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The IP Directions blog is now being hosted on the TechRoadmap site. You can see these posts by clicking on the links to the left or, better yet, just go to: IPDirections.Techroadmap.com

Is obvious now defined as "predictable"

Life is full of subjective measures - Am I a "good" person? Depends. Is this a "long" piece of string? Depends. Is Playboy "pornographic"? Depends. Is that figure skating routine worthy of 9.8 or 9.9? Depends. Is my invention "obvious"? Depends.

By now, you probably know that the Supreme Court, in the "KSR" ruling, made getting a patent significantly harder by throwing out a test that had been [mis]used for many years. This week, according to Greg Aharonian of the Internet Patent News Service, the PTO issued revised guidelines for obviousness determination during patent examination in response to the KSR decision. According to Greg, who has time to read these things, the new guidelines effectively define obvious as "predictable".

Like trying to prove the non-existence of a non-observable phenomenon, being absolute about what's good, pornographic, or obvious is clearly impossible. If we agree with the premise that patents should only accrue to inventors who make a meaningful improvement (by which I "obviously" mean to make an improvement that was not "obvious" to the bulk of society) to their fields of endeavor, then we buy into the conclusion that some subset of society will have to sit in judgment of these improvements and try to apply a fair (= equally applied) standard to all inventions. That the current situation is a poor implementation of this goal does not invalidate the goal.

The standard to which inventors are held, however, will always be defined by a sense of what society believes or understands. The KSR ruling was to obviousness what Potter Stewart's words were to pornography ("I shall not today attempt further to define [pornographic] material...but I know it when I see it.") Or, to paraphrase Cole Porter, "In olden days a glimpse of prior art was looked on as something shocking but now, God knows, anything goes" (sorry Cole).

Anyway, I think we'd just better suck it up and work our arguments at the PTO or CAFC the best we can. I personally don't like moving from "obvious" toward "predictable" because I don't want to limit inventions to items developed by trial and error (like Edison's light bulb filament); I want to reward the inventor who uses whatever skills he or she has to predict a result that the rest of us didn't have the insight to consider.

PTO treading water with one leg

If you thought the present problems at the US Patent Office might get better soon, thought that you might get a meaningful, thoughtful office action in months rather than years, thought your application might get accepted or rejected on grounds that plausibly relate to the subject matter; sorry, it doesn't look like it's going to happen.

The GAO has just released its study of USPTO staffing levels (see GAO report) and the title says it all: "Hiring Efforts Are Not Sufficient to Reduce Patent Application Backlog". And of course, the heavy workload that results from the backlog is a contributing factor to many (but not all) the ills of the patent office.

The GAO conclusion was based on several key findings:

• The PTO annual hiring plan is based on budget - there is no identification of how many examiners they need to reduce the backlog.
• For every 2 new examiners hired between '02 and '06, 1 left. This attrition is not considered, so the PTO is essentially increasing the examiner staff at half of its planned rate. 70% of the departing examiners had tenures of 5 years or less.
• The PTO thinks examiners leave for personal reasons: 67% of the examiners say it is the workload (i.e., "production goals").
• 70% of the examiners say they have had to work unpaid overtime to meet their goals.

Although the GAO was not chartered with identifying the causes of the poor patent examination (specifically allowances that shouldn't have happened and rejections that defy logic) it does not take much of an imagination to believe that the high workload (production goals haven't been changed since 1976) and significant turn over at the inexperienced "worker bee" level (e.g., the recent hires) would lead to these negative outcomes.

So when it comes to sink or swim, the PTO is at best treading water... but hardly.

Why KISS will save you CA$H

Until (and perhaps after) the dust settles, keeping your patent strategy simple is likely to be the most cost effective approach. As we all recognize, this is a period of turmoil in the US patent environment. Keeping track of the rules of the game when the Supreme Court, USPTO, and Congress are all making changes puts quicksand under our feet as we plot our patent strategies. By making our patent applications sharply focused on the individual, core innovations that make up our invention we can avoid the risks and costs of trying to comply with some of the uncertain rules either in place or on the table for discussion.

Consider, for example, the new USPTO rules limiting the number of continuation applications you can have in one family. In the past, when you made improvements to your invention, you might choose to file a continuation-in-part with at least one claim overlapping the subject matter of the original application (to gain benefit of the earlier priority date). With the new rules in place, you might not want to "use up" your limited number of continuation applications this way. Instead you might just file a new application with no overlapping claims, understanding that your published application will be prior art.

Similarly, many patentees have intentionally filed "omnibus" applications into which they have packed every new aspect of their invention, knowing full well that they will want to chop it up into divisional applications later. Again, this may no longer be the best approach since the number of divisional applications you can file by right depends on the actions of the USPTO. The alternative of filing several simple, "one invention" applications may serve you better.

If you still don't think you are going to have to pay an attorney significant dollars to help you navigate the new rules with a complicated patent strategy, see the 63 page FAQ document. on the patent office web site. We are sometimes our own worst enemy when we try to be "too clever by half". At least for now, KISS.

"I've got an invention, now what?"

Last week I spoke to a potential client who essentially asked me the question posed in the title: Now that I've invented something, what do I do next to protect my invention. Unfortunately, I needed to explain that, no, she didn't have an invention, she had an idea. An idea that, perhaps, with a bunch of development effort, might become an invention - in which case we could evaluate the pros and cons of filing a patent application.

We've all noticed problems in our daily lives and said something to the effect of "what is needed is a [fill in the blank] that would do [fill in the blank]. The difference between an idea and an invention is the difference between observing a need and filling that need. I wish my garden were lush and beautiful, but without a lot of sweat it will remain a weedy patch.

Previously, most people quickly passed from the idea stage to the "forget about it" stage as they realized A) they didn't know anything about how to implement their idea and B) they had no reason to think their idea would be a commercial success. More recently (this millennium), however, the very public, huge successes of certain ideas (think Google, Facebook, UTube), aided and abetted by television entertainment shows ("American Inventor" reality show, Good Morning America's "Mothers of Invention" contest) have changed people's perception of what they have. Novelty be damned, obviousness - what's that, let's patent this and make a bundle!

This desire to turn every idea into an invention is not limited to "amateurs". Often clever engineers get an ah ha moment and want to rush to the patent office. But again, without the usually hard effort of working through the details they often don't yet have an invention.

Changing the rules in the middle of the game

Last month the USPTO issued some rules changes that become effective on November 1, 2007. Some of these changes (see the patent office slide show at TechRoadmap Files) will result in significant extra expense for inventors. I'll list some of these rules changes below, but a key point that many people may have missed is that these rules will apply retroactively to many currently pending applications! That's right. If you filed an application, say, a year ago and have not yet had your First office Action On the Merits of your claims (a FAOM), that is, not an administrative office action, then the new rules apply to your application (unless your FAOM is mailed before November 1).

The two main rules changes are:

1. A patent is limited to 5 independent claims and/or 25 total claims by right. If you exceed this limit you must file an "Examination Support Document" justifying the excess claims. If you have co-pending applications with even one "patentably indistinguishable claim", then all the claims in all the applications count toward the 5/25 limit. The goal of this rule is to eliminate the virtually unparsable claim sets in some patents.
   
   You must submit a list of all commonly owned applications or patents that have:
   –An inventor in common with the application; and
   –A claimed filing or priority date within two months of the claimed filing or priority date of the application.
   
   Presumably the examiner will look for applications with a patentably indistinguishable claim.
   
   
   
2. An inventor is limited to only 2 continuing applications (i.e., a divisional, a continuation, or a continuation in part) and 1 request for continued examination. The goal here is to preclude effectively infinite pendency (See Lemelson)

Whether you agree with the PTO's goals, whether you think these rules will achieve those goals, the one thing you should probably disagree with is the application of these new rules to patent applications that have been caught in the PTO's molasses-in-January examination speed.

If you have an application on file that has more than the 5/25 claims and has not received its FAOM, you might want to take action now. Have your attorney check with the examiner. After the 11/1/07 deadline you will have to withdraw claims, file an ESD, or try to get it divided into several separate applications (in which case you can have 15/75 total claims).

Good Luck

House votes for changes

Ah well, not unexpectedly the House voted Friday to pass the patent "reform" legislation before it. I guess it will up to the Senate to throttle back the most questionable portions of the law. According to Greg Aharonian's Internet Patent News Service one of the provisions is that you/we, as patent applicants, must now "submit a search report and other information and
analysis relevant to patentability. An application shall be regarded as ABANDONED if the applicant fails to submit the required search report, information, and ANALYSIS in the manner and within the time period prescribed by the Director." [Greg's emphasis]

Up to now you were not forced to prepare a search report of any sort, never mind one in which an analysis was required. I always urge my clients to do at least a first cut prior art search so they don't waste their time and money preparing a patent application which is easily shown to be obvious or anticipated and to submit any findings to the PTO under the duty of candor.

What we don't need is to be forced to do an "analysis in a manner prescribed" by the PTO. Certainly, all submitted reports will say the invention is NOT anticipated or obvious; who would waste their time submitting an application along with a document that says "I think this invention is not patentable". So, okay, maybe this process reduces the PTO load by some factor by eliminating the real crap patent applications.

BUT what happens in all the rest of the cases. Does the PTO accept our analysis? No. Surely the PTO is not going to grant us patents based on OUR analysis. So what happens our analysis is judged "wrong" by the PTO. Isn't that potentially inequitable conduct - just like failing to live up to the duty of candor today? What happens if we miss some prior art that the PTO finds - is it an honest mistake or an attempt to pull the wool over the eyes of the PTO.

This requirement is not just an additional expense for the patentee (bad for the small company for sure) but also allows the PTO to disallow your patent on purely procedural grounds (instead of on the merits) and is clearly a purely arbitrary standard (how long is a piece of string?)