Florida Patent Lawyer Blog

Last night I had the pleasure of attending a South Florida Intellectual Property Law dinner in Miami, Florida that featured a presentation by Commissioner Robert Stoll. Super nice guy, by the way. In a word, he killed. He knew exactly what to present to a group of patent practitioners and he has really changed my outlook regarding the Patent Office. Just some of the good news he presented:
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• a program to decrease pendency to first action to 10 months


• a program to decrease TOTAL pendency to 20 months


• a First Action Interview program to encourage Examiner's to initiate an interview after the first search but before the first action is entered


• hiring 1,000 Examiners this fiscal year and another 1,000 next fiscal year (yes, that's three zeros)

Of course, as a full-time patent practitioner I was ecstatic to hear that one day I may get a first office action 10 months after filing a utility patent application. In my ten years practicing, I've seen that only once. And to think that I could get a call from an Examiner BEFORE the first office action! That would greatly facilitate getting cases to final resolution quickly. Theoretically, if these programs were fully implemented, you could file a patent application on Jan. 1 and you could have an issued patent in the same year. If I could tell my clients they could potentially have an issued patent within one year, I think they'd want to file many more patent applications. Thus, if these programs stay on course, the USPTO can expect increased filings.

In short, Commissioner Stoll's programs are aiming to reduce unnecessary back-and-forth between practitioners and the USPTO and to expedite the process of getting to final resolution. For that reason, his programs are immensely popular, especially among us patent attorneys.

As a side note, Commissioner Stoll came off as a supremely cool spokesperson for the Office, deftly handling complaints about the USPTO from attendees while focusing on his agenda to improve the USPTO. From a practitioner standpoint, we should support Bob Stoll's programs, as they will make patent prosecution easier for us and surely increase business.

What happens when you only disclose a larger range of values in the specification and later amend the claims to recite a smaller range of values encompassed by the larger range? Do you run into a 112 written description problem? That was the issue in today's Ex Parte Moraes Barros (BPAI 2010-006399) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Florida Patent Attorney, I stay updated on the latest decisions of the BPAI, so as to provide my clients with the best representation on appeal.

In the Moraes Barros case, the Applicant claimed a chemical composition that recited a range of values for a chemical. The problem is that the specification only disclosed a larger range that encompassed the smaller range that was recited. Consequently, the Patent Examiner rejected the smaller range under the 112 written description requirement because he believed there was no support for the smaller range.

The BPAI reasoned: "The original disclosure of a broader range may support the recitation of a narrower range, even though the narrower range had not been explicitly disclosed. In re Wertheim, 541 F.2d 257, 262-63 (CCPA 1976). However, as noted in Wertheim, determination of questions relating to the written description requirement depend upon the facts of each particular case (id.) ... We note that a range is a shorthand format for presenting information, where the range is understood to encompass each discrete point." In light of the above, the BPAI agreed that the smaller range was adequately disclosed in the specification and thus reversed the Examiner's 112 rejection of the claims.

The educational moment in this case is the fact that, at least when it comes to 112 rejections based on the written description requirement, you need not disclose each and every permutation of a range of values when writing a chemical application. A well-crafted description of a range of values should suffice.

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO)issued another decision evidencing how enormously difficult it is to invalidate a trademark registration on the basis of fraud on the USPTO. In the decision of MCI Foods v. Brady Bunte (TTAB 92046056), the TTAB found that a knowingly overly-expansive description of goods and services did not constitute fraud on the USPTO. As a Miami Trademark Lawyer with a full docket of trademark disputes, this case is instructive in its exposition of the law surrounding fraud on the USPTO.

The registrant owned a federal trademark registration for CABO PRIMO in association with a plethora of Mexican foods, such as burritos, tortillas, tacos, etc. The problem is that the registrant had ONLY used the mark in association with burritos. And the registrant testified to this in his deposition. That is, he admitted that he had not used the mark with any other products other than burritos. You'd think this would constitute fraud on the USPTO, wouldn't you? No.

The TTAB held: "While MCI sought to obtain a registration covering as broad a description of goods as possible despite the fact that it was not using the mark on all the goods listed in the description of goods, there is no evidence or testimony indicating that MCI was advised that it could not or should not apply for Mexican food products not identified by its ... mark." Consequently, the TTAB allowed the registration to stand and merely restricted the registration to burritos only. That is, the TTAB deleted all other goods, except for burritos, from the registration, which remained valid.

The educational moment here is how Courts respond when there is a misrepresentation during trademark prosecution that does not rise to the level of fraud on the USPTO. The answer is restriction of the registration - not invalidation of the registration. This and recent decisions of the TTAB seem to indicate that it's practically impossible today to invalidate a registration based on fraud on the USPTO. Restriction of the registration is more likely.