Archive for the ‘Patents’ Category

Existing Patent Applications and the New PTO Rules

October 10, 2007

Patently-O has an interesting discussion about various strategies practitioners may want to use to avoid or at least delay the immediate impact of the USPTO rules changes that limit the number of claims and continuations that may be filed. Note! November 1st is the key date for existing patent applications that have had an action on the merits before the rules went into effect, so get cracking!

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PTO Posts New Post-KSR Obviousness Guidelines

October 10, 2007

Of interest to patent-heads only: the USPTO has published examination guidelines for determining obviousness in light of the Supreme Court’s KSR v. Teleflex decision. Ever since the KSR decision landed, patent agents and attorneys have been waiting to find out how the PTO will interpret the changes in the case law. In their new approach to obviousness, the PTO will continue to search for references that “teach, suggest, or motivate”, but such a teaching suggestion or motivation will no longer be necessary for a 103 rejection. Instead, the PTO now provides 7 rationales that can be used by an examiner to bridge the gap between prior art references and the claimed invention.

See: Changes to examination procedure in the Federal Register

KSR v. Teleflex

May 1, 2007

The Supreme Court issued a unanimous ruling today in the case of KSR v. Teleflex. This case revolved around whether Teleflex’s patent on self-adjusting gas pedal failed the non-obviousness requirement of Section 103. With this ruling, the Court is making it easier to challenge patents based on obviousness. This is very significant, as the standard for determining obviousness has been
both narrow and ill-defined. Patently-O has the rundown. Expect more on this in the coming weeks.

Software Patents before Diamond v. Diehr?

April 19, 2007

On the wikipedia entry on Software Patents there is a dispute regarding the standard story about software Patents. Most people will tell you that software was not patentable before Diamond v. Diehr (1981). However, some enterprising individuals have found some pre-1981 software patents, including this one for “Computer Data Read-In Control System” Filed in 1964 #3,316,539. The kicker I believe, is that most if not all of these patents include a clear hardware component. On the other hand one could cite Gottschalk v. Benson, 409 U.S. 63 (1972) where the court rejected the patentability of a program that converted a Binary Coded decimal numbers into pure binary numbers. I think rather than being explicitly disallowed, patents for software were simply a non-issue (given the paucity of cases and patent applications on the subject) that was largely unconsidered and therefore unresolved before the Court issued its ruling in Diamond.