Credit Where Due

I’ve been beating up on PFF a lot lately, so I think I ought to give credit where credit is due: this May amicus brief urging the Supreme Court to grant cert in KSR v. Teleflex in order to re-consider the patent obviousness issue, is excellent. They do a fantastic job of explaining the dangers of granting patents too easily. I found this passage particularly entertaining:

The defects of such a doctrine may well be illustrated by the notorious Patent 6,368,227, “Method of Swinging on a Swing,” obtained by a five-year old whose parent happened to be a patent lawyer. It is also called the “sideways swinging” patent, because that is what it covers–the idea that a swing can be made to move sideways as well as back and forth by pulling on the chains in a particular way.

The Patent Commissioner ordered a re-examination of the ‘227 patent on May 21, 2002,17 and ultimately PTO found sufficient prior art in patents granted in 1939, 1943, and 1969 to result in its invalidation. But the case ought never to have gotten so far; scarce patent-examiner hours and public resources had to be expended to officially recognize the obvious. The difficulty the office faced resulted from the fact that the Federal Circuit’s standard forbade the examiners to take notice of what, literally, any child would know. As a newspaper report on the matter said, “The patent office is searching for documented proof that children have always powered their swings by pulling on the chains. Then, and only then, will it kill the patent as quietly as possible.”

Had USPTO been unable to find written proof of something known to all, then under the Federal Circuit test the patent would have stood. “[D]eficiencies of the cited references cannot be remedied by the Board’s general conclu sions about what is ‘basic knowledge’or ‘common sense.'” “‘Common knowledge and common sense,’even if assumed to derive from the agency’s expertise, do not substitute for authority when the law requires authority.”

In the swing patent case, ultimately, the PTO reached the sensible result. But the Federal Circuit decisions present an obstacle to the office’s doing so in a significant number of cases. For example, in 1999, the Federal Circuit reversed the PTO’s rejection of a patent application for orange trash bags with jack-o-lantern faces. A prior art search had turned up instructions for a children’s craft project involving the drawing of pumpkin faces on large orange bags. But this was not sufficient, because the instructions referred to paper bags, not to trash bags.

All of the concerns they raise–that people don’t always publish obvious ideas, that spurious patents create a “landmine” for genuine innovators, that mere combinations of well-known elements don’t constitute a new invention–apply with a vengeance to software. It’s possible (I’ll have to do some more reading and thinking before I make up my mind) that revising the obviousness standard as they propose would solve the problems with software patents. Regardless, PFF’s proposals for revising the obviousness standard deserve a serious look by Congresscritters as they ponder the grim possibility of a future without Blackberries.

Update: I’m also curious what DeLong had in mind when he mentioned software patents in the post I criticized last week. Having read his brief, it’s clear he does understand the dangers of granting patents too freely, which makes me wonder why he singled out the “no software patents” view for criticism. The criticisms of software patents that I’ve seen, at least, rest heavily on the contention that software “inventions” are all almost always obvious to a skilled practitioner of software development. I imagine he would at least agree with that critique, if not with the proposed remedy.

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