Dear Senator/Representative:
The availability of strong and certain patent protection for inventions is essential for the welfare of the American economy. Due to the current economic crisis, the Toledo Intellectual Property Law Association (TIPLA) believes that the time is ripe for responsible patent law reform. TIPLA urges improvements to the U.S. patent code that will improve the quality of examination at the U.S. Patent and Trademark Office (USPTO). Improved examination quality will strengthen patent rights and reestablish a level of certainty within the U.S. patent system that is necessary for the continued encouragement of innovation among American inventors.
To this end, TIPLA respectfully solicits consideration of the following proposals during the 111th Session of the United States Congress.
1. Codify the Teaching-Suggestion-Motivation (TSM) Standard for Obviousness.
Inventions under U.S. patent law must be new, useful, and non-obvious. Following the formation of the Federal Circuit in 1982, a body of case law was established where a patent claim was found “obvious” only if the knowledge of a person of ordinary skill in the art revealed some teaching, suggestion or motivation (TSM) to combine prior art teachings and arrive at the claimed invention. The U.S. Supreme Court’s recent decision in KSR v. Teleflex, 550 U.S. 398 (2007) has diminished the importance of the TSM standard. The intent of KSR was to refocus the law on the obviousness framework originally articulated in Graham v. John Deere Co., 383 U.S. 1 (1966). However, KSR has had the unfortunate practical effect at the USPTO of elevating various litmus tests “that may support a conclusion of obviousness”. See Manual of Patent Examining Procedure, E8r7, Section 2143. Accordingly, the KSR decision has resulted in considerable uncertainty in the patent process and in the validity of patents issued prior to the KSR decision.
TIPLA advocates a legislative overruling of the decision in KSR v. Teleflex. Section 103 of 35 U.S.C. should be modified to recite that “an invention shall be deemed obvious only where there is a teaching, suggestion or motivation within the knowledge of a person of ordinary skill at the time of the invention to modify or combine elements of the prior art and arrive at the invention”. This will return the standard for obviousness to the body of law developed by the Federal Circuit. Codification of the TSM standard will provide applicants and patent owners with a higher degree of certainty relative the patentability of their inventions and the validity of their resulting patents. Improved certainty relating to patentability of inventions and validity of patents is critical to the continued promotion of the progress of science and the useful arts.
2. Create a USPTO Ombudsman Position.
The leadership at the USPTO is largely informed and influenced by career patent office professionals. While having a great deal of experience in patent examination, patent office professionals often have minimal experience as patent applicants or patent practitioners.
TIPLA proposes the establishment of a Patent Office Ombudsman position that will advise Congress and the Patent Office leadership on policies and legislation relating to patent practice. The Ombudsman should be a patent attorney or patent agent with a considerable amount of experience in the patent practice. The Ombudsman position will further provide means for users of the U.S. patent system to have a direct and substantive impact on the development of administrative rules prior to their implementation.
3. Establish Regional Patent Offices to Improve Examination Quality.
The USPTO is currently located in Alexandria, Virginia. Although the USPTO rigorously recruits individuals to the Examining corps, the applicant pool is geographically limited to persons wishing to reside in the metropolitan Washington, D.C. area. Even with telecommuting and hoteling policies, U.S. Patent Examiners still have to travel to the USPTO in Alexandria on a frequent and regular basis.
TIPLA strongly recommends the creation of regional Patent Offices, strategically located in major cities throughout the nation. The availability of regional Patent Offices will improve patent quality and reduce patent pendency by increasing the number of well-qualified Examiners serving in the Examining corps. Importantly, the formation of regional Patent Offices will result in an immediate creation of well-paying and necessary jobs nationwide, and should be considered as a form of economic stimulus.
TIPLA further observes that Detroit, Michigan and Toledo, Ohio have a deep pool of qualified labor from which the USPTO could draw if there were a nearby regional Patent Office. Many local engineers and scientists, whom may soon be seeking alternative career opportunities due to the downturn in the automotive industry, meet the educational requirements for the Examining corps. These talented individuals could undoubtedly be trained to serve as capable U.S. Patent Examiners.
TIPLA sincerely asks Congress to consider the above proposals as part of any future patent reform legislation. It should be understood that TIPLA considers the above proposals as supplemental to the other reform measures that have been considered in recent legislation, but nonetheless important to responsibly and effectively reforming the U.S. patent system.
Thank you for your careful consideration of our proposals.
Respectfully,
TOLEDO INTELLECTUAL PROPERTY
LAW ASSOCIATION (TIPLA)
TIPLA Letter to Congress – February 23, 2009.
February 24, 2009 by toledopatentlaw
TIPLA mailed the following letter on February 23, 2009 to various local members of Congress. The letter suggests three important patent law reforms endorsed by TIPLA. TIPLA thanks all members who contributed to the writing of this letter.
