I had reason to read several obviousness-related cases over the weekend. While I wasn’t surprised when my review led me back to Graham v. John Deere, I was a bit surprised when I read this paragraph from the opinion where the Court discussed, of all things, the inconsistent patentability standards being applied during examination….and the application backlog at the Patent and Trademark Office:
“While we have focused attention on the appropriate standard to be applied by the courts, it must be remembered that the primary responsibility for sifting out unpatentable material lies in the Patent Office. To await litigation is, for all practical purposes, to debilitate the patent system. We have observed a notorious difference between the standards applied by the Patent Office and by the courts. While many reasons can be adduced to explain the discrepancy, one may well be the free rein often exercised by Examiners in their use of the concept of “invention.” In this connection, we note that the Patent Office is confronted with a most difficult task. Almost 100,000 applications for patents are filed each year. Of these, about 50,000 are granted, and the backlog now runs well over 200,000….This is itself a compelling reason for the Commissioner to strictly adhere to the 1952 Act as interpreted here. This would, we believe, not only expedite disposition, but bring about a closer concurrence between administrative and judicial precedent.” (emphasis added)
I hadn’t noticed this paragraph in previous readings of the case, but it caught my eye this time – perhaps because I was researching the impact of KSR v. Teleflex on examiner actions. As I was trying to determine if KSR is leading to more consistent application of the Graham framework during examination, I see the Supreme Court telling the patent world that the then-new Graham framework would do exactly that…in 1966. Oh, and it will address the backlog, too.
It would be interesting to investigate whether Graham ever provided the anticipated consistency in the Office…and if the backlog ever receded after the framework was announced.
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# posted on 01.30.09 at 10:10 am
The KSR decision should be read again & again as should any number of allegedly controversial rulings. What is sorely missing is a return to the exercise where examiners & applicants work towards compact prosecution over what is claimed on the merits – get to the gust if the invention. That inventors have been further separated from this time-tested approach, is something that many parties share blame & diminish the USPTO. Most confusingly “invention” seems to be more legalistic instead of promotion of the technical arts – why is that? Inventors invent – discouraging them from disclosure is bad policy. Picking winners by din of resources (big companies, lobbyists, status quo incumbents naturally resist progress) can outlast the vast majority of true innovators – small entities & individuals) cuts at a fundamental issue – you cannot cap innovation – you can encourage value creation in an objective manner …
# posted on 03.15.09 at 7:35 am
Graham still affects examination for the better. If for no other reason than the applicant could demand the factors be stated explicitly if the examiner didn’t state them the first time around. So far as I know examiners are always carrying out the Graham factors even if they don’t make it explicit.
Though, no it probably didn’t address their huge huge huge backlog of 200k lol. It did probably help for awhile though. Just as KSR is.
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