Cycles of Obviousness

By Holté, Ryan T.; Sichelman, Ted | Iowa Law Review, November 2019 | Go to article overview

Cycles of Obviousness


Holté, Ryan T., Sichelman, Ted, Iowa Law Review


I. Introduction

To be patentable, an invention must not only be novel, but also nonobvious.1 This standard, referred to by Judge Learned Hand as the most "fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts," has undergone wildly shifting, often cycling, meanings throughout the history of patent law.2 For instance, there was major shift in the standard for "inventiveness" from the earliest patent system, erected in the Venetian Republic in the early fifteenth century, to the British patent system, which was established in earnest in the sixteenth and seventeenth centuries.3

Specifically, beyond the usual "novelty" requirement-then, that the invention had not been previously known in the Venetian Republic-the "ingenuity" requirement appeared to require that if the invention would have arisen in the ordinary course of technological progress, it would not be patentable.4 Although the exact contours of the ingenuity doctrine are still unknown, what is known is that the doctrine was more robust than the early British system's standard for inventiveness, "substantial novelty."5 Unlike the Venetian ingenuity requirement, substantial novelty was in effect a much weaker bar, which only required substantial differences between the invention sought to be patented and already-known inventions.6

Scholars have contended that these differences likely arose because of the differing economic rationales for the patent system in the Venetian Republic and Britain.7 Namely, the Venetian system focused on generating innovations from inventors within its border (at least by the sixteenth century), while the British system was mainly one of "importation," providing incentives for merchants and others to import, market, and distribute inventive products into Britain.8

Recognizing the importance of patents, the framers of the U.S. Constitution adopted the IP Clause, which provides Congress the power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."9 Notably, the power is limited to the promotion of "progress" for "Inventors" and their "Discoveries," which implies that some innovation should be unpatentable despite being novel.10 In the words of Thomas Jefferson, "[a]s a member of the patent board for several years . . . I know well the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."11 As such, early patent doctrine in the United States was a hodgepodge of "inventiveness" rules, somewhat more rigorous than Britain's substantial novelty doctrine, but not a general doctrine like the Venetian ingenuity standard.12

Yet, in 1851, in Hotchkiss v. Greenwood,13 the Supreme Court adopted an "ingenuity" requirement that appeared to be quite similar to the "ingenuity" standard of the Venetian system.14 According to the Court, an invention must require "ingenuity or skill being necessary . . . [greater] than that of an ordinary mechanic acquainted with the business, [or] the patent is void."15 The result of Hotchkiss was that a patent should be granted only when there is significant ingenuity at the time of conception.16

Following Hotchkiss, the doctrine again underwent major shifts in meaning, often times being so hard to pin down as resulting in an "I-know-itwhen- I-see-it" analysis.17 After extensive lobbying to Congress, Giles Rich and Pasquale Federico, co-authors of much of the 1952 Patent Act, effectively replaced the invention standard with the so-called requirement of nonobviousness,18 now codified in § 103 of the Patent Act.19 Under § 103 in effect in 1952, a patent claim was rejected 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. …

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