Facilitating Development of the Law
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
I recently gave a speech at the George Washington University School of Law about the USPTO’s important role in facilitating the development of IP law. In the wake of decisions such as KSR and Bose, and with the Bilski Supreme Court decision on the horizon, the IP community certainly could use more clarity in several areas of law.
Here’s an example. The KSR decision expanded the means by which examiners can reject on obviousness grounds. At the same time, it did not provide clear guidance on what constitutes a person of ordinary skill in a particular art area.
Moreover, obviousness inquiries are beginning to shift toward a weighing of the types of evidence applicants can rely on to establish non-obviousness such as unexpected results and secondary consideration evidence.
The process has become more costly, time-consuming, and there is still plenty of room for increased clarity and greater predictability.
The IP community needs guidance on obviousness. But that’s not all. The applicant community and examiners also need clarification in areas of written description and enablement, means plus function claiming and late claiming -- to name a few.
The USPTO has the opportunity to help facilitate the development of the law through the Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board. We intend to identify test cases and promptly decide those cases so that the community can get clarity earlier. And of course our reviewing court, the Federal Circuit, plays a pivotal role in shaping the law by reviewing those Board decisions that applicants choose to appeal.
The USPTO is going to make sure the Board issues decisions that will set good precedent and that can, in conjunction with Federal Circuit decisions, set the proper balance and provide answers on the challenging legal questions that face the IP community.
I hope to hear your thoughts and suggestions on this topic.