Category Archives: Patents

PAIR’s broken authentication scheme

It’s not new news that the USPTO’s private pair system utilizes a seriously fragile authentication scheme.  I get why they need something serious, but it’s time to replace the Entrust Java Applet.

I used to be able to get it to work on my Mac, but no longer.   When I couldn’t get it to work on Windows 7, with internet explorer, I had to call the EBC help center, which, thankfully, is open until midnight eastern time.   In order to get it working, I had to go to tools- (alt-t)-> compatability view settings, and add to the list of sites.   Even then, when successfully authenticating, it didn’t go to the PAIR page.  You had to somehow know that the authentication was successful, and open PAIR again by going to the menus… it just hangs on the successful authentication.

Come on guys, you’ve got money.   Let’s fix this thing and bring it into the new millennium.


Just learned how to get it to work on Safari, thanks to this post.

‘Comprising’ vs. “Consisting Essentially Of”

In going through the MPEP I ran into this jewel in 2111.03 Transitional Phrases:

For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.”

Being equivalent to comprising helps a lot. I used to worry quite a bit over these transitional phrases when used in software patents. Although this doesn’t add clarity for “consisting of” without “essentially”, it is still very helpful. Why anyone would have used “consisting” for software is beyond me, but patents with such claims are out there.

Supplemental Examination Provisions under AIA

I’m struggling a bit to understand this new section 35 USC 257:

(1) IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282.

I think all it is saying is that there are no consequences for the patent owner submitting the request itself.   The second sentence says this pretty clearly.   The first sentence only covers the cases where there is a supplemental examination.  Since the only way that wouldn’t happen (no more than 3 months later) is when the Director decides that the information raises no  substantial question of patentability; I guess in that case it is obviously still enforceable.

I think it only leaves the question of enforceability unclear for the three month period.  I think.

AIA changes: ReExams and Pre-Issuance Submissions

The Leahy-Smith America Invents Act (AIA) created some hard-to-remember changes to the process of ReExams and Pre-Issuance Submissions.   I’ve gone through the Federal Register and highlighted what I thought was notable, but the major changes can be summarized.


Inter Parte Re-Exam changes were phased.   They actually don’t exist now, having been replaced by petitions to do Inter-Partes Review.    There was  a small window (2011-2012) wherein the process was different, but for most of us this is barely interesting.   Bottom line: Ex Parte ReExam: Doesn’t change.  Inter Parte ReExam: Doesn’t exist.

Pre-Issuance Submissions and Protests

 Pre-Issuance Submissions

Section 1.290.  Only allowed submission methods are paper and EFS-WEB (no fax); the submission date is the received at PTO date, not the sent date.   The information submitted need not be prior art, and anything goes as long as it’s not protected information.  The submission must be done before notice of allowance, and otherwise no later the latest of 6 months after publication or date of first rejection of any claim.   In other words, you always get six months, as long as it’s pre-NOA.   You’ll get more time if it takes the office more time to issue a rejection… assuming there is one.   Kind of a strange effect if I understand correctly – if you want to file at 8 months after publication, it would only be allowed if there is a first claim rejection later.   Submission includes a document list and the application number to which it applies must appear on every page.   If you don’t have a publication date, you must provide evidence of publication.   The third party need not identify themselves.


Section 1.291(c), similar process, except it can be filed after NOA.   If filed before NOA or publication per 37 CFR 1.211, it will become part of the record of the application.  There does not seem to be an end event beyond which a protest can not be filed.   Different from the 1.290, you are not limited to documents.   It refers to an “information list”,  i.e. facts or information adverse to patentability.  And instead of a “concise description of relevance”, you are allowed a “concise explanation” which can include arguments against patentability.

The applicant need not reply to a protest unless requested to do so by the PTO.  There is also an interesting provision that if the applicant consents,  the protest may be filed prior to notice of allowance.