Rules, Standards, and the Reality of Obviousness

Abstract

The great question of patent law, obviousness, 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examiners can be forgiven for relying on common sense among other things, courts should no longer rely on the outdated analogous arts test as a shortcut to find inventions obvious.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 them. This shift in the focus of the obviousness analysis during litigation should result in a more accurate determination of obviousness when it matters most.

Keywords: patent, obvious, obviousness, nonobvious, invention, technology, analogous art

JEL Classification: K19, K29, K39, O3, O31, O32, O34