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Thursday Dec 03, 2009

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.



Does this mean that the TTAB and the BPAI will be issuing more precedential decisions?

Posted by Jason A. Fischer on December 03, 2009 at 05:33 AM EST #

One of the reasons the TSM (teaching-suggestion-motivation) test was so useful was because it provided some objectivity to an obviousness analysis. Hindsight and/or conjecture was avoided as an actual thing (i.e., publication) had to be identified to substantiate obviousness. If something was "common sense" obvious, then it would be easy to substantiate presence in the prior art of items that made the claim obvious. KSR opened the door to sloppy and subjective obviousness analyses. So long as these are avoided, having an open-ended standard for obviousness is probably a good thing. Lastly, when the Examiner keeps in mind the burdens of proof involved with rejection and allowance, the inventor and the constitutional mandate are both well-served. Thank you.

Posted by Andrew Jordan on December 04, 2009 at 07:49 AM EST #

I think the Bilski decision was correct. It is obvious that we live in a new time, and we need new law. The original laws, 1793 and 1952, were written when machines and manufacturing were all the rage. The bias of patent law is no surprise. But it is the law. We might speculate where computers and business practices ought to fit in, but neither the court nor the PTO should be making law. (Should there be a a business practice patent, and if so, would it deserve the same protection as a drug patent?) There are thousands of partisans. These partisans need to be heard and reconciled. That is Congress's job. Lobbyists should not be knocking on the door of the Court.

Posted by Robert A. Baker on December 04, 2009 at 11:35 AM EST #

I applaud your efforts to solicit suggestions for improving the operations of the Office from the customers of the USPTO. It is my opinion that a functional and efficient USPTO can only be obtained by the repeal of all existing LAWS and the enactment of new laws that address the intellectual property issues of the 21st century. Urgent problems that can and should be addressed now have been identified in the DOC Inspector Generals Reports. Apparently, you do not receive information related to the USPTO that is submitted to the Inspector General’s Hotline and I suggest that you make arrangements to obtain this information. I would also like to call your attention to a letter to Jon W. Dudas from Judith J Gordon, Assistant Inspector General for Audit and Evaluation, dated August 12, 2008, Subject: Audit of USPTO’s Quality Assurance Process. I believe the Report of this audit could be very helpful to you in your efforts to become informed about Quality Assurance at the USPTO.

Posted by James F. Boland on December 08, 2009 at 02:18 PM EST #

This is the closest I'm likely to get to asking Director Kappos a direct question, and I think my comment is perhaps no more irrelevant than the prior post, so hopefully it survives the moderator's black pen. I'd like to know why I see multiple non-final actions in so many cases. A first NFOA issues, I overcome the rejections without claim amendments, and rather than seeing allowance, out comes another search and another NFOA no better than the last. I recently went through three NFOAs in a row before obtaining an allowance. If the Examiner does a competent search, makes a rejection, and the rejection is overcome, why isn't that enough? It might help the backlog if Examiners were not examining the same application multiple times. Please direct Examiners to allow cases when the arguments overcome the rejections without amendment.

Posted by znutar on December 11, 2009 at 08:32 AM EST #

I think there needs to be a re-visiting of the concept of non-analogous art. The definition of non-analogous art was changed by the KSR guidelines. Under the KSR guidelines, any prior art cited by the Examiner is analogous because it was cited by the Examiner in the Office Action. See, MPEP 2141.01 (a). In other words, the citation of the prior art in the Office Action is a self-fulfilling prophesy in finding the prior art to be analogous. It is basically impossible to attack a reference as being non-analogous under the present standard. With respect to EPO practice, like KSR, for a finding of obviousness (lack of inventive step in EPO speak), no TSM is required. However, it appears that the EPO is much more restrictive in considering what prior art is useable (i.e., determining what is analogous art). A return to a definition of what is analgous art would be helpful and may add some objectivity in applying KSR.

Posted by Lou Budzyn on December 21, 2009 at 12:55 PM EST #

I'm a European patent attorney and I don't understand that last comment from Budzyn. EPO-PSA is a form of TSM. It is objective and fair. It excludes ex post facto analysis and has no difficulty dealing with "non-analogous art". Why not ask those US corporations who prosecute just as many EPO oppositions as opponent as they do in the role of patent owner. EPO-PSA was devised in the first place to get the EPO operating consistently, from the get go in 1978, when all Examiners were newbies in Munich, even while each brought with her the ingrained obviousness mindset of her home Patent Office and Patent Courts. Why not adopt EPO-PSA as the default obviousness tool at the USPTO? KSR doesn't stop you doing that, does it?

Posted by MaxDrei on December 23, 2009 at 10:03 AM EST #

znutar, Overcoming a rejection is never a reason for allowing a case and a subsequent Non final office action should not be the norm. But there are many reasons why such would occur. One of the main reasons I would suggest is an overly broad first set of claims. While a thorough search of the art (taking into account the spec) idealistically "should be made" on the first OA, overly broad initial claims do not have a "focused search". In practice due to the time constraints that the examiner is under, to continue searching once multiple 102s or solid 103s can be made with the art found would not be productive. On subsequent OA the applicant will amend, abandon or can take the initial issues in a wholly new direction. At that time a new or more focused seach becomes apparent possibly resulting in more art and a subsequent Non final.

Posted by TZ on December 24, 2009 at 09:17 AM EST #

To TZ: In that case, can you explain how the EPO gets away with only one search no matter how broad the claim, and still retains the reputation of doing a much better search than the USPTO? Why doesn't the USPTO ignore the absurd width of the independent claim and focus instead on the "heart" of the disclosed subject matter, that is, the illustrated embodiments (or the Examples). If that subject matter lacks novelty or is obvious, then the claims are bad, however broad they are. And as for prosecution amendments that shift to an invention not contemplated in the app as filed, why not do as the EPO does, and invite Applicant to file a continuing application (called "divisional" in Europe), with another search fee.

Posted by MaxDrei on December 28, 2009 at 07:53 AM EST #

TZ, from Europe, I don't understand. Why don't USPTO Examiners note the claims but then focus the search on the worked Example or the illustrated embodiment. Thereafter, no matter how much Applicant narrows down the claim, the search references are still biting with full force on the amended claims. If Applicant switches to a different invention, the consequence should be that, if he wants to pursue it, he has to file a continuing application.

Posted by MaxDrei on December 28, 2009 at 09:51 PM EST #

Mr. Kappos - have you given any thought to developing an intellectual property portfolio management strategy for the US Government and its research labs? I would be interested in hearing your inputs on what, for example, vision statements should be for the various tiers of a Federal agency, such as in the Dept of Defense, for its intellectual property program. Thanks! Chris

Posted by Chris on January 29, 2010 at 06:03 AM EST #

One of the most important issues we all need to consider both legally and ethically is what the original intent of the United State Patent system was developed for and why are the law subjective, or can be interperated by two different individuals with opposing opinions. I believe the system was developed to inspire innovation and new ideas. In my opinion, someone who may not understand an industry or relative art can now question the innovation submitted to the USPTO for a patent and decline the allowance of the invention. It becomes more difficult to work the system and rules when their is no black and white process in place to determine what is allowable or not allowable. For every good claim argument , their now can be a adverse argument because nothing is really new we are just using elements from what exists to create new ideas for better living... So, I ask does KSR hinder innovation or does it just make the cost of patent work rise to the occasion.

Posted by Joe on February 10, 2010 at 05:39 PM EST #

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