USPTO Decides To Lower Obviousness Standards 129
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.'"
Here's a Better Article (Score:4, Informative)
Re:wtf? (Score:5, Informative)
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.
OMFG, where did you people learn to read?! (Score:5, Informative)
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:Obvious is different to different people (Score:4, Informative)
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.
Summary is incorrect (Score:5, Informative)
Re:OMFG, where did you people learn to read?! (Score:3, Informative)
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.
Re:trying to undo KSR? (Score:5, Informative)
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.
Stupid Article (Score:5, Informative)
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.
Re:trying to undo KSR? (Score:3, Informative)
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:blamology (Score:1, Informative)
Bush started a war he didn't know how to finish, [...] Patriot acts, color-coded fear against Muslims,
Yep. It sure has been great now that Obama has ended the wars, repealed the patriot act and no longer uses Muslims as an excuse to further the police state.
presided over the passing of the DMCA
Wow. It's amazing that Bush presided over a bill that passed [wikimedia.org] more than two years before he came into office!