USPTO Decides To Lower Obviousness Standards

ciaran_o_riordan writes "Anyone who feels that patent quality is just far too high nowadays will be glad to hear that the USPTO has decided to ditch four of their seven tests for obviousness. Whereas the 2007 guidelines said that an idea is considered obvious if it consisted of '[predictable] variations [...] based on design incentives or other market forces' or if there was 'Use of a known technique [prior art] to improve similar devices (methods, or products) in the same way,' the new guidelines do away with those tests. The classic 'teaching-suggestion-motivation' test is still there, with two others. For software developers, silly patents are not the main problem, but they certainly aggravate the matter. As described in one patent lawyer's summary, this change will 'give applicants greater opportunities to obtain allowance of claims.'"

Comments

trying to undo KSR?

[l2718]

The 2007 guidelines were needed after KSR v. Teleflex . It seems the USPTO is now trying to push back against that ruling.

Re:trying to undo KSR?

[Antique Geekmeister]

They're a bureaucracy. Their funding, staff, and political power are based on their work actually mattering to someone. So are the bribes, perks, "business conferences", seminars with "concerned business leaders", political contributions for candidates friendly to their office, etc. So are their after government service careers as patent attorneys or consultants, and the jobs of their peers in industry.

This kind of thing is true of _all_ bureaucracies. It often takes a force from outside, such as a visionary leader or a defining test case, to serously alter such standards. We had some hopes that the "Bilski" case would improve the guidelines, but it merely created new layers of creative interpretation for patent submissions to provide.

Re:trying to undo KSR?

[cgenman]

Third, it reminds patent officers that rejections must be based on the law, and that for whatever line of reasoning they follow (specifically talking about the seven rules in the 2007 guidelines here), "appropriate factual findings are required in order to apply the enumerated rationales properly."

Shouldn't approvals be based on the law? Rejections are a refusal to grant special status to an individual. Approvals curtail the freedoms of all other individuals. Shouldn't approvals be held to the higher standard?

Re:trying to undo KSR?

[Dragonslicer]

Shouldn't approvals be based on the law? Rejections are a refusal to grant special status to an individual. Approvals curtail the freedoms of all other individuals. Shouldn't approvals be held to the higher standard?

How would you enumerate what patents should be allowed? You can't list every possible invention. If you could create a list of patentable inventions, they probably wouldn't be patentable, since you clearly already have someone (or more likely a large number of people on a committee) that has come up with the idea. The list of reasons for rejection is relatively short, so it's much easier to consider an invention patentable unless there's a specific reason to reject it.

The same mistake...

[Anonymous Coward]

...over and over again. Remember: patents also block independent development.

So often your competition has arrived to the idea independently and hasn't had "smaller R&D costs" anyway.

This happens especially often in the software industry, where the ideas are a dime a dozen (I mean: Amazon one-click? Hello?). So it just becomes an instrument to block the smaller competitors out of the market. Or an instrument for otherwise useless lawyer firms to prey on innovation, costing us all more than it should.

Parasites, I'd say.

Re:wtf?

[shentino]

The courts are already too backlogged with everything else to have time to get ticked at patents specifically.

Face it, our *entire* government has been bought and paid for.

Re:wtf?

[Pinky's Brain]

There can be no rationale for an obviousness test ... ultimately something is obvious just because.

Of course lawyers will never accept this ... having to take the word from experts without being able to weasel their way into the decision? No fucking way.

Re:This is NOT true of _all_ bureaucracies.

[Anonymous Coward]

They aren't, but the universe doesn't care if you're playing games.

Re:OMFG, where did you people learn to read?!

[Bigjeff5]

Damnit, you just had to go and ruin it didn't you?

What with your reading TFA and all. Punk.

Don't bring your stupid facts into this discussion, we don't want them!

Re:wtf?

[Anonymous Coward]

Well, if the Examiner rejections are stronger, then allowed claims would probably be stronger and thus harder to shoot down in court.

I don't think your conclusion follows. If the examiner can reject a claim with a relatively vague reasoning, then the applicant would be forced to justify their claims better. On the other hand if the examiner's powers are limited and he/she has to find a stronger justification for rejecting a claim, then it is easier for the applicant to get claim through.

Basically, it is a question of the balance of power between the applicant and the examiner. The examiner is already at a relatively weak position since he/she is only allowed to spend a very limited time on a single application, compared to the time that applicants and their patent lawyers can invest on the application. Limiting the arguments that the examiner can use only shifts the balance towards the applicant.

Seriously, summary is absolutely incorrect

[Theaetetus]

Not only do they not say that they're getting rid of the seven KSR rationales, they actually reinforce the idea that examiners don't even necessarily have to use one of the seven rationales when making an obviousness rejection, as long as they can express their rejection in a way commensurate with the Supreme Court's reasoning in KSR.

Yep. I'm not sure if the article poster was simply freaked out because there was more than one paragraph in the 2010 guidelines, or what, but all of the same standards are in the 2010 guidelines. They're just clarifying and providing examples from case law for some of the most common rejections.

you don't get it do you

[chronoss2010]

the usa economy having outsourced well everything and allowing 20 million plus mexicans to do the menial labour means you have what left IP i call MP ( MORON PROPERTY) WAR ( the military industrial complex ) - too bad there just aren't many targets left eh? Guess killing a few hundred civilians will keep people employed. SO what is left?

Needs a "TFA is Wrong" tag

[Bigjeff5]

Seriously, it seems pretty clear swpat.org didn't even bother to read the 2010 Guidelines, and they even posted them!

The new guidelines don't do anything the summary or TFA say. You can't even get mad at the summary, except for obviously not reading TFA either (at least not beyond the first few lines).

Re:wtf?

[RocketRabbit]

The point is that the fucking lawyer's job is to tie up the court system and take a third of the cash.

Lawyers can not accept the idea of other non-Lawyer people having any say-so, as it sort of ruins their scam.

Re:Ah, the American dream

[digitig]

But they have the patent.