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
    SK, 10 Jul 2008 @ 9:54am

    patent examiners don't get it - practical experience

    Mike,

    All things you say might or might not be true but they are immaterial.

    I'm first author on 5+ patents we've filed - both 'really new' and 'somewhat obvious' types - and I've been regularly dealing with the patent filing company, attorneys and examiners through multiple office actions.

    The practical truth is that examiners are not competent enough. And its not just me. The patent filing company I use (who help 1000s of people file patents) tells me that in most cases, examiners are not good enough, and don't get what the patent is about. They just do some keyword search using an antiquated search system. If you look at the back of the office action, you'll see their stupid (!) searches. In fact they don't even read the description till after the second office action.

    Any more information will only add more confusion.

    Also I disagree that multiple people inventing means it was obvious. Calculus was invented by multiple people and it was not necessarily obvious. And that's not just 1 example.

    -SK

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