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Topic: Law News: Supreme Court to Rule on 'Obvious' Patents

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  1. #1
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    Law News: Supreme Court to Rule on 'Obvious' Patents

    News.com reports that "the U.S. Supreme Court on Monday agreed to take up a case involving one of the thornier questions in patent law: What makes an invention "obvious"--and therefore unworthy of a patent?"

    KSR v. Teleflex is a patent case in which the defense is arguing the patent is obvious and should be thrown out. The case hinges on a 1952 provision of patent law. Several major IT firms are supporting the defense.

  2. #2

    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    I hope the Supremes study patent law *very* closely before they hear the case. And I hope they consider lots of exmaples.

    There are lots of silly patents out there. Some things are blatantly obvious - like patenting "5" after your buddy counted to four.

    Then again "10" might be a valid patent. The idea of using the second digit is novel. However, "100" wouldn't be a valid patent. It's a natural extension of the idea shown in the "10" patent.

    Consider music. Mary Had a Little Lamb is an obvious melody - *after* you've already heard it. And that's the rub. Everything is obvious, after you've been exposed to it.

    I hope the Supremes tread lightly, and provide some very well considered language as guidelines for judges in patent suits.

  3. #3

    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    What's obvious can be an extemely tricky question... some
    great examples, Jon.

    More than half seriously, perhaps what they need deciding this
    case isn't a bench full of judges, but some good old-fashioned
    Talmudic rabbis.

    David
    www.DavidSosnowski.com
    .

  4. #4
    Senior Member Leaf's Avatar
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    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    I'm having a little trouble understanding what it is speaking of when they say obvious. Can anyone explain please?

    This guy that I once worked with liked to go the library and lookup existing patents, he said if you make an improvement to an existing one, the new patent is yours, which to me seemed kinda crooked, because it seemed he didn't have improvement in mind as the goal as much as just an opertunity to hijack someone's patent.

    Are they speaking of when an improvement is obvious, such as the obvious evolution of something because of external factors?

  5. #5

    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    Quote Originally Posted by Leaf
    ...This guy that I once worked with liked to go the library and lookup existing patents, he said if you make an improvement to an existing one, the new patent is yours, which to me seemed kinda crooked, because it seemed he didn't have improvement in mind as the goal as much as just an opertunity to hijack someone's patent.
    This practice is valid, and somewhat encouraged.

    Let's say a guy invents the unicycle, including the tires, pedals, seat, etc. Your friend studies the unicycle patent and invents the bicycle - the kind with the big wheel and no chain. (Some would call it obvious, but he added handlebars and a steering mechanism.)

    He hasn't really hijacked the unicycle patent. He's built upon it. The unicycle guy can keep building unicycles without paying a dime. Your friend can build bicycles, but has to pay the unicycle guy a licencing fee for the pedal and wheel technology. New bicycle companies have to pay two licensing fees.

    Part of the deal with patents is that you get a temporary monopoly. The other part of the deal is that you make your invention public, allowing others to learn about your invention and build upon it.

  6. #6

    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    Quote Originally Posted by JonFairhurst
    Everything is obvious, after you've been exposed to it.
    Quite true! It's extremely annoying, isn't it?

    Quote Originally Posted by etLux
    What's obvious can be an extemely tricky question...
    Indeed! It seems like it will be a tough case.
    Sean Patrick Hannifin
    My MP3s | My Melody Generator | my album
    "serious music" ... as if the rest of us are just kidding

  7. #7

    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    Its about time this issue went up. Most courts punt to avoid doing a reasoned obviousness analysis. They say stuff like, "The fact that no one ever put 3 nuts on bolt before proves to me its not obvious." Which effectively merges obviousness and novelty which are suposed to be 2 separate and independent tests.

    Howard

  8. #8

    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    As a lawyer and adjunct professor I have to read Supreme Court cases. The Court has real problems in dealing with tax and intellectual property cases--they are so far removed from the real world that their decisions can be unpredictable. I am sure lawyers on both sides of this case are very, very nervous.

    Fred G.

  9. #9

    Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    Someone actually patented the idea of using a laser pointer to exercise a cat.

    Moreover, someone also patented the idea of putting an eraser on the end of a pencil.

    Are both of these ideas obvious? Neither? Just one? Why?

  10. #10

    Lightbulb Re: Law News: Supreme Court to Rule on 'Obvious' Patents

    Quote Originally Posted by Andrew Koenig
    Someone actually patented the idea of using a laser pointer to exercise a cat.

    Moreover, someone also patented the idea of putting an eraser on the end of a pencil.

    Are both of these ideas obvious? Neither? Just one? Why?
    Yes

    Actually, "obviousness" and "nonobviousness" are "terms of art", which means that they have particular meanings in the field of patent law, and don't necessarily correspond to their normal everyday ("lay") useage.

    Patents 101

    Many things look obvious in hindsight (not everything: there are some inventions that do not seem obvious, or even comprehensible, even after you've read the patent 6 or 7 times). To be patentable, the invention must be (amongst other things) "non-obvious to one of ordinary skill in the art at the time the invention was made." This has been construed to mean that you have to put yourself in the shoes of one who has never seen the invention. You are, however, attributed with the knowledge of everything ever done in your field that is publicly available (we call that the "prior art").

    When you file your patent application, it is assigned to an Examiner. The Examiner searches the art in the field of your invention to see if there is anything similar. If he/she finds a publication (e.g., a journal article, catalog, ad, another patent, etc.) that describes every aspect of your invention, then your invention lacks novelty and is not patentable. If no single publication contains all the elements, the Examiner then considers if some combination of publications (also called references) would cover all the elements. If the Examiner finds such a combination, he/she must also justify why it would be obvious to combine those references in such a way as to arrive at your invention. If so, the Examiner has established a "prima facie" case of obviousness. You then have an opportunity to disprove the Examiner's case, for example by pointing out why one of ordinary skill would not make the asserted combination, or by showing that unexpected and surprising results are obtained from the invention that are not hinted at in the references, etc.

    So, "obviousness" in the patent sense means that there is a reference or combination of references that suggests/discloses/teaches your invention, and that one of ordinary skill in the art would be expected to put them together in the way that you did. Basically, the Examiner has to have evidence that the invention is obvious, in the form of one or more publications that pre-date your filing date: this helps avoid the problem of everything appearing obvious once you've heard about it.
    As for the pencil eraser and the laser pointer cat toy, a lot depends on when exactly the invention was made. Think back to the time when many people still wrote with quill pens, and pencils and fountain pens were new. Erasers were just chunks of rubber (like art gum). Why would you think of attaching one to the end of your pencil? If you're thinking of a more modern patent, you have to look at exactly what was claimed. The claims (the numbered paragraphs at the end of the patent) define what the actual invention is, what the patent covers. Many inventors will make broad, general statements, like "I've patented a car that runs on water", that are much bigger than their actual invention. But if someone has invented a way to bond the eraser so that it doesn't fall off the pencil so easily, sounds good to me!

    The laser pointer cat toy patent (US 5,443,036) was filed in 1993. I don't remember how wide-spread laser pointers were back then: perhaps Mr. Amiss and Mr. Abbott were simply the first to notice that cats would actually chase the laser spot. I actually have a laser cat toy: our cat really enjoyed it for a while. However, he eventually tired of it - probably because there isn't anything to actually catch. With a physical cat toy, he gets to sink his claws and teeth into it at some point

    Grant
    ==============================
    Grant Green ||| www.contrabass.com
    Sarrusophones and other seismic devices

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