Why Shouldn't Competitors Be Able To Weigh In On Patent Applications?

from the questions,-questions,-questions dept

The patent system is only supposed to grant patents on inventions that are new and non-obvious to those skilled in the art. As we've pointed out in the past, the "non-obvious" part of the requirement has long been (effectively) ignored by the patent office. Instead, it mostly focused on whether the invention was new -- and did so by looking at published examples of prior art. There was very little effort made to examine whether or not the concept was non-obvious, and even less to see if it was non-obvious to skilled practitioners in the field. Luckily, the Supreme Court's decision in the Teleflex v. KSR case brought some attention back to the obviousness question, but only in one particular area (concerning combining two known concepts). However, it did little to actually establish a real test of whether or not a concept is obvious. For example, there's still no thought given to the fact that if multiple people invent the same thing at around the same time, it seems fairly obvious that the concept was, in fact, obvious to those who were skilled in the art, since multiple people all came to the same "next step" conclusion. A recognition that independent invention shows the obviousness of an invention would be a huge step forward.

Another way to test obviousness to those skilled in the art would be to actually let the patent examiner get opinions from others skilled in the space as to the obviousness of the idea. Unfortunately, current law actually forbids letting those skilled in the art from providing their opinions on patent applications -- which is why some are now calling for the law to be changed to allow those who work in the space to provide their opinions (or even to protest) new patent applications before they are granted. Given the purpose of the patent system, and the requirement that patents be non-obvious to those who actually know the area in question, this seems only reasonable.

Of course, the immediate response from those opposed to such a system is that this will merely allow competitors who are jealous of an inventor to file protests against the inventor, claiming that a true breakthrough was "obvious." That should be easy to overcome, however, as merely filing something saying a concept is obvious shouldn't be enough to sway an examiner. Instead, the fact that a claim of obviousness comes from a competitor should make the examiner more skeptical of the claim, and focus on the exact reasoning of why the proposed claims in the patent are obvious. In other words, the examiner would still be the final reviewer of all the evidence, and can note the specific biases of those submitting reasons why a patent shouldn't be granted -- but at the very least, the examiner will now have a lot more relevant info on the actual state of the art, and what's considered obvious than previously.

Filed Under: non-obvious, patents, peer review

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    Matt Bennett (profile), 8 Jul 2008 @ 11:11am

    Ok, I hate the current patent system and how many obvious things get patented. But this won't work either, unless you just want a back door way to eliminate patents all together. (which, hey, I'm not actually saying that might not be a worthy goal) All that energy that big companies now invest "stockpiling" supposedly defensive patents? Guess where all those resources will go now?

    One could argue that the one shining purpose of patents is that they allow a little guy with a really good idea to actually make something of it, rather than having his idea simply stolen by some big company with the resources to develop it, with out paying the inventor. (Big companies and R&D I think actually work on different model, to which patents are ancillary)

    But now you'll have this situation where, say someone comes up with an idea, a truly good idea, in the mobile space. It's in all the current players interests to squash that patent. And we all know that big companies are excellent at completely burying things in litigation. So they will make sure the patent NEVER goes through, no matter how brilliant it is. The only people who can push through a patent will be the big companies themselves, so Microsoft might still be able to get their "adding .com to text" patent. ALternatively, MAYBE a inventor could "pre-sell" to a big company, and get them to defend the patent, but they'll be in weaker position than if they just owned the patent.

    Don't get me wrong, I think most patents are worthless, very few are actually revolutionary ideas. But unless your idea is to do away with patents entirely, this system won't work, at least not in any area where there big players with lots of money, which obviously is most areas that matter.

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