June 15, 2007
KSR turned traditional patent application drafting into suicide. Backgrounds logically provided a historical context for one or more problems to be solved, the inventive solution being the basis for the claims. Post-KSR, problem-solving storytelling now provides a roadmap to apply hindsight in invalidating a patent as obvious.
The Supreme Court in KSR considered obviousness easily found in hindsight by solving a known problem. Hardly ever does a patent solve an unknown problem.
If the claim extends to what is obvious, it is invalid under §103. 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.
In hindsight, most everything looks obvious. The Supreme Court in KSR paid only lip service to the concern of applying hindsight:
A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.
But hindsight is subtly pervasive, as the Supreme Court recognized over a century ago, and repeatedly confirmed by studies.
The apparent simplicity of a new device often leads an inexperienced person to think that it would have occurred to any one familiar with the subject; but the decisive answer is that, with dozens and perhaps hundreds of others laboring in the same field, it had never occurred to any one before. The practiced eye of an ordinary mechanic may be safely trusted to see what ought to be apparent to every one. - C & A Potts & Co. v. Creager, 155 U.S. 597, 607-08 (1895).
"Humans are cognitively unable to prevent knowledge gained through hindsight (here, that the invention was achieved) from impacting their analysis of past events, as required for the proper ex ante analysis. Because of this hindsight bias, individuals routinely overestimate the ex ante predictability of events after they have occurred." - Professor Gregory Mandel of Albany Law School (Patent Prospector entry)
In his latest paper, "Post-KSR Treatment of “Problems” in the Background of the Invention," Hal Wegner finds the common expression of patent drafting now a formula for declaring one's invention obvious in hindsight.
Patent applicants all too often – and unnecessarily – create sophisticated “problems” that are identified in the specification; they identify these problems as facing workers skilled in the art. The “problems” are solved by the invention. Yet, given the “ordinary creativity” of the post-KSR worker in the art, perhaps the problem is then one that can be solved, making the invention obvious... None of this verbiage is necessary to meet statutory requirements of patentability.
What creates a special and immediate challenge for patent application draftsmanship is the KSR linkage between a “problem” that is be solved by the patentee and the common sense of a worker skilled in the art who is motivated by the problem to seek out an “obvious to try” solution.
KSR sowed the ground for an extravagant §103(a) killing field; it just is not right - decent inventions plowed under in hindsight.
Posted by Patent Hawk at June 15, 2007 10:17 AM | Prosecution
What do you think about putting the problem statement in the detailed description? That's what I've been doing long before KSR came out. That way, IMO, it's not admitted prior art because it's not in the background.
Posted by: Opampman at June 15, 2007 2:28 PM
Humble suggestion from Europe: draft your apps to be in optimal shape for EPO "Problem and Solution" treatment. That should satisfy Hal too. You see, under PSA you don't have to announce any problem, and you don't have to mention any art, and you'd best not state any "object of the invention". Admittedly (and you can't really complain about this, can you), you do have to say what your contribution to the technical field is, what your technical feature combination is, and what technical effects you get from that combination. Then, sit back and wait for the EPO to 1) search 2) find a realistic obviousness "starting point" in the published art 3) formulate for the first time that key artefact of PSA analysis, namely, the "objective problem". Applicant then replies, inserting in the app for the first time a mention of the relevant art, setting the allowed claims for the first time in the context of the most relevant art, and seeing off the obviousness attack. Are we then at last on the way to a recipe for drafting a universal international patent application?
Posted by: MaxDrei at June 17, 2007 4:46 AM
I think the Supreme Court is confused over the obviousness issue. Graver Tank held that "long felt but unsolved needs" might be utilized as secondary evidence of nonobviousness. KSR instructs that a known problem may be used to prove obviousness. Is ths splitting hairs, or am I missing something here? I don't see how adding "for which there was an 'obvious' solution encompassed by the patent's claims" facilitates answering the obviousness inquiry - it is just gobbledygook.
Posted by: confused scotus at June 18, 2007 9:25 PM
Perhaps in KSR an echo of the well-known "problem invention" phenomenon at the EPO. This is an invention where the contribution to the art is to specify the problem. It is this insight that advances the industry, so one is entitled to a patent that covers ALL ways to solve the problem (even when the solution is indeed obvious, once somebody has specified the problem). Conversely, when the problem is already identified, and the published art suggests a way to overcome it, the claim's prima facie obvious. As to "long felt want" that's more than just "a problem". It's a problem that has been occupying skilled persons for a long time, yet none of them solved it, till now. Clearly an inventive step: once you can prove the fact of long felt want, which ain't easy.
Posted by: MaxDrei at June 24, 2007 9:05 AM