In a letter to the WSJ on May 11, they write:

"... Both the [Supreme Court] and the [Wall Street] Journal . . . call for greater flexibility in the administration of the patent law, while overlooking its Achilles heel. All too often the noble sounding 'flexible' has undesirable effects. It promotes uncertainty, increases the discretion of government bureaucrats, and gives a built-in advantage to large companies with hefty lobbying and litigation budgets.

The older patent tests ['obvious' in 35 USC 103] were introduced in 1952 as a reaction to an earlier Supreme Court's insistence on a strict standard of patentability [the flash of genius test]. It looks as though the court and the Journal are repeating an earlier historical mistake. This decision, coupled with the court's earlier weakening of injunctive relief in its MercExchange v. eBay decision, weakens property rights without promoting competition."

I agree and disagree. Disagree: I think the Court was right to point the Federal Circuit in the direction of a stricter standard--and for rejecting the Federal Circuit's test for obviousness as being too rigid. BUT I agree that something of a vacuum has been left, that may be filled with any folly. The best approach at present is for policymakers to fill that vacuum by
a) helping judges and patent examiners understand how to access the opinions of Phositas (persons having ordinary skill in the art) without a battle of experts, and improving access to prior art.
b) Getting some more competition between Circuits in hearing patent appeals, to sharpen up feedback on new tests as they are formulated.
c) Fixing those aspects of patent litigation more generally that are broken.

When all's said and done, I cannot understand how the Court could have reached a different result in the KSR case. Should they have found the device to be nonobvious? Affirmed the Federal Circuit test when it seems to contradict both the ordinary understanding of the term "obvious" and to contravene the statute's purpose in setting a meaningful standard of patentability? I don't see this being tenable.

OR... more subtle. Perhaps the Court should have revisited the rules of claim construction in some subtle way. But surely that would not have furthered the goal of certainty either.

posted by Solveig Singleton @ 3:37 PM | Patents

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