Patent Office Issues New Guidelines On Obviousness

from the how-obvious-of-them dept

Following the Supreme Court's April Teleflex v. KSR decision lowering the bar for what's considered "obvious" in granting a patent, the US Patent Office has finally gotten around to issuing new guidelines for how patent examiners are to determine whether or not the concept in the patent should be considered "obvious." As per the Supreme Court's ruling, patent examiners can now go beyond prior art "teaching, suggestion, or motivation" (TSM). Now, examiners can look at the prior art in the space and then the ordinary skill in the area and whether or not those of ordinary skill in the art would find the new offering obvious. This is definitely a step in the right direction (or, actually, a step back to where patents originally were supposed to be). Now let's see how well it's actually put into practice.


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  1.  
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    Willton, Oct 11th, 2007 @ 6:57pm

    Soft definition of "obvious"

    SCOTUS never gave a good definition of what is obvious and nonobvious. Apparently, obvious is obvious. Well gee, thanks for clearing that up. I'm glad that the TSM test is gone, but KSR was not a step in the right direction; it was a step in no direction. The PTO now has to go back the drawing board and try and find some objective way to determine whether an invention is obvious or not. Expect to see much confusion regarding obviousness in the future.

     

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    Mike (profile), Oct 11th, 2007 @ 7:08pm

    Re: Soft definition of "obvious"

    The PTO now has to go back the drawing board and try and find some objective way to determine whether an invention is obvious or not. Expect to see much confusion regarding obviousness in the future.

    I've never quite understood this point. The standard has always been there: it's whether or not the concept is non-obvious to those skilled in the art. If you can show that a concept would be obvious to those skilled in the art, then it doesn't deserve a patent.

    For those who say that's too subjective a standard, well, too bad. We deal with subjective standards all the time. "Reasonable doubt." "Preponderance of the evidence." The law is all about subjective standards, and this should be no different.

    The test should be clear: if this is where others in the space were likely to reach themselves within short order, then it's the natural (obvious) progression of the technology. If it's so unique that that's untrue, then it's cleared the obviousness test.

     

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  3.  
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    Larry, Oct 11th, 2007 @ 7:47pm

    Re: Re: Soft definition of "obvious"

    I agree with your entire point here with the exception of the "oh yeah" factor.

    When asking questions of humans (especially when you want a "real" answer) you ask; "what is 2 + 2" not "does 2 + 2 equal 4"? I suppose that "obvious" IS a subjective standard, I just don't like the idea that a skilled artist would look at the answer first and then decide if the answer is correct or not.

    Of course, unless the artist is inventing and patenting all the ideas in his/her area, it won't do any good to NOT weigh the obviousness of the idea...

     

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  4.  
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    Deirdre, Oct 11th, 2007 @ 9:00pm

    Ballmer will be throwing more chairs...

    ... because it took Microsoft so long to load up the management of IP Innovation and sue Red Hat in (where else) Texas. They will have to squeeze as much FUD as possible out of the suit in a big hurry, since not only was it doomed to fail under the old guidelines, now it's doomed to fail faster under the new obviousness guidelines.

     

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  5.  
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    Mike (profile), Oct 11th, 2007 @ 10:06pm

    Re: Re: Re: Soft definition of "obvious"

    I just don't like the idea that a skilled artist would look at the answer first and then decide if the answer is correct or not.

    You don't necessarily need to give the answer first. Why not go talk to those who work in the space and ask certain questions about where the space is going or how they would approach certain problems... and see what kind of answers you get? If they're basically the same solutions as given in the patent... then... it's probably pretty obvious.

     

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  6.  
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    Derek Kerton (profile), Oct 11th, 2007 @ 10:55pm

    Lost Me At The Bar

    Mike,

    With "lowering the bar" is that good or bad? I can't tell whether you're talking limbo or high jump.

    Can you give me another metaphor, please?

    Derek.

     

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  7.  
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    Willton, Oct 12th, 2007 @ 12:00am

    Re: Re: Soft definition of "obvious"

    Wrong. First, "preponderance of the evidence" and "beyond a reasonable doubt" are standards of evidenciary proof, not rules of law. Obviousness is a matter of law and is subject to judicial determination. We must have some objective legal guidelines to find obviousness; otherwise it's whatever the judge says it is. That cannot be good jurisprudence.

    Second, you're confusing what a subjective standard is in the factual sense and what a subjective standard is in the legal sense. A legal standard that is based on conduct and perceptions external to a particular person is an objective standard. A legal standard that is based on a particular individual's views and experiences is a subjective standard. You almost always find the objective standard in all areas of law, save criminal law.

    I don't have a problem really with subjectivity. I have a problem with vagueness. If your proposed test really were the test, then I'd be less frustrated. But SCOUTS never laid out that test. In fact, it laid out no test at all, or at least no helpful test. It's now up to the PTO and the CAFC to develop doctrine to help alleviate this cloudiness that the Supreme Court has now instilled in patent law.

     

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  8.  
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    Willton, Oct 12th, 2007 @ 12:02am

    Re: Re: Re: Soft definition of "obvious"

    And when I wrote "SCOUTS", I meant SCOTUS.

     

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  9.  
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    Willton, Oct 12th, 2007 @ 12:11am

    Re: Re: Re: Re: Soft definition of "obvious"

    Why not go talk to those who work in the space and ask certain questions about where the space is going or how they would approach certain problems... and see what kind of answers you get?

    Because that does not get to the crux of the issue: whether the patent was obvious at the time of the invention. Asking what practitioners in the art think now is not all that helpful when you're trying to figure out what practitioners viewed as obvious back then.

     

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    Mike (profile), Oct 12th, 2007 @ 3:23am

    Re: Re: Re: Re: Re: Soft definition of "obvious"

    Because that does not get to the crux of the issue: whether the patent was obvious at the time of the invention. Asking what practitioners in the art think now is not all that helpful when you're trying to figure out what practitioners viewed as obvious back then.

    I don't buy that for a second. If the idea is going to be obvious so soon after the patent was filed, then it was clearly the expected progression in the space, and not something that needed patent protection.

     

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  11.  
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    Anonymous Coward, Oct 12th, 2007 @ 6:21am

    Mike's Conflicting Rues

    Mike said:

    "I don't buy that for a second. If the idea is going to be obvious so soon after the patent was filed, then it was clearly the expected progression in the space, and not something that needed patent protection."

    So, one aspect of what you are saying is that anyone who files for a patent shouldn't immediately practice their invention, otherwise it would muck up your "expected progression" test because there will be no way to determine if the use of the invention was via a third party "simultaneously" coming up with the idea, or that they simply copied the disclosure of the invention.

    And according to your other rules, one who does not practice one's invention is a troll.

    Mike, please have rules that don't conflict with one another ;)

     

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  12.  
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    Willton, Oct 12th, 2007 @ 8:58am

    Re: Re: Re: Re: Re: Re: Soft definition of "obviou

    I don't buy that for a second. If the idea is going to be obvious so soon after the patent was filed, then it was clearly the expected progression in the space, and not something that needed patent protection.

    The date of the filing is not necessarily the same as the date of the invention. The inventor could have reduced the invention to practice a year prior to the filing and could have conceived and started diligence on the invention well prior to that. Since the patent system rewards the first inventor, not the first filer, what what known at the time of the filing is not really dispositive.

     

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  13.  
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    Doug Wheeler, Oct 12th, 2007 @ 10:42am

    Obviousness test

    It's quite simple. The patent office just needs to find someone (or a few someones) skilled in the art and tell them the purpose of the invention and ask for a list of possible solutions. All of those ideas are obvious. If the patent covers a different solution, then it is patentable.

     

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