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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.'"
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.
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
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.
...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.
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.
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.
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.
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.
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.
Security is mostly a superstition... Avoiding danger is no safer in the long run than outright exposure. - Helen Keller
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.