The word 'patent' is from Latin meaning 'to disclose' and the U.S. Patent system:
as established by Thomas Jefferson over 200 years ago; granted patents to "new and
useful inventions" in exchange for public disclosure of an invention via the patent.
Three kinds of U.S. Patents exist: Design, Plant, and Utility; with Plant Patents now
a subclass of Utility while Design Patents: restricted to one claim for the appearance
of an article of manufacture with photographs acceptable; are wholly different.
Under the U.S. Patent system a patent is essentially a contract between the applicant
and the Federal Government: in exchange for disclosure via the patent a time limited:
to 17 years; monopoly for manufacture, use, and sales of the invention is granted.
Applications are now published unless filed with a Request for Non-Publication and
the published applications constitute 'prior art' that can be cited during examination in
support of statutory: United States Code (USC) Title 35; grounds of rejection:
35 USC §101: patentable subject matter;
35 USC §102: anticipation by a single prior art reference;
35 USC §103: 'obviousness' in view of combined references;
35 USC §112: written description: enablement; indefinite claim language.
In reverse order §112 comprises grounds for rejection of claims as being indefinite
for failing to provide 'enablement' in the written specification which means failure to
"enable one practiced in the art to make and use" the invention as claimed inclusive
of a failure to demonstrate that applicant was in possession of the invention as claimed.
The claims define the property granted so indefinite language is prohibited therein.
§103: introduced by The Patent Act of 1952; replaced the 'spark of genius' standard:
set forth by the Supreme Court in 1941; with 'obviousness' whereby a patent may be
denied if the invention as claimed "would have been obvious to one practiced in the
art at the time the invention was made".
Obviousness was intended as a more tenable standard of novelty in view of the prior
art generally, and as opposed to 'anticipation' by a single reference as required of §102,
consistent with the original requirement that an invention, to merit patent, be "new and
useful": id est possess both novelty and utility with emphasis on the former.
Under the guidance of Judge Markey the Court of Appeals for the Federal Circuit
(CAFC): which replaced the U.S. Court of Customs and Patent Appeals (CCPA) in 1982;
defined well the metes and bounds of §103 as a grounds for rejection. The combination
of prior art references cited must show all the 'claim limitations' and there must be a
suggestion in the prior art for the combination. The combination, most saliently,
can not violate the 'principles of operation' of an invention of a cited reference.
§102 rejections, perhaps partly in an attempt to avoid this large body of case law now
well incorporated in the Manual of Patent Examining Procedure (MPEP), have recently
enjoyed a resurgence if often understandably confused with §103 by newer examiners as
"(a)dditional references may be used to interpret the allegedly anticipating reference (to)
shed light on what it would have meant to those skilled in the art at the time" (Robert L.
Harmon, Patents and the Federal Circuit, BNA Books, 6th Edition 2005, p. 98).
But while In re Spada permits 'filling the gaps' between knowledge of one practiced in
the art and that of the judges: if the allegedly anticipating reference is silent on 'inherent
characteristics'; by using a second reference to see if the reference relied on as anticipating
actually had possession of the invention in question, the second reference can not "supply
a missing claim limitation." (Ibid., p. 99, citing Teleflex Inc. v. Ficosa North Am. Corp.)
§101 as a grounds for rejection has had a considerable resurgence in response to the
triumph of computers generally and the Internet particularly with hardware first being
recognized as patentable subject matter followed by software with a culmination in State
St. Bank & Trust Co. v. Signature Fin. Group Inc. (1998) which ended the prohibition
against business methods as long as judgmental human reactions are excluded and
basically recognized the use of algorithms by digital machines as a legitimate means.
The ensuing accommodation of business methods as patentable subject matter,
especially in the arena of the Internet, has not been easy. 'Means' language itself came
under fire despite statutory sanction. Much of the difficulty is attributed to confusion
between §112 and §101 as the proper grounds for rejection as the Office resisted, quite
understandably, patenting of 'common sense ideas' in this new technological context.
The 'one click' patent of Bezos for shopping on-line set off a public backlash against
patents generally but "invention is the engine of progress" as Thomas Jefferson wrote
and 'Electronic Commerce' now comprises a substantial portion of Examining Group
3600 of the U.S. Patent Office.
Classification is recognized as an important aspect to the accommodation of new
technologies by the Office and considered to touch on the fundamental basis for the
U.S. Patent system or process as established by Thomas Jefferson as the purpose of
an invention properly determines its classification and well known elements in one
field, used to provide a new utility in another, comprise a legitimate basis for patent.
Utility as a basis for patent has been comparatively ignored by the Office and by
case law. In the words of Robert L. Harmon "The real question is whether the newly
discovered utility would have been obvious. Obviousness requires some relationship
between the use taught by the prior art and the use discovered by the patent applicant."
(Ibid., p. 60, citing In re Dillon, 1989)
This apparent begging of the question is considered to reveal a significant problem.
The relation required between prior art and the invention considered is provided in
practice by the classification system but attorneys generally don't conduct searches.
The European Patent Office (EPO) classification system, moreover, is the basis for
for the International Patent Classification (IPC) system required of 'global' searches
supporting petitions requesting Accelerated Examination. And the EPO began its
system afresh in 1976 while the US system has been continuous since 1828.
Only 2,500 applications requested accelerated examination in the first three years
under the new revised 'rules' while backlogs for examination have only increased and
attorneys with major patent law firms still prepare and file full Applications in a mad
rush before 'the trade show this weekend' in order to preserve foreign filing rights
despite the fact that this is precisely the reason Provisional Applications were created.
The new Commissioner for Patents has promised to reduce examination backlogs but
as a practical matter electronic filing of applications with petitions requesting accelerated
examination is the only means available to accomplish this goal. This is the future: now.
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