Wednesday, June 13, 2007

Obviousness in Patents

On April 30, 2007, the U.S. Supreme Court, in a unanimous opinion, reversed a decision of the Court of Appeals, and determined that a certain patent claim (read opinion if interested in details) was obvious (and thus not enforceable).

The text of the opinion is available.

As someone who has been following the patents issued on medical standards, and on the uses of medical standards, I have long been interested in the "obviousness" issue. For a device to be patented, it should be new, useful and non-obvious. The problem is that it can be difficult to determine when a device is obvious.

The Supreme court opinion provides a fascinating discussion of the principles of obviousness. I particularly liked the discussion on pages 12-24, which addressed general issues of obviousness.

One issue related to the use of combinations of prior art in a novel manner. This is the most common way in which software gets patented. With virtually no exception, all software is built from algorithms that were already in existence. The novel combination of prior algorithms can produce a new, non-obvious and useful device.

My [layman's] interpretation of the Supreme Court opinion is that merely putting together prior art to make a new device can only qualify for a patent if the resulting device is unexpected, because people in the field would not be expected to put the prior art together in the manner of the patent or because the result of combining the prior art yielded a result that would not have been predicted by the people in the field.

It seems as though the decision raises the bar for patents, particularly patents that are built on prior art (e.g., all software and most software stanndards). I urge all those involved in software standards to read the Supreme Court decision and draw their own conclusions.

Jules Berman
Science is not a collection of facts. Science is what facts teach us; what we can learn about our universe, and ourselves, by deductive thinking. From observations of the night sky, made without the aid of telescopes, we can deduce that the universe is expanding, that the universe is not infinitely old, and why black holes exist. Without resorting to experimentation or mathematical analysis, we can deduce that gravity is a curvature in space-time, that the particles that compose light have no mass, that there is a theoretical limit to the number of different elements in the universe, and that the earth is billions of years old. Likewise, simple observations on animals tell us much about the migration of continents, the evolutionary relationships among classes of animals, why the nuclei of cells contain our genetic material, why certain animals are long-lived, why the gestation period of humans is 9 months, and why some diseases are rare and other diseases are common. In “Armchair Science”, the reader is confronted with 129 scientific mysteries, in cosmology, particle physics, chemistry, biology, and medicine. Beginning with simple observations, step-by-step analyses guide the reader toward solutions that are sometimes startling, and always entertaining. “Armchair Science” is written for general readers who are curious about science, and who want to sharpen their deductive skills.