Posted on 04/21/2002 3:53:23 PM PDT by bvw
The mere cost of prosecuting a patent application keeps frivilous applicants at bay under the examination system, and having a formal, independent, and official process of pre-determining an invention's novelty and usefulness does give a patent greater "value" by its presumption of validity even if it only gives the inventor a right to sue.
The bitter patent fights between Glenn Curtiss and the Wright brothers about airplanes are legendary and were socially useful to the U.S. and its patent system, but I seem to recall that a federal District Judge overturned the Needie string trimmer patent on grounds that the invention was "obvious" since any gardener would think to wrap a wire or string around an electric motor mounted to a handle in order to make a trimmer.
True or not, that story really rankled me, and that's when I got the notion that maybe a registration system was, perhaps, better. You've persuaded me otherwise, and I thank you effusively!
Does cold fusion exist? Sure, it's been a known phenomenon since the days of Niels Bohr. Does that mean you can get an exergenic reaction out of it and solve the world's energy problems? Nope. And what all the cold fusion adherents _say_ is that.
The PTO gives some stupid patents, but at least they haven't succumbed to that snake-oil yet.
. . . I seem to recall that a federal District Judge overturned the Needie string trimmer patent on grounds that the invention was "obvious" since any gardener would think to wrap a wire or string around an electric motor mounted to a handle in order to make a trimmer.
True or not, that story really rankled me, and that's when I got the notion that maybe a registration system was, perhaps, better.
The hurdle for "usefulness" is very low. Stupid and boring games can be patented. As long is there is a detectable (and legal) use, the usefulness hurdle is met. The substantive issues typically raised by an Examiner are "anticipation" and "obviousness." "Anticipation" exists when the the invention disclosed in your application is taught by a single writing elsewhere. That single writing could be another patent, a catalog, or any other document that one might find in a library.
"Obviousness" is different, and is rather hard to nail down. I don't know the string trimmer case, and would need to read the decision before forming an opinion on its value to the patent system, and to society as a whole. The test of obviousness is not whether ALL gardeners would think to use a swinging string to trim the lawn; it is whether such a device is obvious (without hindsight) to people skilled in the art. I would also say that a "gardener" is not the only hypothetical person "skilled in the art" of designing motorized garden implements. You see, what is obvious to an organic chemist is not understood by most people; so the test of "obviousness" has to consider the skills of the minds that compete with THIS inventor.
There have been patent registration systems, BTW, and there are some wide ranges of patent practice in existence today. I don't know how those systems operate in total, but my guess is that the scope of rights granted, and the enforcement mechanism that supports a "registration" system are radically different from the scope and enforcement under a patent examination system. For example, perhaps the "presumption of validity" is gone, perhaps the patentee does not have rights against all comers, etc. Generally, in a registration system, the patent is easier to overturn in court -- so the string trimmer guy would have been LESS likely to prevail if the patent he had was obtained without examination.
Imagine the cost to society if patents obtained without examination could be asserted as presumptively valid, and against all comers. My evil neighbor would take out patents on the things that I profit from, and would sue me to make me stop. Adding insult to injury, it would be MY burden to prove why the evil neighbor isn't entitled to enforcement of that patent against me. Yikes!
Anyway, it is nice to meet you. If there are any overarching lessons in my rambling, one it is that the systems we bemoan are complex, and another is that we should endeavor to understand a system thoroughly before we advocate changing an isolated part of it.
I do believe our patent system has done more to make the U.S. the great nation it is than anything else. Useful inventiveness should be rewarded and encouraged, as the Constitution states.
"Anticipation" exists when the the invention disclosed in your application is taught by a single writing elsewhere. That single writing could be another patent, a catalog, or any other document that one might find in a library.That bolded statement of yours really intrigues me since you're obviously very learned on the subject! No doubt it does exist under the scenario you describe, but if no single such writing exists, was an invention "not anticipated" for examination purposes?
For a semi-fictional example, at the pertinent time, nuclear reactors had existed for decades. The controlled fission reactons produced heat. Closed cycle steam turbines had also existed for decades, as did submarines. There were many writings, etc., on them all, and their benefits and limitations were pretty well known. Then an inventive Navy guy named Hyman Rickover (maybe some fiction here, but it personalizes the scenario) put the existing elements together along with a few ideas of his own to come up with the nuclear submarine.
To me, that's the essence of innovation, and such a contraption should be deserving of a patent, especially under the "anticipation" element you described. Jules Verne's Nautilus description was not "enabling" nor did the necessary "components" exist at the time of his writings. In retrospect, a patent examiner might deny a nuclear powered sub patent because the necessary components pre-existed and only awaited a "need" for it to be "obvious" for somebody like Rickover to put it all together.
Just theoretically speaking, is a patent examiner somehow precluded from using hindsight to determine obviousness as well as anticipation in judging the merit of an application?
After all, you could argue that the McGraw-Hill Encyclopedia of Technology(?) and the CRC Handbook of Chemistry and Physics are two "writings" that pretty much cover the waterfront on thermomechanical gizmos. Add the McGraw-Hill Electronics Engineers' Handbook, the McGraw-Hill Mechanical Engineers' Handbook, The Merck Manual, and a few other references, and you have "writings" that cover the whole of what mankind knows technically, gizmo, and otherwise.
Seems like there was a Commissioner of Patents in the 19th century who said something like "Everything useful has already been invented." If a patent examiner is able to "reverse engineer" a claimed invention to reject it, that Commissioner wouldn't sound so silly today. I know I've struggled seemingly endlessly with problems that were incredibly simple once I could look back on them after having found the solution.
It has been an immense pleasure meeting you! I wish you the very best in all your endeavors and the enjoyment of life!
Let me summarize your scenario, because there is another contentious issue in this thread. That issue in general is the value of an invention to society as a whole vs. compensation (even development money) to the inventor. Few people have thought about the range of possible and reasonable outcomes.
In your scenario:
What is the "just" outcome? Will the inventor be forced to license his invention? Will Big Gamma be forced to cease practice of the invention? Well, to use the classic answer, "it depends." The general rule is that Big Gamma, if it wilfully infringes, is liable for treble damages; and even if willfulness can't be proved, infringement still makes it liable for damages to the inventor. The general rule is also that the inventor can force Big Gamma to cease practicing the invention. The cost to the infringer can be enormous. Kodak had to dismantle a production facility, remove many cameras and much film from the stream of commerce, and pay damages to Polaroid in an patent dispute that related to "instant" photography. Polaroid had no obligation to license a competitor, Kodak, and the notion of "adverse royalty" did not play.
But what if the invention has health consequences? What if "cold fusion" was demonstrated to have the ability to make unlimited clean power, eliminate all combustion related air pollution (cars, electricity generation, etc.), and do so without creating any harmful waste product? Would the courts force the inventor to license Big Gamma? If so, would the courts set the compensation due to the inventor? Tough questions, and I won't predict an outcome on the hypothetical. But, courts have permitted infringement, when the absence of infringement was shown to create a serious detriment to public health. City of Milwaukee v. Activated Sludge, 69 F.2d 577, 593 (7th Cir. 1934) (Court of Appeals upheld validity and infringement findings of district court but lifted injunction against the City of Milwaukee that would have closed a sewage treatment plant and led to dumping raw sewage of the city into Lake Michigan).
The balance between public health and patents is a contentious and hotly debated issue. Some countries do not permit patents on health-related inventions, such as ethical drugs (not my field, and I may get the countries wrong, but I believe India and Brazil fit this description). In other countries, devices that permit new surgical procedures (or non-invasive treatments) are patentable. Where to draw the line on patentable subject matter is a subject that is worthy of debate. Maybe, if cold fusion is such a public boon, we should NOT permit it to be patented at all. Whoa, that notion stirs the memory of our "how not to encourage innovation" discussion!
For cold fusion, another point to keep in mind is that scientific principles are not patentable. If cold fusion exists, the fact that it exists can not be patented. The inventor has to embody the reaction in something; a series of steps, a device, something. One can patent the furnace, but not the fire.
As for the present complaint of the "cold fusion" advocates (which I take as a call for more money) -- researchers compete for public and private money all the time. Human nature is that people are greedy, and when an invention has commercial value, it WILL be developed. The patent office has no ability to stifle commercial development, and it is not their business to encourage commercial development. The function of the PTO is to examine patents, and to grant them if the statutory requirements for patentability have been met.
People who "peddle" 200 MPG carburetors, free energy transformers, and cold fusion have some things in common: they are asking for money, and they won't (or can't) teach you how to make a commercially valuable one for yourself. Let me tell you, I have enough skill to make a carburetor. Just give me the drawings, and I will make it. I will sell copies at the local shop. If it works, people will buy them because it will save them money. The notion that big oil killed this is nuts. By their nature, patents MUST be public documents, or else people can't know they are infringing. So what if big oil "buys the patent?" Even absent any patent, an inventor is free to dedicate the invention to the public. Print the plans on your web site. If it's a patent, the PTO has already done this for you. Scammers don't, because it kills their scam. But what if big oil "buys the patent" and decides not to commercialize it? If the invention was commercially valuable and the patent taught how to practice the invention, big oil would have infringers. If there was a 200 MPG carburetor, there would be thousands of infringers. Big oil sues me, I say, "okay, I'll stop." End of issue (for me). No court. No trial. A million people do it? A million lawsuits? I don't think so. Kind of like enforcing that swing patent. What is the inventor going to do, scream at kids on the playground? Hahahahahahahaha!!
One of the products was guaranteed to give you more miles per gallon, and it sold for about $6/pint. There was a bunch of anecdotal reports that buyers actually got those improvements. There were a few red faces on the investors when I reported that the product was just kerosene. True, it has more BTUs/unit volume than gasoline, but that didn't account for the improvements in the anecdotal reports. I asked if they would change their driving habits in small ways like coasting up to red lights, avoiding rapid acceleration, etc., if they had just paid $48 per gallon of a miracle additive? Psychology at work! Pay money to get more MPG, and your driving habits will automatically improve! The seller was clever. It only claimed that it would improve the MPG, and that individual results would vary. Technically, that wasn't false since the heat content of kerosene is greater than that of gasoline. But the product was sold on hype, and the promise of something for next to nothing. Whether P.T. Barnum said it or not, "there's a sucker born every minute."
"Anticipation" has a narrow definition, as used in the examination process. It is not the dictionary definition that we use every day. The narrow definition is that the invention must be described in a single reference.
The combination of PTO "anticipation" and "obviousness" make up our everyday notion of an invention being "anticipated" by other, preceding inventions.
The combination of nuclear reactors, Closed cycle steam turbines and submarines -- is it "non-obvious?". . . . an inventive Navy guy named Hyman Rickover (maybe some fiction here, but it personalizes the scenario) put the existing elements together along with a few ideas of his own to come up with the nuclear submarine.
At first blush, I would tend to argue that the use of nuclear reactor to power the steam cycle on a submarine is obvious. But you raise a critical point, without emphasis. The "along with some ideas of his own" is often the inventive step that justifies the grant of a patent. In this case, perhaps it is technology that permits the shrinking of the reactor.
One test for obviousness is whether the "new" invention serves a long felt need. If it IS obvious, then why wasn't it done already?
Just theoretically speaking, is a patent examiner somehow precluded from using hindsight to determine obviousness as well as anticipation in judging the merit of an application?
Yes. The benefit of hindsight is not permitted. One must argue from the incentives to combine, use or otherwise innovate. There are many many interesting examples. I'll draw one from the PDR, where a certain dose of a certain medication was indicated for the treatment of ulcers. Then, somebody figured out that in massively larger doses, this medication stifled weight gain. Old medicine, new use - PATENTABLE! The argument was that the existing art taught away from the new use. The PDR said DO NOT exceed dose, etc.
Seems like there was a Commissioner of Patents in the 19th century who said something like "Everything useful has already been invented."
And patents were mighty hard to come by in that era. The pendulum swings both ways. As history is our guide, today's environment of "easy" patent grants will not endure.
I pity the poor examiners! Software and electronic inventions can be exceedingly complicated, and producing some of them even with the benefit of all the drawings, diagrams, and other related documentation can still require an immense amount of skill with the needed equipment and fundamentals involved. How difficult it must be for a patent examiner to even understand what the invention's about (except in the most cursory terms) much less be able to "make" one as a person of "ordinary skill in the art." Mousetraps and things you can take apart and see aren't too difficult to visualize, but nobody's ever seen an electron do anything, and software is a whole different world from that!
Projecting increased complexity forward, I'm afraid the courts are going to be more and more involved because any individual patent examiner would need years of full time attention to a single complex application to untangle the complexities in order to make an informed decision on novelty and usefulness. Maybe some of the "easy" patent grants are already an indication of an "let the courts settle it" tendency -- sort of a Pontius Pilate examination system.
It could be: prosecution of the application in the USPTO followed by rejection followed by an appeal wherein the government would have to prove the invention was not worthy of a patent. While a patent under the examination system has a presumption of validity, overturned rejections would soon destroy any presumption of invalidity due to rejections by examiners who are simply not humanly capable of handling extremely complex inventions.
That would be something like an expensive, round-a-bout registration system, I guess. One thing is for sure, things won't stay the same as they are now! (I can say that with confidence because they never have.)
Great discussion, and very informative! Thanks!
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