InventLaw.com – Patent and Invention Blog

Many people believe Michael Jackson is just a singer and performer when he also was an inventor of a patent on a “Method and Means for Creating Anti-Gravity Illusion” (U.S. Patent No. 5,255,452).  The patent is for a shoe system that allows the shoe wearer to lean forwardly beyond their center of gravity (a slot within the heel of the shoe would removably engage a hitch member on the stage by the wearer simply sliding the shoe forward).  See U.S. Patent No. 5,255,452.

President Obama has announced that David Kappos (head of IP law at IBM) will be nominated as the next director of the U.S. Patent & Trademark Office.  Mr. Kappos should take the USPTO in the right direction to help improve access to patents by inventors and small businesses who have limited budgets.  See USPTO Announcement.

Reuters is reporting that the U.S. Patent & Trademark Office revenue has dropped from $6.9 million a day in January (2009) to just $5.9 million a day last week.  This is a result of the dramatic decrease in patent allowance rates the past three years combined with the poor economy.  The USPTO is seeking to temporarily transfer a portion of the trademark surplus to help out.

The Board of Patent Appeals and Interferences (BPAI) has reported a large increase in BPAI appeals and in its backlog.  The backlog of appeals has almost doubled to over 10,000 pending appeals.  This is the result of the USPTO implementing strict review procedures which have result in an allowance rate of only about 42% (historically the allowance rate has been around 70%).  Changes are occuring at the USPTO as I write this post, so we should see the BPAI appeals level off before the end of the year (and hopefully see the allowance rate get to a healthier level).

The  Supreme Court has agreed to review the Bilski case which has been a controversial decision affecting business process and software patents.  Since the 1998 State Street ruling, software and business process patents have been widely accepted.  However, after the Bilski decision by the Federal Circuit last year, receiving (and enforcing) patents for business process and software inventions has been increasingly difficult.  Whether or not you are a fan of software patents, this will be an important decision for the patent attorneys and patent owners.

In a patent infringement lawsuit filed in 2003 by Uniloc against Microsoft for infringing upon an anti-piracy software patent, a jury has awarded Uniloc $388 million. As expected, Microsoft plans to appeal.  Uniloc USA, Inc. v. Microsoft Corporation (U.S. District Court, District for Rhode Island – C.A. No. 03-440 S.).

The Senate Judiciary Committee has approved an amended form of S.515.  One of the biggest changes to the patent system is the “first to file” system which would replace the current “first to invent” system.  This will encourage patent applicants to file earlier to establish an earlier filing date instead of relying upon their date of invention for priority because patent applicants will no longer be able to “swear behind” another patent reference.  S 515 as Amended

The Federal Circuit relied upon the “obvious to try” doctrine to uphold a USPTO ruling that a patent applicant’s DNA molecules encoding a protein known as ‘NAIL’ were obvious over the combined prior art references.  The Federal Circuite stated that “obvious to try” is erroneously equated to obviousness if (1) the inventor is faced with “numerous possible choices … where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful” or (2) “the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.”  The Federal Circuit ruled in the Kubin case that a skilled artisan would have had a “reasonable expectation of success” in obtaining the claimed invention in light of the prior art.  The Federal Circuit further declined to adopt any “formalistic rules” with respect to whether prior art is predictable or unpredictable.  In re Kubin 08-11843

Research and development expenses are deductible the same year as incurred rather than capitalizing them.  Included in R&D expenses is patent attorney fees in preparing, filing and prosecuting a patent application.  More information is Here from the IRS.  As always, see your accountant for professional tax advice!