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."