Intellectual Property Directions

If you’ve tried to get a patent recently you know you are sure to get an obviousness objection. Greg Aharonian, a patent gadfly who publishes a newsletter (subscribe by email to: Internet Patent News Service) has argued that since Congress declined to define what “obvious” means the law is so vague as to be unconstitutional. Further, he argues, any attempt to define it, including the Supreme Court “KSR” ruling, is legislating from the bench by judges who have no expertise to define what obviousness means in a techno/patent sense. Greg is backing up his position with a planned Constitutional legal challenge.

While my clients share the obviousness-objection problem with Greg I have a fundamental disagreement with him. What Greg perceives as vagueness, I perceive as inherent subjectiveness. When legislating about a subjective property Congress can do no better at providing an objectively measurable definition than you, me or the Supreme Court. Instead, Congress passes a law that indicates a desire and it is left to the Court to interpret what that intent translates to in specific situations.

Greg believes the Court should have refused to rule on obviousness issues and wants to sue to make that happen; I believe that the proper check and balance, if one is needed, comes from the Congress, which can pass an amended law effectively telling the Supreme Court that their interpretation is on the wrong track.

Greg believes there can be a measure of obviousness based on how “close” one invention is to another. This attempt to quantify obviousness is doomed to failure. It is like saying a partly bare breast is okay if, say, only the top is exposed, or if no part of the nipple is exposed (hence pasties for strippers).

The whole “obviousness” question boils down to the question “Is the described system worthy of being given a limited time of exclusive right to earn money from, in exchange for teaching other practitioners how to build the system?” It is my sense, and I think the sense of most other people, that this test of worthiness can be paraphrased as “Given a statement of the problem to be solved, would a majority of people in the field come up with the same solution?” If we say yes, then the system is essentially not an “invention” - it’s just a design solution. If the answer is no we are saying that we believe there was something special going on inside the inventor’s head and it deserves a patent.

Taking an example from my technical field, consider lens design. With today’s lens design programs an ordinarily skilled engineer can develop dozens of lens designs that meet a given set of performance requirements in a matter of hours. Yet, a highly skilled engineer will intuitively understand how to tweak the software to greatly improve the final result in accordance to some figure of merit. The actually differences in the lens elements may be small but the result in the former case are design solutions while in the latter case it is an invention.

What do you think? Can an object test for “obviousness” be defined, at least one that will meaningfully allow the PTO to sort the wheat from the chaff? Comment with your thoughts.

This entry was posted on Monday, January 26th, 2009 at 5:55 pm and is filed under Obviousness. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.