The U.S. Patent and Trademark Office, otherwise known as the USPTO, is being implored to issue a new guidance memo concerning inherency standards during examination procedures. Legal expert Irving Feit, from the renowned firm of Lucas & Mercanti, asserts that misapplications of these standards during prosecution occur all too frequently. He maintains that the consistency of inherency standards within the USPTO should reflect those present in the federal court system.
Periodically, the USPTO issues instructive memos to its patent examiners. These memos often tackle contentious issues such as patent eligibility and what constitutes ‘obviousness’. For instance, a memo delivered on March 20 was primarily centered on means-plus-function claims. However, in light of recent misapplications, attention is being called to the need for a specific guidance memo addressing inherency standards.
In order to provide greater clarity and instill a sense of consistency, Feit is advocating for the USPTO to take it upon itself to facilitate this change. It will be interesting to watch how the USPTO responds to this call to action and what subsequent alterations may be prompted in patent examination procedures.
For more detailed insights provided by Irving Feit, you can read the piece on Law360.