Lame Obvious Patent Applications: HEAL!

Patent law is so complicated that it is very hard to connect the different parts together intelligently. But let’s take a look at two different branches of patent law and think about how they fit together.

First, there is obviousness. The basic requirement of a patent is that it be a new non-obvious improvement over the prior art. In the past, there was a strong presumption that an issued patent was valid and non-obvious over the prior art, and it was hard to successfully argue that an issued patent was invalid as obvious from the teachings of one or more prior art references. As a result, patent prosecutors writing a new patent application often provided just a description of how the claims and figures worked, with little or no extra discussion explaining the non-obviousness of the invention—what I now think of as a “bare application.”

Then in its 2007 KSR decision, the Supreme Court radically rewrote the test for obviousness, and strongly signaled that the courts should be more active in finding issued patents as obvious and invalid. Now a valid patent has to be a much more significant improvement than was required before. Suddenly, bare applications without discussion of non-obviousness are unprotected against a high risk of being found obvious.

Another topic, seemingly unrelated to the issue of obviousness, is continuation practice. The specification of an existing patent application can be refiled with new claims—a continuation application. Section 112 of the patent statute requires that the specification provide a written description of the claims that enables one of skill in the art to know how to make and practice the invention. If the patent attorney believes that the existing specification satisfies the written description and enablement requirements, then it can be refiled without any new matter as a straight continuation application. Sometimes the patent attorney believes that some new matter has to be added to provide written description and enablement. That new matter can be added to the existing application, which is then filed with the new claims as a continuation in part (CIP) application.

One downside of a CIP is that if the new matter is needed to support the claims, then the priority date with respect to the prior art is the new later filing date. Not good. Sometimes (for complicated reasons) a CIP does not need the new matter to provide support for the claims, and then the priority date is the better earlier filing date of the parent application.

So now, let’s play a little alphabet soup and consider the seemingly unrelated topics of KSR and CIPs together. There are many bare patent applications still pending that were filed pre-KSR and written without any context or obviousness story. But new matter can be added in a CIP that provides that context and describes the invention in a way that highlights its non-obviousness over the prior art. And the good part is that the new matter is not needed for written description or enablement, so the claims would still be entitled to the earlier priority date. But the new narrative context and story of the invention greatly improves the vulnerability of the patent against an obviousness attack.

Pretty neat, n’est-ce pas?