Prognosis Indeterminable: How Patent Non-Obviousness Outcomes Depend Too Much on Decision-Makers

By Benjamin H. Graf

J.D. with Intellectual Property Concentration, 2010, Benjamin N. Cardozo School of Law; B.A. in Physics, 2005, Boston University

Excerpt from Prognosis Indeterminable: How Patent Non-Obviousness Outcomes Depend Too Much on Decision-Makers, 9 Cardozo Pub. L. Pol'y & Ethics J. 567

Introduction
 
An inventor who files a patent application or a patentee whose patent is challenged in court often faces a non-obviousness inquiry. 1 Naturally disposed to evaluate the odds of succeeding on this issue, an inventor or his attorney may be inclined to refer to judicial or administrative precedent to interpret and apply the concept of "non-obviousness." 2 Unfortunately, when it comes to predicting non-obviousness determinations, such established interpretive approaches often prove futile. This Note argues that (1) among the major requirements for patentability, the non-obviousness inquiry is uniquely and overly indeterminate and subjective; (2) the inquiry is thereby particularly damaging to the patent system and undermines the "patent bargain" in that it discourages important innovation while incentivizing monopolies on insignificant improvements to existing invention; and (3) means exist to improve the non-obviousness inquiry without deviating from its important statutory purpose.

Part I of this Note traces the judicial and statutory history of non-obviousness and analyzes the current state of its jurisprudence. Judges and examiners have explored various approaches to the non-obviousness inquiry, combining both objective and subjective tests. Part II delves into the uncertainty of non-obviousness determinations, drawing on empirical and anecdotal information. Included is a discussion on the negative policy implications of such an unpredictable system. Part III discusses attempted reform by the Court of Appeals for the Federal Circuit, and proposed reforms by intellectual property scholars. Two novel proposals for reforming the non-obviousness inquiry follow. The first suggests implementation of ...

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