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This is exactly what I was concerned about when the Alice decision came down. The problem is that abstractness is relative: abstractions exist in a hierarchy,

This is exactly what I was concerned about when the Alice decision came down. The problem is that abstractness is relative: abstractions exist in a hierarchy, such that what is abstract at one level is concrete relative to the next level above it. There is no absolute measurement of abstractness. What I really want to see is for obviousness tests to be strengthened. I believe that in order for a patentee to sue for infringement, they should first have to present objective evidence that their idea is actually nonobvious, along the lines of the "Graham factors" [0]: commercial success, long-felt but unsolved needs, or failures of others. The nonobviousness requirement has become toothless in recent years; the Federal Circuit has reduced it to a requirement that no prior art exist explicitly mentioning the invention. But lots of things are obvious that haven't been explicitly mentioned in some publication; indeed, many things aren't mentioned because they are obvious. And the PTO is poorly placed to evaluate nonobviousness; for one thing, one of the Graham factors, commercial success, may not exist at patent application time — one may have to wait a few years to see whether the invention gives rise to a viable business. So the right time to evaluate obviousness is at the commencement of litigation. [0] https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co https://en.wikipedia.org/wiki/Graham_v._John_Deere_Co.

rayiner 8y ago
This is a very good observation and reflects my view as well. Two big problems are that the law is too mechanical in how it applies obviousness, and that obviousness is a fact question that usually can't be resolved by the court in a motion to dismiss.
brlewis 8y ago
> The nonobviousness requirement has become toothless in recent years; the Federal Circuit has reduced it to a requirement that no prior art exist explicitly mentioning the invention. If that's true, then the Fed Circuit has judicislated the nonobviousness requirement out of existence, if it adds nothing to the novelty requirement.
- ScottBurson 8y ago
  That's my understanding, though I'd have to do a little digging to be able to support it.
dctoedt 8y ago
> I believe that in order for a patentee to sue for infringement, they should first have to present objective evidence that their idea is actually nonobvious, along the lines of the "Graham factors" [0]: commercial success, long-felt but unsolved needs, or failures of others. This triggers one of my pet soapbox issues: The U.S. patent statute requires a patent to be issued to an inventor unless the patent examiner can show that the claimed invention was not new, useful, or nonobvious. True, the inventor must tell the patent office about any prior art of which s/he happens to be aware, but the inventor has zero obligation to do any kind of prior-art search to see what else might have been out there. Contrast that with the Ph.D. degree system, where the burden is on the candidate to do a literature search and convince his/her committee that s/he didn't reinvent the wheel. Another contrast: When a university grants a Ph.D. degree, the result isn't national industrial policy in the form of a statutory monopoly over the claimed subject matter. And another one: Ph.D. degrees require a defense before not just an experienced advisor, but also a committee of people who know at least something about the subject matter. In contrast, patents and their statutory monopolies are typically approved by junior- or mid-level examiners generally either flying solo or (in theory) supervised by one more-experienced examiner. Only if the examiner issues a final rejection will the invention be reviewed by a board of appeals comprising senior examiners.
- ScottBurson 8y ago
  > Only if the examiner issues a final rejection will the invention be reviewed by a board of appeals comprising senior examiners. Yes, that's quite backwards, isn't it? Granted patents should be reviewed more carefully than rejections. Where the PhD system is built to minimize false positives, the patent system is built to minimize false negatives. Here's how I've seen it put in the past. A patent is a deal the public makes with an inventor: the inventor gets a temporary monopoly in exchange for disclosing how the invention works. The problem we have is that no one in the system — neither the PTO nor the courts — is specifically responsible for representing the public's interest, by making sure that the information being disclosed is valuable enough to deserve the monopoly.
  - dctoedt 8y ago

rayiner 8y ago

This is a very good observation and reflects my view as well. Two big problems are that the law is too mechanical in how it applies obviousness, and that obviousness is a fact question that usually can't be resolved by the court in a motion to dismiss.

brlewis 8y ago

> The nonobviousness requirement has become toothless in recent years; the Federal Circuit has reduced it to a requirement that no prior art exist explicitly mentioning the invention. If that's true, then the Fed Circuit has judicislated the nonobviousness requirement out of existence, if it adds nothing to the novelty requirement.

ScottBurson 8y ago
That's my understanding, though I'd have to do a little digging to be able to support it.

dctoedt 8y ago

> I believe that in order for a patentee to sue for infringement, they should first have to present objective evidence that their idea is actually nonobvious, along the lines of the "Graham factors" [0]: commercial success, long-felt but unsolved needs, or failures of others. This triggers one of my pet soapbox issues: The U.S. patent statute requires a patent to be issued to an inventor unless the patent examiner can show that the claimed invention was not new, useful, or nonobvious. True, the inventor must tell the patent office about any prior art of which s/he happens to be aware, but the inventor has zero obligation to do any kind of prior-art search to see what else might have been out there. Contrast that with the Ph.D. degree system, where the burden is on the candidate to do a literature search and convince his/her committee that s/he didn't reinvent the wheel. Another contrast: When a university grants a Ph.D. degree, the result isn't national industrial policy in the form of a statutory monopoly over the claimed subject matter. And another one: Ph.D. degrees require a defense before not just an experienced advisor, but also a committee of people who know at least something about the subject matter. In contrast, patents and their statutory monopolies are typically approved by junior- or mid-level examiners generally either flying solo or (in theory) supervised by one more-experienced examiner. Only if the examiner issues a final rejection will the invention be reviewed by a board of appeals comprising senior examiners.

ScottBurson 8y ago
> Only if the examiner issues a final rejection will the invention be reviewed by a board of appeals comprising senior examiners. Yes, that's quite backwards, isn't it? Granted patents should be reviewed more carefully than rejections. Where the PhD system is built to minimize false positives, the patent system is built to minimize false negatives. Here's how I've seen it put in the past. A patent is a deal the public makes with an inventor: the inventor gets a temporary monopoly in exchange for disclosing how the invention works. The problem we have is that no one in the system — neither the PTO nor the courts — is specifically responsible for representing the public's interest, by making sure that the information being disclosed is valuable enough to deserve the monopoly.
- dctoedt 8y ago