US Patent Office Makes It Harder To Reject Patents For Obviousness

from the that's-not-good dept

The David Kappos-run USPTO seems to just get worse and worse. Already this year, we had noted that the patent office, under his charge, had started approving patents at an unprecedented rate, after a few years of corrections. It's become quite obvious that Kappos is pushing to get more patents approved, rather than fixing the patent system or making sure that it works to actually help innovation. I don't know why he's doing so, but it's quite troubling. The latest indicator of this is the fact that the USPTO has issued new guidelines on obviousness that effectively make it much harder for examiners to reject patent claims as obvious (found via Slashdot).

For years, one of the biggest problems with the patent office was that it approved all kinds of obvious inventions as patentable. Patents are only supposed to be given for things that are both new and non-obvious to those skilled in the art. However, for the most part, examiners focused solely on the "new" part (as determined by prior art) and effectively ignored whether or not it was obvious to those skilled in the art. Finally, in 2006, the Supreme Court agreed to look at the standards for "obviousness," leading to the Teleflex v. KSR ruling that basically said the USPTO (and the courts) had to really start looking at obviousness as separate from newness. In response, the USPTO put out a set of guidelines, including seven "tests" for obviousness -- and many examiners seemed to make use of these tests, as more patents got rejected, with obviousness often being the reason.

Yet, these new guidelines simply delete four of the tests. So, we're back down to just three tests for obviousness, which significantly limits the likelihood that examiners will reject patents as obvious. The end result? A lot more obvious ideas getting patented, followed by a lot more gridlock and needless lawsuits and transfer payments in the market -- and a huge tax on innovation. What a shame.


Reader Comments (rss)

(Flattened / Threaded)

  •  
    identicon
    Anonymous Coward, Nov 8th, 2010 @ 1:17pm

    His interests are not with the people but with corporations I mean come on, ex-IBM employee. It's like electing a president that was a former oil company CEO. He's a mole in the system gaming it for the interests of his masters. People like that Should be executed for treason, "we the people" does not mean anything anymore.

     

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    Chris Rhodes (profile), Nov 8th, 2010 @ 1:18pm

    Is your summary correct?

    I'm much too lazy to read TFA right now, but IIRC, the comment section of Slashdot had some qualms with the original summary of this story, in the sense that the guidelines didn't remove or replace four of the tests so much as clarify three of them.

     

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      slacker525600 (profile), Nov 8th, 2010 @ 1:45pm

      Re: Is your summary correct?

      I just read some of it, and your comment seems correct.

      The update seems to provide case law examples for the first three rules as teaching points but (from what I have read) does not imply that the other four rules are invalidated. Just that there have been significant rulings on the issue since that have helped to clarify the first three rules.

      "The first three groups correspond directly with three of the rationales identified in the 2007 KSR Guidelines. These rationales– combining prior art elements, substituting one known element for another, and obvious to try–have each been the subject of a significant number of post-KSR obviousness decisions."

      "Office personnel may use this 2010 KSR Guidelines Update in conjunction with the 2007 KSR Guidelines (incorporated into MPEP §§ 2141 and 2143) to provide a more complete view of the state of the law of obviousness.

      This 2010 KSR Guidelines Update provides a “teaching point” for each discussed case. The “teaching point” may be used to quickly determine the relevance of the discussed case, but should not be used as a substitute for reading the remainder of the discussion of the case in this 2010 KSR Guidelines Update. "

       

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    Don, Nov 8th, 2010 @ 1:22pm

    Money, money, money

    The US is a pure capitalist country, simple as that. If ti makes money flow, then it's all good. But I'd sure like to know how much the USPTO charges to process a patent, I bet it's a good chunk of green-backs.

    What incentive is there to not approve patents? None. Bad patents promote lawsuits which puts more more in their potents and the lawyers' pockets.

    The only way to take down the USPTO is to find a patent that will challenge its system or the US Government directly.

     

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      Chris Rhodes (profile), Nov 8th, 2010 @ 1:30pm

      Re: Money, money, money

      "The US is a pure capitalist country"

      In a "pure" capitalist society, the government wouldn't be propping up the failing business models of private industry through the use of their legislative powers, which is the situation we have now.

      The system in place is corporatist, not capitalist. Big difference.

       

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      The Mighty Buzzard (profile), Nov 8th, 2010 @ 2:08pm

      Re: Money, money, money

      Wouldn't work. The US government is free to ignore patents.

       

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      interval (profile), Nov 8th, 2010 @ 2:35pm

      Re: Money, money, money

      "The US is a pure capitalist country, simple as that."

      No, not really. But its still possible for anyone with the go-getit attitude to be successful. I thank my lucky stars I was born in a country where I can make money if I wish.

      See, choice is a wonderful thing. If I so chose, I could live in poverty and whine about how great it would be if the US was just another whiny-assed European broke socialist system where everyone shares in the failure equally. I am thankful everyday that I live in country where I can choose to do that, or press on and make a good living.

       

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        VancouverDave, Nov 8th, 2010 @ 3:14pm

        Re: Re: Money, money, money

        Interesting point, Interval.

        It makes me wonder why so many people choose to be poor.

         

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          Anonymous Coward, Nov 8th, 2010 @ 4:37pm

          Re: Re: Re: Money, money, money

          Same reason so many people choose to be overweight: deferring gratification is hard.

           

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      Yo ho ho..., Nov 8th, 2010 @ 4:31pm

      Re: Money, money, money

      You are spot on... but to bring a little more color into play here:

      1. The big money is not in just the application process, but in the maintenance fee schedules. More patents = more revenue for the patent office = bigger political promotion.

      2. More patents = increased legal fees. Lawyers make money in the patent process, from filing to supporting to ammending claims for the companies filing the patents. Additionally, as noted, the legal process regardless of whether or not lawsuits are successful, etc. makes $$$ -- so more lawsuits / more money.

      All about the money. We should just scrap this whole system and start over.

       

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    Jay (profile), Nov 8th, 2010 @ 1:43pm

    Just to make sure I understand...

    This basically says that people will begin to ignore patents because more and more get approved with no real validity to them?

     

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    Nina Paley (profile), Nov 8th, 2010 @ 2:13pm

    Great news for patent lawyers!

    Jobs! Jobs! Jobs!

    Everyone who could have innovated and produced can now get a job as a patent lawyer, suing any innovators and producers who are left.

     

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    Anonymous Coward, Nov 8th, 2010 @ 2:28pm

    "However, for the most part, examiners focused solely on the "new" part (as determined by prior art) and effectively ignored whether or not it was obvious to those skilled in the art."

    "Newness" is what is subsumed by Section 102 of Title 35. "Obviousness" is associated with Section 103.

    In virtually every case I have ever been associated with the prosecution turned upon Section 103. Thus, obviousness has always been at the heart of prosecution practice before the USPTO. Except in very unusual circumstances, a 102 rejection is easily traversed. A 103 rejection, however, is another matter entirely.

     

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    Anonymous Coward, Nov 8th, 2010 @ 3:17pm

    As any good td reader knows, Patent Examiners are all complete idiots. Also, patents are never complicated. Every aspect of patents is straightforward and easy, which is why we do not need patents in the first place. Obviously, the question of patent obviousness has an answer, all patents are obvious. Thus, no patent should ever be approved.

    /sarcasm


    Remember the gorilla in the room?
    http://www.techdirt.com/articles/20100714/03225710210.shtml

    What is obvious today may not have been obvious yesterday, even if you paid close attention yesterday. So, always, *always*, blame the patent examiner when something you think is obvious gets patented.

     

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      The Invisible Hand (profile), Nov 8th, 2010 @ 3:31pm

      Re:

      Two words:

      OS Shutdown.

       

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      Anonymous Coward, Nov 8th, 2010 @ 5:07pm

      Re:

      Right, because in reality if it wasn't in broad use it wasn't
      obvious and no one should ever criticize patent examiners for patents that are technically defensible on the basis of obviousness as long as obviousness is defined as new or unused. Further more it's evedent that patents are all non-obvious and the only reason they're ever found to be obvious is judge's not understanding the subject matter. Sure one click patents are obvious NOW but in 98 it was an invention of the highest caliber and the USPTO backs that up.

      /sarcasm

       

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      Anonymous Coward, Nov 8th, 2010 @ 8:28pm

      Re:

      So please explain what criteria should be used to determine obviousness? Should all new ideas be patentable? I think not, many past innovations have occurred without patents and, likewise, a lot of innovation would occur perfectly fine without patents today. I find it very difficult to believe that patent abolition would halt technological progress, much technological progress has occurred without patents and there is plenty of evidence to suggest that patents only hinder technological progress and that technological progress often (usually if not always) occurs faster without patents.

      The purpose of the patent system should be to determine which advances would only occur with patents and grant patents only to those advances. An inability to properly define obviousness is a criticism of the patent system. Not every invention requires or deserves a patent and those that don't shouldn't receive one and if the patent system can't intelligently determine which inventions deserve patents vs which ones don't then I think it's reasonable to conclude that the patent system should be abolished.

       

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        Anonymous Coward, Nov 8th, 2010 @ 10:05pm

        Re: Re:

        Did you see the gorilla the first time around? If only some people see it then to at least some degree it is not obvious.

         

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          Anonymous Coward, Nov 9th, 2010 @ 12:46am

          Re: Re: Re:

          Only if they file papers or publish a detailed finding to a collegiate publication... both requiring thousands of dollars. otherwise it's still a discovery/invention.

           

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      Anonymous Coward, Nov 8th, 2010 @ 9:40pm

      Re:

      "Thus, no patent should ever be approved."

      Why simply assume that some patents should be approved. Prove it.

       

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    myHeureka, Nov 8th, 2010 @ 9:24pm

    Feel sorry for Kappos

    The main issue is that Kappos is under the gun to get rid of the huge backlog of patent applications from years of neglect or slowness. There is no doubt that it is required by whoever is taking over USPTO should push hard to get patent approved at a faster pace than current but it doesn't mean that they can just approve without enough due diligence. This will only result in chaos with lawsuits all over the place. It is obvious that USPTO will never be able to catch up with the patent counts in the current environment where there is lot of technology innovation happening. The only way to ease this problem is by taking it social and that is what the new site http://www.myheureka.com/ is targetting. Hopefully this will take off and put USPTO to rest. :-)

     

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    staff, Nov 9th, 2010 @ 6:40am

    inventing -not fighting

    "the patent office, under his charge, had started approving patents at an unprecedented rate"

    Good. For years inventors have had to fight the PTO to get their patents issued. The more essential their patents, the harder they had to fight. Allowance rates had dwindled well below historical rates. Now inventors will be able to focus their resources and energies on inventing -not fighting.

     

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    Anonymous Coward, Nov 9th, 2010 @ 7:47am

    The USPTO is a joke. The stupid leading the idiots.

     

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    Anonymous Coward, Nov 9th, 2010 @ 11:41am

    This is all good news. We should have a patent registration system coupled with examination only on request. Patent examiners could then concentrate on patents with commercial value sufficient to justify examination, and the vast majority could just exist unexamined until a request was filed. Examination and infringement analysis could then be required prior to suit, so that the public could get better analysis than is possible from some District Judge who doesn't like patents or new technology. This is one step in that direction, so I like it. What you Tech-dirt posters think is basically irrelevant self-serving blather. If you really were serious about your misguided notions about patents being bad, you would be writing law review articles or writing Senators or Representatives where your notions might actually accomplish anything. If you get to the right staffer, they might surprise you how well they listen and how much they know. Not many agree with any of your nonsense, however, as nearly all see patents as a valuable party of America's incentives for creativity. Instead, you fools waste time on this blog communicating with other similar-minded fools.

     

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    Leif, Nov 16th, 2012 @ 3:23pm

    Help fix the patent System.

     

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    Ray07, Nov 19th, 2012 @ 12:25pm

    Where is my patent?

    Maybe I should find an everyday item and put a patent on it. I heard its so easy, even a trolling copycat, whining, cheating, company like Apple Inc. can do it.

    They steal other people's ideas, and put their curse of a logo on it as if they are innovators. They are a bunch of crooks with lots of legal money to go around. That is what the USPTO wants, that is what the US patent system has become. Greedy bastards!

     

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