5th Anniversary KSR: Is Section 103 Unconstitutional?

By Dale B. Halling
April 30, 2012

The 5th anniversary of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision is on April 30th.  This is a good time to review the implications of this case, but an even better time to look into the origins and constitutionality of the Non-obviousness requirement.  You might object that the jurisprudence of the non-obviousness requirement is so well established that nothing can be learned from this sort of analysis.  I disagree.  Patent law is under assault by the Supreme Court, the media, the ‘information wants to be free’ crowd, multinational corporations, and the economics profession.  If we attempt to explain patent law based on the decisions of people who never passed the patent bar, never wrote a patent, never prosecuted a patent, and do not have a technical background, we are doomed.  We need to define patent law as a natural law/right based on certain fundamental truths.  This is the only way to get the non-patent attorney judge or the general public to understand patent law and understand that it represents justice.  It is also why many of my comments and posts appear repetitive.  For a list of some of the fundamental principles of patent law please see Foundations of Patent Law.

Holding in KSR

The holding in KSR was confused, but is generally accepted as stating that the teaching, suggestion, motivation rule (TSM rule) is not the only rule for determining if an invention is obvious.  What other standards the courts and the PTO should use was somewhat nebulous, but clearly the three prong test of Graham v. John Deere Co., 383 U.S. 1 (1966) is still valid.  In addition, the Supreme Court seemed to adopt the ‘I know it when I see it’ standard to obviousness.  The decision overturned the relatively objective TSM test for a subjective non-test.

Practical Results of KSR

I am not a litigator, but my impression is that the KSR decision has increased the uncertainty of the obviousness decision at trial and increased the complexity of presenting and defending obviousness.  Despite this, I think that the CAFC has put KSR in a fairly small box (Eric Guttag could probably give a multi-hour presentation on this point).

From a prosecution point of view, KSR has had less impact than David Kappos taking over from Jon Dudas and John Doll.  The Jons’ unchecked, rogue policy of ‘rejection equals quality’ almost shut down the patent office for all but the largest multinational companies.

KSR requires patent prosecutors to state the benefits of their technology in more detail in the specification, write more of the specification into the claims, and file more replies/appeals.  Certain areas of technology are still persona non grata at the PTO.  For instance, computer technology directed to financial transactions, high level computer programs, and so called business methods.

History of Non-Obviousness

The generally agreed beginning of section 103 is the Supreme Court case of Hotchkiss v. Greenwood52 U.S. (11 How.) 248 (1851).  This case first articulated the idea that an improvement that was the subject of a patent had to be more than “the work of the skilful mechanic.”  The case involved making door and other knobs of all kinds of clay used in pottery, and of porcelain. The Supreme Court decision made the common error of pointing out that each of the elements in the invention were individually known.

But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

By the way, this is one of those fundamental truths of patent law.

Every invention in the history of the world is a combination of known elements/steps

The reason for this is Conservation of Matter and Energy – you cannot create something from nothing.  This idea is implicit in 35 USC 112, which requires the inventor explain their invention so that one skilled in the art can practice the invention.

Back to Hotchkiss, the ruling states the well known idea that for an invention to be patentable, it must be more than just the work of a skillful mechanic.  Today this is stated as the invention must have taken more than just the work of “one skilled in the art.”  For a very interesting discussion of the history of the nonobviousness requirement see Novelty and the Hotchkiss Standard.

Note that Justice Woodberry ‘s dissent in the Hotchkiss case argued that the statute only required the invention be new and did not say anything about the work of a skillful mechanic.  Was there any justification in the statute for the Supreme Court’s ruling in Hotchkiss?  The 1790 Patent Act stated that the Patent Board was only to grant a patent if the invention was “sufficiently useful and important.”  See Patent Act of 1970.  The patent statute of 1836 also contained a clause that said the Patent Office could deny a patent to an invention the Commissioner deemed to be “insufficiently useful and important.” However, it appears that this part of the statute was almost never invoked.  Either way, the statute did not give this power to the Supreme Court or any other Court.  As a result, Hotchkiss was a clear case of judicial activism.  The Court just made up a requirement that was not in the statute and could not be considered just an interpretation of the law.

Why the Non-obviousness Standard is Unworkable

Remember when I said words have meaning? Let’s examine the meaning of the words NOVEL and OBViOUS in the context of statute.  The key portion of the non-obviousness statute states:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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.  (underlining added)

Based on the wording and the fact that section 103 was added later than the novelty requirement, logically 103 is intended to be an additional requirement above the novelty requirement.  According to Dictionary.com, novelty means “of a new kind; different from anything seen or known before: a novel idea.”  The non-obviousness requirement logically requires something more than an invention be novel.  According to Dictionary.com, obvious means, “easily seen, recognized, or understood; open to view or knowledge; evident.”  It is axiomatic to patent law that whether an invention is non-obvious, has to be determined at the time the invention was made or in other words before the invention was known.  How can an invention that has not been created,  be easily seen, recognized, or understood; open to view or knowledge or evident (obvious)?  Clearly, an invention that has not been made cannot be open to view and how can you have knowledge of something that does not yet exist?  Evident means, according to Dictionary.com, “plain or clear to the sight or understanding.”  Is it any wonder that non-patent attorney judges cannot make sense of Patent Law?  The law is contradictory on its face.

Is Section 103 Constitutional?

The Constitution states at Article I, Section 8, Clause 8:

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.

The drafters of the Constitution only defined ONE RIGHT in the Constitution and that was the Right of inventors and authors.  When the founders talked about ‘the right’ they meant a Natural Right.  A natural right is a right that exists, whether government exists or not – of course enforcing that right is another story, which is why governments are instituted among men, see Declaration of Independence.

If the Constitution says that inventors have a right in their discoveries, the first question should be: what is an invention?  Some people have suggested that an ‘invention’ can be anything that Congress decides it is.  But this is clearly nonsense.  If that were the case, then Constitution would be meaningless.  This is not ‘Alice in Wonderland,’ words have meaning.  So what is an invention?  Inventions belong to the genus or class of human creations.  However, not all human creations are inventions.  For instance, a painting or a musical score is a human creation, but it is not an invention.  Reproduction or making another copy of something is not invention and not a creation in the sense used herein.

We need to differentiate inventions from other human creations.  Inventions belong to the species of human creations that have an objective result.  What do I mean by an objective result?  Examples will probably be the best way to examine this.  A painting is a human creation, but it is not an invention.  A painting has a subjective result – namely the viewer’s reaction.  Logically, all human creations either have an objective or a subjective result or goal, there is no other choice.  This point can appear confusing with respect to mathematics.  Does a Fourier Transform have an objective result?  For patent attorneys, the requirement is commonly referred to as the invention must be ‘useful’ under 101.  The synthesis of a new chemical is not patentable if the inventor cannot describe a practical use (industrial applicability) for the chemical.  The same is true of mathematical formulas.  The definition of an invention requires that it be useful or have, what I call, an objective result, which explains the basis of 101.

An invention is a human creation, which means that a human was the creator of the invention.  That person is called the inventor.  Because we are discussing creation, not reproduction, to be the inventor you have to be first.  That is where the Novelty (102) requirement comes from.  There is nothing in the definition of Invention that implies any sort of non-obviousness requirement or ‘more than a skilled mechanic.’  Neither the Supreme Court nor Congress have the power to ignore the Constitution, which requires that The Exclusive Rights of inventors be secured.  Therefore, 35 USC 103 is unconstitutional.


The origin of Section 103 was a Supreme Court case that failed to follow the law.  The more than a skilled mechanic grew into the nonsense of requiring a flash of genius.  The codification of this bit of judicial activism results in the non-obviousness requirement for patents.  This terminology was double speak:  requiring something that was unknown to be apparent.  The definition of invention does not include any sort of non-obviousness requirement and the Constitution requires Congress and the Courts to uphold the exclusive rights of inventors.  As a result, section 103 is unconstitutional.

Words have meanings and judicial activism has consequences.  The non-obviousness standard has inhibited the creation and introduction of new technologies and therefore made us all poorer.  As just one example of this see Robert Kerns, inventor of the intermittent windshield wiper.  Because of the non-obviousness standard, automobile manufacturers were able to steal his invention and drag out court cases for years.  Robert Kerns had a Phd. in electrical engineering and was an intelligence officer in the armed forces as a teenager.  Instead of inventing or teaching, Dr. Kearns spent his life litigating against an auto industry that felt no shame in stealing his invention.  Another tragic example is that of Edwin Armstrong, inventor of the superheterodyne receiver and FM.  RCA’s theft of FM radio destroyed this genius to the determent of all mankind.

Australia seems to have figured this out and now has a patent, called the innovation patent that only requires novelty.

Invention Theft is Worse Than Murder

Galileo Galilei

The Author

Dale B. Halling

Dale B. Halling

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 126 Comments comments.

  1. sad April 30, 2012 12:11 pm

    The IP Clause is not a natural right. It’s one of Congress’s enumerated powers. Congress doesn’t have to exercise it. And it doesn’t have to exercise it to its constitutional limit. Section 103 is, dare I say it, obviously constitutional.

  2. step back April 30, 2012 12:22 pm

    It is suggested that you strike the second “is” in your title.
    Unless, of course, your definition for what “is” is differs from the ordinary and customary one. 😉

  3. step back April 30, 2012 12:25 pm

    Sorry, even I don’t pay attention to the fine print details.
    I meant …. Dale, It is suggested that you …

  4. EG April 30, 2012 12:32 pm


    I don’t think I would go so far as to say that the requirement of “non-obviousness” under 35 USC 103 is unconstitutional. But I believe Congress could make “novelty” (without “non-obviousness”) the sole requirement for patentability. That might make SCOTUS “howl” in view of certain nonsensical “dicta” in Graham about the “limitations” on Congress’ authority under the Patent Clause (based on the nonsensical “Jeffersonian Story of Patent Law”), but would certainly be constitutional as far as I’m concerned.

  5. Dale B. Halling April 30, 2012 12:36 pm


    You should not make fun of people who have a disability.

  6. Paul Cole April 30, 2012 1:09 pm

    I don’t think that this argument runs. It is worth reminding ourselves of the propositions put forward by the Supreme Court in Graham v John Deere:

    (1) The scope and content of the prior art are to be determined.
    (2) Differences between the prior art and the claims at issue are to be ascertained.
    (3) The level of ordinary skill in the pertinent art is to be resolved.
    (4) Circumstantial evidence e.g. commercial success, long felt but unsolved needs, failure of others may be considered.
    (5) Against this background, the obviousness or nonobviousness of the subject matter is determined.

    There is nothing in this test that would surprise a UK court, because much the same test was independently arrived at by the UK Court of Appeal in Windsurfing.

    The final question in both Graham and Windsurfing can only be decided by weighing the evidence and arguments of the parties: there is no preconceived standard beyond the statute.

    But as a practical matter, it is difficult to succeed without a new function or result. That was known in the UK to Lord Ellenborough who wrote in Huddard v Grimshaw 1 Web. P.C. 85: “I suppose it will not now be disputed that a new combination of old materials, so as to produce a new effect, may be the subject of a patent”.

    The same thing was known to George Ticknor Curtis who wrote in 1848: “It is evident, therefore, that the whole of the act of invention, in the department of useful arts, embraces more than the new arrangement of particles of matter in new relations. The purpose of such new arrangements is to produce some new effect or result, by calling into activity some latent law, or force, or property, by means of which, in a new application, the new effect or result may be accomplished. In every form in which matter is used, in every production of the ingenuity of man he relies on the laws of nature and the properties of matter, and seeks for new effects and results through their agency and aid.” His textbook was cited in the minority opinion in Hotchkiss.

    In Loom v Higgins (1881) the Supreme Court said: “It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”

    In KSR v Teleflex the Supreme Court said, echoing US v Adams (1966); the Adams Battery case: “The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.”

    These sentiments are echoed in the Red Dove case which came before the German courts and in the numerous decisions of the EPO Appeal Boards where technical problem is reconstructed from the new effect or result achieved vis-a-vis the closest prior art. They have been known since Thomas Jefferson was US president and Nelson was scouring the Atlantic in pursiut of Napoleon’s fleet. Indeed they may be traced even further to James Watt and the steam engine (or more correctly his improvements to Newcomen’s atmospheric engine). Nor are they really impugned by the Australian innovation patent since the leading case there on innovation patents concerned an invention for which there were corresponding issued patents in the UKS and Europe. The willingness of Australian courts to enforce innovation patents on a true novelty only standard has never been tested. And if you go back to “manner of new manufacture” in the English Statute of Monopolies, you will find that “new” was held to be a matter of substance covering both novelty and inventive step issues.

  7. Stan E. Delo April 30, 2012 1:40 pm


    From my layman’s innovator perspective, I tend to agree that 103 could and should be deemed to be unconstitutional. Also from Gene’s previous article on the subject, the Supreme Court seems to have ignored the Constitution in it’s KSR decision, which will either have to be challenged in court like in the Tafos suit, or changed by Congress. What a dismal mess.

    Sure, Congress can change the Constitution, but they need to do it with a Constitutional Amendment, and Not by weaseling around the intention of the Constitution by passing very atrociously written and ill-considered legislation. The American Invents Act indeed.

    I think feel a Kewl-Aid binge coming on…

  8. Brian Lucas April 30, 2012 4:53 pm


    The problem is not that patents should not be granted for technical advances which are ‘obvious’ but what ‘obvious’ means.

    In order for any legal system to work it must be understandable to those who are entrusted to enforce it. Sadly, the dicta of the US Courts, however erudite and well intentioned, have left many USPTO Examiners bewildered and confused.

    In order to get the USPTO Examination system up and running again it might perhaps be better to give Examiners a clear and logical test for examining for obviousness. If an invention passes this test then a US Patent should be granted. If someone wishes to challenge the patent on more subtle and sophisticated grounds then this is where the Court should step in. In other words the USPTO should act as a pretty reasonable screen but should not attempt to set itself an unattainable standard of perfection.

    What I would advocate is a system which encourages and rewards innovation. When all is said and done there is nothing to prevent a competitor using the prior art or finding a non-infringing alternative. The fact that a competitor wants to use a patented invention frequently suggests to me that the patentee has found something which gives him a commercial advantage and if it were not for that then the competitor would not have infringed.

  9. Stan E. Delo April 30, 2012 5:20 pm


    One thing that occurs to me about your post, is that US patent law has been quite different than patent law and rights in Europe for over 200 years. Call it the American experiment in patent and other property rights if you will, which has been a great success so far. A major feature of the US Constitution has been the mandate that the Federal government shall not attempt to abridge or diminish the property rights of US citizens, which is to be governed by State law unless there is an over-arching danger of jeopardizing the security of the United States of America.

    The *harmonization* of US patent law with the rest of the world at the Federal level therefore seems to be a Federal taking of my property rights, which is not allowed according to the Constitution, unless Congress votes to change it via a majority vote to do so with a Constitutional Amendment. Otherwise State law ultimately governs property rights here in the US, thus the FedCircuit Court to determine the outcome of infringement cases according to state law in the chosen venues of the parties in conflict.

    Another very troublesome concern with the America Invents Act is the allowance of greatly expanded Prior User Rights, apparently included at the behest of and by generous financial support of several members of Congress by large corporations. In some circles that is known as Graft, otherwise known as lobbying here in the US. That way the corporations can just keep their inventions secret, and perhaps severely damage or invalidate my patent rights at whim, after I have spent years developing an *invention*, and many thousands of dollars to try acquire a valid patent.

    I will therefore have wasted who knows how many of my hours and money pursuing a fruitless *invention*, when I could have been developing something else that might have a chance. Once again a Federal taking of a large portion of my “property rights”, paid for by corporations that want to keep new technology out of their profit margins. That doesn’t seem to be part of the advancement of the useful arts and sciences, that the Constitution mentions in no uncertain terms.


  10. Ron Katznelson April 30, 2012 5:58 pm

    I agree that the decision in KSR is confused and marked a significant regression in patent law since the Federal Circuit’s adoption of the Teaching-Suggestion-or-Motivation (TSM) test. However, I would not go as far as you have. I disagree with your view that non-obviousness (properly construed) is a condition for patentability that Congress cannot attach to its construction of the term “discoveries” appearing in the Constitution when it seeks “to promote the progress of useful arts.” While enactments of Congress in the years immediately following the adoption of the Constitution can inform us of the views and intent of its framers, subsequent enactments after gaining experience in the operation of the patent system are no less important. For example, between 1793 and 1836 the U.S. was operating a patent registration system with no examination for novelty, let alone obviousness. During that period, framers of the Constitution who were still in public service including in the Congress apparently saw no need to codify the constitutional meaning of the term “discoveries” in the standard for Patent Office practices (the term “invention” does not appear in the Constitution). It was only in the Patent Act of 1836 that Congress enacted a law for patent examination. Clearly, enactments of later Congresses are just as important. Therefore, one cannot discount Congressional action in 1952 that actually provided a more detailed definition of “discoveries.”

    It is manifestly reasonable for Congress to hold that a trivial variation of an otherwise known concept – a novel variation that would have been obvious to those skilled in the art at the time of invention – is not really a “discovery.” Would we consider a blue pencil a “discovery” after we were made aware of a discovery of how to make a pencil that is yellow? It is particularly within Congress’ public policy prerogative, and indeed duty, to secure exclusive rights to inventors in the manner that promotes rather than retards the progress of useful arts. Securing exclusive rights on the basis of mere novelty may not be necessary or effective in promoting such progress, and as I argue below, may actually have the effect of undermining patent rights and retarding the progress of useful arts.

    That securing rights for mere novelty is unnecessary was explained by Judge Giles Rich, who was one of the drafters of the 1952 Patent Act. He explained that § 103 is designed to distinguish between improvements produced “by the expected skill of ordinary workers in the arts and by the unobvious developments which would not occur spontaneously from the application of such ordinary skill. The former improvements are never patentable. Why? Because they will be made anyway, without the ‘fuel of interest’ which the patent system supplies.” Giles S. Rich, “The Principles of Patentability”, 42 JPTOS 75, 81 (1960).

    Furthermore, securing exclusive rights to mere novel inventions that are otherwise obvious in view of the prior art can have serious negative effects that retard the progress of useful arts. These types of patents are otherwise known as “utility models” or “petit patents.” Their operation can impede proper operation of the basic patents for non-obvious inventions. Utility models have been used as tools for blocking the economic utility of basic invention patent rights. Competitors, by making filings on slight design, shape, or structure variations on another’s technology can block practical and marketable applications of that core inventive technology. This provides such competitors with the economic leverage to force others to license their basic technology in exchange for a license on a necessary but otherwise obvious improvement, or utility models. Some domestic manufacturers in Japan have used this practice and thereby erected non-tariff-based trade barriers against U.S. companies. See Andrew H. Thorson and John A. Fortkort, “Japan’s Patent System: An Analysis Of Patent Protection Under Japan’s First-To-File System (Part II)”, 77 JPTOS, 291, 299 (1995) (describing the flood of utility models filed by Japanese companies to surround a few basic patents of U.S. companies). Similar activities and alleged abuses with respect to floods of utility model applications in China have been reported. See Enoch H. Liang and Andy An, “The Newest IP Threat in China – IP Hijacking (Part 1 of 2)”, New Matter, Vol. 33, No. 2, pp. 22-23 (2008), available at http://www.ltlcounsel.com/downloads/EHL%20-%20NEW%20MATTER%201.pdf .

    There were several attempts to institute petit patents in the U.S. and I am glad they have failed. I believe that had Congress taken the path which would have awarded patents on mere novelty, American innovation would have been stifled and largely relegated to incremental improvements. That, however, does not mean that the KSR decision was a positive development or that Congress should not clearly define obviousness. In my view, the TSM test is a well-crafted solution after considerable deliberation and thought by patent experts in the Federal Circuit. It should not have been thrown out without a better cogent and workable replacement.

  11. Paul Cole April 30, 2012 6:01 pm


    The allegation that there was an “American experiment” in patent law different from that in Britain over the last 200 years is simply and demonstrably wrong. You only have to look at the writings of Thomas Jefferson on the subject, or 19th century textbooks on patent law published in the US to see how closely developments in the US mirrored developments in the UK and how closely decisions of the UK courts were watched in the US. That closeness diminished after 1870 because the UK by then had a substantial body of case law of its own, but we remain common law jurisdictions and the closeness of our laws and legal approaches on the question of unobviousness is remarkable. As an English and European commentator I find nothing remarkable in the US approach and much that continues to be in common with our own. And when the US courts really wish to delve deeply into the roots of the patent law, they still sometimes look at old British law and practice on the subject, rudimentary as it was in the eighteenth century.

    And to be honest, I have never heard a US practitioner give any attention to the meaning of the copyright and patent clause in the US constitution. I have asked many people about the meaning of “discoveries” in that clause and have never received an answer. It could mean things that have been found, or it could mean things that have been disclosed in writing, drawings or by way of models. Both meanings were current in late eighteenth century English, and the meaning that discovery = disclosure was more current outside the specialized field of law at that time than it is now. But if discovery = finding, then there is no power to grant a patent for something for which there is no underlying finding, i.e. new result or new mode of operation. The question is by no means trivial but seems not to have been investigated.

  12. Paul Cole April 30, 2012 6:02 pm

    In the fifth line of my first paragraph I should, of course , have said US.

  13. Stan E. Delo April 30, 2012 6:39 pm

    Roger that Paul,
    Thanks for the clarification and the interesting bit of history. I was mostly referring to the one year grace period that the US was unique in employing from I am not sure when, to encourage US *inventors* by having some degree of security as regards who invented what and when as regards the priority date, which of course was pretty useless in an international sense.

    Provisional Patent Applications have been a great success here, with large corporations using them regularly to get a priority iron in the fire while they work the details of the *inventions* out, as they effectively have provided another year of protection for the concepts in question, as long as the innovator is careful about *public disclosure*. Now that the US one year grace period is effectively gone here, they might become even more popular than ever. The new Australian utility application seems to be a bit similar, and I like the fact that you can elect examination if/when you think you might need patent rights in the near future. I have a new boat propeller innovation that might be a good fit for Australia or New Zealand, given all the innovation that has gone before there in water jet boat propulsion in both countries. I am supposing that NZ will follow Australia’s lead, as they have done a few times in the past.

    Best wishes,

  14. Stan E. Delo April 30, 2012 7:23 pm

    The Australian Utility patents only last 8 years, but they sound as if they are pretty inexpensive, and usually issue in about a month, unless you request examination of them upfront or before they issue in a month or so. You will also have to decide whether you want to pursue an Australian version of a *Regular Patent Application* before the month is gone, or you might lose your rights to convert it to one. If the Australian Utility patent application is not examined, it sounds as if will be pretty much useless if push comes to shove in a legal sense.

    At least I might not have to wait for about 3 or 4 years for a Regular Patent Application to issue for my wind turbine concept for instance, like here in the US. Kappos and et al are working very hard on the backlog of US patent applications, but they have to try to decide how to resolve about another 620,000 patent applications if I recall it correctly, to try to fix a previous horribly inept USPTO management *team’s* lack of due diligence.


  15. Dale B. Halling April 30, 2012 7:37 pm

    I agree that the (TSM) approach was as objective as you can make the obviousness requirement. However, the question under the Constitution is what is an invention? We must first define what an invention is. The word “discovery” might include special relativity. But that would not be patentable, it is not an invention. The word invent does not imply a quantum threshold. To be an inventor, you must be first, that implies novel. No other threshold is logically derived.

    Minor improvements. That which is novel, cannot be obvious. Something that does not exist, cannot be clear or apparent. Let’s look at your example of the colored pencil. (It is always very dangerous to go into rabbit holes of hypotheticals). The chemical industry was built on new pigmentation. So it is not clear that a yellow leaded pencil would explain exactly how to make a blue leaded pencil. If it were, a blue leaded pencil would be an aesthetic objective, therefore not an invention. Ex: painting an airplane blue instead of yellow, would not be an invention if the goal is aesthetic. However, there may be very solid objective reasons to paint a plane blue if it is a military plane, such as providing a camouflage effect. This is why it is VERY DANGEROUS to base one’s reasoning on hypotheticals in patent law.

    Progress and the useful arts. The preamble is not a qualifier or limiter or screen or filter for what is patentable. Preambles, just as in patent law, are not generally considered limiting. See 2nd Amendment. A natural right does not include a limitation. If we were to take the preamble seriously, then almost no books would deserve copyright protection.

    Japan and China. The problem you cite of “picket fence” patent strategies, occurs for two reasons. 1. The patent law of Japan provided very narrow legal protection for an invention. This was done purposely to steal the inventions of foreign companies and not to protect the property rights of inventors. See Pat Choate. 2. Too many US companies did not build intelligent, strategic portfolios of patents. This allows others to build “picket fences.” This is a management issue of which patent law cannot address.

  16. Dale B. Halling April 30, 2012 8:16 pm


    We are talking about the US Constitution not a UK court. I understand how someone on your side of the Revolutionary War might want to ignore the Constitution, but I believe that issue was solved in the War or 1812.
    In the US, the Constitution is ultimate law, not what the Supreme Court says. Starting with Graham vs. Deere is to ignore the very foundation of US law. Nothing in the statute or Constitution suggests looking at “the ordinary skill of someone in the art.” This standard logically assumes that an idiot working in area where most people are stupid idiots should obtain a patent, while a genius working in an area where the average practitioner is super genius should not obtain a patent. This is unfair and nonsense. A patent is legal title to an invention. Whether something is an invention is not defined by ‘the ordinary skill in the art’ any more than the definition of book varies by the quality of the authors writing in that genre. Graham vs. Deere was another case of Judicial nonsense practiced by people who do not define terms, do not have a technical background, and have never prosecuted a patent.

  17. Ron Katznelson April 30, 2012 8:29 pm

    Dale: “This is a management issue of which patent law cannot address.”
    I beg to differ. It is a matter of patent law.
    You are not addressing the specific “utility model” aspect which I point out. It is the lack of an obviousness requirement of “utility model” patents that enabled about a THOUSAND utility models to be issued for Japanese companies to “surround” 2 basic invention patents of an American company and bring its commercial efforts in Japan to a halt. These patents would not have been allowed under non-obviousness requirements. A patent system based on novelty alone cannot function well to protect more basic inventions that are non-obvious. This has nothing to do with “a management issue.” It is not about the American company’s inability to file hundreds of utility model applications on its own. It is about a systematic strategy to weaken basic invention patent rights by an exhaustive filing of utility model patents covering trivial details of specific implementations of the basic technology. This cannot be done to this extent if patentability requires non-obviousness. It is a patent law issue and not “a management issue” because a utility model patent system discourages generic basic technology disclosure. To avoid blockage and being surrounded by trivial exclusive rights, innovators of core basic technologies have much higher incentives to keep their technology as trade secrets. This will retard the progress of useful arts.

  18. jon April 30, 2012 8:50 pm


    I dont believe keeping technology as trade secrets is an effective way to protect genuine innovation, especially when government agencies and large corporations are involved in spying and stealing ideas from inventors.

    seems like bribery is the only way to protect your inventions.

  19. Dale B. Halling April 30, 2012 8:52 pm


    There were huge difference in US and English patent law after the passage of the 1836 Patent Act. England did not have a modern patent law system until the late 1800s. See The Democratization of Invention: Patents and Copyrights in American Economic Development, 1790-1920 (NBER Series on Long-Term Factors in Economic Development
    http://www.amazon.com/The-Democratization-Invention-Copyrights-Development/dp/0521747201/ref=sr_1_sc_1?s=books&ie=UTF8&qid=1335832595&sr=1-1-spell). Up till that time, England still had a non-professional examination group, a fee system that excluded all but the wealth and politically connected, and was incredibly slow and complicated (sort of like modern patent offices). The only modern patent system before the US patent Act of 1836 was in Venice. A modern patent system is characterized by an examination system administered by an independent examination core that is readily accessible to all inventors (low cost, not complicated) – as opposed to only wealthy or politically connected inventors. Also, such a system provides for the diffusion of knowledge. None of these were true in England or Europe in the 1840s.

    The result of these differences was the US had 4-5 times as many inventors (by patents) as England by the 1860s. The US went from a backward agricultural country to a technological leader by the 1860s. This occurred despite the fact that the US was not a scientific leader and did not have the best scientist or universities. To suggest there was no experiment in the US in patent law is patently false.

  20. Dale B. Halling April 30, 2012 9:20 pm


    As I said, the Japanese law was not intended to protect the property rights of the inventor. It was purposely meant to be so narrow as to have no value in protecting your invention. The Japanese law was not patent law it was an industrial espionage law disguised as a patent law. The real problem is that patents should not be national, they should be international. They should also be defined to protect the inventor’s rights in their invention. Your copyright does not stop at the border between the US and Canada, why does you patent? Imagine a world where patents were recognized internationally – just think of the financing inventions could attract, the size of inventions that could be invested in, the time and resources that could be spent on inventing instead of securing property rights in inventions.

    I will also point out a management deficiency in many large US companies – almost certainly not one you started or any started by Edwin Land. They have treated patents as meaningless yellow ribbons. Most large corporations give more thought to their sales bonus prizes, their diversity policy, their recycling policy, their vacation policy than to their patent portfolio. They tell their engineers to not research any patents for fear of being hit by 3x damages and then complain when they are sued for patent infringement that it is unfair. Most Big Business in the US are just plain lazy about their patent strategy. Most business schools want to downgrade inventors and glorify innovators. This allows them to suggest management (finance, accounting, personnel, marketing, sales, etc) is more important than invention. This is not true, but it serves their purpose.

  21. Stan E. Delo April 30, 2012 9:31 pm

    Dale B. Halling writes in small part:

    “We are talking about the US Constitution not a UK court. I understand how someone on your side of the Revolutionary War might want to ignore the Constitution, but I believe that issue was solved in the War or 1812.
    In the US, the Constitution is ultimate law, not what the Supreme Court says.”


    Exactly the point I was trying to make, even if somewhat ineptly. I should also point out that here in the US, which I neglected to do before, is that the US Constitution also posited a trifecta of a balance of power between Congress, the courts, be they as they may, and a Presidential oversight to try to prevent any one sector of the *Government* from getting the upper hand, and producing *inequitable conduct* results for the citizens of the US.

    In this particular case the SCOTUS seems to be abusing their powers of discretion, which in my opinion needs to be checked, and perhaps modified by the Congress here in the US. Our current US president will probably have little to do with the *decisions* being made, but he always has the option of vetoing any legislation proposed by Congress.

    By contrast, the UK form of government comes from a Kingdom and King and Queen sort of heritage, which is decidedly much different than the North American form of government For and By the People. Most of Europe has the same sort of heritage, as their history is much older and different than that of us American Yankee rebels that dared to revolt and do things their own way.

    That being said, much of my ancestry is Scottish and Welsh, so I can certainly understand where some Brits are coming from, but I would respectfully tend to disagree with some premises being suggested. Like the US, Scotland became independent several hundreds of years ago, and for probably nearly exactly the same reasons. William Wallace and Braveheart for one instance.

    Finally, the US and the United Kingdom as allies seem to represent this world’s best hope for promoting freedom and the *natural rights* of folks all over the planet, to be free if they want to be, and to determine their own destiny if they have the desire, ability, and the will to do so.

    BTW Paul-

    My father Ted was stationed in England for about 2 years during WWII, flying P-47 Thunderbolts to help to defeat Hitler and his insane war machine. He nearly got killed about 5 times that he admitted to, after flying 79 missions, but he managed to dodge all the bullets and ME 262’s and came back home to *invent* myself about 8 years later.

    Finest regards,
    Stan E. Delo
    Aero Marine Co.

  22. Stan E. Delo April 30, 2012 10:44 pm

    Dale writes in part-

    “As I said, the Japanese law was not intended to protect the property rights of the inventor. It was purposely meant to be so narrow as to have no value in protecting your invention. The Japanese law was not patent law it was an industrial espionage law disguised as a patent law. The real problem is that patents should not be national, they should be international.”


    Japanese *patent law* has been a Very Bad Joke for at least 2 decades. Their version of Trade Secret rights was truly amazing in it’s severe penalties for the slightest variation in how trade secrets were handled. Forget Japan, unless you need to pursue digital camera *new* technologies, and hang on to your hat if you do!

    It sounds as if there might be a reasonably unified European International patent application process possible in the fairly near future, which would avoid having to file in say 8 different countries for what sounds like a very reasonable price as far as I know so far. It seems to be a result of USPTO Director David Kappos getting after the Patent Prosecution Highway program pretty adamantly for a few years, where search results are shared between signatory countries, to avoid redundant international patent searches.

    As you might imagine, this would seem to imply that *translations* between different languages has already been done, and by arguably very experienced interpreters. For me to pay for a translation into Whereizitstani might cost me over $5000 otherwise, as well as paying a local to them attorney to oversee the process for say another 2 grand or so.

    The main hang-up so far seems to be that the European nations considering being involved are still arm-wrestling over who will be in charge of deciding the fate of patents if they happened to be challenged or need some type of adjudication. I would vote for Germany, as the French folks sound a bit wacko to me, and Spain seems to be in revolt to the whole concept. England is another option, as they have somewhat similar laws in the UK as Paul Cole has been suggesting fairly recently, and the English language is tending to be a bit ubiquitous these days in much of the world.


  23. Stan E. Delo April 30, 2012 11:15 pm

    Come to think of it, what about a sort of Fed Circuit type of approach, where you might have *judges* from say Italy, France, Germany, Spain, Denmark, Norway, Sweden, Austria, Ireland, and England, as well as your odd Whereizitstanian judges decide if they want to take the particular case at hand under consideration? If they don’t particularly care about the case, they could just stay home and defer to others to decide the fate of the patent being considered, which might save a lot of grief for the poor patentee trying to get something allowed or maybe not. If the judges not attending had a problem with an allowance, they could always challenge the majority opinion by writing a dissenting opinion, and explainining exactly Why they disagree with the majority opinion that was rendered when they were absent.
    Just a random musing on my part.


  24. Please Advise May 1, 2012 1:15 am

    “Section 103 is unconstitutional because Congress did not exercise an enumerated right to its fullest possible extent.”

    Do I understand Mr. Halling’s argument correctly?

  25. Paul Cole May 1, 2012 2:20 am

    If you go back to Venice you will find the origin of patent law, on which the UK Statute of Monopolies was modeled:

    There are men in this city, and also there come other persons every day from different
    places by reason of its greatness and goodness, who have most clever minds, capable
    of devising and inventing all kinds of ingenious contrivances. And should it be
    legislated that the works and contrivances invented by them could not be copied and
    made by others so that they are deprived of their honour, men of such kind would
    exert their minds, invent and make things that would be of no small utility and benefit
    to our State. Therefore, the decision has been made that, by authority of this Council,
    any person in this city who makes any new and ingenious contrivances not made
    heretofore in our Dominion, shall, as soon as it is perfected so that it can be used and
    exercised, give notice of the same to the office of our Provveditori di Comun, having
    been forbidden up to ten years to any other person in any territory and place of ours to
    make a contrivance in the form and resemblance of that one without the consent and
    license of the author. And if nevertheless someone should make it, the aforesaid
    author and inventor will have the liberty to cite him before any office of this city,
    which office will force the aforesaid infringer to pay him the sum of one hundred
    ducats and immediately destroy the contrivance. But our Government will be free, at
    its complete discretion, to take and use for its needs any of the said contrivances and
    instruments, with this condition, however, that no one other than the authors shall
    operate them.

    The Venetians did not protect the commonplace, but new and ingenious contrivances made by clever men. The same was true in England.

    In 1836 the US indeed established the first modern patent system which is a truth insufficiently known in England and Europe. However, the fundamentals of the law remained the same in England and the US for decades thereafter.

    STAN: If you should visit England, you should make a trip to the Imperial War Museum at Duxford, as should anyone with children in the 8-18 age range. In addition to numerous Spitfires in flying condition they have the American Memorial Hanger which commemorates the US flyers who came to England and gave their lives in WW II. Virtually every major US aircraft of historic importance is found there, including a Flying Fortress, a Huey helicopter and a Blackbird from the cold war period.

  26. MuenchnenOst May 1, 2012 2:34 am

    Stan, your suggestion for:

    “…..a sort of Fed Circuit type of approach, where you might have *judges* from say Italy, France, Germany, Spain, Denmark, Norway, Sweden, Austria, Ireland, and England, as well as your odd Whereizitstanian judges”

    Tell me, ow does your vision differ from the EPO Enlarged Board of Appeal, the “commodore” (in the words of England’s senior patent judge) that directs the course of the law on the validity of patents in the 40 country EPC bloc?

    You realise, I suppose, that if the EPO rejects your patent application there is no court to which you can appeal after that? When it comes to patent law in Europe, since as far back as 1978 the Enlarged Board of Appeal of the 38-Member state EPO is The Ultimate Decider, Europe’s one and only SCOTUS.

    As to the grace period, the EPC has one, and it is the most uncompromising model of patent law on novelty that the world has ever known. I think you can find a grace period wherever you look, if you go looking for one. It is not the grace period but the notion of First to Invent, that is peculiar to the United States.

  27. Stan E. Delo May 1, 2012 9:48 am


    It sounds as if it doesn’t differ at all, I was just unaware of it till now. I know a little about using the PCT approach to get to filing abroad after a US patent has been applied for, as that is the way most Americans tend to proceed. Very well said about the First To Invent aspect of US patent law, which is very unfortunately now a thing of the past after the passage of the America Invents Act. The First Inventor To File provision was touted as a “streamlining and harmonizing” of US patent law, and meant to avoid all those pesky and expensive interference proceedings, which is total corporate double-speak bunk as far as I am concerned.

    The resulting change apparently will allow large corporations to improve their profit margins by about one half of one percent by avoiding litigation, hence the availability of scores or hundreds of millions of dollars to lobby for the passage of the America Invents Act.


  28. Roland May 1, 2012 10:08 am

    Digressing, from the much appreciate discussion around the barriers to the international *harmonization* of patent law (it does look as if there is scope for future articles dedicated to this topic).

    From my reading of the article, it would seem that the “non-obviousness” requirement is an attempt to codify the creative leap that is necessary to identify a solution to the issue at hand. With the use of terminology around a “skilled mechanic” or “a person having ordinary skill in the art” trying to differentiate between a quick fix and resolving the underlying issue.

    From reading of the Hotchkiss v. Greenwood case, it would seem the real problem is after the (creative) event, the solution can be mindblowingly obvious, as in the shape of the cavity necessary to securely fasten a metal shank into a clay doorknob…

  29. MuenchnenOst May 1, 2012 10:10 am

    The way I see it Stan, EPC-style First to File permits the early preparation of well-founded Freedom to Operate opinions.

    With publication of all patent applications, 18 months after the earliest date their claims can hold, with strict prohibition on any prosecution amendments that add matter, we know already, with only one year of the 20 year patent term gone, what is the maximum scope of any claim that might issue, not only on the pending application, but also on any child divisional, not yet filed but which might come to be filed specifically to catch within its scope the competing device you have just launched.

    Such early and confident clearance opinions give confidence to those contemplating big investments in your innovation. I think you, with your wind turbines, should welcome anything that delivers confidence to those contemplating investing in your innovations, no?

  30. Stan E. Delo May 1, 2012 11:22 am


    Yes, confidence in the non-obviousness and novelty of my patent applications would be a very thing. On the other hand though, I have a real problem with the required publication of my patent applications at 18 months here in the US, when my applications will probably take about 3 or 4 years to issue as hopefully valid US patents. I had to give up all foreign patent rights to request non-publication, which once again is a Federal taking of my property rights mandated by the US Congress back circa 1992 if I recall it correctly.

    If my application were to be published on the Internet for anyone in the world to see about a year and a half before I have been granted a patent, what is to prevent some company in China, for instance, to get busy with lots of financing and build cheap knock-offs of my *invention* and flood the market a year before I even have a patent?

    In my view, the USPTO used to be required to keep US patent applications confidential until either a patent had issued, or forever if a patent right is denied. That way I can keep trying to come up with something much better, without forever losing my future patent rights by creating my own *prior art* to have to design around?! Sort of like the ultimate “Catch-22” for American or other inventors that use the USPTO to file with first, nicht whar?


  31. Stan E. Delo May 1, 2012 11:23 am

    A very good thing, in the first sentence-SD~

  32. MuenchnenOst May 1, 2012 11:38 am

    Stan you ask “What’s to stop…” Here’s my answer.

    In a properly functioning patent system, publication after 18 months gives public notice of what you have in the pipeline. Based on that notice, others can decide whether to invest in gearing up for knock-off production. If they can’t design around, investment might not be their best business decision, but that might depend on whether you have the funds to enforce your issued patent rights.

    Of course, it is a given, that you NEED to be able to go to issue as fast (or as slow) as you like, to suit your business purposes.

    In the UK you can go to issue during the 18 months. At the EPO, you can (if you just ask) go to issue soon after 18 month publication.

    Mostly, you want to be able to get to issue as soon as you detect infringement. But up to that moment of detection, you surely want NOT to be beyond the issue date. That’s because you need flexibility to amend your claims, to catch the infringer’s product, BEFORE you go to issue. Most EPO applicants think like this. Very few ask for free fast track expedited examination.

    On reflection, you might wonder whether your greater threat against prospective infringers might even be a published pending patent application that is NOT yet issued and can still be amended.

    Do you think it makes any difference to the powerful funders in some Asian jurisdictions, that you have an issued patent in their jurisdiction, just an application, or no application at all. Do they care?

  33. Blind Dogma May 1, 2012 11:47 am

    As if it were not totally obvious, MuenchnenOst is patently-O’s MaxDrei.

    Take what he says with one very large grain of salt.

    (hmmm, salt makes you thirsty, better take several grains of salt, then indulge in my Kool-Aid)

  34. Stan E. Delo May 1, 2012 12:02 pm

    Munich East-

    Why should they care at all about what is in the pipeline? They can simply start building them, and even export them to the US at least until my US patent issues, and I would be powerless to stop them. Meanwhile I will have lost all hope of them selling outside the US, and the patent will have also lost nearly all of it’s value.

    BTW BD-
    I have a new flavor in the works, that I am thinking of calling Outrageous Orange, which includes some Lemon to give it a little more pucker power, shall we say. Do you think the name might be a little too over the top?


  35. Blind Dogma May 1, 2012 12:39 pm


    We may want to be careful with Agents selling the Orange. The scalding effect may be unpleasant.

  36. Non Sequitur II May 1, 2012 12:42 pm

    With all do respect, you are completely misreading the US Constitution. The US Constitution says that: “The Congress shall have 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.” The Constitution does not bestow any rights on “Authors and Inventors.” Congress is constitutionally authorized to do nothing. However, since Congress did pass laws, the Supreme Court is authorized to interpret those laws. You can believe that the Supreme Court got it wrong, but there is nothing about KSR that is even remotely unconstitutional.

  37. Stan E. Delo May 1, 2012 1:04 pm

    I think you meant to write “With all DUE respect”

  38. MuenchnenOst May 1, 2012 1:23 pm

    Why should they care what’s in the pipeline? Well, I thought I had already explained that, with my stuff about clearance opinions. But I agree, it does depend on how much one needs to invest before one can go into production with your electricity-generating windmills. How much is it worth? What level of investment are you looking to attract here? Would that be 50 million US? No, I guess not. You are thinking more in terms of 5000 dollars, I suppose.

    And if I am MaxDrei, how does that destroy any sense in what I write?

  39. Anon May 1, 2012 1:39 pm

    NS II,

    I am not following your post. “Congress is constitutionally authorized to do nothing.” is meaningless on its face.

    If Congress is provided the power to “secure,” as opposed to create and secure, then the Constitution could be said not to bestow any rights (this is very much a natural rights position). However, if the rights exist but are only given meaning through whatever means Congress decides (sanctioning those rights with legal effect), then the Supreme Court can very well do something unconstiutional. In fact, it is easer to do something unconstitutional, as a mere mistake of what Congress has set forth has that effect.

    Now, to be clear, by mere mistake, I am not saying a mistake in interpretation. The argument here goes deeper than that.

    I think this is one thing that Gene has commented upon many times. The Supreme Court has essentially ignored what the Congress as stated in 103(a); and had done so even back to the Deere ruling. There is a clear difference between “interpreting” and “rewriting,” and ignoring an explicit inclusion in the 1952 act is the latter rather than the former.

    I think Dale’s question (and thread title), should be taken a little ironically. 103 cannot be unconstitutional, but the Supreme’s “interpretation” (that is actually a rewrite) can be. In an even deeper sense, any Judicial Decree (and I am thinking of the big three) can be thought of as unconstitutional as the constituion gives full power to Congress (consider the Golan case as evidence). What is to stop Congress from explicitly making a patent law that would allow a patent on a law of nature (given that such passes the rest of the patent law)? After Golan, I would daresay that the Supreme Court could not challenge a direct law like that.

  40. Anon May 1, 2012 1:41 pm


    I think the adage “consider the source” applies. There is quite a lot of baggage that comes with the “MaxDrei” moniker (and not the desired kind).

  41. Stan E. Delo May 1, 2012 1:46 pm

    Actually only about 40 or 50,000 US dollars would send me off to the races, so to speak, to venture into building them independently. I once spoke to the head of the General Electric Alternate Energy division at the American Wind Energy Association Windpower Conference and Exhibition a few years back, who sounded very interested in the technology, but I did not have a working prototype then, and had not filed a patent application at that time. He was very good about not prying into what the details were, and we just discussed what the innovation Did for about 40 minutes.

    It has since evolved and gotten much better, but trying to license to such a large corporation would seem to indicate to me that I will need to be very careful in approaching with a mere patent application, unless I have a proven production prototype in hand to demonstrate. Must be getting late there by now, so guten abend for now.


  42. MuenchnenOst May 1, 2012 2:10 pm

    TEST: Are my mails now being shut out? The last one did not get through.

  43. MuenchnenOst May 1, 2012 2:13 pm

    Well, that’s a relief.

    Stan, on that budget, don’t even think about patent rights outside the USA. Prepare and file PCT if you like, but don’t spend your own money pursuing that option beyond the first 18 month “international phase”. It’s way too expensive.

  44. Stan E. Delo May 1, 2012 2:26 pm

    I like the idea of using OPM- (Other people’s Money) If I can possibly licence, the licensee might be very glad to pay for seeking patent rights in an international sense. If you do everything right with a PCT approach, I would seem to have another 20 months or so to avoid losing the PCT option. But Wait! I elected non-publication! Drats and dang it!


  45. Dale B. Halling May 1, 2012 2:38 pm

    Please advise,
    By enacting 103, Congress failed to protect the rights of all inventors, which the Constitution REQUIRES Congress to do so.

    The reading of the word “power” in the patent clause of the Constitution is simply a delegation of responsibility, NOT an option or choice.
    Most important, they used the word “Right” and the purpose of governments is to protect peoples’ rights:
    “…That to secure these rights, governments are instituted among men…”
    -The Declaration of Independence

  46. MuenchnenOst May 1, 2012 3:55 pm

    # 45 is a great post from Halling because it is so succinct.

    Can Halling now comment on the words from Quinn which I copy below:

    ” It is axiomatic to patent law that whether an invention is non-obvious, has to be determined at the time the invention was made or in other words before the invention was known.”

    I can see it is axiomatic in First to Invent patent law but I had not appreciated that it might also be axiomatic in First to File law.

    In First to File, you determine obviousness on the filing date, not the date of conception (which is irrelevant). If First to File fails to follow that particular axiom, is it for that reason alone unConstitutional? I’m curious.

  47. Non Sequitur II May 1, 2012 4:08 pm

    Where we disagree is that I don’t read the Constitution as requiring Congress to protect the rights of inventors. What I meant by “Congress is authorized to do nothing,” it that Congress isn’t required to do anything. I just don’t see how you are converting a grant of power into a mandate. Assuming that all grants of power in the Constitution are mandates, then Congress is REQUIRED to “To borrow money on the credit of the United States,” for example. Moreover, because the Constitution doesn’t define “limited time,” Congress is free to grant rights for an arbitrarily short amount of time, which effectively eviscerates any obligation that Congress may have.

    FYI, the word “power” is not in the patent clause. It is in the preamble to the enumerated rights.

  48. Stan E. Delo May 1, 2012 4:30 pm

    Actually what was ostensibly created by the AIA was a *First INVENTOR To File* system, which is somewhat different than a First To File type of system. I have heard a number of patent attorneys maintain that the US had a sort of virtual FTF system even before the AIA was enacted, because the numbers of successful defenses of the FTI clause was in practice vanishingly small, as in perhaps a tenth or of a hundredth of a percent.

    That argument is perhaps a bit flawed though in my opinion, as the mere threat of losing an infringement case due to the first to invent clause is a sort of dare to others to not to try to infringe right up front. In a FTF system, Anybody can be the first to file, even if they had nothing to do with the creation of the inventive step, so to speak. In a FITF system though, nobody but one of the actual inventors is supposed to be allowed to claim anything. Sounds all groovy and kewl, and probably meant to make the medicine go down a little easier I suppose, but the whole concept really sucks in my humble opinion. If it ain’t broke, don’t try to fix it!! Congress sure fixed it this time I guess…


  49. step back May 1, 2012 5:04 pm


    You should come clean and reveal to the readers here what I already know about you, namely, that you are a die-hard libertarian (of the Ayn Rand kind, including her favoring of a patent system) and that you believe in so-called Natural Rights of people (including the right of an inventor to exclusive possession of the know how of his own private invention) irrespective of whether government exists or if we live in absolute anarchy.

    With that said, I agree with Non Sequitur that the empowering clauses (Article 1 section 8) of the US Constitution do not mandate that Congress actually act on the enumerated powers given to them. Congress could have chosen to not pass a Patent Act and, in that case, America would not have a patent system. We would have a guild system where everybody keeps their new and useful ideas as secrets to the best extent they can.

    In a previous time in history, this was known as the Dark Ages.
    Nothing in the Constitution prevents Congress from doing dumb things.
    (And they have not disappointed on that count.)

  50. Stan E. Delo May 1, 2012 5:29 pm

    Non Sequitur II-

    The Constitution however Does mandate that Congress shall not abridge or infringe upon the property rights of US citizens, unless they decide, in their infinite wisdom, to change the Constitution by proposing, debating, and then passing a Constitutional Amendment, which must be signed into law by the then current President of the United States of America.

    Here’s one instance of a Federal *taking* of property rights from my great-grandparents that was arguably illegal, because it seemed to violate the Constitutional mandate that the Federal government shall not be allowed to diminish the property rights of US citizens.

    My great-grandparents homesteaded on Vashon-Maury Island circa 1998, using the Lincoln homesteading Act that had been passed by Congress only a few years earlier. However, in 1911 the whole of Maury Island burned to the ground while they were over in Seattle getting supplies.

    After that, they ended up moving to McNeil Island about 40 miles south of there, but had only gotten settled in for about 5 years, before the Federal government decided to take the whole small island over to create a Federal prison. They *pre-empted* their property rights, supposedly for the greater public benefit, and offered them about a dime on the dollar of it’s actual real *property* value. My grandfather told me of the Feds *hiring* him when he was about 24 years old for a nickel, to see if he might be able to elude the bloodhounds that they were training as chase dogs.

    They had no choice in the matter, so they had to move on to Anderson Island in a few months, whether they happened to like it or not. http://maps.google.com/maps?ll=47.208328,-122.50366&z=10&t=h&hl=en


  51. John White May 1, 2012 7:23 pm

    All: excellent discussion and a worthwhile read. I think 103 is likely Constitutional owing the lack of definition of “inventor” from the Constitution itself. It may be defined as whatever Congress thinks make sense. An “inventor” could be a person who only creates things beyond a certain threshold (novelty, utility, obviousness, etc.). This has been defined and redefined over time as circumstances change. It is clearly much harder at times to get a patent than at others. It varies between technologies and the respective levels of skill. In new areas, it is easy; in well developed areas, much harder. The patent system in the US is about fueling ambition. It works, unabashedly. In technology, any country wuold do well to copy this system.

    My gripe about KSR is that SCOTUS tossed 30 years of CAFC efforts into the dustbin owing to sloppy opinion writing. They are too dim in this field to even know the harm they caused. This is wrong. SCOTUS should have Constitutional subject jurisdiction only for patent issues. Otherwise, ever 20 years or so, everything is thrown into disarray by the next SCOTUS view of patents. STOP. This is a specialty area that can be handled by the CAFC, with a required proportion of patent people, plus Congress. Since KSR, the CAFC has carefully replaced and rebuilt the prior cases on obviouness into the various KSR pigeon holes, and has limited the harm of the decision. But, it was really, really, unnecessary and wasted an awful lot of effort in the meantime.

  52. Dale B. Halling May 1, 2012 7:27 pm


    It makes no sense to determine obviousness at the time of filing.

  53. Stan E. Delo May 1, 2012 7:31 pm


    While we are all coming clean here, perhaps you could give us a hint about Yourself? Are you a patent attorney or a patent agent? Do you prosecute patents or are you into litigation? Even if your seeming accusation of Dale being a bleeding heart libertarian is actually true, it will Not alter the truth in what he happens to say here, or in the excellent article that he wrote for us all to consider.

    When I was trying to help defeat the amazingly clueless *Patent Reform* efforts of 2007, he was one of the first of the patent attorneys to step forward and offer his assistance, closely followed by David B and several other prominent patent attorneys who seemed to understand what was really transpiring and why.

    Easy to be cutesy and acerbic when you are anonymous, but as Blind Dogma explained to me in no uncertain terms a few years back, there are perhaps very valid reasons for some here to choose to remain incognito. I would like to suggest though, that you try to keep things under 200 MPH if you can manage to do so if you choose to remain mysterious. This seems to be a huge learning experience for those that will listen, and kudos to Dale for having the courage to write an article like this.

    A free round of Acerbic Apple Kewl Aide to all, with just a slight twist of enigma and nutmeg thrown in right at the end of the process.

  54. Dale B. Halling May 1, 2012 7:33 pm

    Non Sequitur and Stepback,

    First of all the money and credit clause was not a right of the people, so your analogy fails. Second RIGHTS in the Constitution are Natural Rights, not something that can be given or taken by the government. I have a right to free speech this is true whether the Government decided to protect that right or not.

  55. Kaila Geary Halling May 1, 2012 7:55 pm

    words have meaning. we are not Alice, analyzing through a looking glass. Our Framers argued long and hard over each and every word in the Constitution. Because we have amended, changed, enforced or not enforced, does not change the intent of the original documents of our founding. Why does the US historically claimed domination as the the most innovative country of the World? I can only look to the original structure. However, our courts have chipped away at this language, thus our leadership has fallen. I never believed that a US citizen had any corner market on ingenuity. It was the brilliance and foresight of the framers of the US Constitution who recognized the deficiencies in law that kept nations behind. Beware.

  56. Dale B. Halling May 1, 2012 8:30 pm


    Thanks for the very generous comment.

  57. Stan E. Delo May 1, 2012 8:51 pm

    Non Sequitur II-

    The US Constitution explains very clearly what they meant to be considered as being *inalienable rights* for the citizens of the US at the outset, as in “We hold these truths to be self evident…” as was written into our Declaration of Independence

    In order to change their original premise, it will literally take an act of Congress to draft, vote on, and approve a Constitutional Amendment. Failing that, Congress and the Supreme Court are skating on thin ice, as they are violating the ultimate law of the land as represented and written into the Constitution. Whether any of the rights are *natural rights* or self-evident is a moot point.

    What IS important is that the Constitution promises that the Federal government shall Not take any of my property rights away at the very least, unless Congress decides to alter the Constitution. Since the AIA seems to be a Federal taking of my Intellectual Property rights in several areas, it seems as if at least portions of it are indeed violating some of my “inalienable rights” as a US citizen.

    How about if I came by your place, and decided that I liked your property and the house you had built, and ordered you to leave it because I liked it and I happened to be the Sheriff? Not too fun anymore, nicht whar?


  58. Stan E. Delo May 1, 2012 9:44 pm

    In my #50 comment, my great-grandparents actually homesteaded the Maury Island property in about 1896. about one year after Abraham Lincloln had signed the Homestead Act of 1895 if I recall it correctly. I found it in about 1985 on a tip from a Vashon Island historian, who magically pulled out a map from that era, that had the rudimentery dirt road up to it detailed, and the top of the hill became known as *Delo Hill* for several years hence, since my ancestors were one of the first to get there and establish a residence.


  59. Anon May 1, 2012 9:54 pm

    The state has police powers that meet the constitutional imperative.

    They CAN take your porperyt, but not without recompense.

  60. Dale B. Halling May 1, 2012 10:10 pm


    That is very interesting, but I believe your dates are confused. Lincoln died at the end of the Civil War – 1865. I think you meant 1862 as the date Lincoln signed the Homestead Act.

  61. Dale B. Halling May 1, 2012 10:11 pm


    Really – then what is the meaning of the 5th amendment.

  62. Stan E. Delo May 1, 2012 10:27 pm


    In this case it was Federal, since McNeil Island became a Federal penitentiary as I seem to recall. It was used as a wild bird sanctuary for several years after they booted my family off the island, and still is one to this very day, as the buildings they built only used up about 5% of the island, including all of the infrastructure that they needed.

    I think the next nearest available Federal facility at the time was the infamous Alcatraz prison between San Francisco and Oakland, California, for several decades. Nowadays, there is a Federal prison in Colorado… You know… Where the erstwhile Governor of a state in the Mid-West is currently residing for the next 14 years, after his attempts to try to *sell* a Senate seat after Barack had been elected as our current US President.

  63. Stan E. Delo May 1, 2012 10:37 pm


    I believe you are correct, as I am just relying on memories of what my parents told me about 30 years ago. The numbers add up better that way, as my grandfather Earl went away to Alaska for a few years during the Alaskan Gold Rush, and came home to Maury Island with about 100 ounces of Gold which would have been about when? There was some conjecturing that the island was burned down because somebody had heard about and stole the Gold, and set a fire to try to cover up the theft.

  64. Anon May 1, 2012 10:52 pm


    I am sure that you are aware that the fifth amendment includes:

    without due process of law; nor shall private property be taken for public use, without just compensation

    As long as there is due process and just compensation, the government’s use of police powers to take is rightfully constitutional.

    This is not up for debate.

  65. Stan E. Delo May 1, 2012 11:04 pm


    With all due respect, Yes, it Is up for debate!

    While it is true that the Police can prevent you from hurting or harming others, it seems as if it would be impossible for them to *steal* anything from a US citizen without suffering severe consequences. Apparently it seems as if only the Congress and the Supreme Court of the United States are allowed to do that. Freedom of speech is also another very important factor for Americans to have access to, as without that, we might in fact have nearly nothing to show for our existence at the end of any particular day.

    According the second amendment, I am also allowed to defend myself, which cannot be changed short of another Constitutional Amendment.

  66. MuenchnenOst May 2, 2012 1:35 am

    Looking in from outside, and not being a Constitutional lawyer, I’m not qualified to comment, but for what it’s worth I can’t help suggesting that we need to distinguish here between rights that are “natural” and the “exclusive right” which are the words one uses to explain what a patent is.

    Like nearly everybody else, I had always understood the US Constitution as giving Congress permission to restrain (cabin, for those who have a parrticular fondness for that word) every citizen’s right to trade with his or her fellow citizens, to the extent of giving the Congress the power to set up a system of patents, to promote the progress of technology (useful arts). But now I am asked to accept that “natural” rights (those that exist even when there is no government) include some that last for an arbitrary period (20 years) decreed by government…….and then don’t exist any more. I must say, that’s not my idea of a right that is “natural”

    On another point, Dale Halling writes above:

    “It makes no sense to determine obviousness at the time of filing”

    That is news to the whole wide world, outside the USA. Obviousness should be determined objectively. Can we at least agree on that? Now how might one do it objectively? Perhaps by designating as touchstone of what is obvious the PHOSITA rather than the named inventor. So, we have the test person. Now we need a date on which that test person does or does not find obvious the subject matter claimed and enabled in the patent application deposited at the Patent Office. So how might we fix that date, objectively? What are the candidate dates? Dale?

  67. Roland May 2, 2012 4:32 am

    “It makes no sense to determine obviousness at the time of filing”

    I too, do not see the logic in this statement.

    Whilst 35 U.S.C. 103 does say “..obvious at the time the invention was made..”, it would seem that in practise ‘obviousness’ (for the purposes of issuing a patent) would be determined by the patent examiner at the time of examination using the information available to them in the application, namely the time of (first) filing.

    The only time that that time of invention may get considered, would be by the courts in resolving disputes concerning the validity of an already issued patent.

  68. Paul Cole May 2, 2012 4:33 am

    Just for the avoidance of doubt, when a skilled patent attorney writes a patent specification he or she should determine patentability at the time of filing based on the facts as known at the time. Client’s time and financial resources should only be employed for cases for which there is a realistic prospect of successful prosecution to grant, and which have a realistic chance of being upheld if litigated. That is the responsibility of the prosecuting attorney and cannot be avoided. Examination is a check rightfully instituted by the Patent Office, but the responsibility of the attorney working in collaboration with the applicant. In Europe that point has been made explicitly by the Enlarged Appeal Board of the EPO and it applies, I suspect, with no less force in the US.

  69. Anon May 2, 2012 7:10 am


    The comment about “up for deabte” was in regards to what the meaning and limits of the police power are. One cannot ignore the points I listed because they do not jibe with a view that the government cannot rightfully take something when they can.

    They can. They do. They have. And such has been deemed constitutional. You must accept that.

    As long as the due process and just compensation points are followed, the government can use their police powers to take. This is a basic constitutional understanding. As a basis, it is not up for debate. It is what it is. This does not impugn free speech at all, but rather separates out on taget specch from wishful speech. It is not meant as a “you must not go there,” but rather, “this is fundmanetal and must be accepted.”

  70. Anon May 2, 2012 7:35 am

    My apologies for the spelling errors. I hit submit too quickly.

    Paul, I accept your view on the matter and would respond that your view is just not correct. Plainly, you view that the applicant (or more to the point, the applicant’s representative) is charged with a type of self-examination.
    This is patently false.
    It is also dangerously false, as it plays into the hands of the Office in their (rejected) attempts to switch the burden of examination (or even, euphemistically to “share” that burden).
    That duty is solely and fully incumbent on the government. This is not to say that an applicant should not present the best case they can, but that is far different than what you say, as what you say sounds in law and legal requirements that just are not there.
    As a learned man, this should be obvious to you as one of the lessons of the Tafas case. Tafas was a bitter fight and your view aligns with those that lost that case. And let’s not forget that that loss was binding on the US Patent Office.
    Your desire for things to be otherwise does not match what the law actually is. I note that on various blogs you have been sounding off on this and other misconceptions of what the law is. I think you do yourself a grave disservice by posting in a manner of presenting your desired state of law as actual law as your credibility suffers. While one can see the value in your ideas, the legality of them simply is missing. It is not up to you to change the law, that’s why we pay our representatives.

    I would be interested in looking at the decision of the enlarged board if you can post a link, but as MuenchnenOst is fond of saying (and I hope I am not misconstruing) Europe does not have binding precedent and any such single decision is only valid for that particular case and cannot be used as a point of law for other cases, even ones with similar fact patterns.

  71. Anon May 2, 2012 7:40 am

    And to be clear, there is very much a difference between writing a valid application based on what is known at the time of the writing and determining patentability.

    Perhaps it is just a matter of your word choice, but “determining patentability” has a much deeper legal connotation than what actually exists.

  72. Dale B. Halling May 2, 2012 8:05 am

    Anon at comment 63, Yes, that is what I meant.

  73. MuenchenOst May 2, 2012 8:19 am


    For anybody interested in Binding Precedent, here is a link to Hal Wegner’s note on Activis v Merck, the case in which England’s leading patents judge likened the EPO’s Enlarged Board of Appeal to the commodore of the fleet of national supreme courts in EPC land, that have been struggling, these past 30 years, to get to a common line on the law of the validity of patents under the EPC.

    By contrast, an individual decision of an ordinary Technical Board of Appeal of the EPO has (normally) only a modest persuasive effect.

  74. Dale B. Halling May 2, 2012 8:20 am


    Comment 66: The word RIGHT when used in the Constitution even when modified by exclusive always means a Natural Right – note the Constitution did not define the length of the exclusivity. You have a natural right to property but this still requires you file for a deed and your right to the property ends when you die – so it is term limited. You are confusing the mechanism by which rights are secured by the government with the natural right.

    Time of determining Obviousness: the decision maker is not allowed to determine obviousness after they have the knowledge provided by the inventor – if they were then every patent application would be obvious. The decision maker should look back to the time when the inventor created the invention to determine novelty and obviousness – hindsight is not allowed and that has been a part of US law forever. If we did this in science Benjamin Franklin no longer looks like a great scientist – we known that for hundreds of years.

    PHOSITA: This is the law – but it is not objective. As explained above this means an idiot working in an area of stupid idiots would receive a patent but a genius working in an area where the average person is a super genius should not receive a patent – that is logical nonsense. In addition, it is logically impossible for something that did not exist to be obvious to anyone.

  75. MuenchenOst May 2, 2012 9:00 am

    Thanks for the reply. When it comes to my natural right to property, independent of government, I don’t understand this necessity to “file for a deed”. Should I be thinking about copyright, where outside the USA it’s in existence, and automatically yours, as soon as you reduce your original work to material form but, within the USA, it’s not property, and not yours, till you have “filed for a deed”?

    Unless every new and useful thought gives rise to 20 years of right to exclude then we need legal tests for what is new and what is useful, preferably objective tests.

    Since we are (inevitably) performing these tests after the event, with full knowledge of the invention, and necessarily looking backwards from the date of testing to the date of the invention, hindsight is inherent and unavoidable. What must be excluded is ex post facto analysis. This is the good feature of TSM. It stops decision-makers simply pronouncing that it is obvious because i think it is obvious.

    I don’t understand your point about Franklin. With genuine inventions, innumerable numbers of them, the more hindsight we have, the greater they appear.

    I don’t agree that if something is new it is necessarily not obvious. Each step forward in technological progress renders obvious many things that were not obvious till then.

    Paul Cole gets castigated for writing about the law as it should be rather than as it is. You are not falling into the same category, I hope, or suffering from a degree of wishful thinking. Let’s be pragmatic here, shall we?

  76. EG May 2, 2012 9:14 am

    “My gripe about KSR is that SCOTUS tossed 30 years of CAFC efforts into the dustbin owing to sloppy opinion writing. They are too dim in this field to even know the harm they caused. This is wrong.”


    Couldn’t agree more. 35 USC 103 isn’t the problem; it’s the failure of SCOTUS in KSR International to provide any rational standard for obviousness based on 35 USC 103, the wording of which SCOTUS frankly ignores or pays lip service to, like it does the wording of 35 USC 101. The mandate was also clear from Congress in 1982 that the Federal Cricuit was to be the primary arbiter of patent law jurisprudence, not SCOTUS. And as I’ve noted before, Congress has the power under Article III, Section 2 to make all patent law based decisions absolutely unappealable to SCOTUS.

  77. Dale B. Halling May 2, 2012 9:26 am


    Pragmatic is the exact opposite of the point of this post. The point is whether “obviousness” is a logical determination of invention and it is not.
    Words have meaning – it is impossible for something that does not exist (novel) to be readily apparent (obvious).
    Under Natural Rights, it is the fact you make something that gives you the right to it. The right to land is because you improved the land – see Homestead Act. However, there are steps you have to take to secure your right – get legal title to it.
    It was not my intention to castigate anyone here, including Paul. In fairness, this article was written to challenge one of the established beliefs of patent law in the last century. I expected vigorous debate

  78. Dale B. Halling May 2, 2012 9:34 am

    Great point about Congress’ ability to limit jurisdiction to CAFC on patent matters. The point of my post was to define a rationally consistent basis for what invention is. Not to start at some point along the line and say we’ll move forward from here, like I do with my household projects.

  79. MuenchenOst May 2, 2012 9:57 am

    Oh sorry Dale. I did not mean to suggest that you it was who was doing the castigating.

    As to “obvious” I think the word comes from “ob Via” Latin for “lying in the road” (here: of technological progress). Patent roadblocks up ahead (of where we are on the road today) will tomorrow hinder rather than promote the technical progress that is being made in the next 24 hours, with consequences for the economy of the USA over the next following 20 years.

    We shall have to agree to differ about whether something that is new cannot at the same time be obvious. At least at the EPO (boring, boring, cry the chorus in the background) determining obviousness is not as hard as you might suppose. Come to some Hearings in Munich and see for yourself how straightforward it is, under the EPO version of TSM.

  80. Dale B. Halling May 2, 2012 10:47 am

    Your response assumes an Anti-Commons problem for patents, for which there is absolutely no evidence. However, there IS a Commons problem.

    “lying in the middle of the road” something cannot lie in the middle of the road if it does not exist. Your metaphor supports your point, but is illogical. something that does not yet exist (novelty) cannot be lying in the road (obviousness). As well, your metaphor changes the argument from patent law to economics. But as pointed out above, there is no evidence for your economic assumption.

  81. MuenchenOst May 2, 2012 11:24 am

    Since I’m a believer in evidence-based scientific and medical progress, I can’t fault your basing yourself on evidence (or the lack of it).

    I’m just too set in my ways to accept your proposition, that what is new cannot by definition be obvious.

    Until you can show me your evidence I will continue to trust my experience, that removal of the obviousness filter will benfit nobody except patent drafters, will hinder rather than promote progress in useful arts, and will disadvantage genuine innovators and the economy.

    i think we are done, right?

  82. Anon May 2, 2012 11:45 am

    A couple of points:

    1) EG, “The mandate was also clear from Congress in 1982 that the Federal Cricuit was to be the primary arbiter of patent law jurisprudence, not SCOTUS.” This is both a solution and a problem. The solution would be to let Congress have its way (re: Golan). The problem is the inevitable p1ssing match with the “other” Court (the Court that insists that it have the sole last word on any Judicial matter, the Supreme Court). The Supreme Court jealously guards its territory and as oft seems the case, the CAFC gets the short end of the stick.

    2) “castigation of Paul Cole.” Castigation is much too strong a word. Asking for clarity in what is the actual law is by no means “severe.” The fact that I have to ask for it at all from someone as knowledgable as Mr. Cole is a bit disheartening. I really don’t mind the propositions of alternate law, as long as they are clearly put forth as propositions. But when the law as is is (intentionally?) misstated, and repeatedly so, I tend to get a little upset. I thought that my reminder was very controlled and professional.

    3) “ob via” and “hinder rather than promote.” The fact that something “blocks” the way seems to be autoamatically viewed as “bad.” What is quite missed is that this blocking the way forces a new way to be paved and is part and parcel a benefit of patents. As has been said by others, this is a feature, not a bug. Having multiple paths or multiple roads is one of the very basic purposes of patent law. There is an untoward bias against patents that is insiduous and persistent (and infects some otherwise very intelligent people). The reinvigoration of what I label as “flash of genius,” or it-MUST-take-something-special-to-have-a-patent is an artiface, a contrivance used by those withthe untoward anti-patent bias in order to limit patents. I will remind all once again, a patent is “A person shall be entitled to a patent unless” and “whoever… and” are meant to be broad welcomes, and certainly not constrianed to elites of any kind (monetary or intellectual).

  83. Dale B. Halling May 2, 2012 12:05 pm

    Evidence: Those countries with nonexistent or weak patent laws are not innovators. When SCOTUS has made it difficult to obtain patents, the US Economy has suffered, as well as our innovation. ex: the last decade, 1970’s. Every single paper that has studied this issue has found no evidence for the Anti-Commons theory.
    Logic: something that does not exist cannot be obvious or apparent. There is no such thing as “evidence” for logic. Now, if you want to tell me that the law is not using obvious as a standard definition, then fine. But that’s why it is confusing to non-patent attorney judges and lay people. There is nothing in the definition of invention that implies anything above the threshold of novelty.

  84. MuenchenOst May 2, 2012 12:32 pm

    Evidence: Oh am I to understand now, Dale, that the travails of the US economy over the last decade are caused by SCOTUS taking a stricter line on the validity of patents. In the same way, I suppose you would contend, the single biggest cause of heart attacks, world-wide, is having English as your first language. Don’t know about the evidence, but the correlation is very striking. Of course there are few patents in failed States. That all they need, to turn themselves around and innovate, is the bygone era of patent law in the USA, is a notion that’s hard for me to swallow.

    Logic: I’ve never had a problem getting EPC TSM obviousness across to engineers, scientists and business people. They embrace it enthusiastically and have no problem accepting it, whether they are part of the patent owner’s team or the opponent’s team. EPO-style obviousness, as applied during inter partes opposition proceedings, is simple common sense, not difficult, not abstruse and not unfair to either patent owners or opponents. If you would assert otherwise, show me the evidence.

    Some roadblocks hinder and some foster progress. Anybody with an ounce of impartiality, including those fortunate few who, like me, represent the opponent one day and the patent owner the next, can see that. The trick is to award a scope of protection commensurate with the contribution to the art. But perhaps that “commensurate” notion cannot fit into your vision either.

    In any patent dispute, obviousness is the heart of the matter. If your caselaw on obviousness is in a mess, then the whole of patent law is in trouble. But the cure is to get some clear precedents, not abolish obviousness because it is too difficult.

  85. Stan E. Delo May 2, 2012 12:51 pm


    One thing occurred me yesterday about what might be causing a sort of dis-connect here comes from their basic understanding or perspective as to what constitutes *normal* (or natural?) intellectual property rights that they are used to.

    If they are used to *weaker* IP rights, they will of course have no problem with SCOTUS or whomever (like Congress) taking away what used to be my property rights here in the US. If their patent systems are “weaker” (if that is the right word to use) than the US IP system has historically been, they may have difficulty understanding why folks like myself are protesting when the Federal government is limiting or damaging the property rights that I am used to as an American citizen. I sure appreciate the very civil discussion, that has taught me great deal.


  86. MuenchnenOst May 2, 2012 1:36 pm

    Stan, ask all those corporations busy exiting Germany because that jurisdiction grants injunctive relief more readily than say Netherlands or the UK. Nobody sites their European distribution centre in Germany these days. Ask why Bosch got out of telecoms. Ask Apple, Microsoft, Nokia about the NPE called IPCom. A “strong” patent system, unless balanced, hinders the economy.

  87. Stan E. Delo May 2, 2012 1:42 pm

    Munich East-

    I herewith rest my case.


  88. MuenchnenOst May 2, 2012 1:47 pm

    Some will say they are exiting Germany because these non-European corporates want to use the Double Irish, Dutch sandwich model of tax avoidance. But that doesn’t explain Nokia and Bosch. Fact is though, that Germany enjoins before it has established whether or not the asserted patent is valid.

  89. Stan E. Delo May 2, 2012 2:09 pm

    Here in the US, the ability to get injunctive relief (IR) was pretty much destroyed by a court decision about 10 years ago. If the inventor is foolish enough to ask the allegedly infringing party to stop doing so, they will immediately file a countering motion for a Declaratory Judgment (DJ) to pretty much make IR nearly impossible here in the US. When the infringers are awarded a DJ, they also get to choose the venue, if the inventor be wealthy enough to challenge it. Meanwhile the patent might be tied up in court for about 3 or 4 years before they Might be able to enforce their patent rights.


  90. Dale B. Halling May 2, 2012 5:11 pm


    There are many ways to screw up an economy, but yes patents are that important. I know it is hard for a generation raised on Keynes who believe CONSUMPTION CREATES WEALTH, but actually the only way to increase real per capita income/wealth/GDP is by raising your level of technology. There are two ways to do this, 1) buy advanced technology developed by someone else or 2) create new technologies. For more see Robert Solow’s classic paper. Since the US is (was) a leader in technology, it did not have the option of just buying someone else’s inventions. As a result, when the US weakens its patent rights it hurts the US economy. Now it is also true that when patent rights are not protected it usually means that all property rights are under assault all of which hurts the economy.

    There is increasing evidence that only with the advent of property rights in inventions (patents) did man escape the Malthusian Trap. For more information see the book The Most Important Idea in the World http://hallingblog.com/the-most-powerful-idea-in-the-world-a-story-of-steam-industry-and-invention/ and http://hallingblog.com/patents-cause-economic-growth-another-academic-study/ and http://hallingblog.com/source-of-economic-growth/

  91. Ron Katznelson May 3, 2012 12:22 am

    MuenchnenOst: Ask all those corporations busy exiting Germany because that jurisdiction grants injunctive relief more readily than say Netherlands or the UK…. A “strong” patent system, unless balanced, hinders the economy.


    Evidence: please identify any EVIDENCE for the assertion that a “strong” patent system hinders the economy. I am aware of only published allegations to that effect, but none have provided evidence that stands up to factual scrutiny.

    How does the fact that the German economy is the strongest and healthiest in Europe supports your contention? Is it not evidence that strong patent rights in Germany may actually have a lot to do with reducing the risks to investors in new inventions and therefore channels capital to the new innovation high-growth economy rather than to the incremental-improvements stagnant economy?

    Logic: “unless balanced” – What does that mean? What do you propose to “balance” against the property rights of inventors? If the patent is adjudicated and found not invalid and infringed, why should injunctive relief not issue “more readily”?

    Evidence: If your point is limited to preliminary injunctions, are you suggesting that German courts issue preliminary injunctions for ultimately invalid or non-infringed patents? If so, can you provide empirical evidence to back up this assertion? Do they not invoke the presumption of validity (as they should) and require, as our courts do, a showing of likelihood of success on the merits before a preliminary injunction issues?

  92. Stan E. Delo May 3, 2012 12:37 am

    Very well said Ron!


  93. MuenchnenOst May 3, 2012 2:48 am


    Mr Katznelson, many thanks for your interest. I welcome the chance to respond. What prompted my remarks was my reading of a Paper on “bifurcation” from the head of Patents at Nokia, and exhibited on the IPKat law blog recently. In Germany, infringement is tried in a District Court while validity is tried in a Federal Court. Claim scope in Germany is therefore like an Angora cat. The cat in the District court, presented to the judge by its owner with fur erect and threatening, looks to the judge enormous, and well able to swallow the accused infringement . The same cat standing in the Federal Court, presented soaking wet by the patent owner, is only a fraction of the size and easily sees off the prior art attacks on it. Stan’s dream venue, I’m sure.

    Above is a Link which I hope will take you and Stan to the Nokia Paper. Intended for politicians, it is very compact but, nevertheless, there is stuff in it that you might be willing to accept as more than mere insinuations and allegations.

    By “balanced” I mean fair to both small inventors (who need the threat of injunctive relief) and to troll targets (who do not deserve to be victims of extortion). Incidentally, you might enjoy Wagner v Earlex:


    at para 73, first sentence, for a nice example of patent litigation without German-style bifurcation.

    I tend to agree with you, that a “strong” patent system likely goes together with a strong economy. But granting injunctive relief on patents whose validity is determined only 5 years later is not my idea of a “strong” patent system.

    And, sigh, yes of course Europe has a Presumption that patent applications examined ex parte on the merits are valid on issue. But most people accept that the PTO in ex parte proceedings cannot fairly be the ultimate arbiter of validity and that inter partes disputed proceedings are more likely to lead to an accurate finding on validity.

    Inventors should not be unfairly denied their “day in court”. So, in cases of doubt, Patent Offices ought to let applications through to issue. It is therefore no wonder, that many in truth invalid claims get asserted, once they issue. Fact of life. Any decent system of patent litigation has to be able to deliver swift injunctive relief but (for the sake of the economy and of fostering investment in technological innovation) only in deserving cases.

    You agree, I expect.

  94. MuenchenOst May 3, 2012 4:49 am

    I did reply but my post has not yet appeared. So here’s another attempt.

    Ron, you might like to Google Vary/Nokia/bifurcation or go to the IPKat blog for a Paper by Nokia’s Head of Patents. Does that Paper give you more than mere insinuations and allegations? Can you find in it anything you might deem to be evidence?

    Balanced means giving inventors swift injunctive relief, in deserving cases, and swift extinction of their claim when it ain’t valid. Here:


    is how it’s done in England.

    Meanwhile, in Germany, the validity of the claim is typically decided 5 years after the injunction is issued.

  95. Dale B. Halling May 3, 2012 8:24 am

    I’m all misty-eyed

  96. MuenchenOst May 3, 2012 8:46 am

    This is for Mr Ron Katznelson, a link to some evidence of the strength of the German way of patent litigation, the Paper from Nokia’s Head of Patents:


  97. Anon May 3, 2012 10:30 am


    I thinmk you are conflating topics (patent strength and civil procedure). Not only that, you are not</b addressing points being made and making claims after evidence for such has been asked

    Further, and reminiscent of typical Patently-O tactics, even your own links speak against your claims, for example, you state that Germany takes typipcally five years, yet from the Nokia paper:

    Today bifurcation is practised by the German patent courts. Patentees seeking to enforce an
    injunction pending the invalidity decision may have to post a bond, to compensate the defendant if he
    is later shown to have been wrongly excluded from the market. But the value of these bonds is
    typically lower than the lost sales for
    the year or so that it takes to determine invalidity.

  98. Stan E. Delo May 3, 2012 2:56 pm


    Folks like Microsoft (sorry Bill G), IBM, Intel and Cisco and other large corporations are largely responsible for the passage of the America Invents Act of 2012. The *Act* significantly detracts from the value of my IP rights, but why should they care about that?

    If they can improve their profit margins by a half of one percent, they will possibly increase their *earnings* by scores of millions per year. Some of these corporations are pretty notorious for just *taking* whatever they want, and then just saying “So Sue Me” when they get caught knowingly and intentionally infringing.

    Hasta la vista,

    Max wrote in part:

    Ask why Bosch got out of telecoms. Ask Apple, Microsoft, Nokia about the NPE called IPCom. A “strong” patent system, unless balanced, hinders the economy.

  99. MuenchnenOst May 3, 2012 3:10 pm

    Glad you raised that point, anon. The 5 years I was referring to is the wait in the queue, between the first validity instance (the Federal Patents Court) and the appeal instance, the BGH in Karlsruhe. The rate of reversal at the BGH is comparable with the CAFC’s reversal rate, I think you’ll find. I think you’ll find that everybody who can’t settle will appeal to the BGH, expecting to prevail there, even though, at first instance, they did not.

  100. Ron Katznelson May 3, 2012 5:48 pm

    93.MuenchnenOst: “You agree, I expect”

    I agree only on one item – that bifurcation of infringement and invalidity determinations cannot be made under disparate claim construction regimes. But that is something the Europeans could have learned from U.S. law since at least 125 years ago: see Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970) (in finding validity but non-infringement, the court stated “A patent may not, like a ‘nose of wax’, be twisted one way to avoid anticipation and another to find infringement.” Citing White v. Dunbar, 119 U.S. 47, 51 (1886)).

    However, I disagree in all other respects, and as pointed out above by Anon, you have not addressed the points I made, nor provided any EVIDENCE to support your sweeping assertions. In fact, you appear to concede your central theme: you say “I tend to agree with you, that a “strong” patent system likely goes together with a strong economy.” Yet you insist on constituent components of your theme. I ask this question again: please provide evidence that “strong” patent system “hinders the economy.” Citing anecdotal cases is unavailing. Even your generalization that “yes of course Europe has a Presumption that patent applications examined ex parte on the merits are valid on issue” appears contradictory with the British Wagner v. Earlex case you cite, which applies the preponderance of evidence standard. A presumption of validity by a mere preponderance of evidence amounts to no presumption at all on the merits. The term “presumption” inherently means that deciding on the existence of a fact upon observations under mere “balance of probabilities” (50-50 threshold) means that there is no a priori knowledge of the likelihood of its existence – a purely random event that is not presumed to exist. But this is exactly what the court in Wagner appears to do on the validity issue of prior public use when it states that it is not “persuaded on the balance of probabilities.” Paragraph 64. When it comes to the merits (not to procedural showings allocation), a presumption of validity is meaningless if it is rebuttable by mere preponderance of evidence; that is the same standard that exists prior to examination at the Patent Office – no presumption of validity at all.

    Needless to say, I found your assertions on European presumption of validity unpersuasive. I have actually looked into this issue last year and found that Europe is all over the map on this issue. Some jurisdictions apply the presumption – requiring proof “to the hilt” and some apply no presumption at all – applying the “more likely than not’ standard. On this issue too, the Europeans can learn from over 170 years of U.S. patent law. Even the SCOTUS was able to correctly affirm in Microsoft v. i4i the holding that invalidity of issued patents must be proven by clear and convincing evidence (C&C). As I wrote in my Amicus brief to the Court, the C&C heightened standard is required so as to correctly allocate the expected risk of factfinder errors between the litigants in a manner that reflects their relative asymmetric countervailing risks. Unlike infringement determinations where the risk of error is symmetric for both litigants (requiring the preponderance of evidence standard), the degree of risk-asymmetry in invalidity determinations can often reach factors of hundreds because an erroneous invalidation of a patent can result in unjust loss of royalties not only from the accused infringer but from hundreds of licensees. See my brief at http://bitly.com/MS-v-i4i-Brief.

    That such basic judicial principles may apply in some area of the law but ignored in patent law in some European states is perplexing. This issue and the bifurcation issue you correctly identified are only the tip of the disharmony iceberg in European patent law. It is ironic that we Americans are asked to align our patent statutes, which are fully harmonized across 50 states, with those which are harmonized across none.

  101. Stan E. Delo May 4, 2012 12:19 am


    Good point about harmonization between States. The whole concept of independent States having their own autonomy, and conditionally agreeing to unite as a single nation might seem to be a somewhat strange concept for some Europeans to grasp.

    Fortunately the US never had to suffer through a feudal system that was employed by political systems originally based upon a Monarchy type of model. (Kings and Queens)

    Just the diversity and size of the US is also challenging, since Germany is only slightly larger than the single great state of Washington, in the Pacific Northwest. You know, where Bill Gates *invented* software back in the late 70’s, and Boeing learned how to build the most sophisticated aircraft in the world, including B-17 flying fortresses that arguably won WWII for the Allies. The B-17 that Paul Cole mentioned currently residing at Duxford was either built in Renton, about 2 miles from where I grew up, or in Seattle about 5 miles in the other direction.

    Makes for a sort of apples and oranges type of discussion once in a while I suppose. To each their own at the end of the day, though.


  102. MuenchnenOst May 4, 2012 3:36 am

    Bravo Ron. Thanks for taking the time to read Wagner and then write such a juicy response. Time presses, so I will try to be quick.

    We agree on more than you think, especially if we both avoid any hint of childish “My Dad can beat your Dad, any day of the week” style of argument.

    Bifurcation? That would be Germany and Austria, not “Europe”. Japan copied Germany in this regard, a hundred years ago, but is rowing back from it now.

    Presumption? We need to distinguish between who has the burden, and what that burden is. Wagner is one good case. Another is MS v i4i. Now when did SCOTUS set the burden? It wasn’t 125 years ago, was it? For me though, the “Presumption” only sets who carries the burden, not whether the standard is C+C or the preponderance.

    Harmony? England has discovery and cross-exam (as we saw in Wagner). So it adheres to the normal burden of proof in civil cases, the preponderance. The EPO, lacking discovery and cross-exam opts for an “up to the hilt” standard, when it comes to allegations of prior use by the party seeking revocation. Does it have any other realistic choice? We shall have to wait a long time for perfect harmony between 40 proud independent nation States, each with their own history of the Rule of Law. But look at substantive patent law rather than procedure in the course of patent litigation. On that, Europe is no longer all over the shop. The Enlarged Board of Appeal has been pronouncing for a mere 30 years, and each patent the EPO grants lasts 20 years. the Wagner patent for example was written, filed and prosecuted close to the dawn of the EPC system. You mention 125 years. Give 40 State Europe a bit longer than a mere 30 years, won’t you?

    Learning from the USA? Definitely. All the time. How much of what we had learned from the USA went into the drafting of the EPC in 1973? How much of European anti-trust law comes from the USA? Most of it, I suspect.

    Does the USA learn anything from Europe? Also yes. Rader CJ is often in Munich, consulting. From his decisions, i see that he has learned a lot.

    Perplexing? Sure. So too is US patent law to Europeans. But might it not converge? After all, you do now have First Inventor to File.

    I think we are done but, once again, many thanks.

  103. MuenchnenOst May 4, 2012 6:59 am

    My long follow-up post just now about evidence and what makes a patent system “strong” did not make it on to the page. There must have been something in it that snagged on the Watchdog filter, I suppose. I overlooked to save a copy. That was a pity because i have no time now to write it all again.

  104. step back May 4, 2012 4:13 pm

    MO: just ask Gene to release your post from spam-catcher jail 🙂

    (It probably has multiple hyperlinks –that alone will send you into spam catch land)

  105. Jon Shields May 5, 2012 11:31 pm

    This entire post misunderstands the point of Article 1, Section 8. The granting of a power to Congress does not imply that Congress is mandated to exercise that power at all (let alone to whatever extent Dale wishes). For example, the power to lay and collect taxes does not imply that Congress must collect any taxes at all (let alone tax everyone at 100%).

    The fact that the word “right” appears in a power granted to Congress changes nothing. If Congress has the power to do X under article 1, section 8, it simply does not have to exercise it (whether or not X contains the word “right” 1 or 5 or 10 times). As you said, words indeed have meaning (and meaning of the word “power” is not a mandate to enact laws to protect whatever “Dale’s conception of natural rights” happens to be).

    Consider a hypothetical power to enact laws securing the right to free speech. That does not require any Congress to enact any law protecting free speech; it merely gives Congress the power to do so. The reason free speech is protected under our Constitution is because the first amendment FORBIDS Congress from enacting laws that abridge the freedom of speech.

    This is true more generally. Alice might believe that the Constitution provides a “natural right” to a minimum standard of living. Bob might believe that any taxation of his earned wealth violates his “natural right” to keep the fruits of his own labor. But Alice and Bob’s conception of “natural rights” is irrelevant, because we have a written Constitution (and are governed by its words and their meanings). Under the Constitution, the only relevant questions are

    a) whether Congress has (in the first place) the power to pass the law in question, under article 1 section 8 (and any amendments extending or retracting that power), and
    b) whether the law violates other provisions of the constitution (such as the bill of rights).

    If Alice went to court, she would be laughed out of court. A court cannot strike out the age limit on Medicare (extending it to all), because there is no right under the Constitution to receive Medicare. Likewise, Bob would also be laughed out of court, because the Constitution gives Congress the plenary power to tax.

  106. MuenchnenOst May 6, 2012 4:58 am

    Comment No. 106. That does it for me. Wow. And thank you, Jon Shields.

    What do you say to that Dale? In particular, when you get down to it, is not your personal conception of “natural rights” just as irrelevant as those of poor misguided Alice and poor misguided Bob? I’m surely not the only one here, fascinated to have your reaction.

  107. Blind Dogma May 6, 2012 9:18 am

    There is a certain amount of talking past one another going on here.

    Jon, you wish to stress the point that the power provided is not a mandatory call to use that power.

    Dale, you wish to stress the point that “right” is used on purpose to identify a natural right.

    You are both correct.

    Jon, you wish to say that the use of “right” is meaningless.

    Dale, you wish to say that the government must protect an identified right.

    You are both incorrect.

    The point of the matter is that the natural right truly does exist and is recognized as such. But that natural right is only an inchoate legal right. It does not become a truly full legal right until the race is won (borrowing a race analogy I have seen elsewhere).

    However, given that Congress has written laws to secure that natural right, and given that Congress (and not the Supreme Court) has sole discretion and full power to set those laws, the traditional power of the Supreme Court is very weak in this area. As the Golan v Holder case can attest, things in the public doman can be taken out of the public domain if that is what Congress decides to do. Congress has that much power. Congress, not the Supreme Court, gets to set the parameters of the race. Further, the Supreme Court must be constrained by a fair reading of the Constitution and not overzealously imbue power to a preamble that does not belong there (contrast the preamble treatment of the second amendment).

    In what is an unsual circumstance, patent law is one area that the Supreme Court can act in an unconstitutional manner more easily than Congress.

  108. Dale B. Halling May 6, 2012 9:45 am

    Jon & Blind Dogma

    You are clearly ignoring the structure and historical context of Declaration of Independence and the Constitution. The Declaration of Independence states:

    “We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable rights, that among these are life, liberty and the pursuit of happiness. That to secure these rights, governments are instituted among men, deriving their just powers from the consent of the governed.”

    Thus, a just government does not have the OPTION to secure these RIGHTS – it is the very purpose of government.

    The purpose of the Constitution was to delegate which part of the three branches of government were responsible for various tasks. The power clause of Section 1 merely delegates the power to Congress to secure the rights of inventors. The likely reason for this was that Congress would have to draft the statute to secure these inchoate rights. To argue that Congress had the power to not secure these rights is to argue the Declaration of Independence is meaningless – or that Congress has the power to act in ways that are inconsistent with the purpose of government. That would be nonsense.

  109. Dale B. Halling May 6, 2012 9:46 am

    Patents are Natural Rights is not my personal conception, IT IS IN THE CONSTITUTION.

  110. Blind Dogma May 6, 2012 10:31 am


    Inventions are natural rights. Patents are the legal mechanism created by Congress. A natural right by itself just does not have the force of an established right made choate. In order to do anything with your natural right, you must take it from inchoate to choate. Whether or not Congress has set a path for such is a meaningless angel dance on the head of a pin. Congress has set a path. My point is that this is up to Congress and not the Supreme Court.

    This may be a matter of semantics, but no one is saying ( at least I am not saying) that natural rights do not exist. But there is a clear difference between an inchoate right and a legal right. “Patents” as that term is understood today are not in the Constitution. Inchoate rights are recognized in the Constitution. Whose power it is to secure those rights is in the Constitution. Exactly how and to what level that securing is done is not in the Constitution.

    Dale, perhaps the subtlety you wish to explore is found in the question: what “legal” power is there in the Declaration of Independence?

  111. Blind Dogma May 6, 2012 11:18 am

    Small correction: the Constitution does speak to a “level” of securing (exclusive) owing to the nature of the natural right.

  112. Dale B. Halling May 6, 2012 11:38 am

    Blind Dogma,

    I agree with most what you are saying, except that inventions are not a natural right – you have a natural right in you invention. An invention is a human creation that has an objective result.

  113. Jon Shields May 6, 2012 7:03 pm

    Dale, can you point to a source that indicates the text of the Declaration of Independence was ratified by Constitutional Conventions by 3/4 of the states in 1791, as some sort of independent, self-executing body of higher law? Because I can’t find such a source.

    There is a reason why the actual ratified Constitution was far more specific than simply “Congress must act to protect natural rights” (leaving us to fight over whether the correct conception of “natural rights” is yours, or Alice’s, or Bob’s). They certainly didn’t say “Congress must act to fulfill the purpose of the government, whatever that is.” Indeed, such general, infinitely elastic documents would never have been ratified by anyone.

    Instead, the framers and ratifiers decided to write a much more specific document than a one sentence platitude. Instead of leaving the question of the “purpose of the government” unspecified (to be fought out by politicians and lawyers), or how that “purpose of government” must translate into positive legislation, they protected our “natural rights” through the words of the written Constitution that was ratified. To the extent the Declaration of Independence helps us understand the meaning of those words, it only helps when the meaning of those words is ambiguous. It cannot be used to twist out a meaning of words that is completely foreclosed by the basic understanding of those words at the time.

    In this case, the relevant word in question is “power,” not “right.” If “power” does not imply a mandate to enact a particular conception of a “natural right,” then whether or not the word “right” appears in that power is completely irrelevant. As I said, even if the “right” were the right to free speech, the “power” to enact a law is not a “mandate” to enact it. Our right to free speech is substantively protected by the first amendment (which is a prohibition on Congressional action, rather than a mandate to enact positive legislation). Whatever you believe our “natural rights” are, Congress was simply not mandated by our Constitution to enact a patent system at all. The words do not say that (nor are they sufficiently ambiguous to be conducive to such an interpretation). No one at the time believe that article 1 section 8 was a mandate to exercise the powers within, to a certain, unspecified extent. That is not what the word “power” means.

    In addition, you seem to be implying that a court should strike down section 103, without striking down the rest of the patent act. (Please correct me if that is not what you are saying.) But that would be a truly bizarre use of judicial power. The founders did not intend the Supreme Court to have the power to cut and paste words of legislation to make up their own framework (like a kidnapper cutting words out of a magazine to compile a ransom note). Likewise, the Supreme Court does not have the power to eliminate the age restriction on Medicare eligibility (even if it incorrectly finds a supposed right to be free of age discrimination in all Congressional enactments). Congress would not have enacted Medicare in 1965 without such an age limitation, and Congress would not have enacted the modern patent act if patent protection extended to obvious inventions. Most of the time, unconstitutional provisions can be severed from the remainder of the act.

    But it is ultimately a question of Congressional intent as to whether severability is possible. Could you imagine a court striking down certain requirements for a first degree murder conviction (leaving the crime and its penalty intact)? I can’t imagine such an action, because I doubt the legislature in question would have believed they were severable.

  114. Stan E. Delo May 6, 2012 7:48 pm

    Isn’t Congress supposed to be *checked* by the court system, and also by the current President? Currently there seems to by an arm wrestling match to decide if the Supreme Court of the CAFC is the final arbiter in all things IP.

    Since the SCOTUS seems to be so woefully ignorant in the matter, I would tend to vote for FedCircuit courts to decide IP issues. The Supremes have demonstrated pretty clearly in the past that they don’t seem to like or respect patent rights very much.


  115. Jon Shields May 6, 2012 9:16 pm

    Yes, Congress is supposed to be checked by the court system. But not in any way the court system chooses. The court system interprets what existing law means, and whether that law is inconsistent with the Constitution. If a law is inconsistent with the Constitution, there must be some Constitutional provision that creates the inconsistency. In this case, relevant provision is a grant of power to Congress to protect intellectual property. The patent act can violate that provision only if it protects more than what the Constitution allows. It cannot violate that provision by not protecting enough, since the provision does not mandate Congress protect anything.

    I don’t agree that there is any ambiguity as to whether the Supreme Court is the final arbiter in all things IP. By law, the Supreme Court has appellate jurisdiction from all circuit courts (including the federal circuit). A federal circuit decision only stands if the Supreme Court feels like letting it stand.

    Now, it is true that the Supreme Court has limited resources, and is generally not an “error-correcting court.” It is mainly interested in cases where the law to be applied is in question (rather than cases where the law to be applied is clear and accepted, and the lower court simply got the application of that law wrong). Because of that, circuit courts have lots of discretion; they are the final stop for 99+% of cases. The Supreme Court usually assumes that lower courts attempt to apply its precedent in good faith.

    But if the Supreme Court believes that a circuit court is abusing that discretion to effectively ignore or overrule a Supreme Court precedent, they can take action. A perfect example of this is the Supreme Court’s response to habeas petitions for state convictions governed by AEDPA (particularly in the 9th circuit). The law states that federal courts must give significant deference to state courts in reviewing state convictions. Yet there are many cases where the 9th circuit ignores Supreme Court precedent (and AEDPA), and frees those convicted under state law. The Supreme Court has started to look very closely at any such decisions coming out of the 9th circuit, and it has summarily reversed many of them in short opinions (without any merits briefing or argument). It does this to protect its status as an institution; the Supreme Court does not want to leave the impression that lower courts can ignore its rulings without consequence.

  116. Stan E. Delo May 6, 2012 10:00 pm


    I would second M’s earlier wow. The dichotomy between two seemingly separate Federal court systems is asking for confusion though, in my opinion. If us actual inventors have to try to guess which court will decide our fate, how is that helping anything? Without inventors though, patent attorneys might well find themselves un-employed, so there is that to consider as well. A good patent attorney is a terrible thing to waste!


  117. Anon May 7, 2012 8:33 am


    You seem to imply that only Congress can violate the Constitution when it comes to the patent clause. You have not commented on my suggestion that the Supreme Court can violate the Consitution when it comes to that same clause.

    Do you not think this possible?

    Further, you keep on dismissing “right” when it is an operative word of the discussion. I will grant you that it is not the only word of the discussion, but it is an important word and your desire not to discuss it leaves the discussion lacking. It’s as if you want to say only your one thing (but I for one already accept that one thing – that COngress can or cannot set up a system), and yet you leave out the fact that Congress has set up a system. You seem to want to ignore the level of power that Congress (not the Supreme Court) has in this matter, you seem to want to ignore the actual role of the preamble (compared to other constitutional scholarship) that points to the Supreme Court’s actual proper role being a very minor one.

    The point of the matter is that you are correct, but only in a limited manner and you leave the conversation prior to the total matter being resolved.

  118. Dale B. Halling May 7, 2012 8:43 am


    It is irrelevant whether the Declaration of Independence was ratified by the states. The point of the Declaration of Independence was that it explains the purpose of a government and that when the founders used the word RIGHT it meant a NATURAL RIGHT. In looking to the original intent of the founders the Declaration of Independence is critical to understanding the structure of our government. It clearly states that the purpose of government is to SECURE OUR RIGHTS.

  119. Anon May 7, 2012 8:50 am

    Dale and Jon, let’s stop talking past one another.

    We have purpose.

    We have motive.

    We have means.

    And we have fait accomplai.

    The entire discussion of “But Congress could have decided not to have a patent system at all” is a meaningless red herring. It is pure conjecture and ignores the fact that we do have a patent system. It simply is not where the focus of the discussion should be.

    Now. Given that we do have a patent system, let’s rephrase the issue so that an intellignet conversation can take place.

  120. Jon Shields May 7, 2012 8:36 pm

    Anon, I was responding to Dale’s claim that a non-obviousness requirement is somehow unconstitutional. (That was the focus of the article.) So I don’t think it was a meaningless red herring at all.

    As to KSR, let’s assume for the sake of argument that the Supreme Court had an incorrect interpretation of the statute. I still don’t see how that means the Supreme Court “violated the Constitution” (unless you believe that any incorrect statutory interpretation is a violation of the Constitution). You say the Supreme Court has a very minor role, but I think it is important to specify exactly what role we are talking about. The Supreme Court has no role in setting patent policy (which is entirely Congress’ responsibility, subject to the Constitution). But making final judgements on the correct interpretation of statutes is solely the responsibility of the judicial branch (and ultimately the Supreme Court).

    This is not to say that they are not wrong; we are assuming they are wrong for the sake of argument. I just don’t see how them being wrong here is any different than them being wrong in any other non-patent case. Specifically, I don’t see how the word “right” changes anything. If the Supreme Court were deliberately rewriting the statute (by accepting an interpretation they knew to be wrong), that would be wrong to do even if the word “right” did not appear. Conversely, if the Supreme Court simply made an honest mistake in interpreting the statute, that would be the same kind of mistake they make when incorrectly interpreting other statutes (even with the word “right” present).

    In any case, Congress can always correct the Supreme Court by updating the act itself. There is nothing stopping Congress from essentially overruling KSR and articulating the correct interpretation into the statute itself.

  121. Stan E. Delo May 7, 2012 10:29 pm


    The only problem with your last paragraph, that is true enough on the face of it, is that Congress is most likely Not going to do anything of the sort in the forseeable future. Meanwhile inventors and their patent attorneys will have to try to tiptoe around their clueless decision for who knows how many years?

    They have damaged US patent rights significantly, and they don’t even seem to understand how or why, much less even care if they Did have a clue. Talk about your ultimate Ivory Tower! A tower built on shifting sands, it would appear, which seems very irresponsible to me. If they Don’t Know, they need to go look it up and get educated. We are talking about potentially scores or hundreds billions at stake, and they don’t seem to care?

    Perhaps inventors and patent rights annoy them because they have somewhat limited power over them, but they still have the power to reverse lower court decisions for whatever reasons. Common sense obviousness?!

  122. Dale B. Halling May 8, 2012 9:08 am

    The word right changes things because it means that it exists separate from Congress and the Supreme Court’s actions and defines whether their actions are correct. This is not true of for say an administrative law, such as the speed limits on the highway, or whether whether to sell long term or short term government bonds, or whether mail will be carried by trains or airplanes.

  123. Anon May 8, 2012 7:49 pm

    and defines whether their actions are correct.

    No. It does not. You are placing too much emphaiss on an inchoate right, and not enough emphasis on what t means to have that right mature into a legal right. As I said, no one is doubtignthe existence of the inchoate rights. It is just that they are only inchoate rights.

  124. Stan E. Delo May 8, 2012 8:20 pm

    It seems to me as if inchoate rights are perhaps the direct opposite to Chaotic rights, which the anti-patent crowd seems to be so enamored of. What a shame that they have damaged the value of US patents so much through their greed and avarice.

    Color me a bit jaded this afternoon. Do you remember bobbie and his whole song and dance? Whole Castles built upon kitty litter, and he didn’t seem to give a hoot about how much damage he might be doing, as long as *bobbie* was happy.


  125. Stan E. Delo May 8, 2012 10:30 pm

    From my trusty old Merriam-Webster dictionary-

    Inchoate- adj: Being only partly in existence or in operation : Incomplete or Incipient.