Determining Obviousness

Determining whether an invention is obvious and therefore not able to be patented is not as easy as it sounds. Even patent examiners can be challenged by this issue. To help, the USPTO created Examination Guidelines for Determining Obviousness Under U.S.C. 103**[R-6]. The guidelines review pertinent court cases and outline a procedure for searching for prior art that has a bearing on obviousness.

Time Magazine's 50 Best Inventions of 2009

Time Magazine recently picked the 50 best inventions of 2009. Topping the list is NASA's Ares Rocket designed for returning to the moon and venturing to Mars. The rocket is ten times safer than the current shuttles and two to three times safer than competing boosters. Other inventions range from the practical but mundane (light bulb, bladeless fan, smart thermostat) to something out of science fiction (handheld microwave camera that sees through walls, smart bullets, teleportation, eye camera). Time also created a list of the five worst inventions which include a smile monitor for employees at Keihin Electric Express Railway in Japan and a bra that converts to two gas masks.

USPTO Work Sharing With Other Patent Offices

In his Wednesday, Nov. 18, 2009 blog USPTO Director David Kappos discusses the benefits of patent offices from different countries sharing background work leading up to the filing of a patent. Shared work could include prior art searches and office actions that apply similar patentability criteria. However, he emphasized that work sharing would not substitute for decisions about whether an invention is patentable in the United States.

Director Kappos specifically mentioned bilateral agreements among the USPTO, EPO, and JPO made at the Trilateral meetings in Kyoto, Japan last week that will enable the USPTO "to use international search reports, written opinions, and international preliminary examination reports developed within the framework of the international Patent Cooperation Treaty (PCT), in examining patent applications filed at the USPTO."

Trademark Tribal Insignia Database

According to an announcement in the Federal Register, the USPTO has created a database containing the official insignia of all federally and state recognized Native American tribes. Tribes can voluntarily submit insignias to this database. The database serves as a reference to help determine the "the registrability of a mark that may be similar to the official insignia of a Native American tribe." An FAQs page is available with further information including how to search for tribal insignias in the larger USPTO Trademark Database.

USPTO Director's New Blog

On Nov. 10 David Kappos, the new Commerce Under Secretary and USPTO Director, launched a blog to get feedback from the Intellectual Property (IP) community. His first blog entry discusses the Independent Inventors Conference held at USPTO last week, initiatives geared toward small entity inventors, and proposed patent reform legislation including moving to a first to file system.

Kappos says the first to file system represents only a minimal change and would still protect the inventor:

The new system would not create a situation where someone could steal an idea and win a race to the patent office. That person would not be an inventor and would not be eligible for a patent in the first place. Keep in mind that there are stiff penalties in place to protect against that. So the real issue involves the case of simultaneous non-collaborative invention that is currently resolved through the interference system.

He goes on to say that only ".01 percent of all patent applications could be affected by a change to first inventor to file."

Federal Register Notice: USPTO Performance Review Board Members

[Federal Register: October 26, 2009 (Volume 74, Number 205)]
[Notices][Page 54963]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr26oc09-33]

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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-C-2009-0046]
Performance Review Board (PRB)
AGENCY: United States Patent and Trademark Office.
ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: In conformance with the Civil Service Reform Act of 1978, 5 U.S.C. 4314(c)(4), the United States Patent and Trademark Office announces the appointment of persons to serve as members of its Performance Review Board.

ADDRESSES: Director, Human Capital Management, Office of Human Resources, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT: Karen Karlinchak at (571) 272-6200.

SUPPLEMENTARY INFORMATION: The membership of the United States Patent and Trademark Office Performance Review Board is as follows:

• Sharon Barner, Chair, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.
  
• Stephen S. Smith, Vice Chair, Chief Administrative Officer, United States Patent and Trademark Office.
  
• Robert K. Stoll, Commissioner for Patents, United States Patent and Trademark Office.
  
• Lynne G. Beresford, Commissioner for Trademarks, United States Patent and Trademark Office.
  
• Barry K. Hudson, Chief Financial Officer, United States Patent and Trademark Office.
  
• Arti K. Rai, Administrator for External Affairs, United States
  Patent and Trademark Office.
  
• John B. Owens II, Chief Information Officer, United States Patent
  and Trademark Office.
  
• James A. Toupin, General Counsel, United States Patent and
  Trademark Office.

Alternates

• Lois E. Boland, Director, Office of Intellectual Property Policy and Enforcement, United States Patent and Trademark Office.
  
• Deborah S. Cohn, Deputy Commissioner for Trademark Operations, United States Patent and Trademark Office.
  
• Margaret A. Focarino, Deputy Commissioner for Patent Operations,
  United States Patent and Trademark Office.

Dated: October 19, 2009.
David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
[FR Doc. E9-25722 Filed 10-23-09; 8:45 am]

BILLING CODE 3510-16-P

Federal Register: Patents Ombudsman Pilot Program Comment Request

[Federal Register: October 27, 2009 (Volume 74, Number 206)]
[Notices] [Page 55212]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]

To view the complete text of this Comment Request see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2009_register&docid=fr27oc09-45

Request for Comments on Patents Ombudsman Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) is currently developing a Patents Ombudsman Pilot Program. The Patents Ombudsman Pilot Program is intended to provide patent applicants, attorneys and agents with assistance with application-specific issues including prosecution advancement concerns. The Patents Ombudsman Pilot Program is not intended to circumvent normal communication between pro se applicants or applicant's representatives and examiners or Supervisory Patent Examiners (SPEs). The USPTO is inviting public comment on the proposed Patents Ombudsman Pilot Program.

Comment Deadline Date: Written comments must be received on or before November 27, 2009. No public hearing will be held.

Federal Register: Re. Trademark Signatures, Representatives, and Correspondence Address

[Federal Register: October 26, 2009 (Volume 74, Number 205)]
[Rules and Regulations][Page 54898-54912]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]

To see the complete text of this Final Rule see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2009_register&docid=fr26oc09-4

Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule
SUMMARY: The United States Patent and Trademark Office (``Office'') is revising the Trademark Rules of Practice to set forth the requirements for signature of documents filed in the Office, recognition of representatives, and establishing and changing the correspondence address in trademark cases.

DATES: This rule is effective December 28, 2009.