Supreme Court Asked To Correct Appeals Court (Again) And Explain That Patentable Ideas Need To Be New

from the it's-kind-of-a-key-point dept

In order for something to be patentable subject matter, it has to meet a few criteria, listed out in the Patent Act. It needs to be a “useful process, machine, manufacture, or composition of matter” and it needs to be “non-obvious” to someone “having ordinary skill in the art.” But, perhaps most importantly it needs to be a new invention. You can’t patent something someone else already invented. That’s why prior art is so important.

Already, the US Patent Office is notoriously bad at finding prior art, which has been a big complaint here at Techdirt for over a decade. Part of this is that they limit what they’ll even look at as prior art, unless information is put directly in front of their faces by those trying to invalidate bad patents. Generally, most of the prior art that patent examiners look at consisted of… earlier patents and scientific journals. And that’s not nearly enough for a whole variety of reasons. But, now the Federal Circuit has suggested that even earlier patent applications may not really count as prior art.

EFF and R Street teamed up to file an amicus brief with the Supreme Court asking it to reverse the Federal Circuit (something the court has done over and over and over and over and over again in the last dozen or so years).

At issue was an attempt to invalidate a patent showing prior art in an earlier patent application. Seems like this should be a slam dunk. There’s the patent and an earlier application showing the prior art. Therefore, not novel and not patent eligible. But the courts decided to get nitpicky, and argued that because the prior art in question wasn’t directly in the “claims” of the patent, but in the description, it somehow didn’t count. The brief explains why this is ridiculous:

First, patents are granted to encourage disclosure of new inventions. Granting a patent on an invention already disclosed to the public works the opposite effect, closing off knowledge that was previously free to use.

Second, Ariosa?s rule will render the criteria for patentability unstable over time, even as applied to a single patent, because it renders the prior art status of a patent application dependent on the contents of applications filed later. Under the Federal Circuit?s rule, then, what is prior art one day could evaporate the next, or vice versa.

Third, applicants will have even less motivation to draft narrow claims, which give the public greater notice and certainty as to a patent?s scope. Drafting broad claims will now not only allow them to ensnare more infringers, but will also be necessary to ensure their submission prevents the allowance of claims covering all it teaches.

Fourth, examiners will have to choose between allowing overbroad claims to issue and requiring amendments that narrow the claims, but in so doing, shrink the pool of prior art available to the examiner in future patent applications. This potentially affects incentives both for their substantive work, in terms of whether to allow or reject patent claims, and for their procedural incentives to complete examination more or less quickly.

But it seems there’s an even more basic issue: quibbling over where the prior art lives is not really the key. It’s that the prior art exists at all. Once you have that, it doesn’t matter where it showed up, whether in a patent description or on the back of a bubblegum wrapper, so long as the dates it was created is clear.

Hopefully, the Supreme Court decides it’s worth explaining the basics of patent law to CAFC yet again.

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Companies: ariosa, illumina

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Comments on “Supreme Court Asked To Correct Appeals Court (Again) And Explain That Patentable Ideas Need To Be New”

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orbitalinsertion (profile) says:

Re: Gosh, what expertise, to RE-WRITE minor piece after a few days!

Is that all you’ve got? For real?

Sometimes a bit of linked context and an additional comment are all that is needed when reporting some things.

Of course, you’d complain if there was an “unnecessary in-depth analysis that was covered elsewhere last week” as well.

Your attempts at fallacious arguments need more work.

Anonymous Coward says:

Re: Gosh, what expertise, to RE-WRITE minor piece after a few days!

You know why so many repeat writes are needed, blue boy?

Because your fucking corporations keep abusing the system and trying to get the judiciary to rule in their favor. That’s why the Supreme Court needs to send so many reminders.

out_of_the_blue just hates it when due process is enforced.

Christenson says:

Crazy Patent Court

That’s not the only nutty patent tale:

Currently, Power Integrations is fighting in court, claiming that operating a DAC more or less directly from a counter is patentable over operating a DAC from a ROM which is being addressed sequentially by a counter.

Use of a ROM as a function generator was a bit of technique I was taught in my 1985 digital electronics class, and, in the application here (spreading the interference spectrum of a switching power supply), the ROM is present because whoever was working on it knew that he wouldn’t get as good a spectrum spreading without using the ROM to get pseudo-random values.

But there’s a major patent fight about it….they have gone to whether “coupled” as in counter coupled to a DAC includes the indirect coupling through a ROM. It’s all the way at the “claims construction” phase, the battle has been going on for 10 years or so.

And, the patent lawyer blogs seem all insanely pro-patent, self-interested as all get out.

Seegras (profile) says:

Re: Crazy Patent Court

That’s nothing. Apple managed to patent something that was invented in the bronze age (1200 B.C.)[1] the latest:

Just because everybody else since 1790 thought it was obvious, and so the patent office couldn’t find any prior patent.

[1]: Actually, in the copper age, and the prior art from 1200 B.C. I managed to dig up is probably not the oldest one, so this might even date back to the stone age.

That One Guy (profile) says:

Re: 'Of course the system that I profit highly from is perfect!'

And, the patent lawyer blogs seem all insanely pro-patent, self-interested as all get out.

Can’t imagine why…

"After careful consideration and research, I have determined that your ‘invention’ is merely a repackaging of a previous invention, and as such would not be worthy of a new patent. … what’s that, you won’t be needing my services after all? Yes, I quite understand, thank you for your time."

David says:


You can’t patent something someone else already invented. That’s why prior art is so important.

Uh, of course you can. That’s what "first to file" is about. Prior art is not about prior inventions but prior publications.

A patent application should certainly count, though. If you missed out on a patentable claim in your own application (or other publication), there are deadlines for filing patents even after publication. But that concerns your own publications, not those of others.

Anonymous Coward says:

Re: Huh?

First to file is a myth.

35 U. S. C. 102 (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

JoeCool (profile) says:


and it needs to be "non-obvious" to someone "having ordinary skill in the art."

As an expert in one field, this tends to be my primary complaint about patents in said field – the patent examiners clearly have NO SKILL in the art, much less ordinary skills. I’ve seen more patents on obvious crap than you can shake a stick at. If I were an examiner, I’d be tossing 99.999% of patents as obvious. They dress them up in fancy language to try to obfuscate the fact that it’s not just obvious to some with ordinary skill, it’s obvious to someone with little to no skill, but you can fool someone with little to no skill using language.

OldMugwump (profile) says:

Re: Obvious

You exaggerate, JoeCool.

I’m an experienced engineer, who once was on the patent committee of a large tech company (deciding which “inventions” to submit patent applications on).

I watched the “inventions” that were submitted internally, and which of those eventually had patents issued. And kept an eye on issued patents in my field.

Of those patents approved by the PTO, only about 90 to 95% are “non-obvious” to an experienced engineer in the field.

Anonymous Coward says:

“the US Patent Office is notoriously bad at finding prior art”

No, it hasn’t been bad. It’s a product of their own self-funding, thanks to Congress.

It’s like companies forcing mediation. Mediation companies aren’t going to side with consumers, because it’s bad business.

If the USTPO rejects most of the applications, then people will stop submitting them.

Solution: restore the budget for the USTPO to do its job and not rely on its own funding.

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