Intellectual Property: The US Patent & Trademark Office: Washington ... We Have A Problem

August 9, 2009

By William Greener
Published in the August 2009 issue of The Rochester Engineer by the Rochester Engineering Society

The US Constitution originally provided for the right to obtain a patent. However, the first patent law was not codified until Congress passed the Patent Act of 1793, 17 years hence. Under the law, a patentable invention had to be novel and useful. For the next 159 years, the novelty and utility of an invention were the sole legal requirements for obtaining a patent.

Common law, i.e., laws that are not enacted by a legislative (statutory) body, but rather laws that derive their authority from the judgments and decisions of courts, must nonetheless be observed. Court decisions, though, are often diversely (and mistakenly) interpreted. In an 1851 US Supreme Court case named Hotchkiss v. Greenwood, the Court applied the as yet 'non-statutory' (i.e., 'common law') principle of "obviousness" to reach their decision that Hotchkiss' patent was invalid. The case had to do with the manufacturing knobs of porcelain or potter's clay, or any kind of clay used in pottery, and shaped and finished by moulding, turning, burning, and glazing. The Court determined that clay knobs as well as other knob materials, metallic shanks and spindles, dovetail cavities in knobs, and securing means for fastening the metallic shank were known at the time of the invention. The only thing new was the substitution of a knob made out of clay in that peculiar form for a knob of metal or wood. While it might have provided a better or cheaper article, the Court ruled that it was not the subject of a patent. The Court's test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void. The Court employed its 'obviousness' criteria in the sense of "inventiveness" and what was for a long time characterized as the "flash of genius" test.

It was not until Congress passed the Patent Act of 1952 that the statutory test of "obviousness," i.e., whether the subject matter of the invention as a whole that was sought to be patented would have been obvious to a person of ordinary skill in the art, was codified into law. Thus 1952 was considered a watershed year for patent law, and the tripartite test of 'utility', 'novelty' and 'non-obviousness' remains today the basic statutory requirement for determining the patentability of an invention.

Since then, the relatively calm patent waters have gotten choppy primarily over the last several years. In April 2007, a case by the name of KSR v. Teleflex ("KSR") modified the common law criteria for determining whether an invention was non-obvious in view of the prior art.

The KSR case involved a patent claim owned by Teleflex directed to connecting an adjustable vehicle control pedal to an electronic throttle control. KSR argued that the combination of the two elements was obvious in view of the prior art, and the claim was therefore not patentable. Initially, the District Court (DC) ruled in favor of KSR. Then the Court of Appeals for the Federal Circuit (CAFC) reversed the DC court's decision. Ultimately, the US Supreme Court reversed the judgment of the CAFC and found in favor of KSR that the Teleflex patent claim was obvious and invalid.

Prior to KSR, the common law test for determining obviousness was referred to as the teaching-suggestion-motivation (TSM) test. In short, the test was whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.

The Supreme Court felt that the CAFC had applied the TSM test too rigidly and unanimously modified the obviousness criteria, stating in its syllabus: "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103 [the obviousness statute]. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims."

However, when the standard was applied to the facts before the Court, the Court stated: "The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading [a prior art patent] with a sensor." Their answer was "yes".

In general, KSR has made it more difficult and more expensive to obtain a patent, especially in the less complex technologies. After KSR, the USPTO made an attempt to change some of the substantive Rules that guide patent practice. For example, limits were proposed for the number of patent applications that could be filed as well as the number of claims that could be filed in any given patent application (these proposed rule changes are on hold while this matter is being taken up in court). Other recent court decisions about the patentability of software and business methods have also contributed to what many in the patent professional consider to be a big mess (or, to engineers, a problem that needs solving).

One might ask, "Why are these events occurring?" One might answer, "It's because the USPTO has neither the time, money, nor the resources to effectively manage its workload. There are almost one million US patent applications pending in the USPTO; it takes 3-1/2 to 4-1/2 years for a US patent to issue; the USPTO is in a hiring freeze; patent examiner training programs have been reduced and/or eliminated due to budget considerations, and other reasons. The apparent solution is to de-incentivize patent applicants from filing patent applications by making it too expensive, too time-consuming, and too risky. Ironically, this all seems very "anti-commerce" for a government agency (the USPTO) under the Department of Commerce.

Congress has been trying to pass a patent reform bill for the past couple of years without success. While certain changes in US law have been proposed that try to harmonize various aspects of US practice with that of Europe and other major players, not much has been accomplished that addresses the concerns mentioned above.

Generating solutions to social and political problems can be especially frustrating to engineers because, when something is broken, we figure out a way to fix it. In this case, it's not easy. Organizational patent applicants can have considerable influence over policy makers. Their interests, however, are not always aligned with those of small business and individual inventors. The US Chamber of Commerce has, in my opinion, taken a reasonable position in the ongoing patent controversy. Regional Chambers of Commerce may provide a vehicle for business owners to express their frustrations in the intellectual property arena. Individuals can write and call their government representatives to find out who supports what, and why. As always, it comes down to getting involved. Your favorite patent attorney may also have useful information to give you if you ask. Remember, your success is their success. And, there is always hope for Washington, right?

(Bill Greener is a registered US patent attorney with Bond Schoeneck & King, PLLC ( and a member of the Seed Capital Fund of Central New York ( BS&K's Rochester office is at 345 Woodcliff Drive, Suite 208, Fairport, NY 585-362-4728; All opinions are Mr. Greener's alone.)