KSR – A regulatory response?
The Patent Office has long had the power to promulgate procedural rules for patent prosecution. Specifically, 35 U.S.C. 2(b)(2)(A) gives the Office the power to “establish regulations, not inconsistent with law, which … shall govern the conduct of proceedings in the Office.” (The Patent Office has had this power since the mid-1800s.)
The main proceeding of interest here is, of course, patent examination. The Office has, to date, made far too little of its power over procedure. It could, for example, conduct a comprehensive review of the best way to structure the process of proof to yield reliable, efficient determinations about nonobviousness … and issue binding regulations that create the proof process for all applications. If a series of presumptions makes sense, so be it; if different approaches are better for different types of art, that’s fine too. The key point is this: The Patent Office should make full use of its plenary power over prosecution procedure to make the most of the Supreme Court’s guidance about nonobviousness in KSR. Don’t wait for the Federal Circuit to sort through a few hundred cases; you, PTO, can take a systemic view to rationalize prosecution in tens of thousands of cases.
It has been awhile since I took Administrative law, but doesn’t the APA prevent agencies from making rulings without solid evidence to back them up. That is, Examiners can’t be making subjective rulings based on what they think would have been obvious to POSITA. Granted, even with the TSM test in place Patent Examiners hardly ever cite to the suggestion or motivation in the reference (at least in a first Office action), but in theory practitioners can generally force them (or the BPAI) to apply the test. In court, it is a whole ‘nother ball game, where defendant’s are willing to spend the cash to establish evidence to invalidate a claim, including finding evidence of TSM in non-patent references, expert witnesses, etc. The test still seems to be workable to me, especially in the administrative setting, and especially to prevent hindsight. Perhaps we will end up with two sets of rules, and the presumption of validity will go away, since the PTO will/should be limited by the type of evidence (i.e., not personal opinion of an Examiner) that may be used to make an obviousness rejection. Who knows, maybe we will even end up with a presumption of invalidity.
Comment by Ian — May 1, 2007 @ 1:08 pm