Ordinary creativity in patent law: the artist within the scientist.

• Author: Landers, Amy L.

1. INTRODUCTION II. CREATIVITY'S RELEVANCE TO PATENT LAW III. ORDINARY SKILL IN THE ART: HISTORY AND ORIGIN A. The Person of Ordinary Skill as a Central Figure in Patent Law B. The Person of Ordinary Skill at the Inception of the U.S. Patent System C. The Hotchkiss Nonobviousness Standard D. The Post-Hotchkiss Person of Ordinary Skill E. The 1952 Amendments to the Patent Act: Graham v. John Deere F. Post-Graham Decision: In re Winslow G. The Federal Circuit's PHOSITA as a Conventional Thinker H. The Federal Circuit's Teaching-Suggestion- Motivation Test IV. KSR: EXPANDING THE PHOSITA'S CAPABILITIES A. Post-KSR: Scientific Creativity in the Courts B. Post-KSR Nonobviousness: Complex Technologies V. TOWARD AN UNDERSTANDING OF SCIENTIFIC CREATIVITY A. How Scientists Think: The Psychology of Science B. The Inventor as Genius C. Scientific Creativity as the Exercise of Logic D. Creativity as a Break from the Past 1. Insight and Creativity 2. Creativity and Chance: Invention as a Darwinian Process 3. Creativity as Cognition E. The Socio-Cultural Context: Invention as a Social Process 1. When Lightning Strikes Twice 2. Simultaneous Inventions: Foundational Theories 3. Placing Multiples in Context 4. Scientific Advancement and Social Interaction VI. MEANINGFUL IMPLEMENTATION OF KSR: ORDINARY CREATIVITY A. KSR and Ordinary Creativity B. Practical Implications of Creativity Research on the Nonobviousness Standard C. Larger Implications for the Patent System VII. CONCLUSION But what is the state of mind that is most propitious to the act of creation? I asked. Can one come by any notion of the state that furthers and makes possible that strange activity?

   --Virginia Woolf, A ROOM OF ONE'S OWN

1. INTRODUCTION

   The creation of new knowledge is perhaps the most complex human endeavor. The origins of a scientific advancement require one to move from a state of existing knowledge to create that which once seemed impossible. Such extraordinary thoughts are critical to intellectual and economic growth. The patent system is intended to encourage the creation of such knowledge. Despite this widely recognized goal, the field has not meaningfully engaged in exploring foundational concepts about scientific creativity.

   The U.S. Supreme Court's decision in KSR International Co. v. Teleflex Inc. represents patent law's first effort to consider the origin of scientific thought. (1) As background, KSR considered nonobviousness, a patentability requirement that relies on the decision maker's conception of the problem-solving capabilities of the person of ordinary skill in the art. (2) In brief, the nonobviousness requirement holds that, if a hypothetical person skilled in the relevant domain could re-create the invention as a predictable variation of the state of the art, the patent claim is obvious and not worthy of patent protection. (3) Loosely analogous to tort law's reasonable person, the person of ordinary skill had formerly been defined as one who applies domain-specific principles mechanistically. The KSR Court perceptibly shifted this definition, stating that "[a] person of ordinary skill is a person of ordinary creativity, not an automaton." (4) The KSR Court's choice of the phrase "ordinary creativity" is intriguing, particularly because creativity as a human attribute is notoriously difficult to define. (5)

   Infusing a hypothetical scientist or engineer with "ordinary creativity" interjects a phrase that lacks any source in either statutory or decisional law. Indeed, patent law has never attempted to define creativity in any context. on one hand, KSR's "ordinary creativity" statement brings the hypothetical person of ordinary skill in the art closer to the mindset of those working in particular disciplines. on the other hand, the phrase's indeterminacy presents a challenge. Whether one is exercising ordinary creativity, or a patentable level of creativity, is a new question in patent law and rests, to some degree, on an understanding about how scientists engage in breakthrough thinking.

   The ordinary creativity standard was one component of KSR's effort to ensure flexibility in assessing patentability. Because the term lacks an established definition, this work will consider conceptions of creativity from sources outside the law that have considered the phenomenon. Based on this research, an articulated understanding of ordinary creativity can be formulated by considering the problem type, the nature of the mental shift required to solve the problem and the social context in which the idea is generated can be formulated.

   Beyond the nonobviousness standard, exploring the human act of invention has vital implications for intellectual property law. Fields examining the nature of the creative act agree, in large measure, that there are common attributes that exist across disciplines. Stated another way, the mental activity and societal framework that can lead to breakthroughs may not be materially different for artists and scientists. Probing the fundamental question of how we create illuminates a greater understanding of the intellectual property system, which is intended to foster creative thought and expression. In its current form, patent and copyright law's conception of creativity appears somewhat stilted against the rich background of interdisciplinary research that has studied the topic.

   Part II considers the relevance of creativity in the legal sphere. Part III traces the history and doctrine of the person of ordinary skill to the manner in which KSR is implemented today. Part IV examines creativity research and literature, drawing on the fields of psychology, philosophy, history and sociology. Part V unites principles of law and interdisciplinary creativity research to demonstrate its application to the nonobviousness standard and the patent system more generally.

2. CREATIVITY'S RELEVANCE TO PATENT LAW

   over the past few centuries, patent law has developed rich and varied doctrines. The overwhelming majority of patent theory examines invention from perspectives that encompass the system as a whole. Law and economics offers theoretical perspectives that elucidate the operation of existing laws and animate proposals for change. Additionally, the success of the patent system has been increasingly evaluated from the perspective of firms. (6) Indeed, the usefulness of the system is now examined according to the output of entities; (7) the importance of patent portfolio management has been recognized. (8)

   Although these modes of examining the patent system are valuable, it is indisputable that patent law's existence centers on the inventive act of an individual. (9) As economist Paul Romer recognized, "Technological advance comes from things that people do." (10) Creativity represents the constitutional, theoretical and doctrinal heart of patent law. It is difficult to conceive how a legal system can foster creativity absent some understanding of what creativity is. Scientists and engineers perform the work that forms the bulk of the subject matter of the discipline. Understanding the process of invention assists, or at a minimum refrains from impeding, the incentive structure that the patent system was intended to create. (11) Further, examining how patentable subject matter is created has the potential to illuminate whether the patent incentive structure is appropriately balanced.

   Patent law invites consideration of the question of how new ideas are created. (12) The formulation and development of legal rules has the potential to affect real-world behaviors. (13) Decisions made within this legal system are capable of promoting particular behaviors. (14) Judgments underlying patent decisions should be cognizant of the inventive act as part of the calculus. Proceeding without pausing to inspect scientific creativity may result in the formulation of rules that do not optimally foster the precise type of activity that the system was intended to promote. At present, patent decision making has not formed a cohesive picture of scientific creativity or integrated meaningful reflection about the work performed by inventors into law.

   For nonobviousness, the central issue is whether the claim states a sufficient advance over a solution that a person of ordinary skill would provide. If this hypothetical person can re-create the invention by making a predictable choice--that is, where successful results are readily apparent to such a person given the existing state of knowledge--such a choice does not support any need for a patent. on the other hand, the law recognizes that a patent is a proper incentive for advances that are unlikely to arise from the mind of the ordinarily skilled worker. Thus, nonobvious inventions warrant granting the right. To take a simplified example, a carpenter who assembles a chair using a nail rather than a screw, at a time when the woodworking arts recognize that either will predictably work, has employed an obvious solution, and no patent right is justified. On the other hand, Edison's light bulb invention solved a longstanding problem with a solution that had eluded other researchers for years and represented a nonobvious solution for which a patent was warranted. To separate the patentable from the unpatentable, the person of ordinary skill construct compels consideration of facts underlying a "sufficiently creative" versus an "ordinarily creative" choice. This cannot be performed without understanding creativity.

   Examining creativity is compelled by the Supreme Court's opinion in KSR, which explicitly interjects "ordinary creativity" and "common sense" into the attributes of the person of ordinary skill in the art. (15) Likewise, the 2006 DyStar decision by the U.S. Court of Appeals for the Federal Circuit began to introduce flexibility, stating that "[p]ersons of varying degrees of skill not only possess varying bases of knowledge, they also possess varying levels of imagination and ingenuity in...