The closest analogue I could imagine would be a test in which your patent includes a problem statement and a solution which solves that problem, and the test for obviousness is to present the problem statement to a group of skilled professionals and see if the solution they craft for that problem statement matches the patent, and strike any claims they propose.
This is a very unreliable test and a lousy and expensive standard, but it's the best I've got.
Several valid patents can be directed at the same exact problem as long as they solve it using different techniques.
Take as an example the "Drinking Bird." Imagine the inventor has applied for a patent. You get some materials engineers and a physicist or something in a room, describe a device which resembles a bird and continuously sips water, and ask them to devise a way to build it in a few hours. If they describe a bulb full of dichloromethane with a tube leading up to a beak, then it's not patentable.
That seems pretty specific ... what would be an analogous software scenario?
Programmers/UX designers brainstorming session includes several ideas, including this one: What if we remembered customer addresses and credit card info and just had a single button that said "buy"?
Patent denied.
Proving non-obviousness is well trod ground in litigation and in patent examinations. It is often the hardest criteria to get over.
Though typically obviousness can be proven by finding two or more printed publications that in combination disclose the claimed invention.
In this example, the novelty in the claim at issue is related to using a transfer criteria that is a subject identification of the image...wherein the subject identification is based on a topic, theme or individual shown in the image. This was added as the final amendment to get the patent over the prior art the examiner cited.
If one can find evidence in [edit: one or more] printed publications that this was going on before 8/8/2008, the patent can be invalidated easily. Otherwise, it will be a slog of litigation.
It's my opinion that in order to sue for infringement, a patentee should first have to convince a court that their invention is nonobvious, using objective tests such as these. The PTO is poorly placed to guage nonobviousness, for several reasons. First is simply the sheer amount of knowledge required to be able to judge what is obvious and what isn't. Second is the incentive structure at the PTO: examiners are rewarded for closing applications one way or another, not for rejecting arguably obvious patents. Third is the fact that some relevant evidence, namely the commercial success of the invention, simply isn't available yet at application time, and won't be until months or years later.
So the situation we have now is one where the courts tend to defer to the PTO on obviousness, but the PTO isn't set up to do a good job judging it in the first place.
For all these reasons I think it would be better if the burden of proof were on the patentee to prove nonobviousness, rather than on the PTO or defendants to prove obviousness; and if that proof had to be given in a court before an infringement suit could even be filed. This system would be very efficient given that closer scrutiny would have to be applied only to those patents whose litigation was seriously contemplated, a small fraction of all patents issued.
IPR is a step in this direction, certainly, but I'm not sure it goes far enough.
My guess is that it's not necessarily that people at the patent office have a hard time telling if something is obvious, so much as that the incentive structures at play are all wrong.
I imagine that, if a patent reviewer denies a patent application, they potentially have a fight on their hands when their decision gets challenged. Whereas, if they approve it, any argument ensuing from that decision will be the court's problem. It's a classic "keep your head down and don't cause any trouble for yourself" situation.
Assuming I'm right on that guess, I'd further guess that it's also a classic "I'm not paid enough for this shit" situation. I don't have any friends at USPTO, but I have friends who work in other government offices, and, from what they've said, I would assume that that is a deciding factor in a large percentage of decisions that are being made by rank-and-file government employees across all branches. And I doubt patent clerks are any more likely than any other kind of clerk to be getting paid "dealing with this shit" money.
Obviousness requires a reputable, dated source stating something like "I have combined these two elements" or "Someone should combine these two elements". While magazines or trade literature are acceptable sources, the prior art search is typically conducted primarily through the patent archive. It's a slam dunk if you have two patents with claims that cover the same invention and some way in the text to tie them together. You can't generally rely on your 'expert opinion' that it's obvious because you say so.
Patent examiners are also promoted and retained primarily based on the volume of patents they process. IIRC the bar is something like one or two patents processed a day. That would mean 6-8 hours of reading the patent, researching prior art, writing the response, reading the attorney's response and writing your final disposition, as well as any appeals. Regardless of size of patent.
All this for mid 5 figures to low six figures in NOVA
For every monetary incentive of developing something new, there are 10 obstacles because of patent law. Patents are a hindrance more than an aid.
There are probably 100 or 1000s of issued patents related to spell checking -- they can solve same problem as long as how they solve the problem is different.
> In an electronic word processing system for creating and editing a document, the document comprising a plurality of sentences, a combined spelling and grammar dialog box for displaying both spelling and grammatical errors in one of the plurality of sentences in the document comprising:
> a rich text edit command (RTEC) field for displaying both spelling and grammatical errors found within the sentence and editing the sentence;
> an error title line for indicating whether the error displayed in the RTEC field is a spelling error or a grammatical error;
> a suggestions list box for displaying a suggestions list, the suggestions list comprises a fist plurality of suggestions operative for correcting the spelling error found if the error type displayed in the error title line indicates a spelling error, or the suggestions lists comprises a second plurality of suggestions for correcting the grammatical error found if the error type displayed in the error title lined indicates a grammatical error;
> a plurality of common command buttons operative for correcting both errors in the spelling and in the grammatical composition of the sentence displayed in the RTEC field.
https://patents.google.com/patent/US6085206A
In other words: an editable sentence, the description of a spelling or grammatical error, a list of suggestions to fix the error, and some buttons to apply a suggestion, skip, etc.
That specific combination of UI elements was perhaps new in 1996 (as were most GUIs), but not what I'd call an "invention" so valuable to society that it deserves 20 years of protection from free market competition.
The actual spelling and grammar analysis code might be worthy of protection for a year or two, but they probably lifted most of that from some college kid's paper.
For about 10 years the US had a judge made "flash of genius" standard that was part of determining patentibility. It was eliminated by the US Congress in 1952.
I haven't done the research, but I imagine the flash-of-genius standard was repealed because it is impossible to objectively quantify. Current non-obviousness analysis incorporates some things that might be evidence of a flash of genius without going there, such as, market success, unmet need, and so on. But usually non-obviousness is determined if one cannot find subject matter in printed publications that one of ordinary skill in the art could combine to make the claimed invention.
If whenever a patent was overturned, the Patent Office had to pay the court costs of the one who managed to overturn it, they'd be a lot more circumspect about what they approved.
They should move way to the other side on the scale of obviousness. Patents should be there to protect investments, not to stake out ideas bright and not so bright practitioners can stumble upon. In my opinion only ideas that necessitated a few man-years of work to be discovered should be patentable with onus on inventors to prove nonobviousness. I wouldn't be surprised if only pharma patents would survive only because expensive trials are needed.
Captain Non-Obvious works there.