The layers of obviousness in patent law.

• Author: Fromer, Jeanne C.

TABLE OF CONTENTS I. INTRODUCTION II. THE COURTS' OBJECT OF INQUIRY A. The Contours of the Nonobviousness Doctrine B. The Courts' Unsettled Approach III. THE LAYERS OF OBVIOUSNESS A. Conception and Reduction to Practice B. Application of a Layered Inquiry IV. IMPLICATIONS FOR PATENTABILITY A. Software B. Biotechnology C. Mechanical and Other Traditional Inventions V. CONCLUSION I. INTRODUCTION

Patent law has been missing the obvious. Tasked with advancing innovation by awarding an exclusive right to make or use certain inventions in exchange for their creation and disclosure to the public, (1) patent law has installed certain threshold conditions as gatekeepers to ensure that the valuable patent right is granted only to worthy inventions. When it began to appear that the traditional gatekeepers of novelty (2) and utility (3) were insufficient to prevent patents from being awarded to trifling inventions, a new condition of patentability was enacted, that of the invention's nonobviousness. (4) Scholars have described nonobviousness as the "ultimate condition of patentability" (5) because it requires that an invention represent a significant technological or scientific breakthrough compared to what is already known or doable. However, until now, and despite considerable recent attention to nonobviousness by the Supreme Court and scholars, a vital component of every obviousness inquiry has neither been satisfactorily addressed nor resolved: the object of the inquiry.

In what has been called "the most important patent case of the last 20 years, and perhaps since the passage of the 1952 Patent Act," (6) the Supreme Court in 2007 clarified the contours of nonobviousness in KSR International Co. v. Teleflex Inc. (7) In establishing the framework to answer "whether a patent claiming the combination of elements of prior art is obvious," (8) the Court emphasized that a proper analysis of nonobviousness must be "expansive and flexible." (9) KSR thus emphasized the need to articulate the nonobviousness criterion with enough flexibility to guarantee that patents issue only to inventions constituting a sufficient advance in the state of the art, thereby encouraging--rather than stifling--innovation. (10)

Despite this overarching purpose highlighted in KSR, neither courts nor scholars have analyzed or settled on the obviousness inquiry's object, that is, the thing which must be nonobvious. Some courts have implied that the object that must be nonobvious is the concept of the invention (the complete idea as articulated in the patent's claims). (11) Other courts have hinted that it might be some combination of the concept and the reduction to practice of a working model. (12) As troubling as these irreconcilable judicial intimations are, they have been made by courts without any reflective analysis. And both before and in the wake of the sea change wrought by KSR, scholars have instead been focusing on other issues, (13) such as concern about hindsight bias in evaluating the obviousness of an invention after it already exists, (14) whether presumptions ought to be employed in determining obviousness, (15) the economic ramifications of the obviousness doctrine, (16) and the general shape of the obviousness inquiry. (17) It is essential to the coherence and health of the nonobviousness doctrine that the object of the inquiry be clearly and properly identified. The nonobviousness criterion, like the patent system as a whole, aims to offer an incentive to create those inventions deemed to be beneficial to society that otherwise would not exist. (18) When the wrong object is scrutinized for nonobviousness, patents are under- or over-issued. Crucial inventions may be wrongly denied patent protection because their nonobvious aspects are overlooked, just as inconsequential inventions may receive protection in spite of obvious aspects that were similarly not evaluated. Therefore, the particular calibration the patent system aims to achieve is destabilized, leading to an over-promotion of insignificant innovation, an under-promotion of important innovation, or both.

This Article suggests that the correct object to be analyzed for obviousness is the union of two different aspects of invention important to patent law: (1) the concept of the invention; and (2) the reduction to practice of a working model. Requiring an assessment of obviousness at each of these layers is more faithful to the nonobviousness doctrine and the policies underlying patent law than the current state of doctrinal confusion. Application of this layered inquiry indicates that obviousness is currently assessed improperly, particularly with regard to newer technologies--principally software and biotechnology--where the reduction to practice of a working model is inherently complex even once the inventive concept is fixed in the inventor's mind. This analysis suggests that patents may be under-issued in these fields, thereby failing to encourage innovation. A layered inquiry would advance the goals set out in KSR by properly and flexibly readjusting the nonobviousness doctrine to authorize patentability only for inventions that are significant forward leaps in the state of the art.

Because the proper object of inquiry is not addressed, the patent system does not, in the context of nonobviousness, assess the relative values to innovation of conception and reduction to practice. This issue is a crucial one, and this Article's exploration of the layers of invention through the lens of obviousness has wide-reaching implications in patent law well beyond obviousness. Many areas of patent law elevate the inventive role of conception over that of actual reduction to practice, be it with regard to what must be accomplished to secure a patent, (19) what must be contributed to an invention to be recognized as a joint inventor, (20) or the on-sale bar. (21) In other contexts in patent law, such as the availability of injunctive relief for patent infringement, however, the relative importance of reduction to practice is acknowledged. (22) This Article suggests that it is due time to question whether reduction to practice deserves an elevated role in patent law generally by demonstrating that it can be just as important as conception in the context of obviousness.

Part II examines the contours and motivating factors of the nonobviousness doctrine and then describes and analyzes the courts' unsettled approach to the object of the obviousness inquiry. Part III proposes that the courts must settle on an object of inquiry and recommends a layered approach looking to concept and reduction to practice. Part IV shows how this refinement of the obviousness doctrine would improve the accuracy of obviousness determinations in a variety of technological areas. This Article concludes with some thoughts on the broader implications of a layered understanding of invention.

2. THE COURTS' OBJECT OF INQUIRY

   The nonobviousness doctrine seeks to ensure that patents are granted only for technologically significant advances to foster the patent system's goal of stimulating useful innovation. Section A explores the development of nonobviousness as a condition for patentability and how the doctrine promotes underlying policies. Section B sets out the unresolved analysis as to the proper object of the obviousness inquiry and identifies a doctrinal state of confusion in need of resolution.

   1. The Contours of the Nonobviousness Doctrine

      Before 1952, the statutory requirements for a patent were only that an applicant demonstrate that his invention was novel, (23) useful, (24) and adequately disclosed. (25) Over time, however, the courts grafted on an additional requirement of showing that there was sufficient inventiveness beyond mere novelty. (26) In 1850, the Supreme Court prominently held in Hotchkiss v. Greenwood (27) that there could be no patentable invention unless the novel invention also possessed a sufficient "degree of skill and ingenuity." (28) This formulation led to almost 100 years of confusion, even at the Supreme Court, as to whether a patentable invention had to "reveal the flash of creative genius, not merely the skill of the calling," (29) merely "acquir[e] new functions and useful properties," (30) or something else altogether. (31)

      Confronted by this doctrinal confusion, (32) in 1952, Congress redirected all of these tests into a requirement that inventions be nonobvious to be patentable. Section 103 of the Patent Act states:

      [A patent] may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. (33) This section effectively overruled the flash-of-creative-genius test previously enunciated by the Supreme Court, stating that "[p]atentability shall not be negatived by the manner in which the invention was made." (34) That is, obviousness does not concern how quick or laborious it was to invent but instead how straightforward the invention was in light of the prior art.

      It is thought that granting patents only for technologically significant --i.e., nonobvious--advances is important to furthering the patent system's goal of stimulating useful innovation in at least two ways. First, without a nonobviousness requirement, patents may be granted to inventions that are technologically trivial in light of the existing store of knowledge. Such inventions may not be economically trivial, however, and a patent grant in these cases will raise the costs of using the invention and of follow-up innovation to the benefit of the person who was fortuitously--rather than through a significant inventive leap--the first to generate the idea. (35) These grants undermine innovation associated with such inventions. An example is George B. Selden's 1895 patent on the...