Secondary Considerations: A Structured Framework for Patent Analysis

By Darrow, Jonathan J. | Albany Law Review, Fall 2010 | Go to article overview

Secondary Considerations: A Structured Framework for Patent Analysis


Darrow, Jonathan J., Albany Law Review


The most serious weakness in the present patent system is the lack of a uniform test or standard for determining whether the particular contribution of an inventor merits the award of the patent grant.

... The present confusion threatens the usefulness of the whole patent system and calls for an immediate and effective remedy.--National Patent Planning Commission, 1943 (1)

I. INTRODUCTION

While the opening quotation was penned by the National Patent Planning Commission in 1943, it could just as well describe the confusion that pervades patentability determinations today. Despite the periodic interventions of Congress and the courts, the framework for evaluating obviousness--patents cannot be granted on inventions that are obvious--is surprisingly skeletal and undeveloped. (2) Such a paucity of guidance is not for want of foresight: decades ago the drafters of the modern patent standard expressly suggested that "at a later time ... some criteria ... [could] be worked out" to further define patentability, but Congress has never acted upon this suggestion. (3)

The continuing absence of a detailed, structured framework for determining patentability is not only unnecessary, but also anomalous within intellectual property jurisprudence. Copyright law fair use determinations are guided by [section] 107, which provides four non-exclusive factors as well as illustrative examples. (4) Trademark law relies on the eight Polaroid (5) factors to guide the infringement analysis. In contrast, patent law obviousness determinations must be made on the scant language of [section] 103, which provides neither examples nor useful factors. (6) Graham v. John Deere Co. of Kansas City, (7) generally cited as the seminal modern Supreme Court obviousness decision, does little more than rearrange and restate the language of [section] 103. (8)

Yet, within the Graham decision lie doctrinal seeds which, if cultivated, could potentially grow into a robust framework to guide the obviousness determination. In addition to restating the language of [section] 103, Graham promisingly added: "Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." (9)

Unfortunately, since Graham the doctrine of secondary considerations has been neither deliberately developed nor evenly applied. No judicial decision or secondary source has established itself as an accepted model for subsequent courts to follow. Acting within this statutory and judicial void, most courts have haphazardly applied whatever secondary considerations parties have troubled themselves to assert, with predictably erratic results. (10) This paper endeavors to bring together the divergent strands of the secondary considerations doctrine into a single, robust framework that might be further developed by future commentators and courts.

Part II introduces the secondary considerations doctrine, illustrates the extent to which the doctrine is underdeveloped and inconsistently applied, and explains how congressional and judicial developments, including KSR International Co. v. Teleflex Inc., (11) have accelerated the need for the adoption of a uniform and well-developed secondary considerations framework. Part III responds to that need by proposing a comprehensive model framework for the utilization of secondary considerations, including a discussion of five under-acknowledged or newly proposed secondary considerations. Part IV explores the curiously voluminous criticism of secondary considerations and reconciles this criticism with broad doctrinal acceptance by judges and others for more than 150 years. Through the analysis, it becomes apparent that secondary considerations cannot be rigidly cabined within the [section] 103 obviousness determination. …

The rest of this article is only available to active members of Questia

Sign up now for a free, 1-day trial and receive full access to:

  • Questia's entire collection
  • Automatic bibliography creation
  • More helpful research tools like notes, citations, and highlights
  • A full archive of books and articles related to this one
  • Ad-free environment

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items

Items saved from this article

This article has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this article

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited article

Secondary Considerations: A Structured Framework for Patent Analysis
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Help
Full screen

matching results for page

    Questia reader help

    How to highlight and cite specific passages

    1. Click or tap the first word you want to select.
    2. Click or tap the last word you want to select, and you’ll see everything in between get selected.
    3. You’ll then get a menu of options like creating a highlight or a citation from that passage of text.

    OK, got it!

    Cited passage

    Style
    Citations are available only to our active members.
    Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

    1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

    Cited passage

    Thanks for trying Questia!

    Please continue trying out our research tools, but please note, full functionality is available only to our active members.

    Your work will be lost once you leave this Web page.

    For full access in an ad-free environment, sign up now for a FREE, 1-day trial.

    Already a member? Log in now.