It seems that
determining whether or not something is obvious is very subjective. This is why
I feel that the patent system is like an art-- whoever can prove their case the
best wins.
In the Graham versus
John Deere case (1959), the Supreme Court decided that some basic criteria
should first be decided upon: "
- The scope and content of prior art
- The differences between the claimed invention and the prior art.
- The level of ordinary skill in the prior art"
I learned that the
top three criteria are known as Graham Factors, and the Supreme Court utilizes
them as controlling inquiries. The Supreme Court also uses "secondary
considerations" to argue non-obviousness. These considerations include: "
- Commercial Success
- Long-felt but unsolved needs
- Failure of others"
So what is this
supposed to mean? Let's just say a judge thought that a particular claim was
obvious. Again, this is very subjective, and while one judge may think that a
claim is obvious, another judge may not. But even if a specific claim seems
obvious to the examiner, the patentee can turn to the secondary considerations.
He or she "can present evidence that the invention has achieved commercial
success as a definite result of the invention". This suggests that it must
not have been obvious, because if it had been, it would have been done before
(as the need clearly existed). The patentee can present evidence that there was
a long-felt and unsolved need and that
others have tried and failed to solve this problem.
So now, the question
arises of where the patentee can get this evidence and how much evidence is
enough? Evidence can be acquired from the marketplace and from earlier patents
that may talk about the particular need and attempts to solve it. The decision
of whether the evidence is adequate is normally left to the judge.
I wanted to end with
this quote, because I thought was interesting:
"…this question
[regarding obviousness] remains a fairly subjective sandbox- and this is a
sandbox that patent practitioners earn their money in-- because it
sometimes takes concise and strong
arguments to reverse a obviousness rejection"[1].
Links:
A comment about your ending quotation:
ReplyDelete"This question remains a fairly subjective sandbox- and this is a sandbox that patent practitioners earn their money in-- because it sometimes takes concise and strong arguments to reverse a [sic] obviousness rejection."
I love the comparison of obviousness to a sandbox because it truly embodies the fluidity and uncertainty of a patent's passing, either at the USPTO or in court.
It is unfortunate that the system does function as a subjective sandbox but this is not an ideal world and the only thing we can do is try to fine tune the system. This is why the profession of patent practitioners exist. If it is just as easy as to open up a dictionary with everything defined and the patent objectively determined in ruling, then we wouldn't need the court to interpret the guidelines. At the end of the day I think we need to help develop a system that we trust because the ideal clear cut system cannot exist in this ever-evolving sphere. Hopefully as we find a better way to keep records and determine tends, evidence will be easier to access and information easier to communicate across the board.
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