State of Innovation

Patents and Innovation Economics

Obviousness – Flow Chart

Novel2This is my second post on the nonobviousness standard for patents (35 USC 103).  The earlier post focused on the practical questions that an inventor and his attorney face when negotiating with the Patent Office (PTO).  This post attempts to provide a rational approach to the nonobviousness requirement.

Once it has been determined that a patent claim is novel, step 10 in the flow chart, there are only two things that can make the invention nonobvious.  One is a new result and the other is a new combination that has provides same result in the prior art.  At step 12, we determine if the invention has a new result.  For instance, Edison’s light bulb had a new result of a high resistance filament.  This result is important because it makes it possible to build an economically Read more »

October 20, 2009 Posted by dbhalling | -How to, -Philosophy, -Prosecution, Patents, Uncategorized | , , , , | 4 Comments

Patents – Good News

Gary Locke, the U.S. Commerce Secretary, in an article in Journal Sentinel stated that the time it takes to issue patents is unacceptable.  The article also points out the problem of patent office policy forcing examiners to reject applications at unprecedented rate.  Secretary Locke also acknowledged that these problems have hurt the American economy.  This is great news for inventors.

The only potentially bad news in the article is the statement that the patent office faces severe financial problems.  This may mean higher fees in the future.  Please read the full article at http://www.jsonline.com/business/54199852.html

August 25, 2009 Posted by dbhalling | -How to, -Prosecution, Patents | , , , , , | Leave a Comment

Understanding Patent Novelty (35 USC 102) for Inventors

In order to obtain a patent your invention has to be useful (35 USC 101), novel (35 USC 102), and non-obvious (35 USC 103).  The goal of this post is to explain the novelty requirement in terms that are clear to engineers and scientists. Read more »

August 4, 2009 Posted by dbhalling | -Law, -Philosophy, -Prosecution, Patents | , , , , , | 3 Comments

Three Steps to Reduce Patent Pendency Times

President Obama has prioritized reducing patent application pendency times.  What are your top three suggestions to achieve this goal?  Here are my mine.

One: Change the way examiners are evaluated.  According to my understanding, productivity count or points are a major part of an examiner’s performance review.  The examiner gains points for reviewing a new case, when an applicant files a RCE (Request for Continued Examination) and if the case is allowed or abandoned, among other activities.  This system encourages “churning” where an examiner will force the applicant to file a RCE in order to obtain an allowance to increase their points. Read more »

July 10, 2009 Posted by dbhalling | -Philosophy, -Prosecution, Patents | , , , , , | Leave a Comment

Patent Examiner on Why Allowance Rate is so Low

This comment was posted by an Patent Examiner at Patent Prospector.  The Examiner explains why he thinks the allowance rates are so low and his explanation is consistent with my post, Patent Allowance Rate Falls to 42%.

ALLOWANCE RATE

I believe that the allowance rate is artificially low, although not due to churning…at least not exactly.

I am a current examiner. Under Dudas, the PTO pursued a policy of “increased patent quality”. The way that the PTO enforced this quality initiative was by reviewing office actions. Not reviewing all office actions, mind you, but only reviewing allowances.

Unfortunately, the PTO failed to see the problem that they were setting up. An examiner is then left with two choices:

1) An examiner could generate rejections without ever incurring quality review, or
2) An examiner could generate an allowance that would be scrutinized by quality review and possibly find themselves assessed a quality review error.

So, it has been safer for an examiner to always reject…at least until very recently. There has been some loosening of the allowance quality review rules in recent weeks as it appears that “reduced pendency” is the new key motivation under Obama.

July 6, 2009 Posted by dbhalling | -How to, -Law, -Prosecution, Patents | 4 Comments