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Patents: How do you spell "obvious"?

By: Scott Bradner

Patents, at least the way they have impacted modern telecommunications and business, have been very controversial. Patent advocates look to Section 8 of the U.S. Constitution and it's adoption of the concept of patents to "To promote the Progress of Science and useful Arts." Critics generally recognize the importance, in theory, of the value of patents but assert that the current patent system tends to stifle, rather than promote, the progress of useful arts. Starting last year, the U.S. Supreme court started an apparently careful effort to rebalance the current system to bring it back to its original purpose. The latest of a series of decisions in this effort was announced at the end of April and brought the definition of "obvious" more in line with common sense.

A year ago the U.S. Supreme Court rebalanced the playing field between patent owners and patent users. (http://www.networkworld.com/columnists/2006/052206bradner.html) The question before the court this time concerned the balance between those who wanted to get patent protection for their "inventions" and those that contend that many of these "inventions" were just obvious combinations of known technologies.

There was a decision in another patent related case between Microsoft and AT&T that was published on the same day but that decision hinged on a technicality that Congress could easily change so is not all that important. There was a hit in one of the opinions that might become important to the patentability of software, and that would be big indeed, but it was only a hint.

The obviousness decision (http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf) was in the case of KSR International vs. Teleflex Inc. and dealt with the patentability of a type of pedal used in cars. The decision is a very important one, but exactly how important will be determined by the special Federal Circuit Court that deals with patents. This is the very same Court that this decision, as well as the one a year ago, slaps upside the head to wake them up to the reason we have patents.

In my mind, patents, when awarded to reward real invention, are an important driver of innovation. Many of the millions of U.S. patents represent real innovation. People doing things that came out of the blue, most of the patents are for things that have not made any difference in anyone's lives but quite a few are or were developments that made a real difference, at least at the time. (Take a look at patents 5,183, 88,929, 224,329 and 2,292,387 for some examples - Google patents is a good way - http://www.google.com/patents) But far too many patents have been awarded that seem undeserved to anyone in the field, or, indeed, to anyone with common sense. (See US patent 5,443,036 for an example.)

Directly relevant to this column, more than 100,000 patents have been issued that deal with the Internet in some way. Many of them deal with using the Internet to make some existing process work better in some way. Many of those patents would not have been granted under this ruling. The ruling says "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." Thus, the first person to use the Internet to improve an existing process might have deserved a patent (although I doubt it) many of the others would not have since "a person of ordinary skill in the art" (a key patent concept) would have found it obvious to use the Internet to improve other processes. Until this decision, the courts had been limiting the learning to the exact problem trying to be solved. For example using the Internet to order pepperoni pizza would only have been obvious if someone was already using the Internet to order anchovy pizza but not if someone were using the Internet to order Chinese food.

The decision recognized that granting patents for obvious work inhibits innovation and can destroy the value of existing patents: "Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility." and "We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts."

This decision is one that will cause confusion about the validity of perhaps hundreds of thousands of patents, block the granting of many of the patents currently in process, and maybe stop some people with dubious patents from suing others for infringement. But it will also provide lots of work for people like me who sometimes work as expert witnesses in patent cases and it will, in my opinion, make the US patent system stronger (after all of the bugs are worked out and if Congress does not mess things up too badly with patent "reform.")

disclaimer: I'm sure that parts of the University have strong views on patents but I did not ask them about this column so it is my own opinion.