[Patents] Re: obviousness

[PILCH Hartmut phm@a2e.de]

> >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."

Apparently Patnews doesn't need those discussions.  Otherwhise your
reply would meanwhile have been posted.

> 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.

The latter argument is also frequently used at the EPO, and it is in
general successful.  The Saikine comparative study even asserts that the
EPO is more generous than the USPTO and JPO concerning non-obviousness,
and I think that could be true.  The EPO may be slightly stricter in
examining prior art, but probably not in rejecting obvious ideas.  I have
been present at many oral hearings at the EPO where the panel of judges (3
examiners) upheld obvious "inventions" using the "obvious only in
hindsight" argumentation.  If you want to oppose a patent, you have to win
on the initial points, such as "insufficient disclosure" or, preferably,
"lack of novelty".  If you have not scored decisive points by then, you
will also lose on "inventive step" (i.e. non-obviousness).

Mr John Smith alias notobvious might be able to respond more to this.  He
is a patent examiner on the EPO and he has occasionally participated in
our discussions.  He is very sharp in debunking any claims that something
might be obvious.  In general, EPO examiners are very sharp on that.
They hate "bad patents" in the sense of formally bad, having formal
mistakes, trying to blur what the invention is, not citing prior art etc.
But when something is formally correct, they are very reluctant to
recognise any claims of "lack of inventive step".  Such claims are vague
and hard to assess.  The patent examiner hates anything that looks like
designed to deliberately make his job difficult.  And his job is granting
(formally correct) patents.

I suspect that this has basically been so for a long time.  I don't know
of any former "non-obviousness standard".  In Germany, there had been the
requirement that there must be a "contribution to technical progress".
This requirement went a little further than "non-obviousness", but it was
dropped in the 70s.  Still I don't think it was a decisive barrier to
trivial patents.  The dropping only shows that there is a general tendency
of gradual erosion of those barriers.

-phm