The U.S. Patent and Trademark office
has launched several initiatives to
streamline patent processes, including a pilot program that guarantees resolution of new patent filings within one year.
Despite its intentions, the current patent
climate has been decidedly unclear since
April when the U.S. Supreme Court issued
its KSR International v. Teleflex decision,
which struck down a long-held standard
regarding the obviousness of patents. The
decision may make it harder to win patent
approval and could put some existing
patents at risk to challenges.
Smart Business spoke with John
Brannon, Ph.D., an intellectual property
attorney with Sommer Barnard PC, author
of more than 200 patents, to learn the implications of the changes and appropriate
strategies businesses can pursue.
Why is the KSR ruling significant?
The Supreme Court decision threw out
the teaching, suggestion and motivation
(TSM) standard that was used to decide
the obviousness of patents, saying it was
too rigid. The decision won’t have much of
an affect on patent filings, but will impact
prosecution. The decision makes it easier
for patent examiners to take prior art
patents from different areas and combine
them to make the case for obviousness of
new claims. Prior to KSR, to reject a patent
because of obviousness, the patent examiner had to show some teaching or motivation to combine two or more prior art references under the TSM standard. Now, the
examiner can pull prior art references from
anywhere — they don’t have to be as closely related to the area of the patent application. Examiners could theoretically deny
claims based on obviousness, as long as
the combination of references includes all
of the elements of the claim being examined.
Does the decision put existing patent protections at risk?
The decision will change the way patent
applications are evaluated going forward.
Existing patents may be subject to attack
and scrutiny if the patent was granted by overcoming an obviousness objection solely based on the TSM argument. However,
TSM by itself is rarely a winning argument,
so not too many patents are at risk.
What else is impacting patent processes and
litigation?
The Patent and Trademark Office has
proposed several changes that are supposed to make it quicker and easier to get
a nice, solid patent. They’re also trying to
tighten up perceived abuses of the system.
There is some well-founded criticism
about the process, especially that it takes
too long.
The most important proposed changes
are the Accelerated Prosecution Route,
which is a pilot program to expedite
patents, limits on continuations for filings,
claim reform that limits the number of
claims filed for a given patent application,
and information disclosure statement
reform, which proposes limits for the number of prior art references filed with patent
applications.
How does the Accelerated Prosecution Route
make the patent application process faster?
The Accelerated Prosecution Route was a pilot program that started in June 2006
and guaranteed resolution of patent
requests within one year. The first patents
applied for under this program were
recently awarded, and the Patent Office
would like to expand the program. The
program shifts a tremendous amount of
responsibility from the patent office to the
patent applicant, and it also increases the
applicant’s risk.
Under the normal process, patent applicants do not have to search for and include
prior art references with their applications,
unless they know of related patents. The
Accelerated Prosecution Route requires
applicants to search for prior art references and document for the patent examiner how the references relate to the new
application. It shifts the research responsibility from the examiner to the applicant. It
also shifts a lot of risk. Any statements
made to the patent office in the submission
could come up in litigation, so applicants
have to choose their words carefully.
The Accelerated Prosecution Route
could be very useful for a company that
needs a patent quickly because they’re at a
competitive disadvantage without it. The
process is faster, but it’s also expensive and
requires more work, so it may not be worth
it if there is time to be patient.
Are there new strategies patent filers should
take in light of these and other developments?
The other proposals are intended to
streamline the process and prevent abuses
of the system. Some would limit the number of references submitted with patent
applications, so key references don’t get
hidden in a large filing. Others would limit
the number of claims and extensions available for applications. Some sweeping
changes have been proposed that won’t be
applicable to the average applicant. These
reforms may have the opposite effect as
intended.
JOHN BRANNON, Ph.D., is an intellectual property attorney
with Sommer Barnard PC and has a background in Ceramic
Engineering. Reach him at (317) 713-3500.
