The end of one-click patents?

May 9, 2007 11:23 AM

The end of one-click patents? The Supreme court recently handed down a decision in the case of KSR v. Teleflex requiring courts to use "common sense" in determining what is an is not "Obvious" and therefore not patentable. According to SCOTUSblog, this will greatly affect "combination" patents that involve combining two already existing ideas in a new way.
posted by delmoi (31 comments total)

Biased as I may be (I work in patents), I'm less than thrilled by the Supreme Court decision. I do agree that the obviousness standards needed some upgrading, but "common sense" is often overrated, and rarely the most solid base for legal decisions. It certainly is a rather weak support for overturning many decades of case law...
BTW, all inventions are "combination" inventions in some way or another. It's the combining of ideas in a new way that may not be all that obvious...
posted by Skeptic at 11:35 AM on May 9, 2007 [1 favorite]

Ordering courts to use common sense, what a novel idea. Any court that needs to be ordered to use common sense, is so sorely in need of some that this will make no difference. I bet they all think they're using 'common sense', regardless of how ridiculous some rulings may look in hindsight.
posted by IronLizard at 11:41 AM on May 9, 2007

Damn. There's my dildo coffee mug out the window.
posted by weapons-grade pandemonium at 11:46 AM on May 9, 2007

Common sense and patents are two totally different concepts these days. Can they really be friends and work together?
posted by nofundy at 11:49 AM on May 9, 2007

IronLizard, I find that "common sense" is usually a convenient replacement for actually doing the job of motivating a ruling. You know, what a judge is supposed to do. It's far easier to say "But it's common sense!", than to actually weight the pros and the cons, study the cohesiveness of the arguments, interprete what the written law actually says (which unfortunately more often than not, isn't really commonsensical...but that's the lawmakers fault).

At the end of the day, the SCOTUS has scrapped the existing "teaching/suggestion/motivation" test (according to which, for a combination to be obvious, there should be a previous teaching, suggestion or motivation to combine the elements)...but has failed to propose an alternative, beyond "common sense"!
posted by Skeptic at 11:53 AM on May 9, 2007 [1 favorite]

It was a terrible decision as it basically provides no guidance for lower courts. The standard is now akin to pornography, "I know it when I see it."
posted by caddis at 11:57 AM on May 9, 2007

Can common sense and patents live together without driving each other crazy??? (insert Odd Couple theme here)
posted by ZachsMind at 11:57 AM on May 9, 2007 [1 favorite]

Skeptic - I can tell you work in patent law - because you are absolutely right.

All the Supreme Court did was take a test and throw it out the window. This leaves everyone in the dark as to what the real test is. "Common sense" is a catch phrase, not a test.

What will come of this is an even greater ability for judges and juries to validate or invalidate patents on a whim. Ambiguity in the law is a terrible thing, and the Supreme Court just handed it down in spades.
posted by Muddler at 11:59 AM on May 9, 2007

caddis and Skeptic have it: the problem with the decision is that it doesn't give any objective criteria for recognizing when a patent claim is obvious. Red meat for patent examiners.

(The teaching/suggestion/motivation test wasn't utterly "scrapped" but was held not to be the exclusive test for determining obviousness. After KSR, a showing of a teaching, suggestion, or motivation to make the combination is sufficient but no longer necessary to proving obviousness).
posted by Joe Invisible at 12:02 PM on May 9, 2007

"Ambiguity in the law is a terrible thing, and the Supreme Court just handed it down in spades."

That all depends on which side of the debate you happen to be. Ambiguity in patent law happens to be a good thing for some corporate interests. Vagueness in the law means things can happen in the market that may or may not get sorted out later on in years of litigation. Sounds like this is also a good thing for corporate lawyers. It's called job security.
posted by ZachsMind at 12:07 PM on May 9, 2007

This was a unanimous decision? I don't work in patents, but this strikes even me as a really poor decision, for the reasons mentioned above.
posted by trip and a half at 12:07 PM on May 9, 2007

Joe Invisible: as a former patent examiner (EPO, not USPTO), I'd rather expect patent examiners to loathe this decision. A conscious patent examiner will always prefer to have clear guidelines to follow than to have to argue with attorneys about "common sense".
posted by Skeptic at 12:09 PM on May 9, 2007

As far as I can determine, 'common sense' is a code word for 'people that think the same way I do'.

Not a very good legal standard, since the 'I' keeps changing.
posted by Malor at 12:18 PM on May 9, 2007 [1 favorite]

I've never worked as an examiner, but in my experience as an agent (US), examiners never paid much attention to the requirement of a teaching, suggestion or motivation. KSR blesses that practice, and makes it easier for the USPTO to implement its apparent zero-allowance policy.
posted by Joe Invisible at 12:41 PM on May 9, 2007

Has common sense been patented? Because if it hasn't, I've got first dibs.
posted by dances_with_sneetches at 12:43 PM on May 9, 2007 [1 favorite]

What will come of this is an even greater ability for judges and juries to validate or invalidate patents on a whim.

Well how could it realistically be done in any other way? Perhaps I shouldn't have used the term "common sense" in the FPP. I'm not patent lawyer, but it seems like the only reasonable way to do this would be on a case by case basis. Common sense refers to the idea that people in the field have normal levels of creativity, and would arrive at the idea when faced with the problem.

caddis and Skeptic have it: the problem with the decision is that it doesn't give any objective criteria for recognizing when a patent claim is obvious.

But the entire concept of objective obviousness is oxymoronic.
posted by delmoi at 12:54 PM on May 9, 2007

given that the heretofore obvious test was apparently "not patented yet", I applaud this decision. 99% of the patents I've seen in my field are BS land-grabbing.
posted by Heywood Mogroot at 12:56 PM on May 9, 2007

I've never worked as an examiner, but in my experience as an agent (US), examiners never paid much attention to the requirement of a teaching, suggestion or motivation. KSR blesses that practice, and makes it easier for the USPTO to implement its apparent zero-allowance policy.

That has also been my experience. At least KSR explicitly mentions that "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" so examiners will at least have to do a little more work in making an obviousness argument.
posted by gyc at 1:19 PM on May 9, 2007

The PTO has issued a memo.
posted by caddis at 1:29 PM on May 9, 2007

the entire concept of objective obviousness is oxymoronic.

In a vacuum, maybe so. But patents are supposed to be evaluated in terms of whether "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." So says the statute, which the Court barely mentioned in passing. There are (at least partially) objective ways of determining what a person of ordinary skill would have considered obvious. The Court last seriously considered that more than 40 years ago in Graham.
posted by Joe Invisible at 1:40 PM on May 9, 2007

It's amazing how obvious most things are once they are pointed out. "I was just about to think of that, it's clearly the next logical step in what I've been doing for years."
posted by StickyCarpet at 2:22 PM on May 9, 2007

Delmoi, actually, no, objective obviousness is not oxymoronic. Previously if someone patented something that was the combination of A and B, and if A was an article that said "Gee, if only something like *describes B* existed, that'd be cool," the patent was objectively obvious.

Now what we have is a chance for any hired gun to come into court and proclaim combining references to invalidate a patent was of course obvious back when the patent was in prosecution. That just begs for people to spout opinion which cannot be verified, which makes the patent litigation game all the more dependent on the charisma of the expert witness, not any given fact.

This also encourages hindsight. I'm sure now we'd all say that putting an eraser on the end of a pencil is pretty obvious, but was that so in the time before modern pencils? Nope.

What we're inching towards is a more subjective idea of what "deserves" a patent - and that sounds good so long as you're either completely anti-patent or the one deciding what deserves a patent. If you believe in a balance, than what you hope for is not a subjective rule of law but an objective one that draws the line in the proper place.
posted by Muddler at 2:32 PM on May 9, 2007

well if it has been patented, the supremes didn't infringe it in writing that decision
posted by caddis at 4:33 PM on May 9, 2007 [1 favorite]

Might this not also be interpreted as a clear, unambiguous statement on the part of the Supreme Court that it wants nothing to do with patent disputes?
posted by genghis at 5:55 PM on May 9, 2007

I read it as the Supreme Court saying "The TSM test alone isn't good enough, it sets the bar too low. Now blunder about for ten years while you come up with something better. We'll watch from up here and laugh at your crazy antics."

Of course, this might be preferable to the alternative- a test woven out of whole cloth by nine people with relatively little patent experience. KSR doesn't destroy the TSM test, it just shakes things up a bit; from the memo caddis linked, I think it worked.
posted by Maxson at 8:53 PM on May 9, 2007

Actually, what the SCOTUS has done is to adopt the EPO's basic test for patentability. Patent examiners look at the prior art as a whole to determine the difference between the prior art and the claimed invention. If there is no "inventive step" in the difference, there is no invention.

The decision is entirely consistent with the other decisions the Roberts court has handed down. The CAFC has gone a bit too far out of the mainstream of American jurisprudence and now they are being pulled back in - kicking and screaming apparently.

The more interesting case last week was the AT&T v. Microsoft which I think was correctly decided for all the wrong reasons. The justices don't understand anything about software - it is embarassing.
posted by three blind mice at 11:08 PM on May 9, 2007

What Maxson said. The memo, as I understand it (IANApatentL), says, 'Pointing to a someone's previous related discussion somewhere and grunting "previously suggested" does not prove obviousness. Explaining what techniques were common knowledge, and what effects were commonly desired, and how this would lead someone of ordinary skill to produce that effect by that technique—does. Determining the necessary detail of that explanation is left as an exercise to the reader.'
posted by eritain at 2:44 AM on May 10, 2007

Half the problem is the USPTO rubber-stamping so many patents with no regard of whether they meet the patentability guidelines it is theoretically supposed to be following, and then leaving it to the courts to sort out the mess. If the USPTO limited itself to granting only patents that had even the slimmest veneer of legitimacy, like it's supposed to, this court ruling would seem unlikely to have happened.
posted by -harlequin- at 3:08 AM on May 10, 2007 [1 favorite]

three blind mice: Actually, what the SCOTUS has done is to adopt the EPO's basic test for patentability.

Not really. There are a few things in KSR that would be very definitely not kosher in Europe. In particular the idea that the "ordinarily skilled person" is not only ordinarily knowledgeable, but also has ordinary creativity. At the EPO, the "skilled person" is acknowledged as an artificial construct that is nearly omniscient (being aware of any public disclosures in any form, place or language) but has no creativity whatsoever (what this says about Europe vs. the US, I let you decide). From my experience the main difference between EPO and USPTO examination lies not so much in a more or less stricter approach to obviousness, but rather in generally better prior art searches at the EPO.
posted by Skeptic at 8:14 AM on May 10, 2007

Half the problem is the USPTO rubber-stamping so many patents with no regard of whether they meet the patentability guidelines it is theoretically supposed to be following, and then leaving it to the courts to sort out the mess.

I have had just the opposite experience in dealing with the USPTO. Based on my experience, examiners are doing everything they can to limit allowances.
posted by gyc at 10:10 AM on May 10, 2007

In order to maintain a fair and beneficial system, the condition that patents cover non-obvious innovations is highly important. The whole reason for granting patents is to foster innovation by granting temporary monopolies to innovators. Patents are meant to include enough information to allow a skilled practitioner to actually make the thing being patented. Under this system, inventors are meant to be willing to disclose the nature of what they have accomplished so that it might serve to aid the investigations of others. In exchange, they get legal rights over their invention for a defined period of time. This trade-off hardly makes sense when companies are permitted to patent trivial innovations, such as the much ridiculed patent awarded to Amazon.com for ‘one click shopping.’
posted by sindark at 4:16 PM on May 10, 2007