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
    Mark Blafkin, 9 Jul 2008 @ 7:58am

    Mike's Right, but It's going to Take a Lot of Work to Fix

    We at ACT couldn't agree more! There is nothing more important to ensuring patent quality than improving pre-grant procedures and allowing for more input into this system.

    The problem, however, is a little more complicated than it sounds.

    To begin, let me clarify that you're not exactly right when you say that "current law actually forbids letting those skilled in the art from providing their opinions on patent applications." Rule 99 does allow for submission of this prior art, but it effectively neuters the option for three reasons. First, the submission is made without comment, so the submitter cannot tell the examiner why it is relevant. Second, the window for submission is only 2 months long. And third, and most importantly, is the fear of effectively being stopped from using that prior art in the future.

    Essentially, if you submit prior art during this period it can be used against you in the future. If the patent is approved, then it becomes part of the body of prior art that SUPPORTS the patent. It has effectively been "asked and answered" despite the fact that the submitter wasn't able to effectively argue their case before the examiner. No sane company is willing to entrust their defense completely to a patent examiner with a meager 20 hours of time to devote, so this option is almost never used.

    Where things get really tricky, however, is creating a solution that effectively navigates the Estoppel provision, the dangers of prior art flooding, managing inequitable conduct, and the internal incentive systems for patent examiners.

    It ain't easy, But as my Mom used to say, "Anything worth doing in life takes hard work."

    ACTBlog: We Agree with Mike Masnick on a Patent Issue!!

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