A patent is a proprietary right granted by the Federal government to an inventor. There are three types of patents available in the United States: (1) a utility patent, which covers the functional aspects of products and processes; (2) a design patent, which covers the ornamental design of useful objects; and (3) a plant patent, which covers a new variety of living plant. Each type of patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. It is important to note, however, that patents do not protect ideas, but rather protect inventions and methods that exhibit patentable subject matter.
The United States Constitution grants to the Congress the power to grant patents; this power residing in the Congress is found in Article I, Section 8, Clause 8. Unlike most of the enumerated powers granted to Congress in the Constitution, the Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in significant ways. The Congress does not have free reign to decide that patents should be easily or freely given, but rather must limit their exercise of power to the dictates of the clause itself. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989). See also Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966) (“The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the ‘useful arts.’”).
Yesterday the United States Court of Appeals for the Federal Circuit, in a split decision with Judge Lourie writing and Judge Bryson joining, took a step forward in the evolution of the law of obviousness that confirms my worst fears about obviousness in this post-KSR era.
I have written about KSR v. Teleflex numerous times and we have engaged in thought-provoking and sometimes heated debate in the comments to those articles. We have argued about the extent to which the obviousness laws have changed, and many have sought to calm my fears by pointing out that even under the ridiculously naive approach to obviousness set forth by the Supreme Court in KSR it was still necessary under previous Supreme Court rulings that the prior art teach each and every element of the invention. In short, it has been argued by many that even after KSR it is not an appropriate rejection, or reason to invalidate an issued claim, that it would be “common sense” to modify elements within the prior art in a wholly new way and then combine the “common sense” modifications. I did agree that was true, at least until yesterday.
The January 17, 2011, edition of Fortune magazine has Chief Justice John Roberts on the cover. Roberts is the Chief Justice of the United States Supreme Court, a Court now made up predominantly of conservatives by a 5 to 4 majority. It is the contention of the author of the article on Roberts that the Roberts Court is the most pro-business Court the United States has ever seen. If that is the case, which I am not at all sure is the case, it would have to mean that one can be “pro-business” while being “anti-patent,” which given the state of American manufacturing and the future of the U.S. economy seems questionable.
Of course, if you are anti-patent then you are anti-innovation because those who innovate are not the behemoths of industry, but rather start-up companies that absolutely require patents in order to attract funding, expand and create jobs. Thus, given the hostility toward patents it is entirely accurate to characterize the Roberts Court as anti-innovation. The Roberts Court increasingly puts hurdles in the way of high-tech job growth. You see, it is easy for anyone to characterize the Supreme Court as “pro-business” because selecting a victor in a “business case” almost necessarily means that a business has been victorious. But what business? One that is likely to innovate, expand, create jobs and form new industry? Or one that once innovated and expanded, but now finds themselves stagnant and laying off employees?
In something of a switch for Apple, Inc. (NASDAQ:AAPL), the company known for such popular devices as the iPad, iPhone and the iPod, has obtained a patent on a glove. Yes, the company known for pushing the envelope with high tech gadgets has entered the clothing market with a patented glove. Not just any glove mind you, but rather one that will be sure to help you keep your hands and fingers warm while still being able to use your favorite smart-gadgets.
The patent issued to Apple earlier this week was U.S. Patent No. 7,874,021, which is titled “High tactility glove system.” Don’t let the title fool you though. I turned to the patent to see what kind of high-tech glove gadgetry Apple had come up with and to my surprise what was invented was a glove with openings at the top of the index finger, middle finger and thumb so as to allow skin to actually be able to touch the screen of your iPhone, iPad or iPod.
The 111th Congress once again left patent reform efforts on the table without any resolution or even a vote. That might be just as well given that in the minds of most the patent reform efforts were not truly “reform,” but rather were merely changes that would not have made for a stronger Patent Office or otherwise addressed some of the pressing issues that require Congressional attention.
At some point during 2011, however, I suspect that Congress will become engaged and interested as innovators find themselves on the short end of the Supreme Court sick in the Microsoft v. i4i case. We all know that the Supreme Court only takes patent cases to overrule or at least modify the law of the Federal Circuit. That only makes sense since there is but one Circuit responsible for patent law, thus no splits among the Circuits to resolve. So in taking the Microsoft-i4i case that asks whether there should be as broad a presumption of validity as required under the well-established law of the Federal Circuit, it doesn’t take a rocket scientist to figure out that the presumption of validity will be eroded by the Supreme Court, perhaps in this term. That being the case, it is at least plausible that Congress could be persuaded to become involved, perhaps even undertaking sensible reforms that protect innovators. Yes, I realize how naive that sounds, but please keep reading!
Since at least 1998 business methods have been patentable in the United States. This is thanks to the decision of the United States Court of Appeals in State Street Bank & Trust Co. v. Signature Financial Group, Inc., which categorically and unceremoniously did away with what had previously been come to be known as the business method exception to patentability. Essentially, the business method exception said that no method of doing business deserved patent protection. The Federal Circuit, per the iconic Judge Giles Sutherland Rich, pointed out that the business method exception had never been invoked by either the Federal Circuit or its predecessor court the CCPA. Furthermore, the case frequently cited for establishing the business method exception did not ultimately rely on that exception to deny patentability, meaning it was nothing more than dicta. The Court explained that “[s]ince the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.”
I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art. Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.
Over the last several days I was in Northwest Ohio, where I spoke at the University of Toledo College of Law and at Ohio Northern University College of Law; discussing with patent law students the patent bar exam, the PLI patent bar review course, resumes that work and careers in patent law. During the 2001/2002 academic year I was a Visiting Professor at UT College of Law, so I still have a number of friends up there on the faculty, so a good time was had by all. But one of the conversations I had with my friend John Barrett, Associate Professor of Law at UT College of Law, got my wheels spinning and reminding me that it has been a while since I wrote about obviously unpatentable but yet patentable inventions (see College Football Playoff System and Method to Spur the Economy by Cutting Taxes). John and I frequently talk politics, and not sharing identical politics our conversations are always lively and entertaining. But one thing we are definitely in agreement with is that the spending in Washington DC needs to stop, and John proposed what I believe is a brilliant solution!
The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated KSR Examination Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update. The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.
As Alice once said things are growing “curioser and curioser.” I just opined about the “fuzzy” looking glass called Bilski v. Kappos for determining what is (or remains) patent-eligible subject matter under 35 U.S.C. § 101. See Through the Fuzzy Bilski Looking Glass: The Meaning of Patent-Eligible under 35 U.S.C. § 101 . After reading King Pharmaceuticals, Inc. v. Eon Labs, Inc., I’m now ready to throw my Ouija board though that Bilski looking glass. With an opportunity to render some order out of the Bilski chaos, the Federal Circuit instead completely ducked the patent-eligibility issue clearly presented in King Pharmaceuticals. The Federal Circuit then created (and I do mean “created”) the new “an anticipated method claim doesn’t become patentable if it simply includes an informing step about an inherent property of that method” doctrine. With this new “doctrine,” we have now “jumped down the rabbit hole” into a surreal “Bilski in Patentland” world.
Earlier this week Apple, Inc. had three patent application publish on what most would consider strange, overbroad and/or dubious inventions. I came across these patent applications thanks to CNET (via Unwired View), and they relate to a method of using a smartphone or other portable electronic device to access travel services (US Patent Application 20100190510), a method of using a smartphone or other portable electronic device to access hotel services ( US Patent Application 20100191551) and a method for providing enhanced access to high fashion using a smartphone or other portable electronic device (US Patent Application 20100191578).
The patents largely follow the same formula, the drawings are remarkably similar, and all relate back to provisional patents filed at the end of January 2009. Many will ridicule these patent applications, and given that obviousness is now about common sense thanks to the Supreme Court’s decision in KSR v. Teleflex I think rightly so. I find it hard to believe that there would not be prior art located that dates back to before January 2009 that will present massive difficulties for Apple.
Rather than go through each of these patents with detail, allow me to pick one. Staying well clear of the fashion patent because I don’t want to get in over my head, that means I need to select from an automatic notification of an airplane arrival or a method of configuring a hotel room based on user preferences. As fun as the hotel thing sounds an automatic arrival notification seems more practical to me, although probably less patentable.