Second Order Obviousness: How Information and Communication Technologies Make Inventions More Obvious and Why the Law Should Care

Abstract

Nonobviousness is a key component in how patent law determines the bounds of patentability. However, there are multiple ways that a technology can be considered “obvious” and current patent doctrine does not adequately consider them all. Although all inventions can lead to subsequent inventions by providing inspiration (first order obviousness), some have further effects on future innovation by facilitating the associated activities (second order obviousness). Because of the way they enable communication and information access, ICTs like the Internet have particularly strong second order obviousness effects, as they lower the cost of invention.

This article introduces the concept of second order obviousness and theorizes the relationship between ICTs and innovation. It demonstrates three mechanisms via which ICTs ease invention and increase obviousness: improved access to information; increased ease of collaboration; and enhanced accuracy of market monitoring. It then empirically supports the presence of these effects as state-level Internet access and patenting data are used to show that—even when controlling for important patenting predictors like R&D spending, GDP, and the number of researchers—Internet access rates are positively and significantly related to patenting rates.

After theorizing and supporting the presence of second order obviousness effects, this paper discusses how patent examiners and the courts currently take them into account during nonobviousness analysis and suggests ways to make the analysis more explicit and effective. Suggestions include altering the nonobviousness analysis to include a presumption to combine prior art references; assessing obviousness from a team rather than an individual perspective; and paying more attention to the market demand for inventions. In order to address future technologies that may also have second order obviousness effects, the final Part of this Article suggests minor alterations to the text of § 103 and the USPTO’s technology monitoring that would allow our innovation system to respond more proactively to changing technological capabilities.

Keywords: Patents, Obvoiusness, Non-Obviousness, Law and Technology