Wed, 29 Aug 2018

Supreme Court Asked To Correct Appeals Court (Again) And Explain That Patentable Ideas Need To Be New
Furnished content.


In order for something to be patentable subject matter, it has to meet a few criteria, listed out in the Patent Act. It needs to be a "useful process, machine, manufacture, or composition of matter" and it needs to be "non-obvious" to someone "having ordinary skill in the art." But, perhaps most importantly it needs to be a new invention. You can't patent something someone else already invented. That's why prior art is so important.Already, the US Patent Office is notoriously bad at finding prior art, which has been a big complaint here at Techdirt for over a decade. Part of this is that they limit what they'll even look at as prior art, unless information is put directly in front of their faces by those trying to invalidate bad patents. Generally, most of the prior art that patent examiners look at consisted of... earlier patents and scientific journals. And that's not nearly enough for a whole variety of reasons. But, now the Federal Circuit has suggested that even earlier patent applications may not really count as prior art.EFF and R Street teamed up to file an amicus brief with the Supreme Court asking it to reverse the Federal Circuit (something the court has done over and over and over and over and over again in the last dozen or so years).At issue was an attempt to invalidate a patent showing prior art in an earlier patent application. Seems like this should be a slam dunk. There's the patent and an earlier application showing the prior art. Therefore, not novel and not patent eligible. But the courts decided to get nitpicky, and argued that because the prior art in question wasn't directly in the "claims" of the patent, but in the description, it somehow didn't count. The brief explains why this is ridiculous:

First, patents are granted to encourage disclosure of new inventions. Granting a patent on an invention already disclosed to the public works the opposite effect, closing off knowledge that was previously free to use.Second, Ariosa's rule will render the criteria for patentability unstable over time, even as applied to a single patent, because it renders the prior art status of a patent application dependent on the contents of applications filed later. Under the Federal Circuit's rule, then, what is prior art one day could evaporate the next, or vice versa.Third, applicants will have even less motivation to draft narrow claims, which give the public greater notice and certainty as to a patent's scope. Drafting broad claims will now not only allow them to ensnare more infringers, but will also be necessary to ensure their submission prevents the allowance of claims covering all it teaches.Fourth, examiners will have to choose between allowing overbroad claims to issue and requiring amendments that narrow the claims, but in so doing, shrink the pool of prior art available to the examiner in future patent applications. This potentially affects incentives both for their substantive work, in terms of whether to allow or reject patent claims, and for their procedural incentives to complete examination more or less quickly.

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