PPH will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

“The PPH pilot program is a prominent landmark of the continuous deepening of bilateral patent cooperation between the SIPO and the USPTO,” said Commissioner Tian. “Patent applicants and stakeholders in both countries will benefit from the fast track examination provided by the PPH pilots. These PPH pilots will also effectively improve the capabilities of both offices to handle workloads, thereby promoting technology innovation and economic development in both countries through enhanced patent examination efficiency and quality.”

“These PPH pilots mark a significant milestone of achievement in patent cooperation between our two offices,” said Under Secretary Kappos. “They will promote high quality patents and expedite processing of patent applications in both offices by avoiding duplicative work and will provide greater costs savings to patent applicants, helping to spur greater innovation and generate greater economic growth and job creation in both countries.”

Under the Patent Prosecution Highway, an applicant receiving a ruling from the State Intellectual Property Office that at least one claim in an application is patentable may request that the USPTO fast track the examination of corresponding claims in corresponding applications. Similarly, if the USPTO determines that at least one claim is patentable, the applicant may request accelerated processing of corresponding applications filed at the State Intellectual Property Office. Full requirements for participation in each trial program at the USPTO can be found at http://www.uspto.gov/patents/init_events/pph/index.jsp. Information on the State Intellectual Property Office’s program may be found at http://www.sipo.gov.cn/ztzl/ywzt/pph/

The one year pilot programs will end on November 30, 2012. Both offices may extend the one year trial period upon mutual agreement. The purpose of this trial program is to gauge the interest of applicants and to evaluate the programs for patent quality, efficiency and the reduction of the workload at the USPTO as well as SIPO.

For non-press inquiries contact Magdalen Greenlief at 571-272-8850 or at Magdalen.Greenlief@uspto.gov.

Dated: November 22, 2011.
David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
[FR Doc. 2011-30717 Filed 11-28-11; 8:45 am]

WASHINGTON ─ In tribute to the tremendous influence of Steve Jobs, the United States Patent and Trademark Office (USPTO) will showcase The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World. The free exhibit will open to the public on November 16 at the USPTO’s campus in Alexandria, Virginia.

“This exhibit commemorates the far-reaching impact of Steve Jobs’ entrepreneurship and innovation on our daily lives,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace.”

Located in the atrium of the Madison Building, the exhibit features more than 300 of the patents that bear the name of the iconic innovator along with many of the trademarks that have given Apple its instantly recognizable identity around the world. The display gives insight into the visionary commitment Jobs gave to each of the products and designs he influenced during his time with Apple, the company he co-founded at the age of 21 with his friend and fellow computer enthusiast Steve Wozniak.

The exhibit was created and designed by Invent Now, Inc., the non-profit organization dedicated to fostering invention and creativity through its many programs and which runs the National Inventors Hall of Fame and Museum also found on the USPTO campus in the Madison Building. The Jobs exhibit, which runs through January 15, 2012, is free and open to the public, as is the National Inventors Hall of Fame and Museum. The museum, located at 600 Dulany Street in Alexandria, is open Monday through Friday from 9am to 5pm and Saturday from 12n to 5pm (closed Sundays and Federal holidays). For more information about the USPTO, visit www.uspto.gov. For more information about Invent Now, visit www.invent.org.

To stay current with the USPTO, subscribe to regular e-mail updates at www.uspto.gov/subscribe.

available at http://www.uspto.gov/inventors/independent/eye/201112/aiaupdate.jsp

by Richard Maulsby : Associate Commissioner for Innovation Development

As always, the devil is in the details. That has been the challenge for the United States Patent and Trademark Office (USPTO) during the past two months as the agency began implementing the various rulemakings, studies and programs mandated by the American Invents Act. The agency has also launched an extensive public outreach effort featuring webinars, speaking engagements across the country, and continual updates of the America Invents Act Implementation Guide on USPTO.gov.

To date, the agency has met all deadlines established by the legislation and is on track to meet all of its obligations during the first year of the law’s existence.

Several items are of particular interest to the small entity inventor community. The pro bono program requirement of the America Invents Act is already up and running in Minneapolis as a pilot and plans are well underway to expand the pro bono program to other cities throughout the country during the next year. The USPTO is also participating in a task force with Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit and members of the patent bar. The task force is seeking ways to expand the pro bono program throughout the United States.

Secondly, the American Invents Act requires the USPTO to conduct an international patent protection study and complete it by mid-January 2012. The agency published a Federal Register notice in October seeking comments and held two public hearings. A transcript of the hearings and all of the written comments has been posted online. The USPTO will publish its report based on the public feedback and independent research in January.

Finally, on November 15, the financial incentive for filing patent applications electronically went into effect. From that date on, all applicants who file paper applications will pay a $400 surcharge, reduced to $200 for small entity filers. Regardless of the incentive, everyone should want to file electronically anyway. The system offers inventors the opportunity to file patent applications and other patent documents in a fraction of the time and at substantially less cost than paper filings. Inventors forgo printing, postage and courier costs, and receive immediate notification that submissions have been received. 93 percent of filers use the electronic system.

The Office of the Associate Commissioner for Innovation Development made four presentations on the America Invents Act at independent inventor meetings in Texas and California in October. Plans are being made for additional presentations throughout the country in 2012. In addition, the office will devote the January online inventors chat to the status of the law’s implementation. To keep up-to-date on all the latest developments regarding the America Invents Act, all readers of Inventors Eye should visit the USPTO America Invents Act Implementation Guide regularly.

On May 6, 2011, the USPTO announced the Full First Action Interview Pilot Program, an extension and expansion of the Enhanced First Action Interview Pilot Program.

Prior to First Office Action. The program provides applicants the right to discuss certain applications prior to the first Office Action on the merits.  Previously, an applicant needed the examiner’s permission before engaging the USPTO at that stage.

To be eligible, the application must contain:

• Three or fewer independent claims;
• Twenty or fewer dependent claims; and
• No multiple-dependent claims.

Examiner Preparation.  If the applicant exercises his or her rights, the examiner will conduct a prior art search and provide a Pre-Interview Communication, citing relevant prior art and identifying proposed rejections and/or objections.  After receipt, applicant may file a request to not have a first-action interview.

Applicant Preparation.  If the applicant wishes to continue, within thirty days of receipt of the Pre-Interview Communication, he or she should schedule the interview and submit arguments, proposed amendments or both.  At the interview, rejections, objections, arguments, and proposed amendments may be discussed.  If agreement as to patentability is reached, the examiner issues a Notice of Allowance.  Where there is no accord, applicant is provided a first Office Action and summary of the interview.

Benefits.  The PTO cites four benefits as justification for the program:

• The ability to advance prosecution of an application;
• Enhanced interaction between applicant and the examiner;
• The opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and
• The opportunity to facilitate possible early allowance.

Approximately 34 percent of the applications in the prior First Action Interview Pilot Programs were allowed on the first action on the merits, as compared to approximately 11 percent on average across all technologies for new non-continuing applications.

Other Details.  There is no fee for participation in the program.  Applications subject to the program will not be advanced out of term for examination.  Rather, they will be examined with regard to their effective U.S. filing date. The Full First Action Interview Pilot Program will continue until May 16, 2012.

Bruzga & Associates recognizes that some clients may wish to participate in the program, as it may streamline prosecution of an application and create a better rapport with examiners.  Our attorneys and agents are fully capable of complying with the requirements.

For more information, contact our office at 646.278.0876 or info@aboutiplaw.com.

The America Invents Act (AIA) was passed on September 16, 2011 and is the most significant patent reform act in decades.  The Act introduces a number of significant reforms. We will go through a number of important points.

First to File

Effective March 16, 2013, the AIA implements a version of the first to file system, which replaces the first to invent system, with significant consequences. Historically, under previous U.S. patent law, the USPTO has granted priority to the inventor who is able to show that he was the first to invent. Instead, the AIA implements a version of the “first to file” system, used by patent offices in most of the rest of the world. However, the AIA provisions differ from a pure “first to file” system, where generally, an inventor’s own disclosure is an “absolute novelty bar” to the filing of a patent application. Instead, an inventor’s own disclosure, is not prior art against the claimed invention if the disclosure was made one year or less before the effective filing date of the claimed invention. Thus, this exception contrasts from a “pure” first to file system.

As a consequence, applicants cannot “swear behind” using a Rule 131 affidavit, demonstrating prior inventorship and thus, no interference proceedings are available. Instead, effective March 16, 2013, a derivation proceeding will be utilized. In such a proceeding, one must show that the claimed invention was derived from the prior inventor.

Prioritized Examination

Effective September 26, 2011, the AIA allows for a fast-track prioritized examination of a patent application, with expedited allowance of a patent application within one year of filing. Applicants will have to pay extra for this privilege. Currently, the total fees, including the Track I prioritized examination fee, are $3630 for small entities and $6480, for large entities. In addition, applicants must present no more than 4 independent claims and a total of 30 claims.

Ombudsman Program

Effective September 16, 2012, the AIA implements an ombudsman program to provide support and service to inventor and small entities, with respect to issues in patent prosecution.

New provisions available for corporations

The AIA allows a number of important provisions for corporate entities. Effective September 16, 2012, a company will able to file applications in which the inventor has assigned or is under an obligation to assign the invention to the company. Also, in a situation where an inventor cannot be found after diligent effort or is uncooperative in the execution of an oath or declaration, a company can file a substitute statement setting forth the circumstances. Furthermore, some entities, such as universities, will be classified as microentities, and qualify for a 75% reduction of fees. However, the microentity status is effective as of the date of the Act, i.e., September 16, 2011.

Patent Review

The AIA sets in place a number of procedures for review of a patent, during prosecution and after allowance. Effective September 16, 2012, third parties can submit printed publications relevant for examination of a patent application. Third parties can also request review of a patent within nine months of issuance, for possible cancellation of claim. Under such a review, third parties should set forth evidence that supports the grounds for challenging the claim. Besides third parties, patent owners themselves can request supplemental examination of their own patents.

Patent Validity

The AIA includes provisions which impact strategies for patent lawsuits. First, the AIA has eliminated the use of the failure to disclose the best mode for an invention as a manner of invalidating a patent. The best mode requirement requires the inventor to disclose the best mode (e.g., an optimal manner of using or carrying out the invention) in the specification. The AIA still requires disclosure of the best mode; however, failure to do so will no longer be enough, by itself, to invalidate an issued patent. In another example, the AIA has established prior commercial use of the claimed invention as a defense to patent infringement. Such commercial use must have occurred at least one year before the earlier of (1) the effective filing date of the patent application, or (2) the date on which the claimed invention was disclosed to the public, subject to the prior art exception for inventor’s own disclosure, as discussed earlier.

Periodic Review

Although designed to harmonize US patent law and remove frivolous patent litigation, the AIA is not without its detractors.  Some commentators have suggested that a first-to-file system gives an advantage to larger entities that have the capital to afford over-filing, at the expense of small inventors who may labor for years on an invention only to see it patented elsewhere. Possibly for this reason, the AIA mandates a series of reviews, with the first report regarding impact on small businesses, due on September 16, 2012, and an overall AIA implementation report due on September 16, 2015. It remains to be seen what impact that the AIA has on inventors and companies alike.

You may reach Jay at jpattumudi@aboutiplaw.com. For general inquiries regarding our services, please contact info@aboutiplaw.com.

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When a client wishes to use a foreign term as a trademark in the U.S., an advising attorney should consider, not only, for instance, the sight and sound [1] of the proposed trademark, but also its English meaning as would be perceived by U.S. consumers conversant in the foreign language in question. The meaning of the proposed trademark is considered under the so-called doctrine of foreign equivalents, wherein foreign words, at least from non-obscure languages, [2] are translated into their English equivalents and evaluated according to customary trademark standards. [3]

To illustrate the doctrine of foreign equivalents, this article presents examples of foreign terms in key trademarks contexts, such as determining whether a mark is invalid as generically describing the goods or services sought to be trademarked, or is invalid for creating a likelihood of confusion with an existing English-language mark for similar goods or services. For the most part, the trademark examples discussed either relate to commonplace goods or services, or are well-known or famous, to facilitate understanding.

I. Avoid Terms Whose English Meaning Generically Defines the Goods or Services

An English-language term, such as “WINE”, cannot be exclusively appropriated by a merchant in the U.S. as a trademark; otherwise the merchant would be given an unfair monopoly over a generic term that all competitors should be free to use. [4] This principle extends to foreign terms whose English meaning would be perceived by U.S. consumers who are conversant in the foreign language in question as generically defining goods or services. Thus, the Polish-language term “VINKA” for wine cannot be exclusively appropriated by a merchant for use as a trademark; competitors should be free to also refer to their wines as “VINKA.” [5] The practice of considering the English meaning of a foreign-language mark is well-established in U.S. law under the above-mentioned doctrine of foreign equivalents, as shown by the cases discussed herein.

The foregoing term VINKA, and examples of other foreign terms that have been refused trademark protection, are noted in the following table:

Marks that Generically Define Goods or Services are Invalid:

Mark	English Meaning	Goods or Services
VINKA [6]	Wine (Polish)	Wine
KABA [7]	Coffee (Serbian or Ukrainian)	Coffee
[8]	Oriental daily news (Chinese)	Newspapers

II. Avoid Terms Whose English Meaning Merely Describes the Goods or Services

An English language term such as “TASTY” for food merely describes a quality or feature of food. Under U.S. law, all competitors should be free to use such a descriptive term “tasty” for food they sell. Thus, the Italian-language mark “SAPORITO,” which in English means “tasty,” merely describes a quality or feature of sausage, and cannot be trademarked for sausage. [9] The foregoing term SAPORITO and samples of other foreign terms that have been refused trademark protection are noted in the following table:

Marks that Merely Describe Goods or Services are Usually Invalid:

In somewhat rare circumstances, an otherwise descriptive, foreign-language mark can be protected in the U.S. This may occur where, through such means as extensive advertising and use of the mark, consumers come to view the mark as indicating that the trademarked goods or services originate only from the owner of the mark. Such a source-identifying meaning of a mark, created through extensive advertising and use, for instance, is known as “secondary” meaning. Thus, although the mark “VOLKSWAGEN”, meaning “peoples’ car” in German, was held descriptive of a low-priced popular car, it was nonetheless protected since it had acquired a source-identifying, or secondary, meaning to consumers. [14] This is noted in the following table:

Secondary Meaning Avoids Mere-Descriptiveness Infirmity:

III. Fanciful (i.e., Non-Descriptive) Marks are Generally the Strongest

“Fanciful” marks have a meaning so wholly unrelated to the trademarked goods or services that a consumer would fail to find it descriptive of such goods or services. Fanciful marks, accordingly, are stronger, and easier to protect, than marks merely describing a quality of the trademarked goods or services. This principle applies, not only to English-language marks, but foreign-language marks as well. This is illustrated by the foreign-language mark “GIOIA”, meaning “joy” in Italian, for pasta and related non-beverage retail food products. The meaning of the work “joy” is quite unrelated to the trademarked pasta and related food products. A federal district court refused to find that the GIOIA mark was descriptive-in effect finding it fanciful-, and enjoined another merchant from using the mark GIOIA for wines. [16] The foregoing and other fanciful marks that were held valid are noted in the following table:

Fanciful Marks are Generally the Strongest:

IV. “Foreign Article + English Noun” Terms: Generic or Descriptive vs. Fanciful

Although Courts never allow registration of generic marks, they may allow registration of a generic English noun in combination with a foreign article (e.g., “la”, French for “the”). This is based on the principle that such an incongruous combination gives the mark a fanciful flavor, thus rendering it registrable.

A good illustration is found in the term LA YOGURT, which the U.S. Trademark Office Trial and Appeal Board (“the Board”) allowed to register. “Yogurt” is a generic English noun, and was held by the Board to differ from the French generic term for yogurt, which is spelled differently (e.g. “yogourt”). Such English term, coupled with the French article “la”, became unique enough to be perceived by the general public as a distinctive commercial term, and therefore registrable. The Board also determined that such registration did not infringe on competitors’ rights, since they are not restricted from using the generic term “yogurt” without the French article. [20] For most “Article + Noun” terms registered by the U.S. Trademark office see the following table:

Article + Noun Terms that were Granted Registration

Note, in contrast, the term LE SORBET, which was denied registration because too generic. [23] “Le sorbet” is also the correct generic french term and article, and as such does not enjoy the privileges given to an English noun, coupled with an incorrect French article. Further examples of “Article + Noun” terms that were refused registration by the U.S. Trademark Office are noted in the table below:

Article + Noun Terms That were Denied Registration

The attorney should be warned, however, that while the law relating to a foreign article + English noun mark is clear, factual issues may not be. For instance, the dissenting opinion of the U.S. Trademark Trial and Appeal Board (“Board”) in the “LA YOGURT” case, discussed above stated, among other things, that there were many types of spelling of the word “yogurt” that were identical in both English and French. This gave the Board the power to decide that any spelling of “yogurt” could be considered generic, regardless of the correctness of the article placed before it, [27] It is therefore very important that any foreign article + English noun combination be as fanciful as possible.

V. Avoid Terms Whose English Meaning Would Likely Be Confused With an Existing English-Language Mark for Similar Goods or Services

A foreign term whose English translation would likely be confused with an English-language mark for similar goods or services will be rejected by the courts as invalid. Thus, registration of the Spanish-language mark EL SOL for footwear, T-shirts, pants, shorts, and tops was denied under the doctrine of foreign equivalents, the mark being held confusingly similar to the English-language trademark SUN, employed for footwear. [28]

The foregoing, and other, foreign-language marks deemed invalid because their English meanings would likely be confused with existing English-language marks for similar goods or services are noted below:

Avoid Terms Whose English Meaning Would Likely Be Confused with an Existing English-Language Mark for Similar Goods or Services:

VI. Alternative Ways to Protect Marks: Show Translation Discrepancies or Substantial Misspellings

The owner of a foreign-language trademark which is at risk of being considered generic or merely descriptive has some options available. The owner can sometimes successfully retain rights in the mark by showing that its English meaning fails to clearly embrace a generic or descriptive term. Thus, the owner of the Spanish-language trademark “LA POSADA,” for lodging and restaurant services, was able to register such mark, even though “POSADA” translates as a lodging-house, inn, small hotel or lodging, [33] and “LA POSADA,” as “the inn.” The owner, however, was able to show that “POSADA” has the alternative meaning of a person’s home or dwelling. Since “LA POSADA,” thus, “has a connotative flavor [or meaning] which is slightly different from that of the words ‘the inn’ “, [34] registration was allowed.

Another option available to a trademark owner whose foreign-language mark is at risk of being considered generic or merely descriptive is to alter the spelling of the mark so that it would not be recognized as generic or descriptive by those conversant in the language in question. The alteration, however, must be quite substantial. Hence, insufficient alteration was found in the trademark “AIROMATIQUE”, for toilet water (e.g. cologne). Such mark was held to be the mere misspelling (or phonetic equivalent) of the French term “AROMATIQUE”, whose English equivalent, “AROMATIC,” means fragrant or spicy. [35] As such, the mark “AIROMATIQUE” was considered merely descriptive of toilet water, despite the trademark owner’s counter-argument that the mark “AIROMATIQUE” suggests, instead, the method of dispensing the toilet water as automatically by air (i.e. a spray). [36]

Conclusion

An attorney evaluating the validity of a U.S. trademark that uses a foreign-language term should be cognizant of the doctrine of foreign equivalents. Under the doctrine, foreign terms are translated into their English equivalents, and then evaluated in regard to customary trademark standards. Thus, to be valid, the English equivalent of a foreign-language mark should not generically define the trademarked goods or services, or be merely descriptive of such goods or services. Additionally, to be valid, an English-language equivalent of a foreign term should not create a likelihood of confusion with an existing English-language mark for similar goods or services.

[1] E.g., in re SarkH, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983) (sight and sound are relevant factors in assessing likelihood of confusion).

[2] It has been cogently argued that the doctrine of foreign equivalents fails to apply to non-English language terms from an obscure or “dead” language. See, generally, e.g., 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAlR COMPET1TION, § 12.13[1], at 12-81 (3d ed. 1992).

[3] Volkswagenwerk Aktiengesellschaft v. Church, 256 F. Supp. 626, 629 150 USPQ 338, 340 (S.D. Cal. 1966), affd, 411 F.2d 350, 161 USPQ 769 (9th Cir. 1969; accord Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1531, 224 USPQ 185, 191 (4th Cir. 1984).

[4] See, e.g., In re Le Sorbet, Inc., 228 USPQ 27, 30 (TTAB 1985) (citing authorities).
571

[5] Ex parte Monarch Wine Company of Georgia, 117 USPQ 454 (Comm’r of Patents 1958).

[6] Id.

[7] In re Hag Aktiengesellschaft, 155 USPQ 598 (!TAB 1967).

[8] In re Oriental Daily News, 230 USPQ 637 (!TAB 1986).

[9] In re Geo. A. Hormel & Company, 227 USPQ 813 (!TAB 1985).

[10] Id.

[11] Supra note 4, 228 USPQ at 27-28.

[12] In ‘re Westbrae Natural Foods, Inc., 211 USPQ 642 (TIAB 1981).

[13] In re Zazzara, 156 USPQ 348 (TIAB 1967).

[14] Volkswagenwerk Akliengesellschaft v. Church, 256 F. Supp. 626, 629, 150 USPQ 338, 340 (S.D. Cal. 1966), affd, 411 F.2d 350, 161 USPQ 769 (9th Cir. 1969).

[15] Id.

[16] Gioia Macaroni Company, Inc. v. Joseph Victori Wines, 205 USPQ 986 (E.D.N.Y. 1979).

[17] Id.

[18] Cf. California Packing Corp. v. Tillman & Bendell, Inc., 40 F.2d 108 (C.C.P.A. 1930) (upholding right of owner of DEL MONTE trademark for canned, dried or preserved food products to oppose registration of DEL MONTE for canned coffee-a beverage).

[19] Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1534-35, 224 USPQ 185, 192·93 (4th Cir. 1984).

[20] In re Johanna Farms Inc.• 8 USPQ 2d 1408 (TIAB 1988).

[21] Id.

[22] In re Universal Package Corp.• 222 USPQ 344 (TIAB 1984).

[23] In re Le Sorbet, Inc., 228 USPQ 27 (!TAB 1985).

[24] In re Bonni Keller Collections, 6 USPQ 2d 1224, (TIAB 1987).

[25] Supra note 23.

[26] In re France Croissant Ltd., 1 USPQ 2d 1238 (TIAB 1986). 1950).

[27] Supra note 20.

[28] In re Hub Distributing, Inc., 218 USPQ 284 (ITAB 1983).

[29] Id.

[30] In re Ithaca Industries, Inc., 230 USPQ 702 (ITAB 1986).

[31] In re American Safety Razor Co., 2 USPQ2d 1459 (ITAB 1987) (similarly marketed goods: bar soap and shaving cream).

[32] In re Maclin-Zimmer-McGill Tobacco Co., Inc., 262 F. 635 (D.C. Cir. 1920) (identical goods: both tobacco).

[33] In re Pan Tex Hotel Corp., 190 USPQ 109, 109 (ITAB 1976).

[34] ld. at 110.

[35] In re Jacq1.!eline Cochran, Inc., 196 USPQ 715, 716 (ITAB 1977).

[36] ld. at 715.

This article is based on a talk given by the author on January 17, 1991 to members of the examining corps of the U.S. Patent & Trademark Office. It has been revised to respond to concerns raised at the talk.

About 200 patents on computer software are issued annually by the U.S. Patent & Trademark Office (PTO). [1] Patent claims on computer software frequently recite a mathematical algorithm, or, equivalently, a mathematical formula, [2] which is judicially defined as a “procedure for solving a given type of mathematical problem.” [3]

The patent examining corps has the opportunity to greatly assist in clarifying the standard for determining when a claim reciting a mathematical algorithm is acceptable. This can be done by rejecting overbroad claims under 35 U.S.C. §112, 1st ¶. By an “overbroad” claim is meant a claim whose scope exceeds the “enabling” disclosure of the patent specification, required by §112, 1st ¶. [4]

It is well settled that overbroad claims fail to satisfy 35 U.S.C. §112, 1st ¶. [5] This article points out that the Supreme Court in Gottschalk v. Benson, i.e., the Benson Court, [6] considering claims reciting a mathematical algorithm, applied and discussed the test of avoiding overbroad claims. The article next explains the touchstone of why claims on “transforming or reducing” processes are acceptable, based on prescient reasoning in Benson. Lastly, the article points out why Benson’s test of avoiding overbroad claims facilitates the elusive search for “apparatus” language to make claims per se acceptable.

Currently, claims reciting a mathematical algorithm and being broad in scope have been rejected only under 35 U.S.C. §101, which specifies classes of subject matter eligible for patent protection. [7] Benson’s test of avoiding overbroad claims makes the §101 analysis more precise, by openly considering disclosure scope.

I. Avoiding Overbroad Claims-A Precise, Thorough Test Applied in Gottschalk v. Benson

Gottschalk v. Benson [8] is a landmark case on the acceptability of patent claims reciting a mathematical algorithm. Interest in the case was intense: fourteen amicus briefs on behalf of the computer hardware and software industries and various bar associations were filed with the court. [9] Out of such intense interest arose an opinion submitted as illuminating, due to insightful analyses.

At issue in Benson was the acceptability of claims reciting a mathematical algorithm for converting numbers from one form to another. Claim 8, for instance, which is reproduced at the end of this section, sets forth a “method of converting signals from binary coded decimal formula to binary. ” The disclosure supporting the claims ” related ‘to the processing of data by program and more particularly to the programmed conversion of numerical information’ in general-purpose digital computers’” [10] -apparently the only disclosed embodiment.

A. Comparing Claim Scope to Disclosure Scope

The Benson Court considered the claims as especially broad in scope; it declared that:

Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may *** vary from the operation of a train to verification of drivers’ licenses to research in the law books for precedents***. [11]

The Benson Court viewed the claims as “not limited *** to any particular apparatus or machinery”[12] – i.e. not limited to the disclosed general purpose digital computer. Unmistakenly, the Benson Court directly compared claim and disclosure scopes, pointing out that the claimed end use “may *** be performed through *** future-devised machinery or without any apparatus” [13] – i.e. methods or means beyond the scope of the disclosure.

B. Delineating the Ills of Overbroad Claims

That the claims were far broader than the single disclosed embodiment of a programmed general purpose digital computer is manifest. Lest there be any doubt, the Benson Court immediately proceeds to describe the ills of overbroad claims, most pointedly with respect
to O’Reilly v. Morse. [14]

As noted by the Benson Court, O’Reilly v. Morse concerned a patent to Morse for a process of using electro-magnetism to produce distinguishable signs for telegraphy. Morse was allowed the patent except for the eighth claim, which rather brazenly sought to cover even non-disclosed embodiments. The claim recited the use of “electro-magnetism” however developed for marking or printing intelligible characters, signs, or letters at any distance.” [15] The Benson Court expounded the fundamental ills of the eighth claim, and zeroed in on its overbroad nature, quoting from O’Reilly v. Morse:

“If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we know some future inventor, in the onward march of science” may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the *** specification. His invention may be less complicated-less liable to get out of order-less expensive in construction, and its operation. But yet if it is covered by this patent the [future] inventor could not use it, nor the public have the benefit of it without the permission of the patentee.”[16]

Benson’s analysis of the overbroad claims at issue was precise and thorough, contrasting claim and disclosure scopes, and delineating the fundamental ills of allowing overbroad claims.

C. Adding Precision to Benson’s “Nutshell” Holding

The Benson Court also gave a “nutshell” conclusion, holding that the claims were objectionable because they “would wholly preempt the mathematical formula and in practical effect would [improperly cover] the algorithm itself.” [17] The scope of the claims are at issue with such test; but is the scope of the disclosure also at issue?

“Yes”-according to Benson’s test of avoiding overbroad claims. Reading the nutshell holding in this way gives it more depth and precision, clarifying that the scope of the disclosure is at issue.

Not surprisingly, courts have considered the scope of disclosure, especially when glaringly deficient. Thus in Parker v. Flook [18], the Supreme Court noted:

The patent application does not purport to explain how to select the appropriate margin of safety, the weighting factor, or any of the other variables. Nor does it purport to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit. [19]

Subsequently, the Supreme Court, in Diamond v. Diehr,[20] essentially reiterated the foregoing consideration of disclosure scope by the Flook Court, in distinguishing Flook. [21] More recently, in In re Grams [22], the Court of Appeals for the Federal Circuit also considered disclosure scope:

The specification does not bulge with disclosure. To the contrary, it focuses on the algorithm itself, although it briefly refers to, without describing, the clinical tests that provide data. [23]

Considering disclosure scope-in addition to claim scope-is central to avoiding overbroad claims.

Claim 8 at Issue in Gottschalk v. Benson

8. The method of converting signals from binary coded decimal form into binary which comprises the steps of

(1) storing the binary coded decimal signals in a reentrant shift register,
(2) shifting the signals to the right by at least three places, until there is a binary ’1′ in the second position of said register,
(3) masking out said binary ’1′ in said second position of said register,
(4) adding a binary’ l’ to the first position of said register,
(5) shifting the signals to the left by two positions,
(6) adding a ’1′ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘I’ in the second position of said register.

II. Benson’s Clarification of Why “Transforming or Reducing” Claims Are Acceptable

A. The “Transforming or Reducing Test”

In Diamond v. Diehr, [24] the Supreme Court ruled, in an often-applied holding, [25] that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula ***.” [26] A generic example of an “otherwise statutory” claim, according to Diehr, is “transforming or reducing an article to a different state or thing.” [27] In Diehr, the specific “transforming or reducing” was a molding process for transforming raw, uncured synthetic rubber into cured precision products. [28]

In In re Taner, [29] the Court of Customs and Patent Appeals considered “transforming or reducing” an “article” far more ephemeral than rubber: i.e. seismic signals. In that case, a claimed technique of seismic prospecting “involv[ed]“-according to the court-”the taking of substantially spherical seismic signals obtained in conventional seismic exploration and converting *** those signals into another form.” [30]

But what if a claim cannot readily be construed as transforming or reducing an article-Diehr’s example of an “otherwise statutory” claim?

B. Confining Claims to “Definite Bounds”

Again, Benson is illuminating. In reasoning why claims on traditional arts such as tanning, dyeing or vulcanizing rubber are acceptable, Benson pointed out the touchstone feature that made them acceptable:

The chemical process or the physical acts which transform the raw material, are *** sufficiently definite to confine the patent monopoly within rather definite bounds. [31]

In this respect Benson is prescient, anticipating the Diehr Court’s similar view of claim recitations that confine a claim within “definite bounds”:

[Applicants] seek only to foreclose from others the use of [a claimed mathematical] equation in conjunction with all of the other steps in their claimed process. These include installing the rubber in a press, closing the mold, constantly determining the temperature of the mold, [etc.]. [32]

Thus, the touchstone feature of an effective limitation is that it confines the claim within “definite bounds,” rather than necessarily defining a transforming or reducing process. Accordingly, any nonmathematical limitations that serve to so confine a claim should make the claim acceptable where such limitations also avoid the claim being claim overbroad. [33]

III. Facilitating the Elusive Search for Claim Language that is Per Se Acceptable

Method claims, such as those at issue in Gottschalk v. Benson, [34] are nominally analyzed to see if they are “statutory” under 35 U.S.C. §101 [35]. Benson’s test of avoiding overbroad claims, however, is also grounded on the “enablement” provision of 35 U.S.C. §112, [36] although sub silentio. A question facing the practitioner is whether claims in “apparatus” format should also pass Benson’s test of avoiding overbroad claims. Since compliance with §112 is a prerequisite to patent validity, [37] apparatus claims should also comply with §112.

A. The Search for “Truly” Structural Limitations

Treatment of §101 issues by lower courts, which is similar to Benson’s sub silentio §112 treatment at least insofar as both consider claim scope, suggests, somewhat elusively, that claims “truly” in apparatus format might be per se acceptable under §101. Thus, for instance, the court in In re Freeman [38] stated in dictum that:

A claim to a new, useful, and unobvious computer, describing that computer in truly structural terms, would not be rejectable on the ground that the only known use for that computer is the performance of unpatentable methods of calculation.[39] Hence, the real issue is: when is a claim so phrased as to be truly “apparatus” for §101 purposes. Such issue is not fully resolved.

B. Claims Entirely in “Means Plus Function” Form

Thus, as regards apparatus claims drafted entirely with “means plus function” limitations, allowed by 35 U.S.C. §112, 6th ¶ [40], the PTO publicly takes the position that such “means” claims may well “[encompass] any and every means for performing the recited function,” [41] in which case they will be treated as broad as a corresponding method for §101 purposes. [42] “[T]he burden must be placed on the applicant to demonstrate that the claims are truly drawn to specific apparatus,” states the PTO [43], quoting from In re Walter. [44]

Contrary comments concerning such “means plus function” claims appear in In re Iwahashi, [45] which states that each “means” element “‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’” [46] This is more restrictive than the PTO urges. These contrary comments are interpreted by the PTO, however, as merely dicta. [47]

C. “Means Plus Function” Claims Also Reciting Specific Apparatus

Further, Iwahashi, found acceptable under §101 a claim partly reciting “means plus function” elements and partly reciting a “specific piece of apparatus”-i.e. a read only memory. The claim was held to define an “apparatus in the form of a combination of interrelated means,” which “operates according to an algorithm.” [48]

The PTO, however, asserts that “Iwahashi does not ‘hold that the mere presence of apparatus language in a claim will save that claim from rejection as nonstatutory.’” [49] It reasons that-as stated above-the applicant still has the burden of demonstrating that the claims are truly drawn to specific apparatus. [50]

D. Analyzing Both Claim and Disclosure Scopes

The issue thus remains in §101 analysis of when is a claim truly drawn to apparatus. A more insightful analysis can be made by applying Benson’s sub silentio §112 test of avoiding overbroad claims, which, by openly considering disclosure scope, is more precise.

IV. Conclusion

A claim reciting a mathematical algorithm and being overbroad- Leo broader in scope than the enabling disclosure-should be rejected as failing to meet the enablement requirement of 35 U.S.C. §112. This is in accord with the Supreme Court, in Gottschalk v. Benson, [51] applying and discussing the test of avoiding overbroad claims (“Benson’s overbreadth test”). Such test, nominally based on 35 U.S.C. §101, is also based, sub silentio, on §112. Thus, a claim meeting Benson’s overbreadth test satisfies both §101 and the enablement requirement of §112. Overbroad claims can be avoided by including nonmathematical limitations confining the claims to definite bounds, and to the enabled disclosure. Lastly, the elusive search for claim language that will per se make a claim acceptable is facilitated by applying the precise, thorough test of avoiding overbroad claims.

[1] Hamilton, Can Electronic Property Be Protected?, 253 SCIENCE 23 (July 5, 1991) (estimate by the State Bar of Texas).

[2] See e.g., Parker v. Flook, 437 U.S. 584, 586, 198 USPQ 193, 195 (1978).

[3] Gottschalk v. Benson, 409 U.S. 63, 65, 175 USPQ 673, 674 (1972), cited with approval in Parker v. Flook, supra note 2, 437 U.S. at 585 n.1, 198 USPQ at 195 n.1 (1978), and in Diamond v. Diehr, 450 U.S. 175, 186, 209 USPQ 1, 8 (1981).

[4] Section §112, 1st ¶ requires a patent “specification [to] contain a written description of the invention, and of the manner and process of making and using it, in such *** terms as to enable any person skilled in the art *** to make and use the same.”

[5] E.g., In re Hyatt, 708 F.2d 712, 714-15, 218 USPQ 195, 197 (Fed. Cir. 1983); In re Borkowski, 422 F.2d 904, 909-910, 164 USPQ 642, 645-46 (CCPA 1970).

[6] Supra note 3.

[7] The so-called “statutory” classes of subject matter set forth in §101 are “process, machine, manufacture, or composition of matter.”

[8] Supra note 3.

[9] Supra note 3, 409 U.S. at 73 n.7, 175 USPQ at 677 n.7.

[10] Supra note 3, 409 U.S. at 64, 175 USPQ at 674, quoting from the record.

[11] Supra note 3, 409 U.S. at 68, 175 USPQ at 675.

[12] Supra note 3, 409 U.S. at 64, 175 USPQ at 674.

[13] Supra note 3, 409 U.S. at 68, 175 USPQ at 675.

[14] U.S. 65 (15 How. 62)(1853).

[15] Supra note 3, 409 U.S. at 68, 175 USPQ at 675 (emphasis added).

[16] Supra note 3, 409 U.S. at 68, 175 USPQ at 675, quoting from O’Reilly v. Morse, supra note 14, 56 U.S. at 119-120 (15 How. at 113) (emphasis added).

[17] Supra note 3, 409 U.S. at 71-72, 175 USPQ at 676.

[18] Supra note 2.

[19] Supra note 2, 437 U.S. at 586, 198 USPQ at 195.

[20] Supra note 3.

[21] Supra note 3, 450 U.S. at 192 n.14, 209 USPQ at 10 n.14.

[22] 888 F.2d 835, 12 USPQ2d 1824 (Fed. Cir.1989).

[23] Id. at 840, 12 USPQ2d at 1828.

[24] Supra note 3.

[25] In re Grams, supra note 22, 888 F.2d at 839, 12 USPQ2d at 1827; In re Abele, 684 F.2d 902, 907, 214 USPQ 682, 686 (CCPA 1982); and In re Taner, 681 F.2d 787, 791, 214 USPQ 678, 681 (CCPA 1982).

[26] Supra note 3, 450 U.S. at 187, 209 USPQ at 8 (emphasis added).

[27] Supra note 3, 450 U.S. at 192, 209 USPQ at 10.

[28] Supra note 3, 450 U.S. at 177, 209 USPQ at 4.

[29] Supra note 25.

[30] Supra note 25, 681 F.2d at 790, 214 USPQ at 681.

[31] Supra note 3, 409 U.S. at 69, 175 USPQ at 676 (emphasis added).

[32] Supra note 3, 450 U.S. at 187, 209 USPQ at 8 (emphasis added).

[33] See Section I above.

[34] Supra note 3.

[35] Supra note 7.

[36] Supra note 4.

[37] See In re Hyatt, supra note 5; In re Borkowski, supra note 5.

[38] 573 F.2d 1237, 197 USPQ 464 (CCPA 1978).

[39] Id. at 1247 n. 10, 197 USPQ at 472 n. 10 (emphasis added).

[40] Section §112, 6th ¶ permits “an element in a claim for a combination [to] be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.”

[41] Notice Interpreting In Re Iwahashi (Fed. Cir. 1989), 1112 Official Gazelle 16, 17 (March 13, 1990) (emphasis added).

[42] Id. at 17.

[43] Id.

[44] 618 F.2d 758, 768,205 USPQ 397, 408 (CCPA 1980).

[45] 888 F.2d 1370, 1375 & 1375 n.1, 12 USPQ2d 1908, 1911-12 & 1912 n.1 (Fed. Cir. 1989).

[46] Quoting from 35 U.S.C. §112, 6th ¶.

[47] Supra note 41 at 16-17.

[48] Supra note 45,888 F.2d at 1375, 12 USPQ at 1911.

[49] Supra note 41 at 16-17, quoting from In re Freeman, supra note 38.

[50] Supra note 41 at 17.

[51] Supra note 3.