Subject: Re: "incentive void" (was Re: A different patent covenant...)
From: Thomas Lord <>
Date: Wed, 04 Oct 2006 06:52:18 -0700

Stephen, I think you misunderstand the patent system on two points: wrote:
> Asking the right questions is almost always the hard part.  IMO, doing
> so before anybody else does is what deserves the patent, not the
> comparatively straightforward work that goes into answering them.
> Doing so years before anybody else was going to even more so, but
> unfortunately predicting futures that no longer *can* happen is even
> harder than predicting futures that *will* happen, so we can't use
> that as a criterion.  We're left with "first-past-the-post".

That's partly true.   It's a good thing to say to a hacker who thinks
"Well, if it isn't a breakthrough worthy of Einstein it shouldn't be
patented," but you've left out the question of obviousness.

Prior to 1952 the courts already applied an obviousness test.  In
1952 it was written in to law.    Prior to the creation of the Federal
Circuit the test was something like "Would it be surprising for a
skilled practitioner, at the time of the invention and given all prior
art, reasonable time, and a reasonable budget to come up with *this*
idea?"    The Federal Circuit, pondering the problem of retrospective
obviousness, phrased the question a little bit differently,
roughly: "Does teaching prior to the time of invention suggest
to a then-skilled-practitioner that earlier elements might be usefully
combined in just this way?"  (The validity of the Federal Circuit's \
new test goes before the Supreme Court this session.)

The point is that, yes, "obvious" is really a test, no it doesn't
mean that only Einstein gets patents, yes, there is more to it than
just being the first to ask the right question.

My view is that if you *really* need 20 years of protection
and you *are not* willing to put a price tag on putting the
invention into the public domain that "reasonable time"
and "reasonable public" (or, if you prefer, the degree of
directness of suggestions in earlier teaching) should be
a very high bar.   Conversely, if a patent applicant is willing
to say "7 years or protection or $1M" or place similar
limits, now we have a voluntary declaration that strongly hints at
what "reasonable time" and "reasonable budget" (or
"degree of directness of suggestions") should be when
deciding obviousness.

Wouldn't it be nice if an inventor could say to the PTO
that, "No, this isn't like inventing AC power generation and
transmission and it's not like inventing the telephone but
it was hard, valuable work and still deserves *some* protection."

> [....]  That is the biggest breakage in
> the current patent system: the fact that only patents are considered
> prior art.  

That's simply false.   I think you mean that earlier patents are given
what you think is disproportionate weight in the review of applications
by the PTO but that isn't the same thing.

> That's a structural problem, that we expect patent examiners to be
> experts in technology rather than arbitrators among competing
> experts.  Adversarial procedures have been proposed for a long time,
> but few patenters like them for obvious reasons, and patent opponents
> are chasing the will-o-the-wisp of abolition, so there's too little
> grass-roots support for it to overcome the status quo.

Voluntarism to the rescue?   The patent review initiative that International
Characters plans to use (and that some big companies have also signed up 
doesn't require new legislation -- only voluntary, early disclosure.

There is at least some non-trivial grass-roots support.   "Too little?" 
to be answered but don't go pounding the nails into their coffin just yet.