To: Editor of the JPTOS

RE: Winter, its Impact on Prosecution and Patent Strategy, and Comments on 35 USC 135(b)(2)

Dear Mr. Zarfas:

Thank you for the opportunity to comment on 35 USC 135(b)(2) and to respond to comments regarding 35 USC 135(b)(2) by Paul Morgan and Steve Kunin at 86 JPTOS 101 et seq (February 2004). Those comments did not fully consider the consequences of the holding in Winter v. Fujita 135(b)(2). ⁽¹⁾

Winter (re)defines 37 CFR 1.601(n) to require two-ways obviousness. Accord, Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1268 (Fed. Cir. 2003) and Noelle v. Lederman, Docket No. 02-1187 (Fed. Cir. January 20,2004). Winter has a dramatic impact on patent prosecution for interference practitioners. It should have a dramatic impact on all patent prosecution, and would have that impact if properly understood. Respecting 135(b)(2), an impact of Winter should be to increase the 135(b)(2) burden above and beyond what Messrs. Kunin and Morgan discussed. I explain my reasoning for these conclusions below.

In the post Winter world, interference issues necessarily must be viewed in a different manner. Winter necessarily redefined 1.601(n), thereby redefining 37 CFR 1.131 and patent practice in a manner not generally understood by the patent bar. I explain that impact before commenting on 135(b)(2).

Pursuant to the holding in Winter, 601(n) now is construed to require two-ways obviousness for claims to be directed to "the same patentable invention." Accordingly, 37 CFR 1.131, via its incorporation of the 37 CFR 1.601(n) standard for when a reference can be antedated, only prevents patent applicants from antedating references when the subject matter defined by the claims of the patent application and the reference are obvious one in view of the other.

By way of example, an applicant claiming a genus may now remove a 102(e) reference when the reference discloses and claims a species of the genus, by (1) filing a 131 declaration showing invention prior to the 102(e) date of the reference and (2) successfully arguing that the species would not have been obvious in view of their claimed genus. If the examiner agrees that the patented or published application's claimed species would not have been obvious in view of the genus, then the examiner must withdraw the rejection based upon the 102(e) reference. As a result, the applicant will get a patent having a claim encompassing the genus. Obviously, the species patentee is going to be unhappy with that result! In effect, the PTO will grant a patent even thought the patent may be invalid under 102(g) based upon prior invention by the patentee whose patent claims the species of the genus.

The species-genus example is the simplest way of explaining the impact of Winter on ex parte practice. Generally speaking, if the applicant (1) shows a date of invention prior to the 102(e) date of the reference and convinces the examiner that the reference's claims would not have been obvious in view of the claims being examined, the examiner must withdraw the rejection, and the examiner should take no action towards declaring an interference.

Let me be completely clear as to the result. The later filed application can issue despite the existence of the earlier filed 102(e) reference, despite or because of the fact that the later filed application's claims dominate (are broader than) or only partially cover the subject matter defined by the claims in the patent.

Another way to state the legal conclusions I just mentioned is that Winter effects a PTO policy to ignore a class of prior art when determining patentability. The PTO, in effect, has "abandoned the field" of decision making regarding situations where the later filed applicant's claims do not define the same patentable invention as claimed in a patent (or published patent application) that issued from an earlier filed application. At least in some cases prior to Winter, the PTO would have declared an interference to see which of the claimants was in fact entitled to a patent on the genus and the species. Now, the PTO, will ignore those situations so long as the applicant can antedate the prior filed patent and show the examiner that the claims of the prior filed patent do not define obvious variations of the claims in their pending application. Winter has relieved the PTO of its gatekeeper function in preventing (via interference proceedings) the existence of a certain class of invalid patents, and it has passed the burden of those invalid patents on to the public and the courts.

Now consider a more complicated example, as follows. There are a series of overlapping claims, like a layer cake, each subsequent layer homing in on commercially important subject matter, claim 5 being the narrowest claim. Consider claims 2 and 4 in the application being examined and claims 1, 3, and 5 in the 102(e) reference. It is possible for the applicant to get claims to claims 2 and 4. How? The applicant (1) shows a date of invention for claims 2 and 4 prior to the 102(e) date of the reference, (2) argues successfully that the limitations defining claims 2 and 4 do not suggest claims 1 and 3 respectively, and (3) argues successfully that claims 2 and 4 are non-obvious in view of claim 5. Keep in mind that the actual dates of invention of claims 1, 3, and 5 in the 102(e) reference never come in to play in the USPTO because of the holding in Winter. Whose claims are invalid? Probably some of the issued claims are invalid, but no one knows unless or until the matter is litigated, and proper discover is obtained.

What I have described above assumes that claims are presented within the relevant 135(b) time limit.

What I have described above suggests that practitioners should include more complete claim sets in order to protect their client's rights against another parties' interleaved or genus claims. Specifically, practitioners should initially include more complete claim sets to avoid having patents issued with claims like claims 2 and 4 above inserted between claims of their clients' patents, or having patents issued with genus claims dominating claims of their clients' patents.

In addition, what I have described above suggests that practitioners should consider not just copying claims for 135(b) purposes, but also presenting claims interleaved between those of the targeted published patent applications or patents, perhaps in a separate application. Why? As a fallback position to provide their client a patent covering their clients' business adversary's products, in case their client loses an interference on priority!

I think you can see now why I think that Winter has added another layer of complexity to patent strategy, and thereby added additional costs to the patent system.

Now what does this have to do with 135(b)(2) and Messrs. Kunin and Morgan's comments as to the impact of 135(b)(2) on the general welfare? It impacts the arguments Paul and Steve presented by pointing out the additional costs to the public of 135(b) generally in view of Winter. Some of these additional costs are advanced in time due to the existence of 135(b)(2). Some of these additional costs only exist due to the existence of 135(b)(2) because the claims as published in an application prompt responsive action from third parties even though those claims may not issue into a patent.

Generally speaking, Winter has substantially increased the cost burden in ex parte prosecution for an entity (1) to obtain useful patent protection for its IP turf and (2) to prevent others from wrongfully getting patents on its IP turf. The existence of 135(b)(2) exacerbates that burden. From my personal perspective as a practitioner heavily involved in prosecution and interference issues, 135(b)(2) creates costs to my clients, de-focuses their resources on patent procurement, and has no redeeming societal beneficial effect.

Truly,

Richard Neifeld

Rick Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC and StockPricePredictor.com, LLC
4813-B Eisenhower Ave.
Alexandria, Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
Email:
www.Neifeld.com and www.PatentValuePredictor.com

1. Winter v. Fujita, 53 USPQ2d 1234 (PTOBPAI 1999)(expanded panel consisting of Stoner, Chief Administrative Patent Judge, McKelvey, Senior Administrative Patent Judge, and Schafer, Lee, and Torczon, trial section administrative patent judges)(opinion by SAPJ McKelvey):

Resolution of an interference-in-fact issue involves a two-way patentability analysis. The claimed invention of Party A is presumed to be prior art vis-a-vis Part B and vice versa. The claimed invention of Party A must anticipate or render obvious the claimed invention of Part B and the claimed invention of Party B must anticipate or render obvious the claimed invention of Party A. When the two-way analysis is applied, then regardless of who ultimately prevails on the issue of priority, the Patent and Trademark Office (PTO) assures itself that it will not issue two patents to the same patentable invention.