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

I patent the "First Post"

[DevConcepts]

Pay me!

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?

[Bigjeff5]

TFA is wrong, you can see it pretty clearly by reading the 2010 KSR guidlines.

First off, they are administrative rules, and have no force of law and are not enforceable in any way.

Second, they mearly state that the KSR SCOTUS ruling does not replace the old methods of determining obviousness, it simply gives the PTO new lines of reasoning to use when rejecting a patent.

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."

I don't know where swpat.org got the idea that this eliminated any of the 2007 rationals, but it isn't in there at all. If anything this makes it easier for patent officers to reject a patent for obvious, because it makes it clear that the new standards (2007 guidelines) don't replace the old standards, they apply in addition to the old obviousness standards (pre-2007 guidelines).

Really, if they bothered to read it the wouldn't be making asses of themselves.

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.

Re:trying to undo KSR?

[Foobar of Borg]

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?

Both are based on law. It's just that, the way the law is written, the Patent Office has the initial burden to make a case that the claims in the patent application should not be allowed.

Re:first post

[DevConcepts]

That was the point.

Re:first post

[Foobar of Borg]

first post...HA...how obvious is that?

Apparently, DevConcepts already has prior art!

wtf?

[shentino]

So let me get this straight...

USPTO is already rubber stamping stupid patents a mile a minute, and now they're making it easier for even MORE crap to come out?

Or are they just making it *harder* for that crap to be shot down in court?

Re:wtf?

[The Empiricist]

USPTO is already rubber stamping stupid patents a mile a minute, and now they're making it easier for even MORE crap to come out?

It's more likely that they are trying to improve the quality of examiner rejections. Consider a claim for a widget comprising component A and B. The Examiner finds component A in reference Andy, and component B in reference Bob. The examiner then says without providing any rationale that it would have been obvious to combine Andy and Bob to make the claimed widget. A weak rejection like that encourages the applicant to appeal instead of amending the claim. This is bad news, especially if the claimed widget is obvious over Andy and Bob, but the Board of Patent Appeals and Interferences or the Court of Appeals for the Federal Circuit, not having any rationale to review, didn't recognize that the claimed widget was obvious.

Or are they just making it *harder* for that crap to be shot down in court?

Well, if the Examiner rejections are stronger, then allowed claims would probably be stronger and thus harder to shoot down in court. But ultimately, the Patent Office has no say in how the courts determine whether a claimed invention is obvious or not. These guidelines aren't even enforceable through appeal with the Board of Patent Appeals and Interferences:

This 2010 KSR Guidelines Update does not constitute substantive rule making and hence does not have the force and effect of law. It has been developed as a matter of internal Office management and is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Consequently, any failure by Office personnel to follow this 2010 KSR Guidelines Update is neither appealable nor petitionable.

A patent practitioner could use these new guidelines to try to persuade an examiner (or that examiner's supervisor) that a rejection wasn't good. But, if the practitioner is unconvincing, then there may not be much that the practitioner can do based solely on these guidelines.

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: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.

Obvious is different to different people

[LordNacho]

I can see why someone might think patents are a good idea. You spent effort inventing something, so you don't want someone taking your idea and your customers (by offering it cheaply due to smaller R&D costs). In return for a temporary monopoly, you reveal how your invention works.

The thing is, these days, with so many high-tech specialized niches, anyone who wants to make use of your patented idea would need to be an expert anyway. I'm pretty sure I wouldn't be able to understand any of the patents behind modern CPUs for instance, unless I spent an awful lot of time reacquainting myself with electronics. In other words, you need to invest in a form of R&D to be able to gain anything from reading a patent. Now, experts in various fields tend to know what is going on in those fields. They know what the hot research topics are, and what kinds of designs people are thinking about. In that sense, everything in that field is obvious to them. It's just a matter of time before someone actually gets xyz algorithm/design to work. Should we really be rewarding the firms with the fastest lawyers?

Re:Obvious is different to different people

[Bigjeff5]

I'm pretty sure I wouldn't be able to understand any of the patents behind modern CPUs for instance, unless I spent an awful lot of time reacquainting myself with electronics.

This has always been true. The point of patents is not so that anyone can build the thing in the patent, the point of patents is so that a competent engineer in the same field could build the thing in the patent.

If you are a chip designer for AMD, you would definitely understand Intel's CPU patents. A transmission designer should be able to understand patents on transmissions. An aeronautical engineer should be able to understand a new airplane design.

That's the point of patents. It has always been the point of patents, it isn't something that has developed over the last 50 years. They are not there to tell you, specifically, how to do something new. They are there to tell anyone who has the required background knowledge how to do something new. If you don't have the required knowledge to understand it, then the patent was never intended for you to begin with.

Here's a Better Article

[Nailer235]

For those of us that don't want to read through the Federal Register, here's a summary of the current obviousness tests. I don't believe the removal of these tests will make it easier for patents to pass the obviousness bar; rather, this seems more like an effort to consolidate burdensome caselaw. http://www.patentlyo.com/patent/2010/09/uspto-guidelines-for-determining-obviousness.html

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.

OMFG, where did you people learn to read?!

[Dachannien]

Although the other rationales discussed in the 2007 KSR Guidelines are not the focus of separate discussions in this 2010 KSR Guidelines Update, it will be noted that obviousness concepts such as applying known techniques, design choice, and market forces are addressed when they arise in the selected cases. The cases included in this 2010 KSR Guidelines Update reinforce the idea, presented in the 2007 KSR Guidelines, that there may be more than one line of reasoning that can properly be applied to a particular factual scenario. The selected decisions also illustrate the overlapping nature of the lines of reasoning that may be employed to establish a prima facie case of obviousness. Although the 2007 KSR Guidelines presented the rationales as discrete, self-contained lines of reasoning, and they may indeed be employed that way, it is useful to recognize that real-world situations may require analyses that may not be so readily pigeon-holed into distinct categories.

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.

The only reason that the other four rationales aren't discussed in any great detail in these guidelines is because the Federal Circuit hasn't released any decisions invoking those rationales since KSR.

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

[Bigjeff5]

Replying again, I know, but it looks like TFA really jumped the gun big time. I only skimmed it, but it seems pretty clear to me that the 2010 guidelines only frame what patent officers are supposed to do once they've chosen one of the seven rationals laid out in the 2007 guidelines. It's a set of guidelines for applying the 2007 guidelines, it isn't a change in the rules in any way that I could tell.

This is further made clear by the fact that the 2010 guidelines are completely, 100% unenforced. It's nothing more than advice. From TFA:

This 2010 KSR Guidelines Update does not constitute substantive rule making and hence does not have the force and effect of law. It has been developed as a matter of internal Office management and is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Consequently, any failure by Office personnel to follow this 2010 KSR Guidelines Update is neither appealable nor petitionable.

And further down, right after spelling out the seven rationals in the 2007 KSR Guidelines, they make it pretty clear that all those rationals are still in play:

It is important for Office personnel to recognize that when they do choose to formulate an obviousness rejection using one of the rationales suggested by the Supreme Court in KSR and discussed in the 2007 KSR Guidelines, they are to adhere to the instructions provided in the MPEP regarding the necessary factual findings. However, the 2007 KSR Guidelines also stressed that while the Graham inquiries and the associated reasoning are crucial to a proper obviousness determination, the Supreme Court in KSR did not place any limit on the particular approach to be taken to formulate the line of reasoning. In other words, the KSR decision is not to be seen as replacing a single test for obviousness–the TSM test–with the seven rationales listed in the 2007 KSR Guidelines. See MPEP 2141 and 2143 (8th ed. 2001) (Rev. 8, July 2010) (references to the MPEP are to Revision 8 of the 8th Edition of the MPEP unless otherwise indicated).

The document basically just reminds the patent officers to have all their ducks in a row before rejecting a patent, and gives some examples from case law. Given that the new guidelines have only been in effect for three years, it's not surprising they don't have examples for every rational.

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.

Summary is incorrect

[Theaetetus]

The 2010 guidelines do not remove three of the tests. They do provide examples from case law over four of the tests which come up commonly. There haven't been any cases since 2007 that involve the other three tests, so there's no case law to quote and summarize. This is simply the Slashdot poster getting freaked out over nothing.

Stupid Article

[the eric conspiracy]

The referenced article draws conclusions completely at odds with the actual USPTO notice.

I guess it's to be expected that anything appearing on Slashsdot regarding patents would be totally erroneous, but this is one of the worst examples ever. In fact the USPTO encourages examiners to use reasoning outside the examples, which would be considered a BROADENING of the obviousness guidelines.

This story is quite the howler. Well done Slashsdot; you have hit a new low here.

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:Ah, the American dream

[digitig]

But they have the patent.