Supreme Court Asked To Correct Appeals Court (Again) And Explain That Patentable Ideas Need To Be New

from the it's-kind-of-a-key-point dept

In order for something to be patentable subject matter, it has to meet a few criteria, listed out in the Patent Act. It needs to be a "useful process, machine, manufacture, or composition of matter" and it needs to be "non-obvious" to someone "having ordinary skill in the art." But, perhaps most importantly it needs to be a new invention. You can't patent something someone else already invented. That's why prior art is so important.

Already, the US Patent Office is notoriously bad at finding prior art, which has been a big complaint here at Techdirt for over a decade. Part of this is that they limit what they'll even look at as prior art, unless information is put directly in front of their faces by those trying to invalidate bad patents. Generally, most of the prior art that patent examiners look at consisted of... earlier patents and scientific journals. And that's not nearly enough for a whole variety of reasons. But, now the Federal Circuit has suggested that even earlier patent applications may not really count as prior art.

EFF and R Street teamed up to file an amicus brief with the Supreme Court asking it to reverse the Federal Circuit (something the court has done over and over and over and over and over again in the last dozen or so years).

At issue was an attempt to invalidate a patent showing prior art in an earlier patent application. Seems like this should be a slam dunk. There's the patent and an earlier application showing the prior art. Therefore, not novel and not patent eligible. But the courts decided to get nitpicky, and argued that because the prior art in question wasn't directly in the "claims" of the patent, but in the description, it somehow didn't count. The brief explains why this is ridiculous:

First, patents are granted to encourage disclosure of new inventions. Granting a patent on an invention already disclosed to the public works the opposite effect, closing off knowledge that was previously free to use.

Second, Ariosa’s rule will render the criteria for patentability unstable over time, even as applied to a single patent, because it renders the prior art status of a patent application dependent on the contents of applications filed later. Under the Federal Circuit’s rule, then, what is prior art one day could evaporate the next, or vice versa.

Third, applicants will have even less motivation to draft narrow claims, which give the public greater notice and certainty as to a patent’s scope. Drafting broad claims will now not only allow them to ensnare more infringers, but will also be necessary to ensure their submission prevents the allowance of claims covering all it teaches.

Fourth, examiners will have to choose between allowing overbroad claims to issue and requiring amendments that narrow the claims, but in so doing, shrink the pool of prior art available to the examiner in future patent applications. This potentially affects incentives both for their substantive work, in terms of whether to allow or reject patent claims, and for their procedural incentives to complete examination more or less quickly.

But it seems there's an even more basic issue: quibbling over where the prior art lives is not really the key. It's that the prior art exists at all. Once you have that, it doesn't matter where it showed up, whether in a patent description or on the back of a bubblegum wrapper, so long as the dates it was created is clear.

Hopefully, the Supreme Court decides it's worth explaining the basics of patent law to CAFC yet again.


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  • This comment has been flagged by the community. Click here to show it
    identicon
    X.Trak.TER, 28 Aug 2018 @ 3:44pm

    Gosh, what expertise, to RE-WRITE minor piece after a few days!

    You'd live in a van down by the river if hadn't been born into the 1%, just given an Ivy League indoctrination, and house in Frisco too.

    reply to this | link to this | view in chronology ]

    • This comment has been flagged by the community. Click here to show it
      identicon
      X.Trak.TER, 28 Aug 2018 @ 3:45pm

      Re: Gosh, what expertise, to RE-WRITE minor piece after a few days!

      From getting the "Held For Moderation" LIE just now, apparently can no longer use "TOR" in name.

      Sheesh.

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 28 Aug 2018 @ 3:47pm

      Re: Gosh, what expertise, to RE-WRITE minor piece after a few days!

      What expertise does your comment exhibit?

      reply to this | link to this | view in chronology ]

    • icon
      Stephen T. Stone (profile), 28 Aug 2018 @ 4:27pm

      I don’t see you doing a better job.

      reply to this | link to this | view in chronology ]

    • icon
      orbitalinsertion (profile), 28 Aug 2018 @ 5:44pm

      Re: Gosh, what expertise, to RE-WRITE minor piece after a few days!

      Is that all you've got? For real?

      Sometimes a bit of linked context and an additional comment are all that is needed when reporting some things.

      Of course, you'd complain if there was an "unnecessary in-depth analysis that was covered elsewhere last week" as well.

      Your attempts at fallacious arguments need more work.

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 28 Aug 2018 @ 8:59pm

      Re: Gosh, what expertise, to RE-WRITE minor piece after a few days!

      You know why so many repeat writes are needed, blue boy?

      Because your fucking corporations keep abusing the system and trying to get the judiciary to rule in their favor. That's why the Supreme Court needs to send so many reminders.

      out_of_the_blue just hates it when due process is enforced.

      reply to this | link to this | view in chronology ]

  • identicon
    Christenson, 28 Aug 2018 @ 9:00pm

    Crazy Patent Court

    That's not the only nutty patent tale:

    Currently, Power Integrations is fighting in court, claiming that operating a DAC more or less directly from a counter is patentable over operating a DAC from a ROM which is being addressed sequentially by a counter.

    Use of a ROM as a function generator was a bit of technique I was taught in my 1985 digital electronics class, and, in the application here (spreading the interference spectrum of a switching power supply), the ROM is present because whoever was working on it knew that he wouldn't get as good a spectrum spreading without using the ROM to get pseudo-random values.

    But there's a major patent fight about it....they have gone to whether "coupled" as in counter coupled to a DAC includes the indirect coupling through a ROM. It's all the way at the "claims construction" phase, the battle has been going on for 10 years or so.

    ****
    And, the patent lawyer blogs seem all insanely pro-patent, self-interested as all get out.

    reply to this | link to this | view in chronology ]

  • identicon
    David, 28 Aug 2018 @ 11:46pm

    Huh?

    You can't patent something someone else already invented. That's why prior art is so important.

    Uh, of course you can. That's what "first to file" is about. Prior art is not about prior inventions but prior publications.

    A patent application should certainly count, though. If you missed out on a patentable claim in your own application (or other publication), there are deadlines for filing patents even after publication. But that concerns your own publications, not those of others.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 29 Aug 2018 @ 5:22am

      Re: Huh?

      First to file is a myth.

      35 U. S. C. 102 (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

      (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 29 Aug 2018 @ 5:57am

        Re: Re: Huh?

        Prior art is not about prior invention but prior publication. That is what was stated. You said nothing to contradict that.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 29 Aug 2018 @ 9:07am

          Re: Re: Re: Huh?

          Read again. Publication is only one of the listed options for prior art

          or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

          reply to this | link to this | view in chronology ]

  • icon
    JoeCool (profile), 29 Aug 2018 @ 8:34am

    Obvious

    and it needs to be "non-obvious" to someone "having ordinary skill in the art."

    As an expert in one field, this tends to be my primary complaint about patents in said field - the patent examiners clearly have NO SKILL in the art, much less ordinary skills. I've seen more patents on obvious crap than you can shake a stick at. If I were an examiner, I'd be tossing 99.999% of patents as obvious. They dress them up in fancy language to try to obfuscate the fact that it's not just obvious to some with ordinary skill, it's obvious to someone with little to no skill, but you can fool someone with little to no skill using language.

    reply to this | link to this | view in chronology ]

    • icon
      OldMugwump (profile), 29 Aug 2018 @ 9:22am

      Re: Obvious

      You exaggerate, JoeCool.

      I'm an experienced engineer, who once was on the patent committee of a large tech company (deciding which "inventions" to submit patent applications on).

      I watched the "inventions" that were submitted internally, and which of those eventually had patents issued. And kept an eye on issued patents in my field.

      Of those patents approved by the PTO, only about 90 to 95% are "non-obvious" to an experienced engineer in the field.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 29 Aug 2018 @ 9:12am

    "the US Patent Office is notoriously bad at finding prior art"

    No, it hasn't been bad. It's a product of their own self-funding, thanks to Congress.

    It's like companies forcing mediation. Mediation companies aren't going to side with consumers, because it's bad business.

    If the USTPO rejects most of the applications, then people will stop submitting them.

    Solution: restore the budget for the USTPO to do its job and not rely on its own funding.

    reply to this | link to this | view in chronology ]

    • identicon
      Christenson, 29 Aug 2018 @ 11:00am

      Re:

      It's not just self-funding.

      Patents are a lot like gold stars...they tend to advance the careers of those listed as inventors if they work for large organisations.

      reply to this | link to this | view in chronology ]


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