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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  1. identicon
    Willton, 8 Jul 2008 @ 8:41pm

    Re: Re: Re: Re: The biggest problem comes

    Which makes a huge incorrect assumption: that patent disclosure actually leads to innovation.

    Incorrect: I'm saying that disclosure promotes innovation, not leads to it. Disclosure makes the information availabe and gives others the opportunity to improve upon it. Keeping inventions secret does not give others that opportunity. Sure, innovation will happen without disclosure, but at a much slower pace.

    Considering that so many companies now forbid researchers from looking at patents, and the fact that so many patents are written so broadly that it's nearly impossible to learn much from them, this is simply untrue.

    The broad nature that you elude to refers to the claims, not the specification. Claims aren't supposed to teach anyone anything; they're supposed to define the boarders of the patent holder's legal rights. It is the WRITTEN DESCRIPTION and SPECIFICATION that teach the technology. I suggest you learn the difference before you start commenting on how much patents teach.

    As for companies adivsing their tech staff to not look at patents, that is a problem with the law of infringement (particularly willful infringement), not disclosure. Further, disclosure happens in other ways than just through filing a patent. For example, how comfortable do you think Novelis would have been posting this video without a patent attached to the technology?

    http://www.novelis.com/Internet/en-US/AboutUs/ResearchTech/fusion/FusionVideo/

    It' s quite rare, in fact, that those working on actual innovations actually learn something via patent disclosure.

    As if you had any experience or authority to back such an opinion. How about you step away from the ivory tower and actually ask the people who deal with these patents, instead of making such speculative opinions?

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