Never Argue With A Fool: On Claim Status Identifiers and AMBER Alerts

Anyone who’s ever dealt with the USPTO is well aware that there are often times when the person at the USPTO’s end is wrong, but the most efficient response is to capitulate rather than fight.  A classic example is the use of claim status identifiers when amending claims.  That practice is governed by 37 C.F.R. 1.121, which in parts (c) and (c)(3) states,

(c)Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this sub­section, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete list­ing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indi­cated after its claim number by using one of the fol­lowing identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (With­drawn), (Previously presented), (New), and (Not entered).

(3)When claim text in clean version is required. The text of all pending claims not being cur­rently amended shall be presented in the claim listing in clean version, i.e., without any markings in the pre­sentation of text. The presentation of a clean version of any claim having the status of “original,” “with­drawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previ­ously presented.” Any claim added by amendment must be indicated with the status of “new” and pre­sented in clean version, i.e., without any underlining.

Note that there are seven status identifiers that are allowed; when you file your set of amended claims, you have to identify each and every claim with one (and only one) of those identifiers. 

Now here’s a quiz for readers who have never made an amendment at the USPTO: according to Rule 1.121, if in your amendment, some of the originally-filed claims are retained in their original form, what status identifier do those claims get – “original” or “previously presented”?  To put it differently, “original” can presumably always be used for a claim that has never been amended at any stage of prosecution.  But what about “previously presented”?  If you’re filing an amended set of claims, then an originally-filed, unamended claim was certainly previously presented.  So can you identify such a claim as “previously presented” as well?

That the question even arises evinces the fact that rule 1.121 is not absolutely clear on its face.  Of course, if one wishes to engage in some parshanut, one could reason that since “original” is already an option, and that option cannot possibly apply to a claim that has been amended at any point, or canceled, or is presently withdrawn, or is new, or has never been entered – that is, the only instance in which “original” can be used is for an originally-filed, never-canceled, never-amended claim – then “previously presented” must of necessity signify something other than an originally-filed, never-canceled, never-amended claim.

That’s the USPTO’s view.  Specifically, the USPTO says that “previously presented” is to be used only for a claim that was (a) either added or amended in a previously-filed amendment, but (b) in comparison to the most recently filed version of that claim, is not being amended in the present amendment.  To illustrate, if in my last response to the USPTO, I filed an amendment in which I amended claim 2 and added new claim 4, if I’m now filing a response in which some claim is being amended but claims 2 and 4 remain as I filed them in my previous response, then the status identifier for both claims 2 and 4 is “previously presented”.  

Ironically, although this is the USPTO’s position, you wouldn’t necessarily know it from reading the MPEP, which is supposed to set forth the USPTO’s interpretation of the relevant statutes and rules and their application to the daily function of the patent examination corps.  Section 714 of the MPEP includes the statement that “If applicant files a subsequent amendment, applicant must use the status identifier (previously presented) if the claims are not being amended, or (currently amended) if the claims are being amended, in the subsequent amendment.”  Here, the MPEP’s parshanut itself needs parshanut: by saying that if an “applicant files a subsequent amendment” in the beginning (reisha) of the sentence, the MPEP implies that it is the previously amended or added claims that are referred to in the end (seifa) of the sentence that require the status identifier “previously presented” or “currently amended”.

In any event, if one inadvertently uses “previously presented” when the USPTO expects “original” (or in some other way mis-identifies a claim), the examiner will send the applicant a notice that the amendment has not been entered for that reason, and the applicant can make the trivial change from “previously presented” to “original” and refile the amendment. 

If before reading this post you weren’t acquainted with the USPTO’s rules governing status identifiers in amended claims, and now that you’re familiar with them, you think this whole business is anally retentive, you’re not alone.  But the rules are the rules, and for those of us who do this regularly, it’s just become a part of life.  What is perhaps surprising, given the hundreds of thousands of applications examined by the USPTO every year and the poor wording of Rule 1.121 and MPEP 714, is that since the early 2000’s when the status identifier rules were implemented, no one has challenged the USPTO on the implementation of this rule. 

That is, until now. 

Last week USPTO Director Kappos was sued in the Federal District Court for Eastern Virginia over the interpretation of Rule 1.121 by Catalina Marketing International, Inc., which identifies itself in the complaint as the assignee of all rights in USSN 11/153,377.  (The USPTO’s assignment database seems to indicate that Catalina Marketing International, Inc. subsequently assigned its rights to Catalina Marketing Corporation, but let’s assume for now that the correct plaintiff filed the suit.)  The application was filed on June 16, 2005, published on December 21, 2006 as 20060287872, and received a first Office Action rejection on April 18, 2008.  On July 17, 2008, the applicant responded, and included a set of amended claims in which some originally-filed, unamended claims were identified as “previously presented”.  On November 3, 2008, the Examiner mailed a Notice of Non-Compliant Amendment, citing the improper status identifiers.  On November 25, 2008, the applicant filed a revised amendment, in which the relevant status identifiers were changed to “original”.

Now, you’d think that was the end of the story, but it wasn’t.  Beginning in December 2008, the applicant filed a series of petitions to have the Notice of Non-Compliant Amendment expunged, and to have the amendment of July 17, 2008 instated the record, so as not to detrimentally affect patent term adjustment (PTA), should the application be entitled to such at the end of the day.  (If the USPTO drags its feet in examination, the applicant is entitled to PTA to compensate, but each day of PTA to which an applicant is entitled is offset by each day of delay due to the applicant itself.  Hence the filing of a response that is deemed non-compliant can result in the loss of PTA to which a patentee would otherwise be entitled.  See 35. U.S.C. §154 if you’re really interested…or have insomnia.)

Obviously, none of the petitions were accepted, which is why the assignee filed suit.  What’s striking, though, is the assignee’s assumption that the lost time – a few months at most – is worth the time, money and effort to fight.  If this were a patent application for a molecule that’s sure to be the basis for a multi-billion-dollar-per-year blockbuster drug, I could understand the concern about PTA.  But it’s not clear that this patent will be in the billions-(or even millions)-per-year category.  That’s because the title of this application is “AMBER alert system and method for locating missing children”. 

If you don’t know what an AMBER alert is, you can read more here and here, but briefly, as explained in the specification, “AMBER is an acronym for America's Missing: Broadcast Emergency Response”, and an “An AMBER alert is a notification containing a description of an abducted child, and optional additional information, such as suspected abductor of the child, that is broadcast” using an emergency alert system (EAS).  Basically, the idea is to quickly get the word out, via mass media (radio, TV, and these days Twitter and the like), that a child has been abducted.  The patent application is directed to getting the information to retail outlets, so that information about the abducted child can be printed on the customer’s receipt (in the same way the register may print coupons for a future purchase on the back of the receipt).

Now let’s suppose that a patent in this case issues (and that’s by no means a given).  Who exactly would the assignee sue for infringement?  The local government?  Last I heard, many towns in America were strapped for cash.  The state government?  Not possible, there’s a little thing called the 11th amendment that says you can’t sue states in federal court.  The federal government?  Maybe, but if Catalina wants to take on the Feds in this matter, it’s not clear how it could publicize or advertise its services: the U.S. Department of Justice owns the word mark for AMBER ALERT in many classes and covering many goods and services, including publications, brochures, booklets and teaching materials. 

Even if the state, local or federal governments were good targets, does the assignee of this application really want to go to a jury?  What would he plead – “I’m just an honest citizen who wants to make a buck in the abducted-child recovery business”?  Yeah, that’ll go over big.  I suppose the assignee could go after the retailers, or some of the other private-sector partners in the AMBER alert program, but in that case there would be an easy solution to avoid patent infringement: just stop printing the AMBER alerts on the store receipts.  Not exactly the socially optimal result.  

Moreover, you have to wonder about Catalina’s chances in this suit.  It was, after all, the USPTO that wrote Rule 1.121.  Under the Supreme Court’s holding in Chevron v Natural Resources Defense Council, U.S. government agencies are given deference over the interpretation of the rules that they themselves promulgated.  So while Rule 1.121 may not be the best-written rule around, and a little statutory construction may be necessary to fathom its depths, the USPTO’s position is certainly a plausible one.  Given that this rule is procedural, it's hard to see the USPTO losing under Chevron.

Al tikra Catalina, ela Sisyphus?