Rules, Standards, and the Reality of Obviousness
Rules, Standards, and the Reality of Obviousness
Brenda M. Simon 0
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Rules, Standards, and the
Reality of Obviousness
Brenda M. Simon†
Obviousness, the great question of patent law, 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among other things, courts should no longer rely on the outdated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
these practices. This shift in the focus of the obviousness analysis
during litigation should result in a more accurate determination of
obviousness when it matters most.
Associate Professor, Thomas Jefferson School of Law; Non-Resident
Fellow, Stanford Law School. Thanks to Deven Desai, John Duffy, Hank
Greely, Tim Holbrook, Eric Lane, Mark Lemley, Orly Lobel, Elizabeth
Rosenblatt, Jake Sherkow, Ted Sichelman, Howard Strasberg, Marketa
Trimble, and participants at the Intellectual Property Scholars
Conferences at Stanford Law School and Cardozo Law School, the
Distinguished Speaker Series at Whittier Law School, and the Corporate
Innovation and Legal Policy Seminar and PatCon4 at the University of
San Diego for helpful comments and suggestions on earlier drafts.
Case Western Reserve Law Review·Volume 65·Issue 1·2014
Rules, Standards, and the Reality of Obviousness
Contents Introduction .....................................................................................26 I. The Development of the Analogous Arts Test.......................30
Introduction
Courts and patent examiners face several challenges in assessing
whether an invention is too obvious to deserve patent protection.1
One of the greatest obstacles is the need to balance the benefits of
To address these problems, commentators have set forth numerous
proposals, such as altering the presumption of validity, providing more
rigorous examination, and considering whether a patent would have
been necessary ex ante to induce innovation. See, e.g., Michael
Abramowicz & John F. Duffy, The Inducement Standard of
Patentability, 120 Yale L.J. 1590, 1596 (2011) (proposing a shift from
the cognitive model of analyzing nonobviousness to one that relies on
inducement theory); Doug Lichtman & Mark A. Lemley, Rethinking
Patent Law’s Presumption of Validity, 60 Stan. L. Rev. 45, 59–61
(2007) (questioning the presumption of validity); Glynn S. Lunney Jr.,
E-Obviousness, 7 Mich. Telecomm. & Tech. L. Rev. 363, 412, 416
(2001) (discussing inducement in the context of e-commerce patents);
Kristen Osenga, Entrance Ramps, Tolls, and Express Lanes—Proposals
for Decreasing Traffic Congestion in the Patent Office, 33 Fla. St. U.
L. Rev. 119, 121–22 (2005) (offering proposals to adjust the
examination process in terms of speed and quality).
certainty with the goal of rewarding innovation, which often shifts
paradigms and upsets predictability.2 These countervailing interests
often arise in the classic debate about rules and standards.3 Rules
provide ex ante certainty that supports investment, while standards
afford the ability to recognize creativity and innovation.4
In the last two decades, the United States Supreme Court has
rejected many of the attempts to bring greater certainty to patent
law.5 The Court has recognized that the use of standards, rather than
rules, provides the flexibility necessary to assess patentability.6 For
example, in its 2007 decision on obviousness, the Court disavowed the
Federal Circuit’s rigid requirement that the prior art contain a
teaching, suggestion, or motivation to be combined.7 Instead, the
Court advanced a flexible standard, deciding obviousness in light of
“[t]he diversity of inventive pursuits and of modern technology.”8
Attempts to reevaluate the doctrine of obviousness in light of the
rules versus standards debate should recognize the realities of
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