4 ms·

Ah, but the applicant does not have to prove that the invention is nonobvious. I think that objective evidence of nonobviousness should be required, not at the

Ah, but the applicant does not have to prove that the invention is nonobvious. I think that objective evidence of nonobviousness should be required, not at the time of application — the needed evidence might not exist yet at that point — but as the first step in an infringement proceeding. As for what would constitute objective evidence of nonobviousness, I think the Graham factors [0] are a great starting point: * commercial success * long felt but unsolved needs * failure of others [0] https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co.

pnw_hazor 9y ago
Graham factors will get looked at closely in litigation because post-grant challengers always allege that the patent claims they are challenging are invalid because they are obvious. Patent owners will defend charges of obviousness by: trying to distinguish their patent claims from the prior art; arguing that combining the prior art references is unreasonable; and by arguing that the Graham factors tilt in their favor. If a claim is obvious, it is easier to prove it by finding written evidence (references) and then argue that it would be reasonable to combine those references. If a challenger has to rely on an absence of Graham factors they are in trouble. That means they could not find any published prior art references in the entire world that would be reasonable to combine to disclose all of the elements of the claims being challanged. Note, litigators will raise every other reason they can think of to invalidate the claims they are challenging. During examination, obviousness is often the sticking point. In crowded arts it can take several rounds of prosecution to overcome obviousness rejections -- as it should.
- ScottBurson 9y ago
  > If a challenger has to rely on an absence of Graham factors they are in trouble. Right. I think the law should be changed. The Amazon photography patent [0] is a great example of why. Although there were no prior art references specifying the distance ratio given in claim 3, there is also no evidence that nobody had used that ratio before. Nor, in all likelihood, is there any evidence that anyone had tried to achieve the same effect as this patent (eliminating the need for retouching product photographs) and failed. Although this example is not from the software domain, from what I have seen, similar circumstances occur all the time in software: a patent application covers a technique that simply can't be known not to have already been discovered, because the problem it solves is simply not important enough that someone who solved it would necessarily have thought the solution worth patenting. Or, because they did so at a time when software was not generally thought to be patent-eligible, a situation that, as I recall, persisted among software engineers well into the 1990s. In my view, and in the software domain, the inventions that deserve patent protection are primarily those that solve problems whose difficulty has been explicitly noted in the computer science literature. For those, we have very clear evidence that any solution that improves on previous attempts is nonobvious. Absent such evidence I think the public would be better served, on the whole, if software patents were not granted. This is not quite the scorched-earth view that some here on HN take with regard to software patents, referring to those who think they should never be granted at all, but my impression is that it's pretty close to the EU policy. [0] https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a-patent-on-white-background-photography/ https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a...

pnw_hazor 9y ago

Graham factors will get looked at closely in litigation because post-grant challengers always allege that the patent claims they are challenging are invalid because they are obvious. Patent owners will defend charges of obviousness by: trying to distinguish their patent claims from the prior art; arguing that combining the prior art references is unreasonable; and by arguing that the Graham factors tilt in their favor. If a claim is obvious, it is easier to prove it by finding written evidence (references) and then argue that it would be reasonable to combine those references. If a challenger has to rely on an absence of Graham factors they are in trouble. That means they could not find any published prior art references in the entire world that would be reasonable to combine to disclose all of the elements of the claims being challanged. Note, litigators will raise every other reason they can think of to invalidate the claims they are challenging. During examination, obviousness is often the sticking point. In crowded arts it can take several rounds of prosecution to overcome obviousness rejections -- as it should.

ScottBurson 9y ago
> If a challenger has to rely on an absence of Graham factors they are in trouble. Right. I think the law should be changed. The Amazon photography patent [0] is a great example of why. Although there were no prior art references specifying the distance ratio given in claim 3, there is also no evidence that nobody had used that ratio before. Nor, in all likelihood, is there any evidence that anyone had tried to achieve the same effect as this patent (eliminating the need for retouching product photographs) and failed. Although this example is not from the software domain, from what I have seen, similar circumstances occur all the time in software: a patent application covers a technique that simply can't be known not to have already been discovered, because the problem it solves is simply not important enough that someone who solved it would necessarily have thought the solution worth patenting. Or, because they did so at a time when software was not generally thought to be patent-eligible, a situation that, as I recall, persisted among software engineers well into the 1990s. In my view, and in the software domain, the inventions that deserve patent protection are primarily those that solve problems whose difficulty has been explicitly noted in the computer science literature. For those, we have very clear evidence that any solution that improves on previous attempts is nonobvious. Absent such evidence I think the public would be better served, on the whole, if software patents were not granted. This is not quite the scorched-earth view that some here on HN take with regard to software patents, referring to those who think they should never be granted at all, but my impression is that it's pretty close to the EU policy. [0] https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a-patent-on-white-background-photography/ https://arstechnica.com/tech-policy/2014/06/how-amazon-got-a...