America-Israel Patent Law

What Part of “May” Doesn’t the Commissioner Get? (This Post Does NOT Pertain to Bilski)

If you’re looking for comments on the much-anticipated U.S. Supreme Court decision in In re Bilski, which is expected to be released this morning, you’ve come to the wrong place.  If you want a non-Bilski post, keep reading.

 

As in US law, the Israel patent statute imposes a duty of candor on applicants for patents.  The law also empowers the Commissioner to ask applicants to provide certain information, in order to assist the examining corps in examining applications.  Hitherto, in accordance with the relevant statutory and regulatory provisions, the practice has been for the ILPTO to send a letter to applicants a few months before examination commences, asking them provide lists of prior art cited against corresponding applications elsewhere.  In the case of X- and Y-level references from PCT search reports, applicants have also been asked to provide copies of such references on a CD-ROM.

 

Several months ago, the Israel Commissioner of Patents published a notice which stated that, beginning July 1, 2010, applicants would be required not only to submit lists of prior art cited elsewhere, but also (a) copies of office actions from other countries, and (b) copies of the applicants’ responses to those OAs.  Failure to comply, the notice stated, would be deemed a failure to respond to the pre-examination letter (an omission that will eventually result in the application going abandoned).

 

The imposition of this requirement was ostensibly to help the ILPTO do its job and to reduce redundant work efforts.  Nevertheless, the requirement caused consternation among local patent practitioners, in that, as worded, it would have significantly raised the costs of patent prosecution in Israel, at least for those applicants with large numbers of corresponding applications (such as multinational companies).  Moreover, as I’ve mentioned in an earlier post or two, the Commissioner isn’t empowered to make such a requirement.  But more on that below.

 

Yesterday, for reasons unstated but apparently in response to comments from different quarters, the Commissioner backtracked a bit.  He announced that the new requirement would not come into force on July 1.  Instead, he published a revised version of the notice, which he called a draft, and asked that comments on the draft notice be sent by July 11 to [email protected].  It is hoped that the ILPTO will publish the comments it receives.  Translated into English, the revised draft notice reads as follows:

 

1. Section 18 of the Patents Act allows an examiner to use for assistance the search and examination reports of foreign patent authorities that examined patent applications for the same invention.

 

2. Rule 36(2) of the Patents Regulations states that the applicant “may append to its answer the documents submitted by it or by its predecessor in ownership rights, to the same authority in reply to the objections raised against the application filed there”. 

 

3. The goal of these legislative instructions is, inter alia, to save office resources, to improve the efficiency of examination and to reduce pendency.

 

4. In many cases, this goal is not fully realized, as the Israel examiner is compelled to raise anew objections that were raised by foreign patent examiners and replied to by the applicant, by way of amendment of the claims or by dealing with the objection in another manner.

 

5. In order to increase the efficiency of examination to benefit the general public, beginning with the coming into force of this notice the applicant shall append to his answer to the demand per Section 18 of the Act his comments on references cited against the novelty or inventive step in the corresponding application or the PCT application, as follows:

 

A. The applicant shall transmit to the office his answer to the international search report, if he submitted such an answer to the international search and preliminary examination authority.

 

B. The applicant shall submit one answer only to each citation, in English or Hebrew, as he chooses. 

 

C. Per section 18A of the Act, during examination the applicant must update the office regarding any additional citation made in a foreign patent office.  To the extent the prior art was cited against the novelty or inventive step, the applicant must provide a copy of his answer to the citation, as submitted to the foreign patent office, if the answer is in English.

 

6. Non-submission of comments as recited in the preceding paragraph 5 is as if no reply to a Section 18 demand was filed. 

 

7. The wording of the section 18 demand will be revised in accordance with this notice.

 

8. This notice shall come into force on __ (three months the final version of the notice is published on the office’s web site).

 

There are a number of difficulties with this proposal, from both a legal and a policy perspective.  Today I’m going to discuss the legal perspective; observations on the policy issues will follow in a subsequent post. 

 

For starters, the proposed notice relies on Rule 36(2) of the implementing regulations.  Unlike the Patent Rules in the USA, which are promulgated by the USPTO itself (in accordance with the Administrative Procedures Act), the regulations in Israel are established by the Justice Minister, and thus, unlike the USPTO, the ILPTO is not afforded deference in its interpretation of the rules.  Rule 36 reads as follows (again, translated from the original Hebrew):

 

Demand of References

 

36.       The following rules will apply to a demand per §18(a)(2) of the statute:

 

(1)     Approximately four months before examination of the application will commence, the Commissioner will send a notice to the applicant in which he will demand of the applicant the following particulars:

 

(a) The lands [should probably say “countries” per (b) following – DJF] in which protection for the invention which is the subject of the application was sought by the applicant or its predecessor in ownership rights;

 

(b) The references upon which the authority relied in the aforementioned country in which the application was examined;

 

(2)    The applicant must answer the demand within four months from being asked to do so, and may append to its answer the documents submitted by it or by its predecessor in ownership rights, to the same authority in reply to the objections raised against the application filed there; if said documents are written in a language which is not an official language, the applicant will append to them a translation into an official language;

 

(3)    If in the applicant’s answer per paragraph (2) there were mentioned references which are specifications of patents, designs, or utility models or other documents which have not been offered for sale to the public, the Commissioner may demand a copy of them if they are not in the possession of the office.

 

As explained in its first line, Rule 36 comes to set forth the implementation of Section 18(a) of the statute.  There’s just one problem with that: there is no section 18(a) in the statute!  Huh?! 

 

Well, Rule 36(2) was enacted in 1968, following the adoption of the statute itself in 1967.  As enacted, the statute indeed contained a section 18(a), which in translation read as follows:

 

18. (a)   In applications of certain classes which will be prescribed, the Commissioner or an examiner may utilize for the examination the following additional means:

 

(1)   To transmit the application to an international institution with which the state has contracted for the sake of searching for material that enables said examination;

 

(2)  To demand that the applicant provide the list of references upon which a foreign patent office relied during examination of an application for the same invention which was filed in that country by the applicant or its predecessor in ownership right in the invention. * * *

 

But in 1995, §18 was amended, and §§18A, 18B and 18C were inserted.  These are written in Hebrew and in translation read as follows:

 

18. Additional Means of Examination (Amendment: 1995)

 

The examiner will utilize at least one of the following additional means of examination:

 

(1)    The list of references upon which any foreign patent authority relied in examining a patent application for the same invention which was filed in the foreign country by the applicant or the applicant’s predecessor in ownership rights in the invention;

 

(2)    A list of publications which were published before the application date, known to the applicant and directly touching upon [alternative translation: pertaining to] the invention;

 

(3)    Copies of publications and references that the applicant is required to list [for the ILPTO] in accordance with this section, if the examiner requests such copies;

 

(4)        Copies of publications and references that are mentioned in publications and references that the applicant is required to list [for the ILPTO] in accordance with this section, if the examiner requests such copies;

 

(5)        Transfer of a copy of the application, for purposes of searching for material that will enable the office to examine, to an institution in Israel or abroad, with which the office has contracted in accordance with any statute in a contract drafted by the Commissioner and that includes a section pertaining to the maintenance of secrecy of patent applications and non-disclosure of information, in accordance with §165 [of the patent statute];

 

and to this end he may do one or more of the following:

 

(1)     demand that the applicant to produce any of the documents listed in paragraphs (1) to (4) above;

 

(2)    transfer the application for the sake of searching as stated in paragraph (5).

 

18A. Obligation of the Application to Update the Office (Amendment: 1995)

 

Until the application is accepted [i.e. allowed and published for purposes of pre-grant opposition - DJF], the application is obligated to update the office regarding any change that occurs in the list of references or publications enumerated in Section 18, if the changes were brought to its attention or the attention of its attorney.

 

18B. Notice of the Institutions Assisting in Examination (Amendment: 1995)

 

The Commissioner shall publish in the official publications journal [the equivalent of the Federal Register – DJF] a notice of the institutions with which the office has contracted per §18(3) and the types of applications with regard to which he plans to use the [search] means enumerated in said section.

 

18C.  Means of Enforcement With Regard to The Examination Process (Amendment: 1995)

 

If a misleading particular was transmitted in the applicant’s answer to a demand per §18, or if the applicant knowingly did not update the office regarding any substantive change in the list of documents or the publications that he is required to update per §18A, and a patent was granted on the application, or the application was accepted [i.e. allowed and published for purposes of pre-grant opposition - DJF] –

 

(1)     The Court or the Commissioner, in a proceeding before them, may do one or more of the following:

(a) cancel the patent or not grant a patent;

(b)    grant a license to exploit the patent to anyone who desires such, as if the Court or Commissioner comes in the stead of the patentee, under conditions agreed upon by the parties, and in the absence of such agreement, by the hand of the Court or Commissioner, in accordance with the matter;

(c)   order a shortening of the term of the patent.

 

(2)   The Court may impose on the transmittor of the misleading particular or the person who knowingly did not update the list of documents or publications, in accordance with the matter, a fine as set forth in section 61(a)(1) of the Penal Statute, 5737-1977.

 

While the amended §18 is in some ways similar to the old §18, it is nevertheless different (otherwise why bother to amend the statute at all?).  And it doesn’t contain a subsection (a). 

 

To people used to Israeli bureaucracy, it’s not terribly surprising that in the 15 years since section 18 was amended, the Justice Ministry hasn’t managed to update the regulations accordingly.  Nevertheless, from a strictly technical standpoint, Rule 36 has no legal force, as it comes to implement a statutory provision that no longer exists.  So from a legal standpoint, the Commissioner’s using Rule 36 as basis for his new proposed policy isn’t tenable.

 

Interestingly, one wonders if the Commissioner isn’t aware of this difficulty: in the nearly 15 years since amended §18 and new §§18A-18C came into force, the ILPTO has continued to send out demand letters as described in Rule 36, but those letters don’t refer to Rule 36.  Rather, they refer directly to amended section 18, which clearly states that the Commissioner has the power to require applicants to provide him with lists of prior art cited in corresponding cases in foreign jurisdictions.  So perhaps the Commissioner realizes that Rule 36 is dead – which raises the question, why does he now refer to a dead rule in support of his attempt to impose new reporting requirements on applicants?

 

Nevertheless, for the sake of argument, let’s assume that Rule 36 didn’t die that day in July 1995 when amended §18 and new §§18A-18C took hold.  Rule 36(2) states that the applicant MAY provide copies of its arguments submitted in response to foreign OAs.  There’s no ambiguity in the Hebrew term used, “reshai” (רשאי) – it means may, as in, is at liberty to.  It’s at the APPLICANT’S discretion to submit such documents.  What part of “may” doesn’t the Commissioner understand? 

 

There is nothing in Rule 36 that gives the Commissioner the power to require that applicants submit copies of foreign OAs, let alone their replies to such foreign OAs.  And there’s nothing in §§18-18C that gives the Commissioner such power, or that empower the Justice Minister to give the Commissioner such power.  In this respect, the new version of this notice – the third one circulated by the Commissioner – is just as defective as its previous incarnations.  If the Commissioner wants to impose such a requirement on applicants, he’s going to require new legislation from the Knesset.  This isn’t a change that can come about via a bureaucrat’s fiat.

 

At least in this draft, the requirement only applies to English-language responses.  The two earlier versions of the notice, had they come into force, would have required the submission of all responses worldwide; presumably it would have been necessary to translate non-English language responses into English or Hebrew.  Even in this regard, the present draft is wanting: as discussed in an earlier post, Arabic is an official language in Israel, so the requirement in draft paragraph 5B that responses be submitted in English or Hebrew – and by implication, not Arabic – is also ultra vires.

 

(As a minor aside, I’d also mention that there is what appears to be a typo in the official Hebrew version of Rule 36 that renders it difficult if not impossible to understand; I’m not going into that particular detail here, and have translated the rule as it appears it was intended to be written.)

Plaese Poorf Raed: Patent Attorney Trainee Sought; Knowledge of English Spelling and Grammar Not Necessary

 

Recently the following advertisement was posted on one of the English-language “help wanted” bulletin boards in Israel.  I’ve decided to spare the guilty parties further embarrassment and redacted their names:

 

Patent Attorney Intern Needed

 

We are looking for a patent attorney intern.

 

XYZ is a mid-size UK-Israeli firm with a fun atmosphere. We draft and prosecute patent applications for fortune 500 companies and universities, and we need help.

 

Relevent fields are software, electornics, and electro-optics.

 

We are looking for candidates who are after a career at the patent industry and therefore, candidates should be willing to work hard for an intern wage in order to get good training.

 

English should be at native-tongue level. Candidates will be expected to write a short paper to prove their English level.

 

Please send CVs by email only to XXX@__.com. Thank you!

 

Well, if this advertisement is any indication of the quality of their patent applications, then yes, they most certainly need some help!  So in the interest of collegiality, I offer a few suggestions for how the members of this firm might ensure that they identify the best candidate.

 

They should begin by asking candidates to spell “relevant” and “electronics”.  Inasmuch as their web site also contains the statement that “Israeli PTO circulars will become affective 3 months after publication on the PTO’s website”, they should probably ask candidates to write essays that use both “affective” and “effective”. 

 

Similarly, candidates should be asked to explain the meaning of the term “conflicating”, which appears in the following sentence on the firm’s website: “We are pleased to try to help conflicating parties resolve their conflicts in peaceful manners, as an alternative to litigation proceedings.”  (The paragraph goes on to conclude, “Our managing partner is well-known for his mediation skills.”  As well as his gift for lexicographical creativity, no doubt.)

 

The partners should also ask candidates to explain the difference between “[being] after a career at the patent industry” versus “seeking a career in the patent industry”.  For that matter, they should ask candidates to explain the differences between the patent industry and the field of patent law and practice.  I’m not sure I know myself - I haven’t yet seen a patent factory, but then there are many parts of the world I haven’t visited.

 

In addition, candidates should be asked to identify at least two errors in following sentence, taken from the firm’s web site:  “Our double-check procedure makes sure that many professional and experienced eyes review each application before it leaves the office to make sure that it describes the invention well, as broad as reasonably possible, and design to fly through the examiners as easily as possible.”

 

In any case, full credit to this firm for its adherence to truth-in-advertising strictures.  Not everyone would be so bold as to tell job candidates of whom perfect English is demanded that they should be prepared to work long hours for low wages, for professionals whose own English skills are wanting.  Low pay and a boss you don’t respect – that’s always a winning combination.  I’m sure many excellent candidates have already beaten a path to this firm’s door.

Wishful thinking? Dubai-Based IP Services Portal Leaves Israel Off Its Site

I belong to several IP-related groups on LinkedIn.  This past week I received notices from two of them about a new portal to put potential users of IP-related legal services in touch with purveyors of those services.  Looking at the site, I saw that at the bottom of the home page is a division of the world into geographical areas, with the notation “Select a Country to Send Inquiries”.  I wanted to see what firms from Israel were listed.  So I scrolled over the “Middle East and North Africa” map, but Israel wasn’t in that list.  Thinking maybe they’d put Israel with Europe, I scrolled over Europe.  Nope, not there either.  How about Asia?  Nada.  Then I looked in the alphabetical list of countries.  Hungary, Iceland, India Indonesia, Iran, Iraq, Ireland, Italy, Jamaica…notice anything missing? 

 

Turns out this particular operation is based in Dubai.  Apparently the Arab predilection for ignoring the facts and engaging in wishful thinking extends to the IP sphere.  Newsflash for the guys running the site: Israel exists.  Or was that flap a few months ago about some terrorist getting killed in a hotel in Dubai just a case of you guys getting worked up over what some ghosts did?   

 

Not only does Israel exist, the PCT database lists 21590 published PCT applications having an Israeli applicant.  That’s over 200 times more than the 104 such applications for the whole UAE.  The disparity may partly explain why Israel weathered the financial crisis of 2008 and 2009 so much better than Dubai did. 

 

Keep up your delusions, Dubai.  It’s a great way to move from doing whatever it is you do with your camels into the 21st century.

 

By the way, if anyone’s looking for an IP pro in “Palestine” – because we all know that when the PA/Hamas aren’t trying to lob missiles or homicide bombers at Israel, they’re at the vanguard of the granting and enforcement of IP rights – the site includes “Palestine”, but doesn’t list any firms.

The Israel PTO as a PCT Search Authority: Making it Work

Much hay was made in Israel last fall when WIPO decided to allow the Israel PTO to try to become a PCT search and examination authority.  At the time, the Commissioner of Patents sent out a letter in Hebrew to the ILPTO email list (click here for translation by yours truly) explaining the goings-on that occurred in Geneva leading up to the decision.  The local press picked up the story as well, in most cases inaccurately reporting that this meant that Israelis could now file PCT applications.  (Actually, the Israel PTO has been a PCT receiving office since 1996.)  One firm whose partners are known to be publicity hounds even finagled an interview on one of the television news programs to explain the importance of WIPO’s decision.

 

Other than that instance of shameless self-promotion, I suspect that much of the hullabaloo was less self-aggrandizement and more of the Sally Field “You like me, you really like me” variety: given the hypocrisy and immorality to which Israel is constantly subjected to at the UN and other international fora, it was nice to receive some positive recognition for a change, from a UN body no less.

 

Even then, with the decision there was a reminder that politics always plays a role in these sorts of decisions.  As explained in the Commissioner’s letter to the Israel patent community, part of the quid quo pro for extending the invitation to Israel was that Egypt would also be given the opportunity to become an ISA. 

 

Egypt?

 

What a joke.  Comparing the Egyptian Patent Office to the ILPTO is like comparing a 1971 Dodge Dart to a 2010 Cadillac.  As statistics available on the Egypt PO and the ILPTO websites attest, the Israel PTO has far more examination experience, fielding roughly 3.5 times more applications annually than the Egyptian PO.   The just-published PCT Yearly Review also has some interesting statistics in this regard as well.  But the Egyptian PO is, evidently, the best the Arab world has to offer, and the Arab world wasn’t going to acquiesce to Israel’s entry into the ranks of PCT search authorities without one of its own being afforded the same opportunity.   

 

Setting the politics of the decision aside, the WIPO decision represents several opportunities for the ILPTO.  First, it’s an opportunity for the ILPTO to move into ranks of the world’s first-rate patent offices, instead of continuing to operate, as one local practitioner puts it, as a 19th century patent office in a country with 21st century technology.  Israel’s greatest natural resource is it brainpower, and in that regard the examining corps at the ILPTO has the potential to be one of the best in the world.  It’s much harder to gain university admission in Israel than it is in, say, the USA, and as a consequence Israeli university graduates tend to be better educated, on average, than their American counterparts.  Because many Israelis were themselves born abroad, or are the children of immigrants, particularly from the former Soviet Union, many Israeli examiners have facility in English and Russian or other European languages, which can enhance their search abilities. 

 

But in addition, if the ILPTO becomes and ISA/IPEA, it could simultaneously contribute to the reduction in the backlog at the USPTO and elsewhere, reduce costs for applicants, and increase its own revenues.  How so?

 

First, the ILPTO allows the filing of applications in English, which opens up the possibility of becoming a search authority for PCT applications filed in other jurisdictions, most notably the USA and the EPO.  Couple that with the fact that ILPTO examiners cost less to employ than their counterparts at the USPTO or the EPO, and the ILPTO could potentially be an attractive search option for applicants from other countries, just as US applicants have in recent years begun using the Korean Patent Office to conduct PCT searches, partly because of the lower cost vis-à-vis the USPTO, and partly because of the timeliness with which KPO searches are delivered (as opposed PCT searches conducted in the USA, which are generally of low quality and not infrequently delivered after the 30-month national phase deadline has passed). 

 

There are two steps the ILPTO needs to take to make this happen.  First, it needs to improve the quality of its examination and reporting.  Some ILPTO examiners are already world-class.  They find the most relevant art, and they clearly explain how it applies to the claims.  But there are still a significant number who continue to practice, or worse, are being trained, to do a poor job: they don’t find the best prior art, or they mis-apply the art that they find, or rather than explain how the art they’ve found applies to each claim, they produce a one-liner along the lines of, “The claims are obvious in view of publication X”.  This has to be remedied, so that all of the examiners consistently produce first-rate work.  Fortunately, it’s an attainable goal.

 

The second step involves getting other patent offices to recognize the searches done at the ILPTO.  This is where politics re-enters the picture.  Because no one, not even an Israeli applicant, is going to want to use the ILPTO to search if that search doesn’t have some cachet outside of Israel.  Israel needs to get on board with the US patent prosecution highway, and with other countries that have similar arrangements.  While the PPH leaves much to be desired, these days anything that can help an applicant for a US patent decrease application pendency and increase the likelihood of allowance is going to warrant a close look from US-based applicants, particularly if it can help the applicant reduce its costs. 

 

I believe that the current Commissioner appreciates, at least in some respects, the need to make nice with the decision-makers in other patent offices and to come to agreements with them regarding searches and examinations done in Israel.  He said as much in his letter referred to above.  In the six months or so he has left in office, this would be a good thing for him to concentrate on, and his successor would also do well to make it a priority. 

I Know A Dependent Claim When I See It! (What Does a Dependent Claim Look Like Again?)

One of the first things any patent practitioner (or inventor filing a patent application) learns is the difference between independent and dependent claims.  The former read something like,

 

“1. A device comprising an X, a Y and a Z connecting the X to the Y”, or

 

“2. A method for doing/making A comprising doing X, Y and then Z”. 

 

The hallmark of a dependent claim is that it necessarily incorporates all the limitations of the claim from which it depends, and further specifies some additional limitation(s).  In the U.S., this is codified in 35 U.S.C. §112, fourth paragraph, which reads,

 

Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limita­tion of the subject matter claimed. A claim in depen­dent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

 

Thus dependent claims usually read something like,

 

“3. The device of claim 1 wherein the X is shaped like a doughnut”, or

 

“4. A method according to claim 2 wherein X is conducted at a temperature above 60ºC.”  

 

Sometimes, though, a claim will be worded, e.g.,

 

“6. A method for treating cancer, comprising administering to a patient in need thereof a compound as recited in claim 5.” 

 

Is that an independent or dependent claim?  I don’t know any practitioners who would say it’s a dependent claim: although claim 6 has incorporated the limitations of claim 5, it has done so simply as a form of shorthand.  Claim 6 hasn’t added any further limitations regarding the compound recited claim 5.  And most importantly, whereas claim 5 is directed to a compound, claim 6 is directed to a different statutory class of patent-eligible subject matter, a method of treatment.  So claim 6 must be independent. 

 

Curiously, under US practice, there is at least one situation in which claim 6 would be regarded as dependent.  When counting the number of independent claims for purposes of calculating the filing fee due (each independent claim beyond the first 3 costing the applicant big bucks), the USPTO regards a claim like claim 6 above as dependent, thus saving applicants filing fees.  At least, that’s been my experience and the experience of other practitioners with whom I’ve spoken.  However, for purposes of unity of invention, it’s possible that an examiner would regard claims 5 and 6 as being directed to different inventions that necessitate separate searches, and thus force an applicant to choose between the two, in so doing implicitly finding that claim 6 is an independent claim.  In Israel, claim 6 would be regarded as an independent claim (although in Israel, there are no excess fees for excess independent claims per se, only for the 51st claim and up, period).

 

Why discuss such a basic notion as the difference between independent and dependent claims?  Because it arose two weeks ago in a decision from the Board of Patent Appeals and Interferences (BPAI) at the USPTO.  The decision was handed down in an old interference (declared in October 1996!) between Abbott GMBH & Co. KG and Yeda Research and Development Co. Ltd., the tech transfer arm of the Weizmann Institute.  At issue was the ownership of patent rights over proteins that bind another protein known as tumor necrosis factor alpha (TNFα).  The crux of the dispute between the two parties was whether or not Abbott’s US 5,344,915 was entitled to the benefit of Paris Convention priority to a German application filed in 1989.  The BPAI ruled it was, hence Abbott had rights in the one count over Yeda’s USSN 07/930,443. 

 

The interesting part of the decision, however, concerns Yeda’s contention that claim 2 of the ‘915 patent was in improper form for a dependent claim, as set forth in 35 U.S.C. §112, ¶4.  These claims read as follows:

 

1.     A purified and isolated TNFα-binding protein which has a molecular weight of about 42,000 daltons and has at the N terminus the amino acid sequence

 

Xaa Thr Pro Tyr Ala Pro Glu Pro Gly Set Thr Cys Arg Leu Arg Glu

 

where Xaa is hydrogen, a phenylalanine residue (Phe) or the amino acid sequences Ala Phe, Val Ala Phe, Gln Val Ala Phe, Ala Gln Val Ala Phe, Pro Ala Gln Val Ala Phe or Leu Pro Ala Gln Val Ala Phe.

 

2.     A protein as claimed in claim 1 in deglycosylated form.

 

Yeda argued that since the deglycosylated protein recited in claim 2 had molecular weight that, according to Example 6 of the ‘915 patent, was about 3000 Daltons less than that of the claimed TNFα-binding protein, claim 2 did not include all of the limitations of claim 1, and did not contain a further limitation on the protein of claim 1.  Hence, said Yeda, claim 2 was in improper dependent form.  In support of its argument, Yeda cited to MPEP ¶ 608.01(n), which sets forth an infringement test for determining compliance with 35 U.S.C. §112, paragraph 4:

 

The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends (35 USC 112, fourth paragraph) or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim.

 

Argued Yeda, since the lower molecular weight deglycosylated protein of claim 2 could not conceivably infringe Claim 1, the recitation therein was not a “further limitation” on the subject matter of that claim.

 

The BPAI majority disposed of this argument by saying that Yeda bore the burden of proof, and had failed to show that a person of ordinary skill in the art would not regard the deglycosylated protein of claim 2 as being “about 42,000 Daltons” as recited in claim 1, and therefore

 

Yeda has failed to show that the deglycosylated protein of Claim 2 is completely outside the scope of the “about 42,000 dalton” requirement of Claim 1 (Pfizer, 457 F.3d at 1292) or that the deglycosylated form would not be understood to infringe Claim 1. Yeda has not established, prima facie, that Abbott’s Claim 2 does not provide a “further limitation” of the Claim 1 subject matter.

 

Yeda’s argument was a creative and intriguing one, and the majority’s disposing of it on grounds that 39,000 Daltons is close enough to 42,000 Daltons isn’t really satisfying.  Suppose that claim 2 had instead read, “2. The protein of claim 1 having a molecular weight of 39,000 Daltons”.  In that case, Yeda’s argument might have been stronger – if a claim specifies a molecular weight if 42 kDa, and the patent itself doesn’t explicitly that 39 kDa is to be considered as 42 kDa, it’s not clear that a 3000 Dalton difference is minor.

 

One Administrative Patent Judge, however, while concurring in this part of the judgment, did so on different grounds.  The first paragraph of his two paragraph concurrence is unremarkable:

 

While I join the majority in its denial of Yeda’s motion for unpatentability based on 35 U.S.C. 112(4), I do so for a different reason.  Paragraph 4 of §112 requires an express reference to the claim from which it depends and an incorporation by reference of the limitations of that claim.  It does not follow, however, that the converse is true: reference to another claim does not mean that the claim is intended to be dependent. For at least a generation the Office has permitted such cross references in claims that cannot possibly be dependent.  For example, “A widget made by the method of claim 3.” The widget cannot be within the scope of the method. The cross reference simply incorporates the limitations of the cited claim without creating a dependency. Under this practice, the principal effect is that the non-dependent, cross-referencing claim is itself independent and thus the applicant might owe an additional fee if there are more than three independent claims. 35 U.S.C. 41(a)(2)(A).  In an age of word processors, one could question whether the convenience of cross referencing is outweighed by the confusion it causes.  The question, however, is beyond our purview.

 

That’s just as discussed above: different statutory classes = no dependency, even if another claim is referenced.  Having (in baseball terms) set up the non-dependence of claim 2, the concurrence closes:

 

I conclude that Abbott's claim 2 is an independent claim. The claim states in its entirety “A protein as claimed in claim 1 in deglycosylated form.”  Significantly, the claim does not use the typical dependent form of “The protein of claim 1, wherein the protein is deglycosylated.” The use of “A protein” rather than “The protein” is telling since it deliberately avoids making the protein of Abbott claim 1 a literal antecedent.  Since the patent has only three claims, we cannot infer anything from the fees paid.  Abbott claim 2 is an independent claim and thus cannot be unpatentable for failing to comply with the statute governing claim dependency. 

 

It’s hard to argue with this APJ’s logic, which also explains why the majority’s view doesn’t sit quite right: claim 2 is not an improperly dependent claim because 42,000 can mean 39,000.  It’s not an improperly dependent claim because it’s not a dependent claim at all! 

 

Interestingly, most practitioners I know don’t really care how one begins a dependent claim, “A thing according to claim 1…” or “The thing according to claim 1…”; the particular wording usually comes down to personal preference.  It may be that the person who drafted claim 2 intended it to be an independent claim, but it may also be that in this case they got lucky.