Why A Real Obviousness Test For Patents Would Save A Lot Of Wasted Effort

from the digging-deep-for-prior-art dept

We’ve been among those pushing for a real test for patent obviousness, rather than just accepting “prior art.” The law is clear that patents are supposed to be both new and non-obvious to a skilled practitioner. Prior art only covers the “new” part — not the obvious part. However, patent lawyers have somehow turned the law around so that there is no obviousness test other than whether any prior art exists. To see why this is silly, take a look at the effort a group like the EFF needs to go through to continue their ongoing project of busting bad patents. Rather than being able to challenge a couple of truly obvious patents on that claim, they need to go hunting for prior art in order to bust the patents. Just because there is no prior art, it doesn’t mean an idea is non-obvious. It might just mean that the timing wasn’t right yet, or some other component or variable wasn’t ready yet. In the two patents the EFF is asking for help on, both seem like obvious extensions of very simple ideas, where the potential for missing prior art has more to do with the speed with which the internet developed, rather than any big innovative breakthrough by the patent holders.

Rate this comment as insightful
Rate this comment as funny
You have rated this comment as insightful
You have rated this comment as funny
Flag this comment as abusive/trolling/spam
You have flagged this comment
The first word has already been claimed
The last word has already been claimed
Insightful Lightbulb icon Funny Laughing icon Abusive/trolling/spam Flag icon Insightful badge Lightbulb icon Funny badge Laughing icon Comments icon

Comments on “Why A Real Obviousness Test For Patents Would Save A Lot Of Wasted Effort”

Subscribe: RSS Leave a comment
Joe Smith says:

Re: A Real Obviousness Test?

As the article you reference makes clear the flash of genius test was overturned by Congress although in Graham v. John Deere SCOTUS suggested that they had never really adopted the flash of genius test.

As a first test, any software patent should be rejected as obvious if it is simply an implementation of something which had previously been done in the physical world.

For example, I saw a summary of one software patent for the “invention” that when allocating processing jobs among multiple processors you assign a new job to the processor with the shortest waiting queue – that is pretty much what I do when I go the supermarket and decide which checkout line to join.

It is hard to believe that there was not a physical world equivalent of “Buy it Now” hundreds of years before anyone thought of the Internet. The “quick sale price” concept in art auctions certainly comes close.

Mike (profile) says:

Re: A Real Obviousness Test?

Would this test be more to your liking, Mike? I wouldn’t state it so loftily, but I do think the current non-obviousness bar needs to be raised.

No, I don’t believe the “flash of genius” test is meaningful here. The test is clearly laid out: “non-obvious” to those who skilled in the art. So, you get comments from multiple people who are skilled in the art and see if they can make a convincing case of non-obviousness. Not saying to just trust them, but have them explain why it’s non-obvious. If they’re convincing then it’s failed the test.

AJ says:


I think the “obvious” test would be very important, but I think the problem is so deep, only a complete overhaul of the patent system would fix things. I would like to see a test done, to prove a point. Take a complete obvious patent, word it with some exceptional laywer speak, completely obscure the true idea of the patent with the double talk to the point no one really knows what it is exactly your trying to patent, and see if it is granted.. I bet it does. I’ve read some of the applications, its a wonder anyone could understand what it is exactly there trying to protect.

Andrew Pollack (profile) says:

The best inventions are obvious - once invented

I’ve invented something and am taking it to market. It looks promising. One of the reasons it looks promising is that everyone who hears about it says “wow, that’s obvious now that I hear you describe it. why hasn’t anyone done that?”

The answer is, because they didn’t. I did.

The problem with the patent is not the “obviousness” of inventions, is the range of what is patentable.

DNA, Business Processes, and Software techniques are not suitable for patents.

angry dude says:

Re: Andrew Pollack's generosity

Hey, dude,

So, you have invented and patented some mechanical toy or whatever and you want to profit from your invention, but at the same tiume you deny the right to profit to all of us, research guys with Ph.D’s working on such obscure and highly complex problems as ,for example, computer speech recognition, computer vision etc.
Don’t you think that your fucking toy, no matter how proud you are, is much less important to human progress than the problems I’ve mentioned?
Even though solutions to most such problems are implemented entirely in software nowdays, for technical and economiocal reasons.
Software runs the world, dude.
Take some technical classes- you need them
This forum really deserves another name, “techignorance” for example…

Xenohacker@hotmail.com says:

New Methods...

I agree with:

“why hasn’t anyone done that?”
“The answer is, because they didn’t. I did.”

whole-heartedly… 🙂

However, I also agree with the purpose of the article. I have interpreted to mean new methods of determining who should be able to market and idea exclusively need be devised better. Could you imagine the reasearchers that harnesses the power of nano technology deciding not to press forward because everyone and their brother would be able to piggy back on their genius and put them out of buisness? Researchers should reap rewards of their genius…

James says:

Yet it would cause an industry to become soley sev

What I notice a lot of techs (programmers, engineers, fellow CS classmates) don’t seem to understand is that, its all about the money. That simple driving factor is why patents are so important. He who comes up with the idea first (or is not wise enough to market it him/herself) should not complain when someone else can see the monetary value in it. Even if it is prior art. I’ve said it before and i’ll continue to say it, the ideal of ‘free’ infomation is a fallacy. It is hard to become a millionaire (or billionaire) by giving your product away. Eventually, you gotta account for it. Unless you think you can go into a supermarket and walk out with food for free.

Joe Smith says:

nothing can prevent an idea whose time has come

“So, you get comments from multiple people who are skilled in the art and see if they can make a convincing case”

I wish it were that easy. We get dueling experts now arguing over whether or not an invention is different from the prior art or not and that is an easy problem compared with obviousness. I’m not saying that there is a better way, I’m just saying that experts is not easy.

Personally I think the obviousness standard should be couched in terms of the likelihood of the solution being found within a reasonable period of time by independent discovery.

Add Your Comment

Your email address will not be published. Required fields are marked *

Have a Techdirt Account? Sign in now. Want one? Register here

Comment Options:

Make this the or (get credits or sign in to see balance) what's this?

What's this?

Techdirt community members with Techdirt Credits can spotlight a comment as either the "First Word" or "Last Word" on a particular comment thread. Credits can be purchased at the Techdirt Insider Shop »

Follow Techdirt

Techdirt Daily Newsletter

Techdirt Deals
Techdirt Insider Discord
The latest chatter on the Techdirt Insider Discord channel...