Monday, December 04, 2006

San Jose Mercury News veering off track?

The San Jose Mercury News had an interesting editorial, which covered KSR v. Teleflex. It included the text:

But these days, the [patent] system has become a race by companies and their lawyers to secure the rights to incremental variations and half-baked concepts and then sue to extract royalties and settlements from everyone in sight.

The reasons for this mess are complex, from poor training and understaffing at the U.S. Patent & Trademark Office to an attitude of ``patent everything just in case'' on the part of inventors and companies.

The Court of Appeals for the Federal Circuit, which handles all patent appeals, has contributed mightily to the madness by laying down a set of rigid rules that make it too easy to get a patent, virtually impossible to overturn one after it's granted -- and prohibitively expensive to even try.

Fortunately, the Supreme Court is reviewing three patent cases this term. It needs to bring back common sense as an important factor in the patent system.

In the most important case, KSR International vs. Teleflex, the justices are reviewing the concept of ``obviousness'' in a dispute over pedal designs created by two auto-parts makers.

It seems, well, obvious that you can't get a patent for an invention that is ``obvious.'' But a lot of genuine insights appear obvious in hindsight. To help decide this, the high court and Congress have, over many decades, issued guidelines that take into account prior inventions and the knowledge that an ordinary person working in the field would have.

Unfortunately, the appeals court has concocted a three-part test for obviousness that sets an unreasonably high barrier for anyone seeking to invalidate a patent that simply combines old, established ideas into a new one. (During oral arguments this week, Justice Antonin Scalia, not exactly a dimwit, noted the test amounted to ``gobbledygook.'') Inventors need a more clear and, yes, obvious, standard of obviousness.

I sent the following to the San Jose Mercury News on Monday, Dec. 4:

Your Dec. 4 editorial, "Patent system veers off track," omitted a number of significant points. First, of the complex reasons for this mess, the editorial neglected to mention that Congress has been diverting fees collected by the Patent Office into general revenue for over ten years, thereby starving the Patent Office of the resources it needs to do its job. Second, in their haste to find a favorable case to alter the law on obviousness, the opponents of the current law have presented a case that is not precedential and which did not even rule on whether the invention was obvious. Rather, the issue in the case was whether the trial court had to write down its reasons for combining different prior references in order to invalidate the challenged patent. Third, the Court of Appeals for the Federal Circuit did not concoct a three-part test for obviousness; rather, the requirement of finding a teaching, suggestion, or motivation to combine references is one part of the obviousness test. Contrary to Justice Scalia's observation, the whole world of obviousness is not embraced within these three nouns. Further, if the test is irrational gobbledygook, it is gobbledygook upon which the Supreme Court has had numerous previous opportunities to rule, such as in the case of In re Dillon which the Supreme Court declined to review in 1991. Fourth, the determination of obviousness requires a balance between the rights of the public and of the inventor. After something is invented, it can appear obvious in hindsight, after the information of the invention is laid out, even though it was not obvious before the invention was made. One writer noted of the problem: It's like being told Bruce Willis's character is a ghost before sitting down to watch "The Sixth Sense." The test of the Federal Circuit, in simply requiring that a patent challenger write down the reasons for combining a variety of references in order to arrive at the questioned invention, is not an unreasonable or irrational burden.


Blogger cK said...

Excellent response to the news article (San Jose)

10:03 AM  

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