ("Initial Player Offering") and buying multiple cards for players expected to increase in value (e.g., you may want to buy many Derek Jeter cards "if you believe that Derek Jeter will become the best shortstop of all time," says the patent). That's a great tool to teach kids about buying and holding stocks, but what about selling short? There's apparently nothing in Topp's system that allows me to sell you the Stephen Strasburg card I don't have.

No formal drawings. Even the figures look like they were drawn by 11-year olds.

Bilski. Does this even need mentioning? Actually, the Examiner did reject several claims for failing machine-or-transformation, but other claims somehow survived. Given the recent PTO's recent pronouncements on interpreting KSR, however, I'd think that step d) here might not overcome an obviousness rejection.

Seven Appeal Briefs, No BPAI Decision. The claims in Topps' patent application were given their first final rejection in 2001. But as hard as Topps tried to appeal those rejections, it just couldn't make it up to the Board. The first two attempts resulted in the examiner reopening prosecution with new grounds of rejection. Then there were two defective briefs. Then a substitute brief kicked by the Board because it was not considered by the Examiner. Then another defective brief. Then another brief that reopened prosecution with a new rejection -- which was overcome, resulting in allowance. I suspect the Examiner was simply worn out by this point. Or Topps' counsel takes lessons from the Swamp King.

Filed five months too early? Topps' application was filed in January 2000. Unfortunately, Patent Term Adjustment only is allowed for applications filed after May 29, 2000. With over ten years from application to issuance, that would have been over seven years of "B" delay, alone (assuming there was no applicant delay--you can check that for yourself). But here is is the real travesty of all those failed appeal attempts: under the older Patent Term Extension--which applied to this application--had Topps received a favorable appeal decision from the BPAI, then it would have received extra term dating back to the Notice of Appeal. But without any decision on the merits by the Board (even though the Examiner reconsidered his rejections several times), the term is a flat 20 years from filing.

Adding even more insult to injury, Topps had successfully petitioned to make the application special, resulting in an accelerated examination. Despite, these efforts, in hindsight Topps would have been better off dropping this app in favor of a continuation after the first final rejection in October 2001.

Derivatives. Anyone care to create an options exchange for Topps?

UPDATE 10/20/2010: I'm informed that Topps actually has a commercial service based on the teachings of this patent, called etopps.

Last Day of Enforceability for Patent 4,xxx,xxx

Today marks the end of the four millions.

U.S. Patent No. 4,997,100 Unitary biological specimen processing apparatus Inventor: Peter P. Dudek Issued: March 5, 1991 Filed: August 31, 1990 Abstract: A Unitary biological processing apparatus for processing specimens therein is described wherein a perforated receptacle member with two arc shaped abutment means and a third hook shaped abutment means is attached through a frangible hinge portion to a perforated lid member with two arc shaped detent means at the two edges of the lid member which are perpendicular to the lid member edge extending along the hinge portion, and a third detent means engageable with the hook shaped abutment means. When the lid member is swung about the hinge the arc shaped engagement means become engaged even before the lid member mates against the receptacle member and the two arc shaped engagement means provide with the third engagement means a three-point lock of the lid member onto the receptacle member

You can check for yourself, or you can take my word for it: any other patent under 5,000,000 is either: a) 20 years past its earliest priority date; or b) expired for failure to pay maintenance fees. (And every patent under 5,000,000 is more than seventeen years past issuance.)

Challenge: When will the last of the 5,000,000s expire? I suspect that PTE (which was not applicable to the 4,000,000s) may cause major headaches in determining the answer.

Expiration Challenge II

Today Symbol Technologies -- the company that revived the doctrine of prosecution laches to bring down Lemelson's patents -- received U.S. Patent No. 7,738,865.  On the surface, it appears that this patent, like a few of the Army's described in earlier posts, expired long before it issued.  But did it?

You tell me.  When does/did this patent expire?

Hint #1: you will probably have to argue your position using case law.

Winner gets the bottle of Costco ibuprofen sitting in my desk drawer, expired 1/06. (And to you pharma folks -- is there really a harm in my still taking them?)

A more complete discussion will follow.

Pruning Priority to Prolong the Patent

"The examiner is utterly confused about the lineage of this application..."

Thus begins the intriguing prosecution history of a patent that issued on Tuesday.  (Yes, even three feet of snow and the PTO being shut down could not stop the weekly arrivals of issued patents.)

Here are the basics:

U.S. Patent No. 7,658,935  Methods and compositions for stimulating the immune system Inventor: Samuel Bogoch Filed: May 15, 2001 Lineage as filed (and published in U.S. Pub. 2002/0045187): This application is a Continuation-in-Part of my application Ser. No. 07/744,649 filed Aug. 8, 1991, and the prior applications of which it is in turn a continuation-in-part, Ser. Nos. 941,940, 852,200, 621,112, 553,075, 550,432, 450,404, 385,451, and 922,799, which should be incorporated by reference in the present application.  Lineage as issued: This application is a continuation of and claims priority to application Ser. No. 08/031,562, filed Mar. 16, 1993; which is a continuation-in-part of application Ser. No. 07/744,649, filed Aug. 8, 1991, abandoned, to which the instant application also claims priority.              Application Ser. No. 07/744,649 is a continuation of application Ser. No. 07/227,621, filed Aug. 3, 1988, abandoned; which is a continuation of application Ser. No. 06/281,883, filed Jul. 9, 1981, now U.S. Pat. No. 4,976,957; which is a continuation-in-part of application Ser. No. 05/922,799, filed Jul. 7, 1978, now U.S. Pat. No. 4,298,590, and application Ser. No. 06/019,078, filed Mar. 9, 1979, abandoned; application Ser. No. 06/019,078 is a continuation-in-part of application Ser. No. 05/941,940, filed Sep. 13, 1978, abandoned; which is a continuation of application Ser. No. 05/852,200, filed Nov. 17, 1977, now U.S. Pat. No. 4,196,186; which is a continuation of application Ser. No. 04/621,112, filed Oct. 9, 1975, abandoned; which is a continuation-in-part of each of application Ser. No. 04/553,075, filed Feb. 25, 1975, abandoned, application Ser. No. 04/550,432, filed Feb. 18, 1975, abandoned, application Ser. No. 04/450,404, filed Mar. 12, 1974, abandoned, and application Ser. No. 04/385,451, filed Aug. 3, 1973, abandoned. All applications listed above are incorporated herein by reference.

Commentary: If you blinked while reading that, you may have missed an important grammatical mark: the period (emphasized with added space above) ending the first sentence and showing that this patent claims priority ONLY to the '562 application and the '649 application, and NOT to any of the other eleven applications listed there.  And if you've read this blog in the past few weeks, you know immediately why that matters: if the priority chain had not been severed, this patent would have have had an expiration date of August 1993, which is almost eight years before it was even filed. Instead, this patent has over a year of life, plus some extra time for PTO delays. Good move.

Of course, there's more to the story.  By cutting the chain, all the previous links theoretically become available as prior art under 102. Why only in theory?  Because the first severed-off application ("621) was abandoned and unpublished -- and thus is unavailable as a 102(b) reference.  And the '621's parent, which blossomed into the '957 patent, issued in December 1990 -- less than one year prior to the August 1991 priority date of this week's patent. (Surprisingly, the Applicant did not raise the unavailability of the '957 patent when it was cited in a 102(b) rejection along the way, instead choosing to argue on the merits.) And 102(e) does not apply since the inventive entity is the same (not "by another").  In other words, a reference filed twenty years earlier (July 1981) and not in the priority chain is unavailable as prior art. To this, my brother would say, "Only in America. (or was that Don King...)"

But wait.. there's more.  Late in the prosecution, the Applicant was hit with a 112 written description rejection.  The response?  Amend the specification to import language from the grandparent '649 application, thus giving the needed support to the claims. On the surface, that seems fine -- the '649 application is in the priority chain, after all, and it was incorporated by reference. [Note, however, that as of October 2004, such an incorporation of "essential" material from an unpublished application is not proper. 37 CFR 1.57(c).] The peculiarity here, however, is that the '649 application and the '957 patent--not in the priority chain--essentially share the same specification.

Talk about having your cake and eating it. In beating back the 112 rejection, the Applicant relied on language from a twenty-year old document to provide support for his claims; yet the Applicant distanced himself from that same document in order to avoid early expiration.

And it all appears to be legit. Fascinating.

Solution: Patent Expiration challenge

In the wake of the Federal Circuit’s Forest Group decision and with Solo Cup being briefed, I have found myself in collegial discussions constantly encountering the position that it is a simple matter to determine a patent’s expiration date quickly, and that “any person with basic knowledge of the patent system” can do so (Brinkema, J.)  There’s nothing like a nice counterexample…

Yesterday’s challenge was well-received, with several entries and a variety of responses (guesses?).  Here’s how I went about the determination, with notes along the way:

1)   The filing date is after June 1995, so term will be 20 years from earliest claimed priority date.

2)   Earliest claimed priority date for this patent is not listed on face, but rather is found in the first paragraph of the specification: January 10, 1990.  This is a proper priority claim, per 37 CFR 1.78(a)(2)(i).  See MPEP 201.11 III(A).  With no more information, it appears the patent expired January 11, 2010 – a week before it issued (based on this discussion at PatentlyO, I am working on the assumption that a patent is still in force until the day after its anniversary date).

a.     Red Herrings: in the file wrapper, this January 10, 1990 reference is not found in the Application Data Sheet (listing an August 1992 reference) or the Declaration (listing a June 1990 reference).  But the listing in the specification is sufficient, per MPEP.

3) Looking at the image of the first page (or the file wrapper), however, we see there is term extension of 162 days.  This fact is not apparent from the text of the PatFT database, and would lead to an expiration date of June 22, 2010.

4)   But also looking at the image, we see there is a terminal disclaimer of an undisclosed nature.  So we have to look at PAIR for more details (thankfully, this application was filed after 2000…otherwise we’d have to order the file history to make this “simple” expiration determination.) 

5)   Scanning the file wrapper shows that term is disclaimed beyond the term of U.S. Patent No. 7,546,699 – the parent patent.  If the parent patent expires before June 22, 2010, then so does our ‘710 patent.

 

6)   What is the expiration date of the ‘699 patent?  This is actually a more interesting 

 

question, and probably would require the courts to resolve.  But we can safely say that it is after June 22, 2010: 

a.     The earliest claimed priority date from the face/text of the '699 patent is August 10, 1992.  Plus there is 257 days of term extension (the extent to which the first office action exceeded 14 months from filing, minus applicant delay).  That would mean an expiration date of April 25, 2013.

i.     Red Herring: the June 18, 1990 claim in the Oath/Declaration is not a proper priority claim.  For one, the MPEP notes that a priority claim must be made in the Application Data Sheet and/or the specification. MPEP 201.11 III(D).  Further, there is no notice of the relationship (continuation/divisional/CIP) here, as required.

b.     But wait… the specification as originally filed included a priority claim to the January 10, 1990 application!  If valid, that would mean an expiration date of September 25, 2010.

c.      But wait again… the Applicant tried to delete this 1990 priority claim in a (second) preliminary amendment just four days after filing their application.  That's a little-known trick, permissible all the way up to allowance (or after, with a 1.312 amendment).

d.     But wait yet again… a week later, the Examiner found the amended specification unacceptable, and required Applicant to submit a substitute specification which “must include all of the desired changes.”  [Q: Did this nullify the amendment?]

e.     So the Applicant submitted a substitute specification – but Oops.. the substitute spec was identical to the original specification, and included the same January 10, 1990 priority claim.

f.     And, of course, the printed patent issued with the deletion of the priority claim!  [Q: What happens if the patentee tries to enforce this patent for infringement after June 21, 2010?  And what if they mark products after that date?]  (Unclear is why the published application, 2007-0240332, included the 1990 priority claim.)

7)   So the ‘699 patent expires in either September 2010 or April 2013.  Since both of those are after June 2010, it appears safe to consider the term of the ‘710 patent to expire June 22, 2010.

Congratulations to Rick, who ended up at the right result without doing any of the necessary work.  JV gets credit, as well, as the inclusiveness of the last day is unsettled.

Challenge: When does this patent expire?

"I returned a bag of groceries accidentally taken off the shelf before the expiration date."
-TMBG

To those of you who weren't persuaded by earlier posts that determining a patent's expiration date may not always be a simple matter, here's today's challenge:

On what date does U.S. Patent No. 7,647,710, issued today, expire?

Hint #1: You may need to look beyond the basic text page from the patent database.
Hint #2: You may need to look beyond the front page of the patent.
Hint #3: You may need to look at multiple entries in the file wrapper.

Bonus: might your answer change in light of Wyeth?

First correct answer emailed wins a wedding gift found while cleaning my closet over the weekend: a 1998 Borders gift certificate that the store won't honor.

A more complete discussion will follow.