http://www.thefireofgenius.com/2007/04/30/ksr-a-regulatory-response/ Academic commentary about patent law, i.p. law, creativity, and more Mon, 06 Oct 2008 19:47:42 +0000 http://wordpress.org/?v=2.5 http://www.thefireofgenius.com/2007/04/30/ksr-a-regulatory-response/#comment-52884 Ian Tue, 01 May 2007 20:08:22 +0000 http://www.thefireofgenius.com/2007/04/30/ksr-a-regulatory-response/#comment-52884 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. 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.

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