BPAI Reports Dramatic Rise in Appeals in January 2009

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).

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Supreme Court to Review Bilski Case

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.

Patent Reform: First to File

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

“Obvious to Try” Doctrine (In re Kubin)

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

Federal Circuit Case: Assignment Agreement Did Not Explicity Assign Continuation-In-Part Application

The Federal Circuit has ruled that a patent assignment was ambiguous because it was not clear whether children patent applications from the original parent application were to be included in the assignment.  The Federal Circuit remanded the case for the trial court to resolve the ambiguity issue in the patent assignment agreement.  Euclid Chemical Co. v. Vector Corrosion Technologies, Inc. 2008-1170