USPTO Issues New Guidelines on Patentable Subject Matter

The USPTO recently issued new guidelines for patent examiners to use in determining whether a claimed invention meets the baseline criteria to be eligible for patent protection. Recent Supreme Court cases have significantly altered these criteria. Section 101 of the Patent Code says:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Supreme Court to Decide if Isolated Human Genes Are Patentable

The U.S. Supreme Court recently granted review of a decision by the Court of Appeals for the Federal Circuit affirming that isolated human genes are eligible for patent protection. The Court granted review of a single question:

Are human genes patentable?

USPTO Proposes Increased Patent Fees

The USPTO released their proposed fee increases for the next fiscal year. Though most of the increases are moderate, there are some significant increases:

Director Kappos to patent examiners: Higher rejection rates does not equal higher quality

Professor Dennis Crouch of Patently O has reported that new USPTO Director Kappos sent an email to patent examiners rejecting the past leadership's attitude that higher rejections rates in recent years was a sign of increased patent quality. As discussed in a previous post, the USPTO needs a dramatic change in institutional culture and attitude if it is to restore its damaged relationship with the patent community and meaningfully address problems such as application backlog and declining revenues. The trend for several years has been for rejections to be more arbitrary and subjective, in part due to recent court decisions, but Director Kappos' message may be a sign that improvement is coming. They say "the proof of the pudding is in the eating." In the this case, the proof that the Examiners are listening will be if and when the examiner's corp improves the quality of its examination.

CAFC Reins in TTAB Fraud Decisions

The Court of Appeals for the Federal Circuit ruled yesterday that fraud on the U.S. Patent and Trademark Office (“PTO”) requires proof of actual intent to deceive, which may not be inferred merely because a trademark applicant made a misstatement that it should have known was false. The court held that “a trademark is obtained fraudently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.” In re Bose Corp., 2008-1448, slip op. p. 7 (Fed. Cir., Aug. 31, 2009).