Understanding the interplay between successful patent application, rejection, and amendment helps the Patent Lawyer’s additional projects in counseling of Clients and Inventors.

Patent Office Procedure

In the US Patent and Trademark Office, each patent application is routed to a Patent Examiner familiar with the particular technical field.  Also based on the technology, issued patents are listed in corresponding Classes, helping their retrieval such as for rejection of subsequent patent applications.  Heightened attention is being paid to Technology Center 3600, which houses the Group Art Units of Patent Examiners assigned to business method patent applications.  Corresponding Class 705 is for issued patents on data processing:  financial, business practice, management, or cost/price determination.

NASDAQ Patent April 15, 2008

As a sample issued patent in Class 705, US Patent 7,359,877 entitled “Odd Lot Processing in Centralized Automated Market System” with listed assignee The Nasdaq Stock Market, Inc. issued last week on April 15, 2008.  The Group Art Unit was 3692 with technical specialty in Credit & Loan Processing, Banking/Funds Transfer.  The Subclasses are displayed on the patent in the following order 37, 35, 38, 40 within Class 705 for that same technical specialty in addition to Portfolio Management Trading/Matching.

Instructive Point

Scanning the prosecution history for instructive points, one may note on January 24, 2005 the Patent Examiner wrote to the Patent Lawyer that the filed claims were unpatentable as patent-ineligible subject matter, alongside other rejections.  The unpatentable subject matter rejection occurs under 35 U.S.C. §101.  I mention this to help bring home the point that a 101 rejection is fundamental, remedial:  “patenting 101.”  Please understand my colorful depiction of a 101 rejection does not mean the Patent Lawyer is immediately deemed a failure in the patenting effort.  Instead, a “101″ is painted on the Patent Office as a foothill before allowing any notion that a patent will result.

A workaround for the Patent Lawyer may be claim amendment to place the claim in satisfactory 101 form.  Without the subject matter being eligible, nothing else makes effective use of the Client’s budget.  Taking a further step back, the Patent Lawyer needs to lay the groundwork for such claim amendments in the original patent filing for the same reason that appeasement of the Patent Office is needed to advance prosecution of a patent application to issuance.  Scanning the horizon, the Patent Lawyer needs to prepare the original filing to support one or more desirable avenues of claim limitations.  That ability is important, and does depend upon the Patent Lawyer’s effectiveness in use of the Client’s budget in the original patent application preparation and filing.  To employ a straight claim amendment in the patent prosecution, the Patent Lawyer needs to rely on the originally-filed disclosure.

Lesson Taken

In the 101 rejection of the NASDAQ patent, the Patent Examiner provided guidance that the claim needs a practical application of an algorithm or idea that results in a useful, concrete, and tangible result, plus a technological enabler of same.  As a fix, the Patent Lawyer responded on July 27, 2005 with a claim amendment that placed a step of the claim “in a computer system” as a recitation of “the use of technology in the body of the claims.”  Were support lacking in the original patent application filing for “in a computer system,” then the claim limitation could not have been added.  Other claim amendments and rejections were raised and addressed over the years ultimately resulting in NASDAQ’s issued patent of last week.  Following is the issued claim 1:

A method for trading odd-lots of a security in an electronic market for trading securities, the method comprises:
determining in a computer system whether an odd-lot exposure limit has been exceeded for a quoting market participant;
routing a received odd-lot order for execution or delivery to the quoting market participant whose odd-lot exposure limit has not been exceeded and which is sufficient to satisfy execution of the order; and
executing the order for quoting market participants that accept executions of orders or delivering the order for quoting market participants that accept deliveries of orders for execution.

Extrapolation

As with the 101 rejection and fix discussed in the context of NASDAQ’s patent, the Patent Lawyer does well to understand the precise rejection and then the applied workarounds that have been successful.  One wishes to apply the right tool for the right job.  One eye needs to be kept on the Patent Office and another eye on the Client’s business, to navigate the process for valuable prospective rights for the Client.  Keeping aware of the Patent Office at times is tied to the courts and legislatures, plus further politics and economies.  The Patent Office and in particular the authoritative Patent Examiner on the patent application, typically plays a monumental role as the frontline interface for any issuance of the patent.

Text Copyright © 2008 Bob Brill

Bilski, SocialDevCamp Chicago