The word 'patent' is from Latin 'to disclose'. The US Patent system, as
established by Thomas Jefferson over 200 years ago, granted patents to new
and useful inventions and discoveries in exchange for public disclosure via patent.
A U.S. Patent was a contract between the applicant and the Federal Government:
in exchange for disclosure via the patent a monopoly, limited to 17 years for
manufacture, use, sales and importation into the U.S. was granted.
Applications filed since November 29th 2000 have been published,
unless filed with a Request for Non-Publication, and comprise 'prior art' that can
be cited during examination in support of statutory grounds of rejection
defined in the United States Code (USC) Title 35, Patents:
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 modern, computer, 'first in last out', reverse order:
§112 comprises grounds for rejection of indefinite claims and for specifications
failing to "enable any person skilled in the art to which (the claimed invention) pertains
... to make and use the same". 'Enablement' also requires a demonstration that
the applicant was in possession of the invention at the time of filing.
§103 states that "A patent may not be obtained though the invention
is not identically disclosed or described as set forth in section 102 of this title,
if the differences between the (invention) and the prior art ... would have
been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains".
Under Judge Markey the Court of Appeals for the Federal Circuit,
replacing the U.S. Court of Customs and Patent Appeals (CCPA) in 1982;
defined the metes and bounds of §103 as grounds for rejection: the references
cited must possess all the 'claimed limitations', the 'suggestion' for the combination
must be in the prior art, not the invention, and most of all the combination can
not violate the 'principles of operation' of an invention of a cited reference.
§102 rejections: apparently in an attempt to avoid this body of case law;
enjoyed a resurgence in recent years if often confused with §103 especially 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 Ed. 2005, p. 98).
But while In re Spada permits 'filling the gaps' between the 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 also enjoyed a 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 (1998) which ended a prohibition against business methods,
as long as judgmental human reactions are excluded, and recognized
the use of algorithms by digital machines as legitimate means.
The accommodation of business methods as patentable subject
matter in this new technological context of the Internet was not easy.
The mere use of 'means' claim language became, at a point, an automatic
cause for rejection though easily overcome by citation of its statutory sanction:
"An element in a claim for a combination may be expressed as a means
or step for performing a specified function" (35 USC §112).
Confusion between §§112 & 101 as the proper grounds for
rejection obtained as the Office understandably resisted patent for
mere 'common sense ideas' simply given this new technological context.
Essentially the Office was told it must allow patents for this new 'technology'
but given the fact that this was resisted for so long there was a problem: no prior art.
Classification is considered an important aspect to accommodating new technologies
by the Office and to touch on the fundamental basis of the US Patent system as an
invention's purpose determines its classification and well known elements in one
field providing new utility in another comprise a legitimate basis for patent.
Utility, as a basis for patent, has been rather ignored in recent times.
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". (Ibid., p. 60,
citing In re Dillon, 1989) But what is meant by 'some relationship'?
The relation required is provided by the classification system
but the Office: by publishing applications and by requiring inclusion of
'non-patent literature' plus foreign patents and published applications in the
'pre-examination' search required since 26 August 2006 for requesting accelerated
examination in nearly all grounds; denigrated its own classification system and
torpedoed its only means for ameliorating examination backlogs with only
2,500 applications requesting accelerated examination in the first 3 years.
Examination backlogs increased beyond precedent while attorneys
continued to prepare and file full Applications in a rush before the
'the trade show this weekend' ostensibly to preserve the foreign
filing rights otherwise lost with public disclosure despite Provisional
Applications being created on June 8th, 1995 for just precisely this purpose.
Publication of applications proved a double edged sword for the U.S.
Patent Office. First thought a boon to examiners in providing more
prior art to support rejections under §103 the avalanche of new prior
art created essentially made proper examination untenable for
an examining corps that is now understaffed by about 1,000.
The Office asked 'experienced practitioners' to apply for examining
'vacancies' in 2009 and over 4,000 applied but in fiscal 2010 only four (4)
examiners were hired while 127 left the corps: Congress had appropriated no
money and is now considering reform of the US Patent system with the
intent of reducing the cost of patent litigation by ninety per cent and
seriously providing an easy avenue for expedited examination
making the Patent Office self sufficient again financially.
It is hence expected that in Fall 2010 expedited examination
be available for simple payment of a large fee and 1.000 examiners
hired in fiscal year 2011-2012 but wondered if this will reduce litigation.
4,500 patents per week vs. 3,500 in 2009 began issuing with the few: under
under 50 per week; Applications filed with a proper petition requesting
Accelerated Examination based on a full global search among these.
Most disturbingly an estimated 85% of royalties go uncollected as
patent invalidity based upon prior art and indefinite language is routinely
alleged. Without valid examination inclusive of honest review of honest
prior art, along with applications written in cognizance of the same,
it is wondered how the assumption of validity US Patents once
enjoyed will ever return along with the "engine of progress":
id est innovation; that Thomas Jefferson fostered.
