Tuesday, October 23, 2007
This Blog is moving
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
Thursday, October 11, 2007
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.
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.
Friday, October 5, 2007
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 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.
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