USPTO lowers standards for obviousness | Hacker News Reader

USPTO lowers standards for obviousness

news.swpat.org

30 pointsTallGuyShort13 comments

"The below text is a notice from the USPTO about tests they’re removing in order to make it less difficult to pass the test for obviousness"

Am I the only one how finds this was unnecesarily oblique? I needed to read it over 3 times to understand whether the tests had become more or less strict.

Yes, I was not sure what it meant the first time I read it either. Perhaps this is better: Below is a USPTO notice describing how they will make it easier for patents to pass the obviousness tests

I think even clearer would be: "... easier for patents to pass the nonobviousness tests". That is, they're making it harder for examiners to reject patents as obvious.

Contrary to the blogger, I think the obviousness bar is still much too low, and that this is, in fact, the biggest problem with the patent system. Now they're making the problem worse. I find this very dismaying.

The way I read it, they're not deleting any tests, but rather just providing additional case law guidance on three of them. The reason the other four aren't included is simply that there is no case law to be discussed for them, presumably.

The notice includes this paragraph:

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 [the items not discussed] 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.

Additionally, keep in mind that the USPTO can't change the test of obviousness. That is the role of Congress (and, some might argue, the federal courts). The USPTO is just giving advice to its patent examiners of its best interpretations of the existing decisions.

Obviousness tests derive entirely from the federal courts. The law (35 USC 103) itself is rather concise (http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35...):

A patent will not be granted if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

The federal courts have interpreted this sentence into various tests over the years, which are then interpreted further into guidelines set forth by the USPTO.

Holy cow, the 2010 guidelines on obviousness is 18,374 words long of complex legalese. There's no lawyer in the world that can say with any certainty what it means.

"The below text is a notice from the USPTO about tests they’re removing in order to make it less difficult to pass the test for obviousness. Low obviousness standards (silly patents) is not the mains cause of problems, but it aggravates already-problematic domains such as software patents.
...

In 2007, there were seven tests – the classic teaching-suggestion-motivation (TSM), plus six newer tests. Failing any of these tests would lead to rejection due to obviousness. Those tests were put in place in 2007 in response to the landmark case KSR v. Teleflex. Under its new director, David Kappos, the USPTO has now deleted four of those tests."

I don't see how reducing the number of obviousness tests from 7 to 3 makes it harder to pass, when failing any single test causes a patent app to fail the whole thing. Wouldn't having more tests result in a greater % of failures, and hence more patents rejected for obviousness? What am I missing?

They're making it "less difficult," i.e. easier to pass. They claim that's ok because "silly patents [are] not the main cause of problems," so presumably they think they have some leeway.

Ah I see, thanks, misread it.

It's Sunday and I'm not behind on any work. It's raining out and I have nothing better to do. It is in my interest to understand patent law. But, I just can't make myself read the law.

I may have missed it, but I didn't see the new 3 points that remain in the test anywhere in the article. Would appreciate it if someone could summarize the new tests in the comments.

After doing some searching, found http://www.ipeg.eu/blog/?p=1742, which claims only two tests survive:

(a) substituting one known element for another, which requires that the result obtained would have been predictable.

(b) the obvious to try rationale, which requires a recognized problem or need in the art and a finite number of identified, predictable solutions to the recognized need or problem.

I wonder if previously rejected obviousness claims can be reopened? If so, companies with issued patents have some strategizing to do.

Thanks for the link, but look again: it says those two tests survive in addition to the traditional TSM test.

As for the last question, there's always a risk of an issued patent being thrown out for obviousness when one tries to litigate it. I wouldn't think this changes that much (although the KSR decision, on which this is based, might have changed it).

Reply on news.ycombinator.com