New patent law Featured

8:00pm EDT July 26, 2007

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.