[Patents] obviousness

[Jim Bessen jbessen@researchoninnovation.org]

Pilch wrote:

>Prof Bessen carefully replied to one of your Patnews statements.

>Did you post the reply on Patnews?

In his email to me on February 3, Greg said he wanted to put the reply Eric 
Maskin and I wrote out on PATNEWS. Greg recognizes that "we both agree on a 
lot of things, like the fact the US needs a
lot more discussions and studies on the patent system as a whole." Although 
he obviously disagrees with Eric and I on some points, I think he recognizes 
the value of such discussions for a better long run resolution of the present 
problems. Our reply clarifies some misinterpretations of our paper.

Regarding triviality and obviousness, I don't know the European situation, 
but in the U.S., the courts have dramatically changed the standards without 
any change in the law (once again). Bob Hunt (an economist at the Federal 
Reserve Bank of Philadelphia) has written about this. See Nonobviousness and 
the Incentive to Innovate: An Economic Analysis of Intellectual Property 
Reform, p. 8-9 at

http://www.phil.frb.org/files/wps/1999/wp99-3.pdf

To simpify Bob's account (I urge you to read the original), prior to the 
mid-80's, one could defend against patent infringement by arguing that the 
patent was "obvious to a skilled practitioner of the art." The courts have 
added a criterion of commercial success. The argument goes that even if a 
patent seems obvious in hindsight, if no one made a commercially successful 
product using that patent, then it couldn't really have been obvious. This 
largely eliminates the obviousness defense. 

This sort of elastic legal thinking is at odds with the patent statute and is 
a key factor permitting the flood of what-you-and-I-would-call obvious 
patents. So the Dutch MPs have a good idea, but the devil is in the details 
of implementation. 

Jim Bessen

PS I am not a professor, but Eric Maskin is.

Pilch wrote:

 

>Prof Bessen carefully replied to one of your Patnews statements.

>Did you post the reply on Patnews?

In his email to me on February 3, Greg said he wanted to put the reply Eric Maskin and I wrote out on PATNEWS. Greg recognizes that "we both agree on a lot of things, like the fact the US needs a
lot more discussions and studies on the patent system as a whole." Although he obviously disagrees with Eric and I on some points, I think he recognizes the value of such discussions for a better long run resolution of the present problems. Our reply clarifies some misinterpretations of our paper.

 

Regarding triviality and obviousness, I don't know the European situation, but in the U.S., the courts have dramatically changed the standards without any change in the law (once again). Bob Hunt (an economist at the Federal Reserve Bank of Philadelphia) has written about this. See Nonobviousness and the Incentive to Innovate: An Economic Analysis of Intellectual Property Reform, p. 8-9 at

 

http://www.phil.frb.org/files/wps/1999/wp99-3.pdf

 

To simpify Bob's account (I urge you to read the original), prior to the mid-80's, one could defend against patent infringement by arguing that the patent was "obvious to a skilled practitioner of the art." The courts have added a criterion of commercial success. The argument goes that even if a patent seems obvious in hindsight, if no one made a commercially successful product using that patent, then it couldn't really have been obvious. This largely eliminates the obviousness defense.

 

This sort of elastic legal thinking is at odds with the patent statute and is a key factor permitting the flood of what-you-and-I-would-call obvious patents. So the Dutch MPs have a good idea, but the devil is in the details of implementation.

 

Jim Bessen

 

PS I am not a professor, but Eric Maskin is.