

USPTO lowers standards for obviousness - TallGuyShort
http://news.swpat.org/2010/11/uspto-weakens-obviousness/

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Fargren
_"The below text is a notice from the USPTO about tests they’re removing in
order to make it less difficult to pass the test for obviousness"_

Am I the only one how finds this was unnecesarily oblique? I needed to read it
over 3 times to understand whether the tests had become more or less strict.

~~~
DougBTX
Yes, I was not sure what it meant the first time I read it either. Perhaps
this is better: _Below is a USPTO notice describing how they will make it
easier for patents to pass the obviousness tests_

~~~
ScottBurson
I think even clearer would be: "... easier for patents to pass the _non_
obviousness tests". That is, they're making it harder for examiners to reject
patents as obvious.

Contrary to the blogger, I think the obviousness bar is still much too low,
and that this is, in fact, the biggest problem with the patent system. Now
they're making the problem worse. I find this very dismaying.

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cduan
The way I read it, they're not deleting any tests, but rather just providing
additional case law guidance on three of them. The reason the other four
aren't included is simply that there is no case law to be discussed for them,
presumably.

The notice includes this paragraph:

 _Although the other rationales discussed in the 2007 KSR Guidelines are not
the focus of separate discussions in this 2010 KSR Guidelines Update, it will
be noted that obviousness concepts such as applying known techniques, design
choice, and market forces [the items not discussed] are addressed when they
arise in the selected cases. The cases included in this 2010 KSR Guidelines
Update reinforce the idea, presented in the 2007 KSR Guidelines, that there
may be more than one line of reasoning that can properly be applied to a
particular factual scenario. The selected decisions also illustrate the
overlapping nature of the lines of reasoning that may be employed to establish
a prima facie case of obviousness. Although the 2007 KSR Guidelines presented
the rationales as discrete, self-contained lines of reasoning, and they may
indeed be employed that way, it is useful to recognize that real-world
situations may require analyses that may not be so readily pigeon-holed into
distinct categories._

Additionally, keep in mind that the USPTO can't change the test of
obviousness. That is the role of Congress (and, some might argue, the federal
courts). The USPTO is just giving advice to its patent examiners of its best
interpretations of the existing decisions.

~~~
jforman
Obviousness tests derive entirely from the federal courts. The law (35 USC
103) itself is rather concise
([http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35...](http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_103.htm)):

A patent will not be granted _if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains._

The federal courts have interpreted this sentence into various tests over the
years, which are then interpreted further into guidelines set forth by the
USPTO.

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bugsy
Holy cow, the 2010 guidelines on obviousness is 18,374 words long of complex
legalese. There's no lawyer in the world that can say with any certainty what
it means.

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SkyMarshal
_"The below text is a notice from the USPTO about tests they’re removing in
order to make it less difficult to pass the test for obviousness. Low
obviousness standards (silly patents) is not the mains cause of problems, but
it aggravates already-problematic domains such as software patents.

...

In 2007, there were seven tests – the classic teaching-suggestion-motivation
(TSM), plus six newer tests. Failing any of these tests would lead to
rejection due to obviousness. Those tests were put in place in 2007 in
response to the landmark case KSR v. Teleflex. Under its new director, David
Kappos, the USPTO has now deleted four of those tests."_

I don't see how reducing the number of obviousness tests from 7 to 3 makes it
harder to pass, when failing _any single test_ causes a patent app to fail the
whole thing. Wouldn't having more tests result in a greater % of failures, and
hence more patents rejected for obviousness? What am I missing?

~~~
martincmartin
They're making it "less difficult," i.e. easier to pass. They claim that's ok
because "silly patents [are] not the main cause of problems," so presumably
they think they have some leeway.

~~~
SkyMarshal
Ah I see, thanks, misread it.

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spinlock
It's Sunday and I'm not behind on any work. It's raining out and I have
nothing better to do. It is in my interest to understand patent law. But, I
just can't make myself read the law.

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danshapiro
I may have missed it, but I didn't see the new 3 points that remain in the
test anywhere in the article. Would appreciate it if someone could summarize
the new tests in the comments.

~~~
danshapiro
After doing some searching, found <http://www.ipeg.eu/blog/?p=1742>, which
claims only two tests survive:

(a) substituting one known element for another, which requires that the result
obtained would have been predictable.

(b) the obvious to try rationale, which requires a recognized problem or need
in the art and a finite number of identified, predictable solutions to the
recognized need or problem.

I wonder if previously rejected obviousness claims can be reopened? If so,
companies with issued patents have some strategizing to do.

~~~
ScottBurson
Thanks for the link, but look again: it says those two tests survive _in
addition to_ the traditional TSM test.

As for the last question, there's always a risk of an issued patent being
thrown out for obviousness when one tries to litigate it. I wouldn't think
this changes that much (although the KSR decision, on which this is based,
might have changed it).

