Creating A New Test For Obviousness In Patents

from the very-important... dept

One of the biggest issues we discuss repeatedly concerning patents is the fact that the patent office seems to have completely disregarded the fact that a patent needs to be “non-obvious to the skilled practitioner.” In fact, we pointed to a perfect example of this last month, when two companies were arguing that they each were granted patents on the same thing. So far, the two are simply arguing it out in the courts over who gets to keep the patent (and it may differ by geography!), but it seems pretty clear that if two separate companies in the same space came up with the same thing, then it should invalidate both patents, as they’ve just proven that it’s an obvious “next step” in the evolution of the technology in question. It appears that this issue may be getting a bit more attention. Larry Lessig points to an amicus brief filed by The Progress & Freedom Foundation pointing out that the test for obviousness needs to be changed. In the case in question, a lower court decided that the test for obviousness was whether or not anyone else had suggested something similar before. That’s prior art — not obviousness. The problem is often that many skilled practitioners in a field are all coming up with similar solutions independently, just by understanding the evolution of a technology or process. Is it really fair to lock up the solution to just the first person who gets there (or even just the first person who filed for the patent), even if the others achieved the same result independently? The first comment to the Lessig post comes up with an interesting idea to test the “obviousness” of a patent. The patent office would reveal the claim of the patent — but not the method for a certain period of time. During that period of time (the commenter suggests two years), anyone else can see if they can duplicate the claims of the patent. If they can, then it suggests the patent in question is not valid, and the idea was obvious. It might be difficult to put into practice, but it is an interesting idea that would severely cut down on bogus patents and would ensure that the patents that really did make it through were new concepts. Of course, just because you invent something new, it doesn’t mean the market actually wants it. That’s where the real innovation comes in — and patents really shouldn’t matter.

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Comments on “Creating A New Test For Obviousness In Patents”

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Precision Blogger (user link) says:

An invention is not "obvious" just because several

An invention is not “obvious” just because several people discover it at once. It’s a characteristic of scientific advance that the current milieu makes it possible to make the next logical jump. Mnay really important inventions have been in dispute because two or more people made them in isolation at about the same time.
– PB

Mike (profile) says:

Re: An invention is not

I don’t know… The test isn’t just plain old “obvious,” but “obvious to the skilled practitioner.” If multiple skilled practitioners are coming to the same result independently, that certainly suggests it was the “obvious” next progression for the skilled practitioner. There’s nothing *wrong* with that, but it should mean the idea is not patentable.

Mate says:

Re: Re: An invention is not

Sorry, but I believe you are making a grand mistake here..
Often, some of the most important advances were on the table, but someone had to “see” them and let everybody else know. Only then they were obvious for anyone else. In such cases, a patent claim that would be made public would reveal everything. Yes, the proposed obviousness test is ok for complex technical advances that take years to perfect, but in such cases, a different method should be applied. Some might argue that if something is “simple”, it is “less worthy”, but actually in some cases it might be much more ingenious.

The “real” obviousness test should at least have an additional option of “waiting for a period of time” and see, if anyone else makes an identical claim..

BTW: was this obvious? Is it now?….

jojo says:

Re: Re: Re:2 An invention is not

If it was “obvious”, then WHY didn’t anyone develop/patent the extension before now? I’ve heard this is a good argument to use when the patent office dings you with this.

As has been said above, once something has been pointed out, it always appears obvious.

Mike (profile) says:

Re: Re: Re:3 An invention is not

If it was “obvious”, then WHY didn’t anyone develop/patent the extension before now? I’ve heard this is a good argument to use when the patent office dings you with this.

There’s a natural progression in development. If two (or more) entitities are likely to come up with the same innovation entirely independently of each other — because it’s the next logical evolution, why should some be denied the ability to do so?

Alok Bisani says:

Re: Re: Re:4 An invention is not


  1. But how will you differentiate this case from those where enormous time and effort is required to invent what is claimed ?
  2. Should we discourage or encourage people/organisations from investing in such time and effort?
  3. And even if two or more such persons/organisations invest in this, then should we give incentive to finish their work faster by a patent grant or just let them finish at their own pace?

The solution to the obviousness problem would be a complete formula that should combine the following factors.

  • The fact and the number of other instances where the claim is demonstrated but not applied for.
  • The duration a claimant is willing/has to wait for between the patent applications and its grant.
  • The willingness of the claimant to publicize his claims (only, and not the idea behind the claim) in this duration.
  • The number of other patent applications in this duration, factored with above.
    • .. add more here based on other considerations/complexities.
  • The duration for which a patent monopoly is granted for or not based on all above.
jdguy26 says:

Re: Re: Re:5 An invention is not

In response to 1)
Isn’t it obvious? If it took enormous time and effort to develop, then it will take anyone else trying to replicate the invention enormous time and effort to develop. Hence the test.
It should just be noted that the reason we even have a patent system is not to reward people for their discoveries. It’s to encourage more discoveries. This type of rule doesn’t discourage inventions at all really. It “discourages” obvious inventions, but they’re obvious anyway, and would be developed anyway as the next logical step.
In response to the original inventor bearing risks whereas subsequent inventors would KNOW there is a solution:
The patent office could regularly put out fake patent claims. Then other inventors cannot know for sure if something has been discovered, and so will be facing some (if not the exact same level of) risk.

Anonymous Coward says:

I don't know that I buy Lessig's Idea

I am all for patent reform and for making it more difficult, but this idea:

“The first comment to the Lessig post comes up with an interesting idea to test the “obviousness” of a patent. The patent office would reveal the claim of the patent — but not the method for a certain period of time….”

I think in most cases, its the claim itself that contains the non-obvious info that’s of real value. If Eli Whitney announced a claim for a machine to separate cotton seed from cotton fibers, I’m sure that given two years, someone else could have come up with the methods. But how long would it have taken if he didn’t announce it?

Perez-Terron says:

Re: I don't know that I buy Lessig's Idea

We should not require a flawless replacement when what we have is just horrible.

It is true that also important scientific discoveries like the differential calculus were made independendtly by contemporaneous scientists, in the example, Newton and Leibnitz. But then the differential calculus was indeed the logical next step at the time. (Not an obvious one, but a basis was there since Descartes. The nature of the communcations at the time made publications much more infrequent, and so much larger chunks of science were brought to the public in a single publication.)

It is true that many, perhaps most, patents owe their value more to the business idea they embody than to the technical merits. But in both these cases the society does not need to award monopolies to the inventors.

Next, had the claim of a machine to separate cotton seed from fibers been published at the time of the invention, I guess most inventors at the time, had they tried to solve the same problem in two years, they would have come up with rather different solutions. Since patents should be awarded for the solutions, not for the problems, patents should be granted if the solutions are sufficiently different.

It is also true that sometimes an invention is “on the table” waiting for somebody to see it. But again the society has nothing to win by awarding a patent to the first to see it. Patent protection is most needed when it takes substantial investment to solve all the detailed issues involved.

I do see a possibly valid counterargument: A claim of a vaccine against cancer could be taken to mean that such a vaccine is possible since somebody seems to have found one and is now patenting it. That would greatly reduce the percieved risk in investing in a search for such a vaccine, and would spur investors to do so. This is unfair to the original investor who assumed a much greater risk.

Another argument: It is sometimes not immediately obvious what a new scientific discovery will be usefull for, and it may take a lot of research to investigate along different lines. Think of buckyballs and nanotubes. When it is announced that a particular invention is being claimed, it might be obvious to people in the field where to start, and knowing also where to end it becomes relatively easy.

Still I think we need an obviousness test, and we need to raise the bar dramatically. Perhaps the patent system should have an obligation to apply Lessig’s rule judiciously, and justify it when not using it. They (or the inventor) would have to give some credence to a claim that the patent in question is non-obvious by specifically pointing at how this work departed from the work of others in the field.

Consider the one-click Amazon patent. Amazon was able to simplify the ordering process by relying on information the customer had provided on earlier occasions. Why had that not been done before? It had, every small drug store that write things up and bill at the end of the month has been doing that. Why had that not been done on the Internet? Because Internet shopping was such a new thing and the merchants felt the need to reassure the customers that they (the customers)were in control, that they would not become liable to pay for things they had not wanted to buy. Then as customers became more confident, the time was in for a simplification.

I think the burden of proof that an invention is non-obvious in spite of its simplicity should lie with the inventor. The inventor should point at occasions where the invention should have been made and was not.

Julian Bond (profile) says:

Shorter timescales

Perhaps another view of this is that patent protection goes for on for much too long.

I’m all for people having a controlled monopoly for a short period so that they can get funding and attempt to establish some market presence with a genuine implemention. Like most of us here, I’m hugely against patents that are awarded for 15-20-30 years to companies that fail to implement and simply use the patent for lawyer enforced licensing. In the technology sphere, if you haven’t implemented and are making revenue in 2 years, then you probably never will.

So what if we tightened up prior art checking, limited patent protection to 5 years and finally allowed a valid defence after 2 years that the patent owner hadn’t brought anything to market. Isn’t that what we really want to see?

robert johnson says:

Re: Shorter timescales

Essentially correct, I would add that My device
(original thoght,solution to problem, “what I’m talking about”, Idea) is to give all Corporations
a lifespan after which they DIE. Like us. You know, People, Human Beings all encounter this so
why not corporations? This must change.
Can I patent this? UUBOB

John Hart says:

What to weed out.

Most of the examples have been focused on what to make sure gets patented. Let’s not forget to focus on what *shouldn’t*.

To borrow from the Solicitor General’s brief, there should not be a patent on garbage bags with halloween pumpkin faces on them (period actually), but certainly given that *paper* bags with halloween pumpkin faces already exist.

The obviousness test needs to allow that this is obvious.

Brent Jones says:

Obviousness not so obvious

Motivation and focus bring about innovation. Innovation is the furthering of capability, function, satisfaction… from the level previously existing. Nothing is obvious but everything is obvious. Why is it everyone is so confused about obviousness? Because it was made a test for patentability. Absent or exclusive to that issue, almost all developments or concepts would be considered non obvious by some and obvious by others. Yes, of course, from the point of view of piers who have the skill.

Removing the oxygen from the environment surrounding a heated filament to slow its degradation when heated to a glow didn’t immediately occur to Edison but how many other somewhat intelligent individuals might have quickly realized that – if they had been focused on and motivated to produce a light bulb? Write the claims first and test for ability to recreate the means? When waking from this dream, reality will hit hard.

The traditional requirement and test for obviousness can hardly be improved as almost everything becomes obvious just prior to its conception and no test, review, consideration or assessment will be any more accurate on the whole. Group thinking doesn’t change this. A verdict of innocent by unanimous agreement of 12 doesn’t make a guilty person innocent, or vice versa. Who thinks that only the vary rare, exceptionally intelligent, insightful person is able to come up with the things we find to be unique or innovative and worthy of a patent claim? That suggestion would be nonsense to us all. How many patented concepts took years of painstaking effort to implement successfully? It usually isn’t the concept that takes all the effort, it’s the practical implementation rife with problems from material selection to customer satisfaction that takes most of the creativity and effort – most often none of it patentable. Implementation and difficulty have nothing to do with the inventiveness of a concept.

Almost everything is obvious. Or not. For the purpose of patent claim protection, most claims are not obvious. A panacea for eliminating confusion on this issue is as difficult as defining Art or music as good or bad – any such standard will suffice only for a time and be accepted by only a few. This is not a call to eliminate the search, not for the illusive but the impossible definitive definition, but a request that folks quit convincing themselves this is easy or that there is a predominant sense of what is obvious or non obvious, which can be considered for judgment only after the concept is made visible and will inevitably be debated.

bgrh says:

Patent life - 20 years - barely enough

20 year patent life begins with the first filing – the time between the initial idea that the patent is filed on and a commercially viable implementation of the idea can take a decade. And, if the idea changes something big – say a great idea for solar energy, the adoption of the invention could take another decade, by which point the patent has expired. Five years might be fine in software or IT – but in other areas 20 years is barely enough to make it worth the effort and risk.

On the other hand, allowing Disney to extend copyright forever is just as crazy. The cute cartoon Winnie the Pooh is a Disney trademark, and it can survive as a corporate asset – but the story should be free.

Anita says:

Obviousness not so obvious

When we say something is obvious to a person skilled in the art we should consider that there can be hundreds of people who are skilled in a particular art but how many of them come out with a tangible and productive idea that can be implemented into a patentable product or process or whatever.. So one can’t escape just by saying the invention is obvious. It takes an inventive mind, creative and constructive thought and hardwork to bring about an invention that is patentable.

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