A new essay
I’ve just posted a new essay on SSRN. It’s entitled “Level of Skill and Long-felt Need: Notes on a Forgotten Future.”
Here’s the abstract:
The Supreme Court’s KSR decision transforms the way we think about patent law’s ordinary artisan. The ordinary artisan, the Supreme Court states, “is also a person of ordinary creativity, not an automaton.â€Â This transformation, which sweeps aside a contrary precept that had informed the Federal Circuit’s nonobviousness jurisprudence for a generation, raises a key question: How do we fill out the rest of our conception, in a given case, of the ordinary artisan’s level of skill at the time the invention was made? Reaching back to a large vein of case law typified by Judge Learned Hand’s decisions about nonobviousness, as well as an all-but-forgotten nonobviousness bill that died in committee in 1948, I show that the modern “level of skill” inquiry can comfortably rely on evidence of long-felt, unmet need in the art and the failure of others to meet that need. For it remains true, as Judge Hand once observed, that “the best test of what persons of routine ingenuity can do is what they have done.â€
If you would like to download a pdf of the essay, please follow the link to SSRN. And I welcome any feedback you care to offer on the paper.
Prof. Miller,
You asked for feedback. Well here it is though kind it may not be.
I respectfully take issue with your fundamental reliance on “level” of ordinary skill. Your paper focuses on “How do we fill out the rest of the phosita’s skill profile in a given case?”
However 35 USC 103 does NOT say:
… 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 … to a judge based on the judge’s understanding of the level of skill of the person having ordinary skill in the art (PHOSITA) to which said subject matter pertains.
(– with all of what little respect is due to Graham v. Deere, which was another naive decision although less so than KSR)
Also, 35 USC 103 does NOT say: .., in view of long-”felt” but unmet “needs”.
Instead 35 USC says:
… 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 the PHOSITA who is no longer an automaton] to which said subject matter pertains.
The word ob-vious comes from the roots “ob” and “via”: to come upon the one path. When you come upon a single path, your next step forward is obvious, is apparent. However when you come to a fork in the road, the wisest next step forward may be far from apparent in a given moment.
In many of today’s arts, the non-automaton practitioner faces a deluge of next possible paths given the enormous mountain of publications that stand before him. As a non-automaton, he can no longer read and memorize all of them. He must act as all human beings act in the moment by assigning different weights to different options given the circumstances of the moment. The weights that PHOSITA assigns are questions of fact that only an expert in PHOSITAhood can answer.
Thus it is wrongheaded to stare at the dispassionate “level” of skill when in truth all humans are emotional creatures who sway with the surges of the current crowd rather than thinking for themselves. The ordinary artisan does that which is popular at the time. The extra-ordinary artisan steps apart from the current orthodoxy.
Step back and think on it. Read 103 very slowly. Don’t be in such a rush to jump to conclusions based on what others in the crowd have taught you. What is a “person”? What is “skill” when it comes to *useful* arts. What is “at the time of invention”? How does a single ordinary person act at at a given time given the popular persuasions of the moment?
(BTW, many a judge repeat the word “routine” as does your quote of Learned Hand. But what does “routine” actually mean? Look it up! He should have said: [A]nd the best test of what persons of routine ingenuity can do is what they
have [routinely] done [at the critical time --at the time of invention].
Comment by step back — January 16, 2008 @ 5:28 am
Correction to last paragraph: not “can do” but rather “would be motivated to do”.
Comment by step back — January 16, 2008 @ 5:31 am
Step Back,
Thanks for your comments, and for giving the essay a look.
I can’t tell how much we disagree on substance. I do know this, however: I don’t think that hundreds of thoughtful, careful, and smart judges have been profoundly wrong about interpreting everything in section 103 for decades.
Best,
Joe
Comment by Joe — January 16, 2008 @ 6:46 am
Joe,
I’m not impressed by your appeal to the mentality of the mob (hundreds of judges ..). If that is sound logic then one must also accept that billions of gravity defying flies eat you know what. (And before you knock them down, ask yourself this: can you fly without aid of machinery?)
That said, Giles Rich was a judge, he was brilliant and he authored the original version of 35 USC 103. Before that we lived in the dark ages of synergy and flash cube genius. Sadly it seems that we are heading back to those not-so-good days.
Thanks for responding.
I hope you can start thinking for yourself instead of just blindly worshiping the hundreds of brilliant judges. In my experience some of these judges are blinded by the brilliance of their own reflections.
Comment by step back — January 16, 2008 @ 9:17 am
Step Back,
I don’t accept any of your characterizations of what I’m doing, or how I’m reasoning. (For example, humility about the wisdom reflected in longstanding practice by smart, reasonable people is not “worship,” so far as I’m concerned.)
But I can tell we aren’t likely to persuade each other here, in this forum with these tools.
So, I thank you again and hope we can agree to disagree, agreeably.
Best,
Joe
Comment by Joe — January 16, 2008 @ 10:05 am
We’re in agreement. All the best.
(P.S. I still enjoy reading your blog and appreciate all the hard work you’re doing.)
Comment by step back — January 16, 2008 @ 11:47 am
Joe, I’ve printed out your essay and started to read it but maybe you can help me with something that’s puzzling me. You see, I’m a prosecutor and I expect the PTO to give me a patent unless my claim embraces something (old or) obvious. My cases are in a conveyor belt of thousands of cases going through the PTO. If we were to stand together, you and I, and watch the objects flowing past us on the belt, loaded onto the belt by the likes of IBM, Samsung and Seiko Epson, we would see tiny incremental contributions to the art, for which the most relevant art is docs published in the few years immediately preceding the claim’s priority date. No chance in any of those, then, of showing the judge any long-felt need. Are they all destined to be struck down as obvious because, under European Problem and Solution Approach, quite a few of them, albeit modest contributions and narrow claims, are in my book most definitely not obvious. I think we might be watching the belt rather a long time, before any object came along, that would survive your LFN theory. But, maybe, that’s the whole point? Or am I just not seeing it clearly?
Comment by MaxDrei — January 16, 2008 @ 10:59 pm
Max,
Thanks for joining the debate fray here. Once again I find myself agreeing with you. Inventions that truly satisfy the LFN test probably also satisfy the Nobel science prize test:
1. cure for cancer or other dreadful disease
2. desktop cold fusion machine
3. time machine
4. fountain of youth
5. humane cure for poverty / humane cure for stupidity
The “N” (need”) in LFN implies that it is something required rather than merely useful and despite this desperate requirement, no one in the art, no one among the 6.5 Billion people presently on Earth has come up with any solution. In my 20+ years of practice, I don’t recall if ever I used the LFN argument. It is a rare gem among mountains of plain dirt and ore that qualifies for LFN.
But that does not make the rest of the inventions “obvious”.
Comment by step back — January 17, 2008 @ 6:02 am
A few ideas –
I’m happy to call it “long felt problem.” I don’t mean to suggest, by using to the term “need,” something recognized culture-wide as a pressing problem (e.g., cancer cure).
My essay doesn’t argue that evidence of long-felt need should be the only test of nonobviousness. Rather, I argue that the level of skill inquiry should pay very close attention to that evidence if it’s available – not merely as a secondary consideration, but as strongly probative evidence of the level of skill in the art.
Finally, I may disagree about the relative frequency with which applicants and their lawyers could directly address long-felt need evidence, and teaching-away evidence, if the system wanted to focus on it more. And, as I read the PTO’s new section 103 examination guidelines, applicants have every reason to highlight this evidence; the guidelines describe several rationales for concluding an invention would have been obvious, all of which (I think) are well rebutted by long-felt need and teaching away evidence.
Best,
Joe
Comment by Joe — January 17, 2008 @ 7:00 am
And Max, a few more points –
You’re absolutely right that, today, the conventional understanding of both sections 102 and 103 of the U.S. Patent Act is that an applicant is presumptively entitled to the claim. As I’ve blogged about here before, however, there is actually a difference between the text of section 102 and 103 that could justify treating the two sections differently (i.e., presumptive entitlement under section 102, but burden on the applicant to show nonobviousness). As I understand it, KSR’s counsel has argued that that is the proper interpretation of section 103; but the KSR case itself didn’t require an answer to the issue, given that the case was not on appeal from the Patent Office.
Another point – As I’ve remarked before, I’m no adept at the EPO’s problem-solution approach. More than that, my understanding of UK and European patent laws is that, contra KSR, both jurisdictions treat the ordinary artisan as profoundly uncreative. KSR, by contrast, recognizes (correctly, in my view) that the ordinary artisan is creative. If I have all these facts right, that means our nonobviousness standard is now higher than the UK’s and Europe’s.
Finally, my own conclusion on the basic policy question is that “tiny incremental contributions to the art” should not receive patent protection. Such protection is not necessary to incent such inventions, both because there are other appropriability mechanisms for recouping the investments in innovation (such as trademark protection that supports first mover advantage, and trade secret protection), and because competitive pressures drive innovations even where the only recouping mechanism is lead time.
Best,
Joe
Comment by Joe — January 17, 2008 @ 7:12 am
Prof. Miller,
I have great respect for college professors. I was fortunate to have many great teachers in my college years.
That said, there is a Grand Canyon’s worth of chasm between the “theoretical” world and the real world. In my line of work I come in direct contact with unemployed engineers who are desperately trying to launch a new start up, medium sized companies being sued by “trolls”, and yes– large sized companies for whom the cost of a single patent is chump change, especially since they set the market price for such things.
That’s wonderful professor’s talk up there in your last comment about the theoretical recoupment of investment by advantage of “lead time”, and about use of trademarks to protect inventions, and about pulling out the magical divining rod so as to separate the “incremental” unworthy inventions from the truly deserving, non-incremental inventions. But the real world is messy and ugly.
As to the last point, very few people wake up in the morning and say to themselves, today I am going to do evil by filing for an unworthy invention. Every inventor believes his invention is worthy. There is great social risk even in sticking your neck out and having the audacity to say I think I came up with something better. The art of pooh poohing the next guy’s invention is a national sport. Remember Fulton’s Folly?
Instead of knocking down other people’s inventions, why don’t you come up with a great invention of your own so as to show us how truly nonincremental inventions are made?
As to the theoretical advantage of lead time, what utter nonsense. Microsoft has swallowed whole many a company with “lead time”. That includes well funded companies with “lead time”. Netscape had “lead time”. The average unemployed engineer can’t afford a patent attorney let alone fighting off the Goliaths in his industry. Even if he has the greatest nonincremental idea since sliced bread, he’s screwed because he can’t afford an attorney and in the real world unless he is already rich, he is not going to have rich friends who will be willing to fund his venture. All this theoretical stuff you talk about does him or our society no good. KSR has made it next to impossible for the underfunded inventor to be able to fund a patent prosecution in the first place. Even if they get a patent, good luck with funding a multi-million dollar litigation. It’s an ugly messy world out there. LFN is going to get you nowhere with an arrogant ignorant patent examiner who really doesn’t care what legal theory you “argue”. He’s already made up his mind and nothing is going to change it.
Now what admissible “evidence” are you going to bring forth to the BOPAI as to why the person of ordinary skill would NOT have found it obvious to make the examiner’s proposed moves?
Respectfuly yours,
–Steppy, Registration number 555-1234
Comment by step back — January 17, 2008 @ 9:49 am
Quick reaction Joe. Putting the burden on Applicant risks killing exactly those cases where recognition that the subject matter of the claim has actually solved the technical problem (or met the long felt need) doesn’t come until some years after filing. One way to deliver that time is to stretch pendency out. Another is to let Applicants through to issue unless PTO can cobble together a fair refusal. As to the level of skill point, I like the EPO approach because it deals with both novelty and obviousness in a Y/N B&W way. Arguments about level of skill bedevil German national law and are one more opportunity for a well-funded party with a weak case in USA to push a financially weaker, legally stronger opponent to settle
Comment by MaxDrei — January 17, 2008 @ 9:52 am