Can we eliminate the anticipation doctrine and still have a fully-operational patent system with 99.99% identical outcomes? (Add additional comment below).
— Dennis Crouch (@patentlyo) February 1, 2021
Can we eliminate the anticipation doctrine and still have a fully-operational patent system with 99.99% identical outcomes? (Add additional comment below).
— Dennis Crouch (@patentlyo) February 1, 2021
One more comment:
Historically, obviousness was meant to fill the gap of anticipation without the need to refer to the inventiveness doctrine that was made up by the courts. The Graham factors were supposed to be applied systematically to make sure that subjective determinations of obviousness were not applied post-hoc by judges. In essence, the 1952 act sought to limit the scope of the obviousness inquiry relative to the amorphous “inventiveness” doctrine. This was done with an understanding that the vast majority of the prior art would be anticipatory prior art. “Obviousness” was intended to be the exception, applied only in cases where minor variations that “would have been obvious” are used to get around the prior art.
In essence, anticipation is the rule, obviousness is the exception. So how did we get to the point where the exception has swallowed the rule to the point that we are seriously (even as a Twitter poll) considering eliminating the rule in favor of the exception?
I do not think KSR is the issue per se, it is that judges and Examiners (and perhaps patent bloggers) are not being properly educated on the role of obviousness as a “gap filler” for anticipation. Of course, the obviousness inquiry should be “flexible.” This does not mean that obviousness should be applied as a “default” in edge cases where the gap between the prior art and the invention is anything more than de minimis.
I have trouble with the notion that, for patentability, “obviousness is the exception”. It seems to me that it is fully to be expected that i) inventors will conceive and reduce to practice obvious variations constantly, all over industry, and that ii) such busy-busy incremental improvements are commercially attractive (because they are so easily implemented) and therefore valuable to try to patent and that therefore iii) the patent system must stop the successful enforcement of such patents in order to promote the progress, not hinder it.
The exception is a patent application devoid of novelty. In any patent application that isn’t a straight 1:1 copy of somebody else, there will always be something in the specification that is “new” and on which a zealous attorney can build a claim that is novel. To prevent a flood of patents with barely novel claims issuing from the PTO, an obviousness filter is also needed.
If you blur the distinction between novelty and obviousness, by the way, hand-waving chaos ensues.
“If you blur the distinction between novelty and obviousness, by the way, hand-waving chaos ensues.”
Let me give you credit here MaxDrei, for at least you recognize a general patent law concept that seems to elude our new pal Bryan.
I am not sure where (or what) Bryan may have learned about these two different patent law concepts, but he truly seems to think that they are interchangeable (with but the single distinction of whether or not a single source or multiple sources would be required).
A better change to the system would be to restrict validity challenges at the PTAB to anticipation only. This would limit the jurisdiction of the PTAB to only cases that were truly granted in error rather than allowing them to re-prosecute the application under KSR.
link to sufficientdescription.com
“Can we eliminate the anticipation doctrine and still have a fully-operational patent system with 99.99% identical outcomes?”
Not sure I understand the question. If what I understand to be meant by “identical outcomes,” Then no. Because a patent claim for which a clear 102 is found is going to get far less lawsuits on that patent claim, and far more likely to get a summary judgement, and thus far less likely for defendant settlement payments to avoid litigation expenses, than a mere 1o3 defense. Also, there is is the case law distinction in enablement requirements for 102 prior art versus 103 art.
But the enablement requirement makes anticipation a higher bar than obviousness, correct? That doesn’t seem to help the argument. You could eliminate the higher bar and still invalidate under the lower bar.
….sigh….
All art that is prior is NOT prior art equally under 102 and 103.
How so? If you wish to be convincing, you have the burden of persuasion.
I note that post-AIA, 103 has no exceptions–these have all been incorporated into Section 102. (You perhaps have an argument with respect to pre-AIA cases, given the common ownership exception and the like. However, that is now an extreme edge case and is getting more so daily.)
To contradict Dennis’s assertion, you must not simply establish that anticipation and obviousness are different. (Obviously so.) You must establish that something can be anticipated yet not obvious.
No.
I have no such burden, as I am merely reflecting what the law IS.
You, on the other hand have the burden because your view would be a change in law.
My burden has been met. Section 103 references Section 102 and contains no exceptions. All art that is prior is prior under equally under Sections 102 and 103.
That is simply not so.
Else, your view means that the AIA abrogated KSR.
Are you choosing that hill?
(alas, I have probably reached my ‘count filter’ limit, so our discussions may have to wait until tomorrow to continue)
My argument is simply that, for Dennis’s assertion to be true, one need only show that the doctrine of obviousness would with equal strength invalidate 99.99% of cases invalided as anticipated. Differences between anticipation and obviousness are not sufficient to disprove Dennis’s assertion. So long as anticipation is simply a higher bar, the assertion holds.
I see nothing in KSR to establish that art would be anticipated and yet not obvious. Indeed, I think SCOTUSs approach would look sadly on ridiculous conclusions such as “X is not obvious even though we have a prior art reference that literally teaches ‘do X'”.
Dennis’s “assertion” is a falsehood.
That’s kind of an important point, and why I posted with some not small degree of ire my post at 5.2 to leave his contribution as merely the ‘starting point’ without his coming in and finishing the teaching moment is apt to MISLEAD rather than illuminate.
We have enough misleading when it comes to innovation protection already from the Efficient Infringers, thank you.
That’s “kind of” what we’re discussing. You can’t just state your conclusion as fact and then proceed from there. That’s–quite literally–illogical.
You misunderstand as I am not stating my conclusion as a fact – I am giving you the facts.
We seem to be heading in circles, so I’ll leave it there. The reader can decide.
The heading in circles is because of your own aim.
For “the readers” then, why don’t you actually state “your argument” in terms of what the law IS for 35 USC 102 and 35 USC 103.
Note below how I had commented that MaxDrei was so close and yet so far. His distance was due to the fact that he has his predilection for discussing non-US law, but his closeness was due to the fact that he recognized that the sections of law are intended to cover different things.
It appears that the sum total of your ‘argument,’ is ‘meh, they pretty much cover the same thing, so no big dif.”
I have to ask: have you actually had any patent law classes back in the day?
I guess that you could build a case of a claim being anticipated by a reference that is not analogous. Like a claim in an application for a glass reading by accidenr on a cistern.
In case you are new here, you should be warned: anon is a bad faith poster.
Welcome.
Note: by “bad faith poster,” Ben – who is an examiner – merely means that I will be a bit rough, but that my positions are correct and those, like Ben, who cannot compete on the merits, are left to be bitter and grouse about “how mean anon is.”
Context like that is important to be clear about.
Appreciate the heads up Ben. I think in this case the arguments on both sides speak for themselves.
Still waiting for your view on the more recent thread…
What exactly is your ‘argument,’, Brian?
Other than “meh, close enough,” and some assertion that the AIA eviscerated any legal distinction between the (loaded) terms of art of Anticipation and Obviousness, you really haven’t presented a cogent view of anything.
See my first reply to 5.1.1.1.1.1.1 (“My argument is simply that…”). You’re reply (“Dennis’s ‘assertion’ is a falsehood.”) is assuming the conclusion. You do not refute my argument. I’m beginning to think Ben is correct and you’re arguing in bad faith.
No (again), I am not simply assuming the conclusion.
And again, what is your “argument” your reference to your first post does not supply an actual argument
(It resolves back to ‘meh, no real dif); and that shows a complete disregard for the fact that there are separate sections of law here.
I am not the one in “bad faith”
Eaten by the count filter, but basically you are still wrong in both the view that I assumed my conclusion and that you have provided any real argument at your link.
Basically, you ig n0 re the fact that you have two different sections of law and “argue” ‘meh, they are basically the same.’
They are not.
Verily – the distinctions of enablement are but one of the legal differences.
IF the good Professor does not follow up with distinctions that I learned (LONG) ago, then this article can be considered nothing more than a wasted teaching moment, or an exercise in Tr011ing (by withholding the known differences and trying to incite the mob of anti-patent deplorables), or both.
Well Prof, will we see you take advantage of this teaching moment?
Max at 3.1.2 adds another important distinction: an inherent feature of an existing product that was unknown, and therefor unobvious in that sense, can be a 102 anticipatory reference.
Yes, this is the only case that I can think of where anticipation provides an additional basis for rejection that obviousness (properly applied) does not. The question then becomes whether this case is greater than 0.01% of all cases.
Your assertion here (and elsewhere) in regards to some type of “fringe” needs to be substantiated in contrast to the understanding that the tests to which the different sections of 35 USC 102 and 35 USC 103 were written to cover different things.
You appear to be assuming your own conclusion that ‘meh, they be the same.’
still have a functional patent system…
1. We do not have a functional patent system. Everything is considered obvious with KSR + PTAB.
2. If we wanted a functional patent system we should eliminate the non-obviousness requirement and all the subjectivity and uncertainty it entails.
Given advances in AI and computing power, there is nothing to prevent defensive publication of all obvious solutions. Everything that would have been obvious to a POSITA should be found in a database. If it’s published, it is anticipated. If it’s not, it should be entitled to a patent.
This would be the WRONG way to go forward.
Just because things as is COULD be combined into a single document does not the gulf between 102 and 103 jump.
Your view (while perhaps understandable that you might see it) only indulges the fallacy that a mere collection of 103’s is equivalent to a single source 102.
You (perhaps inadvertently) actually exacerbate the problems with KSR doing as you do.
Josh, as to setting aside the obviousness enquiry, you remind me of the UK patent law up to 1978, when the UK signed up to the European Patent Convention.
Back then, it was recognised that the obviousness test is inherently heavy on evidence of fact (and therefore wildly expensive to adjudicate) but only becomes important when there is a patent dispute. Accordingly, the UK Patent Office examined for clarity and for novelty, ensuring that the only cases getting to issue had claims that were clear and novel. Obviousness was left for the courts to explore, as and when needed.
Only when the EPO invented its Problem/Solution Approach to obviousness dis the obviousness issue become, for the first time, economically and fairly justiciable, ex Parte, in the course of normal PTO examination of patentability prior to issue.
If you doubt me, just look at a few thousand post-issue, fully blown inter Partes opposition cases at the EPO. You will struggle to find any defects in EPO obviousness examination prior to issue.
If it’s published, it is anticipated. If it’s not, it should be entitled to a patent.
You can’t have a justiciable system if there is no distinction between variation and invention.
var·i·a·tion
/ˌverēˈāSH(ə)n/
1.
a change or difference in condition, amount, or level, typically with certain limits.
“regional variations in house prices”
2.
a different or distinct form or version of something.
“hurling is an Irish variation of field hockey”
in·ven·tion
/inˈven(t)SH(ə)n/
1.
The action of inventing something, typically a process or device.
2. Creative ability
A patent is too powerful an instrument to police mere variation. The concept of obviousness cannot be dismissed without infringing liberty. Patents need not exhibit flash of genius, but likewise, they cannot reward mindless change with vast power. The lines are sometimes not difficult to draw, and at other times will turn on the subjective views of fact finders.
That’s just reality in a free society.
Marty,
You are off here – but not so off that I would find (too much) offense.
The colloquial does NOT fit with the second option under variation, as different or distinct form has always been views as worthy of patent protection.
If the something is considered to be the invention, the different form of that something is a variation, not another invention.
An improvement is another invention, by definition.
Different or distinct form IS an improvement.
Thank you for making my point.
im·prove·ment
/imˈpro͞ovmənt/
1. a thing that makes something better or is better than something else.
Different is not enough. And your point, whatever it may be, is almost never perceptible beyond a 360 degree “someone is wrong about something”
Different IS enough — you forget the patent context that promote is NOT limited to the notion of the colloquial ‘must be improved.’
Quite in fact (as I have mentioned previously), OFTEN the initial disruptive innovations are actually retrograde to that colloquial sense of ‘improvement.’
Those that understand innovation understand that the mere plethora of additional ways provides innovation.
Something about “Terrain!” is appropriate here.
I am proposing to publish all obvious inventions to preempt all disputes and eliminate the need for adjudication.
Right. AI and computing power can pre-publish all the variations. No need to police it. Every process, machine, manufacture, or composition of matter that is obvious can be published – on a rolling basis. No need to hypothesize what a POSITA would have done.
A defense showing of obviousness can be defeated by a patent owner’s showing of objective indicia of non-obviousness.
A defense showing of anticipation can’t be defeated this way.
Hence, we need both.
(This is not hypothetical. I worked on a patent case once where the jury found the claims in suit anticipated but not obvious.)
Is this correct as a matter of law? That is, do you think the non-obviousness determination would have stood up on appeal? I would argue that, as a bright line rule, “X” is obvious when prior art literally teaches “do X”.
The only valid scenario that I can contemplate for “anticipated but not obvious” would be a reliance on inherence. That, it seems to me, is a 0.01% edge case.
Your argument would be (and should be) denied.
The two aim for different things. Losing track of what they aim for is a symptom of the VILE “Means justifies the Ends.”
Okay, so to be clear, your argument is that prior art could literally teach “do X”, and that a POSITA would not find it obvious to “do X” in view of that art? That seems like an odd hill to die on, but okay.
No, to be clear, the difference is more than one single item.
I am choosing NO ‘odd hill to die on.’
I choose to live (and do so in accordance to the meaning of the law).
You may choose any hill to die on that you would like.
Bryan, I wonder whether you allude to an old case in England, in the 19th century, famous for its holding of “anticipated but not obvious”. I believe it was indeed an “inherency” case. If he were here, Professor Paul Cole could help us.
I think the claim was directed to a cigarette-making machine with various structural features followed by a functional requirement to run at more than X hundred cigarettes per minute.
The applied prior art was the disclosure of a machine with those features and that functionality, but the evidence established that nobody skilled in the art at the time would have found it obvious to run such a machine at that high a speed.
I suspect there hasn’t been such a case again, ever since then. It is cited as a theoretical possibility which never arises in practice.
Interesting! I wasn’t aware of that case. However, something similar did happen in the US, in Cohesive Tech v. Water Corp (link to patentlyo.com). Another poster above also linked a case in Canada. I continue to think these are the 0.01% edge case, but perhaps I am being disproven by sheer volume.
Is this a clue for your ‘argument?’
Have you taken the dissent as the holding, ig n0r ing what actually transpired?
The point is not that “novelty adds depth”. The point is that novelty and obviousness perform different but complementary functions. Both are vital to a patent system that will promote technical progress.
The obviousness test is to prevent (or remove) roadblocks in the way of technical progress. Patents covering obvious contributions to technology impede rather than speed progress.
The novelty test is there to adjudicate which of two rival applicants for patent shall prevail, in circumstances when neither made anything available to the public before filing at the Patent Office.
I know, under US law , as an ill-thought out hang-over from the earlier “First to Invent” regime, the earlier filer can invoke the obviousness provision to eliminate the later filer. But, in a First to File environment, that leads to unfairness. The patent system is hard enough to sell to voters without handicapping it with inbuilt unfairness which results in deserving inventors being deprived of proportionate reward for their valuable contributions to technical progress.
So close, and yet so far away…
You appear to be considering non-US law. The question is quite focused on the US, given the choice of language.
Additionally, the distinction you draw does not seem based on first to file/first to invent, but rather on the citability of “secret” prior art. Yes, it is odd that the US allows secret prior art to establish obviousness. Yes, this question does assume that to continue.
Bryan, I am indeed not confining myself to the law as it is currently, within the USA.
Perhaps I misunderstood the words “anticipation doctrine” but I had supposed that Dennis was merely asking (yet again) that hoary old (and completely general and open-ended) patent education question: Why do we need in our law of patentability BOTH a novelty and an obviousness filter?
“merely asking (yet again) that hoary old (and completely general and open-ended)”
Yes Bryan,
MaxDrei’s predominant penchant is to act as if ALL law should be the law that he is familiar with (regardless of the actual choices that a Sovereign has made).
And not only here the aspect of “secret” prior art (with which MaxDrei and I have discussed before), but there is also the ‘issue’ that MaxDrei (actually the Sovereign that he prefers) has been INCONSISTENT with its application of the LEGAL fiction underlying the prior art tests.
In the US, the Person Having Ordinary Skill In The Art IS the measure – and not – as MaxDrei inserts here “novelty test is there to adjudicate which of two rival applicants for patent shall prevail.”
He has never accepted the fact that HIS treatment on anticipation is NOT based on any actual legal fictional person, but on a direct comparison between two VERY NON-FICTION real people.
This is part of why he views obviousness as somehow ‘unfair,’ as he does not quite make the jump away from a ‘real person to real person’ view.
anon, you remind me of the driver on the Autobahn on the phone to his wife and reporting that every other driver of every other oncoming vehicle is going in the wrong direction. No other country but the USA has First to File with secret prior art forming part of the state of the art against which obviousness is assessed.
LOL – your analogy is inapposite, and would be an argument against the Sovereign – not me.
As I indicated above, I am merely reflecting what our Sovereign has chosen.
You drive here like you would drive on the Autobahn, and YOU would be the one violating the rule of law.
Here, you (most likely unknowingly) make my point for me.
Respect our Sovereign, please.
…as I have put to you in much greater detail previously, I have NO problem with your Sovereign CHOOSING to be inconsistent.
That is the right of the Sovereign.
But it is NOT the right of the Sovereign to call inconsistency “consistency.”
You just do not get to make up your own facts.
While there may not be a practical distinction from a rights standpoint, I do belive that there is an epistemological difference between a very high probability (e.g that PHOSITA would do something) and the visible fact of it having been done.
Right – There is always an argument against an obviousness rejection. Anticipation, not so much.
If there is only obviousness, my guess is that the biggest difference is the number of anticipation assertions (either in court or prosecution) that came up just short under 102, but once refashioned as an obviousness rejection (with the same one reference), invalidate the claim (e.g., a design choice that does not anticipate, but renders the claim obvious).
On the other side, if there were no anticipation, does SmithKline Beecham Corp. v. Apotex Corp., 365 F. 3d 1306 come out differently, or do we say that since the chemical existed, “lack of novelty is the epitome of obviousness.” May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974)) and affirm the 103?
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