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Patent prosecution, process and pitfalls by Benjamin Kuo (Wed, August 22, 2018)


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On Wed, August 22, 2018 Benjamin Kuo presented Intellectual Property "Patent Prosecution, Process and Pitfalls" CRASH Space.
Patent Prosecution, Process and Pitfalls
Eventually, every inventor is confronted with the decision to protect his technology by ways of a utility patent. Understanding the magnitude of the undertaking as well as the process and pitfalls involved can greatly reduce costs and (worse) avoid obtaining a useless patent.

In this talk, given by a patent attorney and former USPTO Examiner, the informed inventor will learn to distinguish patents from other forms of intellectual property, how to read a patent disclosure, the patent prosecution process and timeline, decide when and what to file, inner workings of the PTO black box, and how to find and work with a patent attorney.
About the Presenter
Benjamin Kuo is a patent attorney and former computer engineer with a solo IP practice based in Los Angeles, specializing in helping smaller entities obtain IP protection. In addition to patent filings, he also supports litigation and consults with practitioners on Patent and Trademark Office issues. Before forming his own practice, he was a patent examiner for the USPTO, examining hundreds of computer networking applications and conducting numerous interviews with outside attorneys. Before working at the USPTO, he practiced at various law firms in the fields of patent prosecution, IP litigation, antitrust litigation, and federal corrupt practices act investigations. He is fluent in Mandarin Chinese and is licensed in California and before the USPTO. See more at

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Patent prosecution, process and pitfalls by Benjamin Kuo (Wed, August 22, 2018)

  1. 1. Patent Prosecution: Process and Pitfalls Benjamin P. Kuo, Esq. © 2018 Patents by Benasaur
  2. 2. Brief Presenter Background • Patents by Benasaur: Solo law practice in the L.A. area • 10 years attorney experience, specializing in patent and trademark prosecution, focusing primarily on smaller companies and startups and consulting with practitioners on USPTO issues • USPTO Patent Examiner for 3 years in software networking (TC 2400), licensed before USPTO since 2010 • Background in computer science and fluent in Mandarin Chinese © 2018 Patents by Benasaur
  3. 3. The Fine Print • Disclaimer – This presentation does not create an attorney- client relationship; no information will be deemed privileged or confidential – Use information at your own risk, and attorney cannot predict or guarantee results. • The slides will be available online; leave contact information on clipboard © 2018 Patents by Benasaur
  4. 4. What is a Patent? • A government-granted monopoly on an invention for a fixed term – Protection of technology and know-how in exchange for public disclosure – Term is 20 years from the date of filing – Utility (for useful inventions) – Design (ornamental and decorative features) – Plant/microbes (selective breeding, gene sequences, etc.) • Utility Patents – Most valuable and most expensive to obtain – Must be useful, novel, and non-obvious – Types: mechanical, electrical/software, bio-chem, business methods, user interfaces – Patentability hinges mostly on novelty and non-obviousness © 2018 Patents by Benasaur
  5. 5. What are not patents? • Trademarks and unfair competition – Name of your business, product, or service – McDonald’s, Nike, Apple • Copyrights – A right to a creative work (photos, videos, writings, graphics, computer code) • Trade secrets – Some types of know-how are easily copied with little consequence (ex. Coke recipe) – Patents vs. trade secrets © 2018 Patents by Benasaur
  6. 6. Prosecution vs. Litigation • Prosecution – The legal process undertaken before the USPTO to obtain a patent – Begins with application, ends at patent issue • Litigation – Legal proceedings after a patent is issued – Primary issues are infringement or invalidity – They can take the forms of federal court litigation, ITC proceedings, inter-partes review (IPR) before the PTAB • Gray zone: Re-exams and IPR © 2018 Patents by Benasaur
  7. 7. The Land Grab Analogy for Patents
  8. 8. Anatomy of a Patent Disclosure © 2018 Patents by Benasaur • Cover Page – Patent No. – Application No. – Inventor – Applicant/ Assignee – Abstract – Representative drawing – Dates that establish priority: Filing date/ publication date – Classification – References cited
  9. 9. Anatomy of a Patent Disclosure (2) • Specification – Usually organized into sections – Drawings (not shown) required – Person Having Ordinary Skill in the Art (PHOSITA) must be able to make and use invention © 2018 Patents by Benasaur
  10. 10. Anatomy of a Patent Disclosure (3) • Claims – Your “fence” around the property, delineates the metes and bounds of your invention – Prosecution revolves around the broadness of claims – Independent vs. dependent claims © 2018 Patents by Benasaur
  11. 11. Deciding on when and what to file • After your Eureka moment: “we made it work!” but before the on-sale bar attaches – Are you ready, or do you really need to pursue a patent? – Earlier the better, because of first-to-file – On-sale bar considerations • Provisional vs. non-provisional applications • PCT (international application) © 2018 Patents by Benasaur
  12. 12. The On-Sale Bar for Patents • An application must be filed within 1 year of – Public disclosure or public use – Sale or offer-for-sale • Huge beginner issue – Kickstarters that offer product (even if they fail) – Code revisions posted to the App Store – Demos at trade shows, disclosure of tech without NDA, beta testing – Shareholder, stock purchase, funding agreements that licenses or promises a share of the technology © 2018 Patents by Benasaur
  13. 13. Provisional Applications • The formal application is called the “non-provisional application” – In lieu of a non-provisional that begins the prosecution process, you may file a “provisional application” • Benefits – Informal process and lower PTO fees (and lower legal fees) – Obtain earliest possible filing date in a first-to-file system – 12-month pendency to file a subsequent application • Pitfalls – Does not ever mature into a patent: Must file either nonprovisional or PCT before pendency expires – Must file the best disclosure possible under circumstances; can be used as evidence that inventor was “not in possession of invention” • Some lawyers avoid provisionals, but they have their place for cost savings, establishing priority, and delaying prosecution © 2018 Patents by Benasaur
  14. 14. The PCT (International Application) • An option for filing in multiple countries (including U.S.) • Same complexity as the non-provisional • Won’t mature into a patent, but buys you 18 mos. to “enter national stage” in the countries you want to file. • In U.S. this means filing the non-provisional • Can delay actual prosecution by 30 months + pendency © 2018 Patents by Benasaur
  15. 15. Deciding on when and what to file • After your Eureka moment: “we made it work!” but before the on-sale bar attaches – Are you ready, or do you really need to pursue a patent? – Earlier the better, because of first-to-file – On-sale bar considerations • Provisional vs. non-provisional applications • PCT (international application) • Eventually, all of these turn into… the Non- Provisional Application © 2018 Patents by Benasaur
  16. 16. Prosecuting the Nonprovisional • Pendency – 1-2 years depending on technology • First Office Action – Restriction Requirement – Action on the Merits (almost always a rejection) • Response to OA – Patent attorney has 3-6 months to respond – May conduct examiner interview / FAI program • Second or Final Action – Generally no longer than 12 weeks – Because of compact prosecution, it is rare to receive a “second non-final” – Final rejection: Prosecution is closed • After-final Filings – PA may file after final or AFCP (to resolve objections and formal issues) – Request for Continued Examination (RCE) – Continuation or Divisionals (treated as separate new applications) – Appeal to PTAB • Allowance and Issue – “Allowable subject matter” means you are almost there – Can happen at any time © 2018 Patents by Benasaur
  17. 17. Understanding the Office Action • Objections are for informalities; rejections are for substantive issues • Restriction Requirement – Claims include 2 or more discrete inventions, must elect one for prosecution • Drawing Objections – Cannot be held in abeyance (must fix in response) • Claim or Specification Objections – Informalities with drafting • A lot of objections, 112(b) rejections, or even a “non- responsive reply” indicate… – Poor drafting by attorney – Pissed off Examiner © 2018 Patents by Benasaur
  18. 18. Understanding the Office Action (2) • Rejections identify substantive issues – A good patent attorney will focus his time and effort here • 35 U.S.C. 102 Rejection (Anticipation) – One reference A covers the entirety of a claim • 35 U.S.C. 103 Rejection (Obviousness) – References A+B, together, render a claim obvious • 35 U.S.C. 112 Rejection – 112(a): Written Description or Enablement – 112(b): Indefinite (often, imprecise drafting) – 112(f): Means plus function issue – Examiners will often refer to these as “112 first, second, sixth…”
  19. 19. Software-specific Rejections • Can you even get software patents anymore? • The Means-Plus-Function Rejection (35 U.S.C. 112(f)/112(b)) – Essentially, you are claiming a black box that performs a function not coupled to structure. – Ex: “means for calculating the charging percentage of a battery.” • The “Alice” Rejection (35 U.S.C. 101) – Abstract ideas are not patentable; they include fundamental business practices, certain methods of organizing human activities, an idea of itself, mathematical formulas, etc. – Computer software claims must improve a “generic computer” • My formulation of this problem – The PTO of 10-15 years ago handed out Internet patents like candy, and courts are cracking down, clumsily. But most patent lawyers have not yet adapted to this. – Functional claiming requires little disclosure and is lazy drafting. Plus clients want to keep actual code as a trade secret. – By doing so, you claim every possible implementation of this function even if you only invented one. • Strategies – Argue subject-matter eligibility minimally during prosecution – Include software structure or pseudocode (do this NOW, because the law is evolving) © 2018 Patents by Benasaur
  20. 20. Patent Common Pitfalls • Not hiring a lawyer • Not filing a proper disclosure, or “sandbagging” the initial disclosure – You can fix everything else later, but you are stuck with the disclosure at the time of your filing. – For software applications, not including code, pseudocode, or software structure – Not properly translating a disclosure in a foreign language • Relying on copyrights and not patents – For source code, reverse engineering is fair use – Source code is easily distributed and modified • Not disclosing to your lawyer your bottom line – “Passive” prosecution will get you nowhere – Beware of claim amendments that don’t narrow the claims © 2018 Patents by Benasaur
  21. 21. The Bottom Line for Patent Prosecution • Risk of failure is high and underappreciated • Game is often for benefit of larger players with more resources • But… may be essential for buyout/ funding/ retail/ opening doors © 2018 Patents by Benasaur
  22. 22. Finding and Working with Attorneys • Patent work requires patent attorney – A patent attorney “registered before the USPTO” or “patent bar” – For filing only, a patent agent may be cheaper • Caveat: Cannot dispense legal advice, not helpful to newbies – Patent attorneys / agents can work across state lines • If you are sued or case appears headed to court – Patent attorney who is a litigator – PA is required for IPR before the PTAB – A general “IP attorney” probably can’t competently handle patent litigation © 2018 Patents by Benasaur
  23. 23. How to find a “good” attorney • Is this person good on paper? – Check disciplinary record on the state bar website • If patent attorney, also check the OED (USPTO) – Google is your friend – Does attorney represent people in your industry? – Prosecutors with examiner experience • Ultimately, clients want someone they can trust – Ask if your lawyer is receiving a referral fee for your business – Your gut feeling about a person is important © 2018 Patents by Benasaur
  24. 24. Pitfalls with Attorneys • Not doing your homework • Waiting until the last minute, not setting deadlines or not following up • Not reserving company resources or employee time for attorney • Demanding assurances about results – “Is my invention patentable?” • Reasonableness of fees – Compare a lawyer’s hourly rate with how much he’s charging you for the work – Paying by the hour for patent/trademark prosecution • Negotiate flat rate or fee cap • Customary in litigation © 2018 Patents by Benasaur
  25. 25. Who is Your Best Advocate? • Your lawyer? Your employees? Your family and friends? Your customers? Your social media fan base? • Yourself! © 2018 Patents by Benasaur
  26. 26. QnA – Thank you! • Patents by Benasaur – – © 2018 Patents by Benasaur