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It is often said that the standards for patent protection are higher than the standards for copyright protection. Specifically, commentators assert that the copyright requirement of originality is easier to satisfy than the patent requirements of novelty and nonobviousness. And yet, the USPTO regularly grants patents for designs that fall below the low standard of copyright originality set by the Supreme Court in Feist v. Rural. Some may suggest that the existence of these "sub-Feist" design patents is a result of the USPTO abandoning its duty to scrutinize design patent applications. Or they may suggest that it is a result of the Federal Circuit making it more difficult to invalidate designs as anticipated or obvious. This Article argues that sub-Feist designs exist because the standard for "originality" (at least, in the sense of "minimal creativity") is not really "lower" than novelty or nonobviousness--it's just different. This has implications for how we think about the law and theory of copyright and patents as well as specific implications for design patent law and practice. Importantly, this suggests that we should take the word "original"--which is also an explicit statutory requirement for design patents--seriously. We should not assume that a design that qualifies, under the Patent Act, as "novel" and "nonobvious" is also "original" under the Feist standard. And if, as the Supreme Court has held, the Feist originality standard is a requirement of the Progress Clause, we should not let applicants use design patents to evade that requirement. [ABSTRACT FROM AUTHOR]

Patents incentivize innovation, but the face of innovation has changed over the past several decades. Patent law is adapting to the radical growth of the pharmaceutical and biotechnological industries, which produce drugs and biologics respectively. Research and development ("R&D") in these fields is largely incremental--new products are often derived from existing products. However, patents do not protect "obvious" improvements, those that anyone skilled in the relevant scientific field could have discovered through predictable, routine work. The line between incremental R&D and routine, obvious improvements is difficult to draw. The U.S. Court of Appeals for the Federal Circuit and the Patent Trial and Appeal Board have become critical of incremental R&D, in turn discouraging what they find to be "routine optimization." This Note describes the modern obviousness standard as it applies to the improvement of drugs and biologics and examines arguments for and against protecting incremental innovation. In light of these considerations, this Note argues that modern expectations for innovation should be updated and advocates for a stricter, narrower definition of obviousness that reflects the value of incremental R&D to the continued growth of the pharmaceutical and biotechnological industries. [ABSTRACT FROM AUTHOR]

Many scholars have observed that an empirical study is only valid to the extent it is reliable. Yet assessments of the reliability of empirical legal studies are rare. The closest most scholarship comes is to compare the results of their studies to those of others. As a result, in many legal fields, including intellectual property law, scholars lack a grounded understanding of how valid or reliable empirical legal studies really are. This Article examines the reliability of empirical studies of judicial decisions by closely comparing two recent studies of the patent law doctrine of nonobviousness. We find these studies provide robust results despite differences in the cases selected to include in each dataset. However, the amount of agreement varied for some data fields more than others. Particularly, there was more inter-study variability for fields that examined judicial reasoning than fields for decision outcomes. This finding provides some validation for the use of macro-level studies of judicial decision-making. To the best of our knowledge, this is the first analysis to directly compare the actual coding (as opposed to just the outcomes) of two different studies examining the same patent law doctrine. Building on the existing data, we also make an original contribution to the literature on nonobviousness by extending the time studied to the present. In contrast with studies examining the immediate period after the Supreme Court's decision in KSR v. Teleflex, we find (1) a substantial decline in the number of 35 U.S.C. § 103 district court cases appealed to the Federal Circuit, (2) a higher rate at which courts deem the patent nonobvious, and (3) a high affirmance rate for district court determinations of both "obvious" and "nonobvious". [ABSTRACT FROM AUTHOR]

Patentability under the 35 U.S.C. § 103 obviousness standard relies on the ability of a person having ordinary skill in the art; however, the involvement of artificial intelligence in the inventive process challenges that standard. A misconception of the current capabilities of Al leads to arguments of universal obviousness where an independent and creative AI dominates the inventive process. Fortunately, AI of such a caliber does not yet exist. Thus, the difficulty of defining the inventive entity threatens patent protection's incentive to innovate but need not extinguish the right to patentability outright. Redefining the standard of obviousness and distinguishing the user's contributions enable the patentability of inventions resulting from the use of AI as an innovative tool. The proposed standard for the obviousness inquiry-a person having ordinary skill in AI-accounts for the inventor's objectives, access to big and deep data, and knowledge of the existing datasets to control the form and operation of the machine learning resulting in AI-assisted inventions. Preexisting common law for patenting chemical compounds and the evolution of the obviousness test permit shifting the standard to overcome the statutory hurdles facing the patentability of AI-assisted inventions. However, shifting the level of ordinary skill in the art to the user does not permit the patentability of independent and autonomous inventions by inventive AI systems. The standard proposed here turns on the effort exerted by the inventor in comparison to the AI system. The inventor's control and design of the inventive process help to resolve the level of ordinary skill in the art for AIassisted inventions by looking at the user's starting point, motivation based on the prior art and data, reasonable expectation of success, and control over the inventive process. Thus, the user's control defines the level of ordinary skill in the art and enables the trier of fact to refer to its established inquiries in determining obviousness. [ABSTRACT FROM AUTHOR]

Conversant Wireless Licensing Sari v Apple Retail UK Ltd1 concerned a patent entitled "Computing device with improved user interface for application" for an invention developed to solve the problem of user interface constraints due to the small screen size of mobile phones in the late nineties/early noughties. Following a debate over whether the invention concerned mobile phones or computers in general or somewhere in between, the Patents Court confirmed that identity of the person skilled in the art can change where a patentee applies to amend its patent so as to narrow the technical field. [ABSTRACT FROM AUTHOR]

Patent law is built upon a fundamental premise: only significant inventions receive patent protection while minor improvements remain in the public domain. This premise is indispensable for maintaining an optimal balance between incentivizing new innovation and providing public access to existing innovation. Despite its importance, the doctrine that performs this gatekeeping role--nonobviousness-- has long remained indeterminate and vague. Judicial opinions have struggled to articulate both what makes an invention significant (or nonobvious) and how to measure nonobviousness in specific cases. These difficulties are due in large part to the existence of two clashing theoretical frameworks, cognitive and economic, that have vied for prominence in justifying nonobviousness. Neither framework, however, has generated doctrinal tests that can be easily and consistently applied. This Article draws on a novel approach--network theory--to answer both the conceptual question (what is a nonobvious invention?) and the measurement question (how do we determine nonobviousness in specific cases?). First, it shows that what is missing in current conceptual definitions of nonobviousness is an underlying theory of innovation. It then supplies this missing piece. Building upon insights from network science, we model innovation as a process of search and recombination of existing knowledge. Distant searches that combine disparate or weakly connected portions of social and information networks tend to produce high-impact, new ideas that open novel innovation trajectories. Distant searches also tend to be costly and risky. In contrast, local searches tend to result in incremental innovation that is more routine, less costly, and less risky. From a network theory perspective, then, the goal of nonobviousness should be to reward, and therefore to incentivize, those risky distant searches and recombinations that produce the most socially significant innovations. By emphasizing factors specific to the structure of innovation--namely, the risks and costs of the search and recombination process--a network approach complements and deepens current economic understandings of nonobviousness. Second, based on our network theory of innovation, we develop an empirical, algorithmic measure of patentability--what we term a patent's "network nonobviousness score" (NNOS). We harness data from US patent records to calculate the distance between the technical knowledge areas recombined in any given invention (or patent), allowing us to assign each patent a specific NNOS. We propose a doctrinal framework that incorporates an invention's NNOS to nonobviousness determinations both at the examination phase and during patent litigation. Our use of network science to develop a legal algorithm is a methodological innovation in law, with implications for broader debates about computational law. We illustrate how differences in algorithm design can lead to different nonobviousness outcomes, and discuss how to mitigate the negative impact of black box algorithms. [ABSTRACT FROM AUTHOR]

Mr Justice Arnold, in the UK Patents Court, has held Allergan's European (UK) patent concerning the formulation of a glaucoma treatment to be invalid. This case follows and applies the Supreme Court's latest patent decision in Actavis v ICOS, taking the stance that the existing approach to obviousness is endorsed and unchanged. The judgment illustrates how the UK Patents Court is likely to take a pragmatic approach by applying some, but not necessarily all, of the factors listed in the Supreme Court's judgment. While every case on obviousness will turn on its own facts, this case also have some interesting issues arising in respect of the importance of expert witness performance, as well as the potential perils of secondary evidence. [ABSTRACT FROM AUTHOR]

At least since 1819, courts have prohibited double patenting--where an inventor has two patents on the same or obvious variations of the same invention. There have always been two basic justifications for prohibiting double patenting. The first focused on the patentee: bad actors might try to improperly extend their patent monopoly by filing serial applications. The second focused on the public's rights: the bargain of the patent is that in exchange for the inventor getting a term-limited patent, the public is entitled to use the claimed invention (and its obvious variations) once the patent expires. This public-rights rationale is broader, and it applies independent of whether the patentee's filing of serial applications allows her to extend the patent term. The patentee-based justification had more purchase in the olden days--when a patent's term was determined by its issue date. Every new patent that issued would get a new term. Since 1995, though, a patent's term is 20 years from the earliest effective filing date--a date that stays the same independent of whether the inventor strings out her patent applications--so the inventor cannot really game the system. On the other hand, the public still cannot receive the fruit of its bargain if it cannot use a claimed invention as soon as a patent expires. The previously low-stakes debate about the reason for prohibiting double patenting now matters. Most significantly, is there a doublepatenting problem for a parent patent where the parent gets patent-term adjustment, but the child does not? On the patentee-based justification, there may well not be a problem for the parent, but on the public-rights based justification, there would be. Inventors that receive patent-term adjustment on a parent patent have to decide whether to pursue continuation applications, as continuation applications are likely to not receive the same amount of adjustment. Depending on how the law on double patenting evolves, the continuation patents may cut short the term of the parent patent--what this article will call patent patricide. For patents on pharmaceutical drugs, the question of patent patricide can be worth billions of dollars. [ABSTRACT FROM AUTHOR]

For more than sixty years, "obviousness" has set the bar for patentability. Under this standard, if a hypothetical "person having ordinary skill in the art" would find an invention obvious in light of existing relevant information, then the invention cannot be patented. This skilled person is defined as a non-innovative worker with a limited knowledge-base. The more creative and informed the skilled person, the more likely an invention will be considered obvious. The standard has evolved since its introduction, and it is now on the verge of an evolutionary leap: Inventive machines are increasingly being used in research, and once the use of such machines becomes standard, the person skilled in the art should be a person using an inventive machine, or just an inventive machine. Unlike the skilled person, the inventive machine is capable of innovation and considering the entire universe of prior art. As inventive machines continue to improve, this will increasingly raise the bar to patentability, eventually rendering innovative activities obvious. The end of obviousness means the end of patents, at least as they are now. [ABSTRACT FROM AUTHOR]

The article discusses a legal dispute surrounding the patents for CRISPR, a new technology for accelerating the artificial selection process by editing the genome of organisms. It talks about the obviousness standard, CRISPR technology's background, and the CRISPR patents from the University of California Berkeley and genomic research center Broad Institute, Cambridge, Massachusetts. It presents the Patent Trial and Appeal Board and the Court of Appeals for the Federal Circuit's decisions.

The most common strategies for rebutting obviousness rejections are to argue that the prior art fails to disclose all the claim elements and to argue that the examiner did not assert the proper rationale for combining references. An alternate strategy, or a strategy to use in addition, is to demonstrate that one or more relations exist between the primary reference and the secondary reference. These relations are: (1) Non-analogous art; (2) Rendering the prior art unsatisfactory for its intended purpose; (3) Proposed modification cannot change the principle of operation of a reference; (4) Redundant advantage; (5) Advantage provided by the secondary reference not needed by and not relevant to the primary reference; (6) Disparate references; (7) Context differs between cited references, and (8) Teaching away. This article names these relationships the anti-obviousness inquiry, because these relationships are applied only in rebuttal arguments and not in the examiner's rejections. Rebuttal arguments making use of only the anti-obviousness inquiry (without any other type of argument) are sufficient to overcome obviousness rejections. The analysis herein only includes opinions from PTAB where the examiner's asserted rationale was not weakened by being merely conclusory, and not weakened by the prior art not disclosing all the claim elements. An issue-spotting guide is provided for detecting conclusory rationales. The obviousness inquiry takes many, many forms with little in the way of a common property, and for this reason the author provides a unified concept of the obviousness inquiry using the family of resemblances concept of Wittgenstein. [ABSTRACT FROM AUTHOR]

The article discusses the relationships between time and patent disclosures under American law, and it mentions the obviousness and prior art patent law doctrines, as well as hindsight bias and patent applications in the U.S. Patent filing dates and the scope of a patent are examined, along with the time needed to assess patent novelty. Non-obviousness and the post-filing of affidavits are examined, as well as testimony and reliance evidence under American patent law.

The article offers strategies which can be used in qualifying the inventions as nonobvious and to qualify for a patent. Topics mention include showing a synergistic effect on the combination displays, adding of a new function to an old element when synergism cannot be shown and predictability of certain ideas becomes predictable as time goes on.

The article focuses on the challenges of nonobviousness decisionmaking in patent prosecution, administrative patent review, and infringement proceedings in federal court. It mentions implications of the data for nonobviousness decisions throughout the patent system at the U.S. Patent and Trademark Office (PTO) and the U.S. Patent Trial and Appeal Board (PTAB). It also mentions the decision of the U.S. Supreme Court in the case KSR v. Teleflex on nonobviousness decisionmaking.

Pharmaceutical companies rely on patenting medicines in order to shield their invention from competition and to maximize profits. Pharmaceutical companies use their power and influence to manipulate the patent system in order to extend the lives of their patents. This monopoly stifles the generic market and prevents generic manufacturers from making life-saving medicines more accessible and affordable to patients around the world. The international community struggles to balance the interests of innovators with those of underdeveloped countries relying on cheaper generic versions of medicines. The tension is especially apparent when, often, international laws and treaties conflict with domestic laws. The landmark judgment by India's Supreme Court in Novartis AG v. Union of India & Others1 is a crucial and controversial step toward preserving the generic market and curbing the practice of "evergreening." Giant pharmaceutical companies roundly criticized the judgment for setting a stringent standard of nonobviousness for patents, but public-health activists praised it.2 This Comment examines the Indian Supreme Court's interpretation of Section 3(d) of the Indian Patents Act in Novartis and the international reaction to the Novartis outcome. The Novartis Decision is a watershed moment for India and the developing world--sending a strong message to the giant pharma companies that misuse intellectual property protections at the expense of poor patients. [ABSTRACT FROM AUTHOR]

The concept of possession in property law operates to allocate property rights among competing claimants by awarding the property to the first to take possession. Possession in this context requires an act that communicates to third parties that someone has exercised dominion over the item. Patent law operates in similar ways. Inventors must disclose their invention in the patent document to memorialize what their creation is. This disclosure communicates to third parties the innovation over which the patent owner is asserting dominion. Patent law has similar first-in-time dynamics, awarding the patent among competing applicants to the first-to-invent under the 1952 Patent Act and the first-to-file under the America Invents Act. But patent law has another "racer "--the public via the prior art. The doctrines of novelty and non-obviousness ask, in essence, whether the public was already in possession of the invention prior to the inventor. If so, then the patent application should be rejected. This possession-based view of novelty and non-obviousness offers important insights and prescriptions. As to novelty, the possession framework suggests that the current requirement that the prior art disclose the invention as arranged in the claim is unwarranted. It also suggests that the current doctrine of inherency is wrong. With respect to obviousness, the possession-based approach may be emerging through the Supreme Court's reinvigoration of the "obvious to try" standard. The possession-based framework also highlights the inconsistent treatment of obviousness as possession in other contexts. Prescriptively, bringing obviousness into line with the patent law doctrine primarily responsible for demonstrating possession-- enablement--offers an opportunity to map patent law more closely with the lived experience of technologists. The proposed approach offers a potential bridge that renders obviousness more accessible to its intended audience--scientists, engineers, and other innovators. [ABSTRACT FROM AUTHOR]

The article examines the issue of questionable patents cited by the U.S. Federal Trade Commission (FTC) and looks at the problem of patents that are obvious in view of preexisting material. Topics discussed include the economic underpinnings of the Patent System; the patent requirement of nonobviousness; and use of signal theory to determine nonobviousness of intentions when a declaration is submitted.

The article discusses obviousness guidelines at the U.S. Patent and Trademark Office (PTO) along with information on PTO's bounded authority, proposal for obviousness guidance, and judicial challenge to the obviousness guideline.

The article looks at the decision of the U.S. Supreme Court in the cases Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. and Hana Financial, Inc. v. Hana Bank which provides an alternative to giving greater deference to obviousness as a mixed question of fact and law.

Over the tenure of the Court of Appeals for the Federal Circuit, secondary considerations have become increasingly important in the analysis of nonobviousness. However, a close examination of the analytical framework behind these factors tells a cautionary tale. Courts often interpret evidentiary details of disputable import to indicate multiple secondary factors. In particular, the courts' handling of the secondary consideration of long-felt need has allowed courts to spin mountains from evidentiary molehills. Analysis of the opinions in In re Cyclobenzaprine will demonstrate this proclivity. This Note proposes a solution: a thorough analytical method for each factor, to ensure the independence, and persuasiveness, of each. A framework for careful analysis of the secondary consideration of a long-felt need is provided. [ABSTRACT FROM AUTHOR]

With the development and commercialization of the recyclebot (plastic extruders that fabricate 3-D printing filament from recycled or virgin materials) and various syringe pump designs for self-replicating rapid prototypers (RepRaps), the material selection available for consumers who produce products using 3-D printers is expanding rapidly. This paper provides an open-source algorithm for identifying prior art for 3-D printing materials. Specifically this paper provides a new approach for determining obviousness in this technology area. The potential ramifications on both innovation and patent law in the 3-D printing technological space are discussed. [ABSTRACT FROM AUTHOR]

The authors argue that patentees should be aware that, in the wake of the Great Britain High Court's ruling in the 2014 patent law case Hospira Inc. v. Genentech Inc., a claim to a product obtainable by a process will be at risk of being held invalid by a court if the particular characteristics that the process is intended to confer are not clearly specified in the patent. An obviousness patent law doctrine is mentioned, along with patentable subject matter and product-by-process patent claims.

The article discusses the Supreme Court of Appeal of South Africa's (SCA's) ruling in the 2014 contraceptive patent infringement-related case Pharma Dynamics (Pty.) Ltd. v. Bayer Pharma AG, and it mentions how the SCA settled a debate over an "obvious to try" legal principle. The plaintiff's counterclaim for the revocation of a patent is mentioned, along with the contraceptive product Ruby. Patent validity and a court test for obviousness are examined, along with in vitro tests.

The article provides a summary of several American patent law-related judgments which were issued by the U.S. Court of Appeals for the Federal Circuit in 2014, including litigation matters involving issues such as legal standing, patent infringement claims, and secret prior art. Judicial deference is mentioned in relation to America's district courts. The laches legal doctrine is examined, as well as fee shifting, procedure, and a nonobviousness patent law principle.

The common saying "hindsight is 20-20" rings true in many different areas; in patent law specifically, hindsight bias has the potential to affect a patent examiner's determination of whether an invention is "obvious" under 35 U.S.C. § 103. The examiner may permissibly rely upon a combination of prior art references to find that a claim would have been obvious to a person having ordinary skill in the art. However, the examiner may not use "that which only the inventor taught . . . against its teacher." Structural flaws within the examination process place pressure upon examiners to reject claims upon first examination, regardless of the content of those claims. The Supreme Court's decision in KSR International Co. v. Teleflex Inc. rejected the patent applicant's primary guard against hindsight bias: the Federal Circuit's teaching-suggestion-motivation test as the sole test for obviousness. This has left the patent applicant with little to combat obviousness rejections based on hindsight bias but the "secondary considerations" of Graham v. John Deere Co. of Kansas City, which are rarely available at the prosecution stage. This Comment proposes a framework that focuses on the question of whether an examiner has impermissibly relied upon hindsight to combine references in determining obviousness. This framework provides an avenue for discussion between the patent examiner and the prosecuting attorney and provides substance to be considered by decisionmakers on appeal. The intent of the framework is to consider whether the examiner conducted the process of the examination in a fair and reasonable manner with full appreciation of what a person having ordinary skill in the art would have concluded when faced with the prior art. The proposed framework puts forward ten factors which should be considered in the totality of the circumstances, similar to the Wands factors for enablement or the DuPont factors for likelihood of confusion in Trademark Law. These ten factors are not intended as an all-inclusive list but as examples of inquiries that may bear on the question of hindsight, of which there are likely many more. The adoption of this framework may increase the burden on examiners as well as their supervisors, but this Comment argues that the benefit of adopting this framework, providing recourse to patent applicants who may be unfairly deprived of patent claims they deserve, outweighs the cost. The rejection of nonobvious patent applications thwarts one of the primary purposes of patent law: incentivizing innovation. [ABSTRACT FROM AUTHOR]

Simonton (2015) used Edison's career trajectory to test various aspects of the blind-variation and selective-retention theory of creativity. However, he also examined issues more broadly relevant to an understanding of creative thinking: the role of knowledge or expertise in creative thinking, the role of what one can call "ordinary" versus "extraordinary" thought processes in creative thinking, and the possibility of hindsight bias in the use of case studies in the analysis of creative thinking. My response to Simonton examines both his discussion of Edison and his take on those broader issues and their implications for understanding the creative process. I present evidence that knowledge plays a much larger role in creativity than Simonton acknowledges, and the broad implications of that conclusion are examined. The basic conclusion from my review is that the differences between the expertise and blind-variation and selective-retention analyses of creativity are ones of emphasis, but differences in emphasis can sometimes result in gaps in communication and understanding. It is important that we emphasize common ground, even as we work to resolve differences between theoretical perspectives. [ABSTRACT FROM AUTHOR]

The article discusses the legal aspects of expired patents in America as of 2015, and it mentions technology-specificity and geography-specificity in patenting, as well as the public domain and an analysis of an expired patents dataset. An obviousness patentability requirement is addressed, along with inventions laws and innovations in the U.S. Institutional reform and the U.S. Patent and Trademark Office are examined, along with the nation's Leahy-Smith America Invents Act.

The article discusses hindsight bias in relation to U.S. patent law, focusing on a comparison of America's Patent and Trademark Office (USPTO) and the European Patent Office. Obviousness law and a prior art patent law doctrine in the U.S. are addressed. A patent infringement lawsuit involving the Pharmastem Therapeutics Inc. firm is mentioned, along with the legal rights of inventors and inventions laws in Europe and the U.S. "A person having ordinary skill in the art" standard is examined.

Obviousness, the great question of patent law, is a muddle. Attempts to clarify the doctrine face a significant obstacle--the goal of providing efficient and cost-effective prosecution limits the amount of time patent examiners can spend determining obviousness. As a result, examiners use the analogous arts test as a rough gauge of obviousness during prosecution. The hope was that the analogous arts test would provide an efficient, rules-based approach to obviousness. The Federal Circuit has not, however, provided much guidance on how to apply the analogous arts test, resulting in a soft rule, at best. While this uncertainty may be tolerable during prosecution, where time-pressed examiners can be forgiven for relying on common sense among other things, courts should no longer rely on the outdated analogous arts test as a shortcut to find inventions obvious. During litigation, more time and resources can be spent on the obviousness assessment. At that time, decision makers should use a more appropriate standard, requiring assessment of common practices in the field of invention and whether the invention is obvious in light of these practices. This shift in the focus of the obviousness analysis during litigation should result in a more accurate determination of obviousness when it matters most. [ABSTRACT FROM AUTHOR]

The article discusses the reported need for pharmaceutical protection reform in America as of July 2014, focusing on regulatory exclusivities and the apparent inapplicability of the U.S. patent system to the nation's pharmaceutical industry. Other topics include market entry, the U.S. Food and Drug Administration's regulatory approval process, and the legal aspects of compounding pharmacies in America. Utility, novelty, and non-obvious patent law requirements in the U.S. are examined.

The article focuses on the importance of indefiniteness in the issued patents and its validity. Topics discussed include importance of bargain for the inventors for providing useful inventions for the public, role of the definiteness in awaring public from the patent infringement and role of the Leahy-Smith America Invents Act in meeting up the criteria of patentability such as novelty and non-obviousness.

The article focuses on the U.S. court case HTC v. Nokia, which dealt with patent infringement, and provides a comparison of British and U.S. patent and copyright law. Topics include international patent exhaustion, the first sale doctrine, and the obviousness doctrine. Information is provided on copyright novelty and patent invalidity.

In KSR International Co. v. Teleflex, Inc., the Supreme Court addressed the doctrine of nonobviousness, the ultimate question of patentability, for the first time in thirty years. In mandating a flexible approach to deciding nonobviousness, the KSR opinion introduced two predictability standards for determining nonobviousness. The Court described predictability of use (hereinafter termed "Type I predictability")--whether the inventor used the prior art in a predictable manner to create the invention--and predictability of the result (hereinafter termed "Type II predictability")--whether the invention produced a predictable result--both as a means for proving obviousness. Although Type I predictability is easily explained as part of the flexible approach endorsed by KSR, Type II predictability represents a potentially radical shift in the nonobviousness doctrine. Instead of focusing on whether reasons already existed to create the invention, like Type I predictability does, a Type II predictability analysis takes the invention's creation as a given and examines instead the invention's operation. Type II predictability moves the analysis away from the gap between the prior art and the invention to the invention only. The United States Patent and Trademark Office ("USPTO"), the Federal Circuit, and lower courts are using Type II predictability fairly extensively after KSR. The problem with this usage is that Type II predictability runs counter to statutory language, introduces hindsight bias, discriminates against certain technologies, and conflicts with basic patent theory. Accordingly, the USPTO and courts need to reconsider the use of Type II predictability and their interpretation of KSR. [ABSTRACT FROM AUTHOR]

The article focuses on the obviousness standard under U.S. patent law. Topics include the precedent created by the U.S. court case In re O'Farrell, the invalidation of patents due to nonobviousness, and the reasonable expectation of success requirement. Information is provided on the authority of the U.S. Court of Customs and Patent Appeals (CCPA).

Highlights: [•] Korean speakers routinely resist questions by using the delimiter particle ya. [•] With the delimiter ya, recipients contest questions for their obviousness or irrelevancy. [•] The delimiter ya allows recipients to resist specific aspects of a question. [•] Designs and resources for resisting questions vary across languages. [ABSTRACT FROM AUTHOR]

This Article argues that applying patent-like doctrine to design makes sense only for a design patent system premised on a patent-like conception of cumulative progress that permits patent examiners and courts to assess whether a novel design reflects a nonobvious step beyond the prior art. If there is a meaningful way to speak of such an inventive step in design, then design patent doctrine should be based on that conception. But if nonobviousness has no sensible meaning in design, then a patent system cannot work for design. At present, design patent doctrine is in disarray because it is unmoored from any conceptual underpinnings. Design patents are not needed to incentivize technological innovation, because that kind of innovation is the subject of utility patent law. Because aesthetic expression is not susceptible of an "inventive step" judgment, progress in aesthetic expression is not appropriately incentivized by a patent-like system. Indeed, copyright long has rejected the very possibility of incentivizing aesthetic progress with a "creative step" requirement because it has found no metric along which to measure aesthetic progress. If there is any type of cumulative progress to be sought in design it must therefore involve the interplay between aesthetics and utilitarian function. Aesthetics and utility intersect at the integration of form and function and that, we argue, is where design patents must be justified, if they can be justified at all. Once stated, this point is intuitively appealing. The integration of form and function is what distinguishes industrial design both from purely artistic expression (for which we have copyright) and from technological invention (for which we have utility patent). The converse also follows: if there is no workable means to assess the nonobviousness of a given design's integration of form and function, there can be no sensible design patent system. [ABSTRACT FROM AUTHOR]

The article discusses the obviousness and novelty patent law doctrines in relation to the Great Britain Court of Appeal's ruling in the 2013 case Regeneron Pharmaceuticals Inc. (Regeneron) & Bayer Pharma AG v. Genentech Inc. and patent infringement claims. Regeneron's VEGF-Trap neovascular age-related macular degeneration treatment product is mentioned. The authors argue that a court may adopt its own claim construction in a case.

The paper offers a novel justification for the non-obviousness patentability requirement. An innovation involves two stages: research results in a technology blueprint, which development transforms into a profitable activity. An innovator, who is either efficient or inefficient, must rely on outside finance for the development. Only patented technologies are developed. Strengthening the non-obviousness requirement alleviates adverse selection by discouraging inefficient innovators from doing research, but creates inefficiencies by excluding marginal innovations. We show that it is socially optimal to raise the non-obviousness requirement so as to exclude bad innovators; we also provide several robustness checks and discuss the policy implications. [ABSTRACT FROM AUTHOR]

The problem of low patent quality has recently plagued the world of high-technology innovation. Low patent quality results when the U.S. Patent and Trademark Office (PTO) issues too many bad patents — patents that in a perfect system should never have been issued (for instance, because of obviousness or lack of novelty). When combined with the problem of patent thickets, which cause "so much overlap among the technologies developed by different companies that it is difficult to bring any product to market without potentially infringing patents held by other companies," the problem of low patent quality threatens to undermine the very innovation that the patent system is supposed to foster. In an ideal world, the PTO would never issue bad patents and would instead insist that patents consistently satisfy the basic patentability requirements, in particular novelty and nonobviousness; however, the PTO can do so only if it "can, at the time of patent application, run a substantial and relatively reliable evaluative process." In practice, the PTO's limited budget, the nonadversarial nature of the patent application process, and the absence of third-party information mean that "bad patents routinely slip through." Because of the great (and constantly increasing) number of patents issued by the PTO and the considerably smaller number of patents that are litigated, "the PTO doesn't do a very detailed job of examining patents, but we probably don't want it to. It is 'rationally ignorant' of the objective validity of patents, in economics lingo, because it is too costly for the PTO to discover those facts. An inquiry into patent reform directed at alleviating the problem of low patent quality must therefore begin from a baseline that takes for granted the PTO's issuance of bad patents.

The article focuses on the inventive step as part of patent granting. Topics include the costs and benefits of a strict patent system, the obviousness doctrine, and the encouragement of innovation. Information is provided on the assessment of patentability, the economic goals of the patent system, and the existing knowledge standard.

The article discusses the court case Unigene Laboratories, Inc. v. Apotex, Inc. wherein the U.S. Federal Circuit on August 25, 2011 established an enhanced standard for reviewing obviousness in pharmaceutical formulations. It discusses the components of obviousness in patent claims under 35 U.S.C. § 103. It examines the relevant facts of the case and the court's rationale in the determination of nonobviousness of the patent claims.

The article focuses on the role of secondary considerations or the objective indicia of nonobviousness in various U.S. Supreme Court patent cases. It says that the Hotchkiss v. Greenwood regarding a patent of a door knob served as the basis for the nonobviousness requirement. It adds that the U.S. Congress used the nonobviousness requirement in the Patent Act of 1952. It also mentions several Supreme Court patent cases such as Graham v. John Deere Co. and KSR International Co. v. Teleflex Inc.

The Supreme Court has, in recent years, emphasized the importance of retaining fact-based inquiries in determining a patent's validity over the use of bright-line tests developed by the Federal Circuit. In light of the Supreme Court's trend, the recent Federal Circuit decision In re Klein presents a surprising insistence on maintaining rigid rules-based tests in the doctrine of analogous prior art. This is especially true considering the Supreme Court decision KSR, which emphasized extreme flexibility in the related doctrine of obviousness. This Note examines Klein in light o/KSR, and suggests a test for analogous-prior-art determinations that better aligns with the Supreme Court's vision of patent law than the test apparently used in Klein. [ABSTRACT FROM AUTHOR]