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. icon
    Mike (profile), 8 Jul 2008 @ 11:13pm

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

    Incorrect: I'm saying that disclosure promotes innovation, not leads to it.

    What is the difference between promotes and leads to?

    Disclosure makes the information availabe and gives others the opportunity to improve upon it.

    Actually, no, it doesn't. Because disclosure is tied to the patent, it SPECIFICALLY does NOT give others the opportunity to improve upon it, but tells them quite clearly they cannot do so, at risk of huge fines (in triplicate if they looked at the patent).

    Keeping inventions secret does not give others that opportunity.

    Which makes the huge (almost never seen in the history of human innovation) assumption that only one person in the world actually understands a particular invention, and no one else could possibly come up with the same thing (or, more likely, is already working on the same idea separately).

    Sure, innovation will happen without disclosure, but at a much slower pace.

    Yes, if the disclosure wasn't encumbered with 20 year monopolies. But it is.

    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.

    Please reread what I wrote. You'll make less of a fool of yourself.

    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?

    But that disclosure is meaningless, because improvements cannot happen without paying a huge toll.

    As if you had any experience or authority to back such an opinion.

    What makes you think I have not?

    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?

    What "ivory tower" would that be? You don't think I work with folks who are screwed over by the patent system nearly every day of the week, hearing their stories?

    Don't make assumptions. They only display your own ignorance.

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