« Claim Whacker | Main | Non- En Banc Cacophany »

May 22, 2007

Incremental Invention

"True creativity is characterized by a succession of acts, each dependent on the one before and suggesting the one after." - Edwin Land, Polaroid Founder

The Supreme Court in KSR v. Teleflex (2007), quoting Great Atlantic & Pacific Tea v. Supermarket Equipment (1950).

For over a half century, the Court has held that a "patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men."

Yesterday, Court of Appeals (CAFC) Judge Randall Radar* said that the SCOTUS KSR decision would not lead to "great changes" in the way the Federal Circuit looks at obviousness. The first CAFC ruling after KSR, Leapfrog v. Fisher-Price & Mattel, was written just before the KSR decision came down the pike, and "did not require one iota of change." Leapfrog's electronic child learning toy was found obvious by combination of a previous patent for a mechanical version, a product with a "slightly different mode of operation," and any old display screen.

Inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims. [SCOTUS KSR]

If adding features to an electronic product from a 25 year old mechanical version is old news, what is putting into software a variant of a previously known business method? Software developments are almost always incremental improvements, clever combinations hitherto unanticipated, but with antecedent, and little change in fundamental function; their prospects for patent protection now?

Radar's remarks are only a bit disingenuous. The CAFC read the tea leaves of the SCOTUS KSR brewing, and, in the months preceding KSR, opened up the obviousness floodgate. The Supreme Court ruling was but the crown on the new patent prom queen; she was already dressed by the appeals court.

Regardless of any patent reform legislation, the courts have already altered the law. The impetus for a sea change in the patent regime from large computer technology corporations in particular have had much of its intended effect.

Perhaps a vast majority of patents granted are no longer enforceable, and a prosecutor has scant recourse to argue against combination prior art rejections. The patent office's pendency problem will largely evaporate within a few years, as obviousness rejections are met with abandonment, and new application filings drop.

*Remarks by Rader reported by Joff Wild, Intellectual Asset Management Magazine.

Posted by Patent Hawk at May 22, 2007 12:33 PM | Prior Art