by Dennis Crouch
I received a number of comments on one line from my post yesterday where I stated:
The law requires that a patented invention represent a significant advance beyond what was previously known in the art.
See Obviousness as a Question of Fact, Patently-O (March 17, 2015).
The basic retort from patent attorneys is that there is no “significant advance” requirement. Rather, the 1952 Patent Act involved an intentional rewriting of the law of invention to focus only on obviousness and remove the “invention” requirement.
When thinking about patent law doctrine, I ordinarily begin with the Constitutional provision that suggests creation of a system that offers exclusive rights to inventors for their discoveries in order to promote the progress of the useful arts. When I speak of an advance or invention, I do so within this Constitutional framework. The idea here is to promote the progress. Now, we might generally argue about whether we care what our long-dead policy predecessors goals for society, but most will still agree that progress in the useful arts of medicine, energy, transportation, communications, manufacturing, etc., continue to be proper goals.
It makes sense that an invention will usually represent an advance that is both new and better than the prior art in some way. However, there will be times when someone conceives of a new product that is worse than the prior art in every measurable way. (E.g., worse performance, higher costs to manufacture, higher failure rate, and worse customer appeal). In certain instances, a company may want to make and sell that more expensive but lower quality product if – for instance – the better product is locked-up by a competitor’s patent. That partial substitute may still be competitive in an otherwise over-concentrated market.
I argue that the invention of a lower-quality and higher-cost product can still represent the type of significant advance that I highlighted above and that the obviousness test is a good measure of that advance.
The worse-invention still represents a new application of technology that would not have been obvious to someone skilled in the art. And that new application fills-out the space of our technological knowledge in a way that can serve as a building block for future innovations. It has happened time-and-again that major successful innovations are built upon a series of innovative but failed endeavors — those “failures” are part of the progress and represent significant advances.
We have a real problem if the system does in-fact offer patents without any invention or any advance. Fortunately, the obviousness test is designed to prevent that from happening. Now, we just have to make sure that the test is applied in a way that lives up to our hopes.