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)
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. …