What is Obviousness?
Hi, this is Rabbi, Dr. Yosef Freedland, Surgeon, and Patent Attorney on Medical Devices at Appelfeld Zer Fisher.
So exactly how bad is this new ruling about obviousness?
Of course, as usual we need a little bit of background that may be “obvious” to those familiar with patent writing, but may not be “obvious” to the inventor reading the AZF blog.
First: Exactly who determines whether something is obvious? Traditionally this was a person who knows everything but has no creativity. However, one of the ways that the Supreme Court has made obviousness stricter is by alluding to the fact that a person who combines invention A with invention B may in fact possess some creativity.
Going back to our example of the orange juice squeezer on the pump: Let’s presume that you made a very unique formula comprising, for example, an epoxy. This epoxy is very efficient in securing a plastic orange juice squeezer to a wooden handle on an air pump. In this case, you might be able to apply and obtain a patent for this unique formula epoxy, but claiming the combination of an air pump and orange juice squeezer with the epoxy, might be deemed obvious, and hence would not be granted a patent. (I say “might” because there may be other “unique” issues involved AND I would not like to be cited in a decision that invalidates your invention of an orange juice squeezer and tire pump.
Second: how bad is it going to be for software patents?
Take a patent you’ve ever heard of which ‘does X over the internet’. Let’s say that X is an program that can unite accounting calculations that take place in multiple offices. So now it turns out that doing X, namely uniting multiple accounting calculations from a variety of locations has been known since the days of the horse and buggy. For example, on a given day the first stable only has two horses to attach to a four-horse buggy. So the first stable owner goes to a second stable to borrow two more horses.
On another day, the second stable only has one horse for a six-horse buggy so the second stable owner goes to the first stable and borrow five horses.
The accountants at both stables like to horse around and they calculate the amount of time and the number of horses that have been exchanged. In fact they compare their books and they combined their list together in a single accounting sheet.
Therefore, it turns out that combining accounting calculations from two separate locations has been around long before the Internet. So you come forward with a tremendously great software package that combines accounting calculations from separate locations by utilizing the Internet.
Based upon the new ruling of the Supreme Court, it may just be obvious that to utilize the Internet to combine accounting; even if you’re accounting package does more than calculate the number of horses exchanged between two stables. You might say that we are not in a very stable position because we don’t know the extent that the Supreme Court will apply this new ruling of obviousness.
For example, we may end up having some problems related to software. Let’s say that combining accounting software modules and physical machines like printers and monitors is not very easy; at least according to the complexity of your wonderful invention.
However, it may just be that the new ruling will be used to decide that the biggest nerd in the world who happens to know how to use a hand-held calculator may just have enough creativity to put together everything that you put together in your new invention.
The extent of the Supreme Court ruling intake in KSR versus Teleflex with respect to software patents will become more and more defined as time goes on and there are more rulings regarding software.
OK, so this is Rabbi, Dr. Yosef Freedland, Surgeon, and Patent Attorney signing on how “Obviously” bad obviousness can be for invention.