Has the US Patent Office misinterpreted KSR?

One of the great advantages of the US culture is that we have a long history of thinking independently, which has, among other things, led us to some pretty awesome inventions, and entrepreneurial ventures. The facts show that more patents are filed in the US than anywhere else in the world, by far. Indeed, we are rapidly approaching our 8 millionth patent in the US. So our patent system is in great shape, right? Wrong! There is an interesting article in Monday’s Wall Street Journal, March 28, 2011, page B1. The Journal article is about upcoming legislation. But it also illustrates the fact that the number of patent applications was steadily rising every year, up to 2007. And then it abruptly stopped rising in 2008, 2009, and I’d wager the statistics will show it also failed to rise in 2010.

Is this a mere coincidence? I say “no way”. The US Supreme Court drastically changed the definition of what is patentable in its March 2007 decision KSR v Teleflex. While the Supreme Court’s decision, on its face, seems so correct, the US Patent Office has gone way beyond the language of the court in changing its approach to examining patent applications. Especially regarding mechanical inventions, the Patent Office is taking a hard line on patentability where the inventor has assembled old/known parts, even where a new functional result is achieved, and even where some of the parts have been changed/modified.

It doesn’t help that, in addition, we continue to receive partial, nonsensical, half-baked, illogical examinations from some of the examiners. Many of these battles can be won, but at substantially increased cost to the inventor/owner of the application.

I haven’t had the opportunity to take any of these cases over the examiner’s head, to the Patent Office Board of Appeals and Interferences. In the past, that was the answer when the examiner would not act according to the law. It will be interesting to see how that process works, now, after the KSR decision. Namely, has the Board been infected, too?

Fortunately, the courts seem to be properly interpreting the KSR decision. However, that adds yet another layer of cost to the process – a cost beyond the budget of many of our clients.

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