I am still in San Diego, California at the Annual Conference of the National Association of Patent Practitioners, which is being held at the Embassy Suites Hotel, which is roughly across the street from the U.S.S. Midway. The conference has been a good one with some excellent presentations. This morning there was a Bilski presentation, and since then we have been talking about KSR v. Teleflex. Right now Bruce Stoner, the former Chief Judge of the Board of Patent Appeals and Interferences, is talking about Reexamination generally, and discussing the impact KSR has had on Reexamination decisions. As it turns out, very few inter partes Reexaminations have reached the BPAI to date, with only 11 decisions having been reached by the Board relating to inter partes Reexaminations, with 10 cases still pending. With a limited data set it is hard to make broad generalizations, but it seems that in about half of the cases where the examiner has rejected claims during inter partes Reexaminations those rejections have been reversed by the Board. In a handful of other case the examiner has been affirmed, and in a few cases the examiner was reversed but the claims were rejected on other grounds. Perhaps this is a self selecting sample, or perhaps the sample is just too small. It is a little surprising to see the Board reversing examiner rejections in inter partes Reexamination at such a high rate.
One particularly interesting thing that came up during the last presentation was discussion of the nearly ubiquitous language often found in patent applications relating to what one of skill in the art would know or understand in terms of the invention, which is frequently used to try and capture variations of the invention or aspects of the invention that may not be explicitly disclosed or disclosed inherently. Under KSR this is probably not the most appropriate language to continue to use. Because KSR can be applied much more liberally than the previous suggestion, motivation and teaching test, and because KRS is based on “common sense” you really want to be careful what you do say in the application that could give the examiner an opportunity to use your own application against you.
Given that so many of the specific KSR tests relate to the “skill in the art” and if the examiner wants to crucify you using KSR they could conceivably use your own language discussing what those of skill in the art would appreciate. This and other things you say could potentially serve for the examiner on a silver platter the ability to use your application against you. The thinking is that characterizing what others would know could be admitting the invention is obvious or components are within the skill of the art and, thereby, “common sense” under KSR.
To address this a suggestion was offered from the audience that it would be better to say:
One of ordinary skill in the art should appreciate after learning the teachings related to the present invention contained in this application that…
To some extent, this language still allows you to try and bootstrap into your application that which is implicitly or inherently disclosed based on what would be understood by those of skill in the art, while at the same time giving you a way to explain what you are saying is not an admission of any kind. This language may give some leeway to argue that you are stating that it would be obvious to those of skill in the art only after having read the brilliance and genius of the invention described.
As I have written in the past, it is no stretch to say that under a strict interpretation of KSR if an inventor follows a path that they thought would work there could be no patent because that would be obvious, so under a strict reading of KSR only those invention paths that were believed to be a complete waste of time but result in something that works can be patented. Obviously (pun intended) that cannot be the law because that would mean virtually nothing can be patented ever again, save those situations where you have an “accidental inventor.” But that is what the Supreme Court said, in their infinite and unending wisdom as it applies to patent matters.
Luckily, the Patent Office has not really been interpreting KSR to its most far reaches, although there are at least some decisions from the Board that suggest the long irrelevant test – “obvious to try” – may be used to show that an invention is obvious. But as has been suggested by many of the speakers today, KSR is a relatively young case and there will certainly be many years of development of obviousness law in its wake. In the meantime we are all tasked with trying to figure out how to make sure we both get patents today and those patents have the potential of surviving whatever changes will occur. Increasingly the job of a patent attorney or patent agent requires a crystal ball, which necessarily requires us to try and figure out how the Supreme Court will undoubtedly screw up patent law in the years to come. God I hope the they get Bilski right! (see US Supreme Court Grants Cert. in Bilski)
For those interested in the presentation I gave yesterday relating to Patent Office Rule Changes, my powerpoint presentation can be found below.