Rules, Standards, and the Reality of Obviousness

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examiners can be forgiven for relying on common sense among other things, courts should no longer rely on the outdated analogous arts test as a shortcut to find inventions obvious.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