At a recent IP conference, Professor John Duffy, a former physicist, spoke about the origins, evolution, function and importance of the non-obviousness doctrine in American patent law.

The non-obvious doctrine shapes many issues surrounding patenting standards and patent quality. The topic of non-obviousness is central in the current KSR v Teleflex heading to the Supreme Court, and in disputes between commercial and free software supporters on the effects of software patents. Those of you with inclination and ability in the liberal arts can review Professor Duffy's extensive historical account of international patent law (and feel free to post your reading notes as comments:). Here is what Professor Duffy has to say about the non-obviousness doctrine, and other aspects of patent law, in modern innovation.

The (non-obviousness) doctrine is widely understood to be so fundamental to the proper functioning of the patent system that it can be accurately described as the “final gatekeeper of the patent system,” the “ultimate condition of patentability,” and “the heart of patent law.”

When is a high non-obviousness standard important:

The four economic functions of obviousness doctrine provide good predictors of when the doctrine will be important, and when not. Obviousness doctrine will be least important in societies where (1) patent rights are expensive to obtain and to enforce, (2) the pace of social change is relatively slow, (3) few inventors are likely to working on similar projects, (4) patent rights are kept relatively narrow.

The role of the non-obviousness doctrine.

1. Preventing “Thickets” of Economically Trivial Patents.
2. Preventing the Exploitation of Exogenous Developments.
3. Allocating Rewards Among Inventors.
4. Limiting Claim Scope.

Why the non-obviousness standard is important for the software industries and technological innovation.

Modern theory predicts that the non-obviousness doctrine plays its most important role where society and technology is experiencing rapid change. In a more static society, theory predicts that the non-obviousness doctrine would be less important. … the non-obviousness doctrine did not develop until it was demanded by the rapid technological and social changes of the nineteenth century.

An implicit position in open source supporters’ position against software patents, and their support for only copyright protection in software, is the independent invention doctrine of patents. The fear of open source supporters is understandable given their informal and decentralized model of development. However, open source is not the first, and not the last, example of an activity (whether you characterize it as a business, creative pursuit or hobby) to need evolving in order to comply with legal policies.

A narrow right that allows for independent creation and protects only the precise details of a particular embodiment of the invention is unlikely to give sufficient protection as a practical matter to encourage the type of investments and work that society wants to encourage. ..

One of the benefits of patent law is the transactional efficiencies it enables.

…permitting independent creation as a defense in patent law would encourage unproductive duplication. Once an invention has been created — once a technical insight … has been discovered — it is a waste of resources for others to continue working in an attempt to achieve that insight a second time.

If independent invention were a defense, firms would have an incentive to wall off their researchers from the knowledge of new discoveries and to continue funding their researchers’ attempts to discover independently what has already been discovered.

… This rule is easily justified, because it prevents already existing matter from falling under a new set of the exclusive rights and thereby prevents researchers from being over-rewarded by receiving rights beyond their contribution.

…if patent law granted more narrow rights and allowed independent creation as a defense, the standard of creativity could sensibly be set lower.