Eye on IP

Vol. No. 2008 - Issue No. 2
March 2008

ARE PATENTS HARDER TO OBTAIN?

Many of us practicing before the Patent Office are noticing increased difficulty in obtaining patent applications allowed. Recent statistics bear this out. Traditionally, about 70% of patent applications are eventually issued as a patent. The most recent numbers show that it is now closer to 50%.

There may be many reasons behind this. One possibility is that the Patent Office is doing a better job. We have all seen some patents issued that caused head scratching.

Also contributing to the difficulty is the recent Supreme Court decision in KSR. Although arguably it did not create any new law, KSR was a reminder by the Supreme Court to the court and the Patent Office of the appropriate standard for issuing patents. According to 35 U.S.C. ¡± 103 inventions need to be non-obvious to persons of ordinary skill in the art for a patent to issue. The KSR Court stated that if you combine A plus B and all you get is the expected result of combining A plus B, you are not entitled to a patent.

Based on this decision, the Patent Office issued new guidelines listing many rationales for rejecting claims for obviousness. According to these guidelines, an applicant for a patent can expect an obviousness rejection in the following situations:

1. The claimed invention combines prior art elements according to known methods to yield predictable results;
2. The claimed invention simply substitutes one known element for another to obtain predictable results;
3. The claimed invention uses a known technique to improve similar devices (methods, or products) in the same way;
4. The claimed invention applies a known technique to a known device (method, or product) ready for improvement to yield predictable results;
5. The claimed invention is "Obvious to try" - i.e., it chooses from a finite number of identified, predictable solutions, with a reasonable expectation of success;
6. Known work in one field of endeavor may prompt variations for use in either the same field or a different one based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art;
7. There is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

What all this means is the inventors need to be more selective in filing patent applications. It also means that when writing patent applications, it would be advantageous to include data to show that A plus B results in something unexpected.

"Eye on IP" is a trademark of Sheldon Mak & Anderson. Information provided in the "Eye on IP" newsletter is not intended to be a comprehensive summary of recent developments in the law, treat exhaustively the subjects covered, provide legal advice or render a legal opinion.