Electronic Design

Patent Law: Who Knows What's Obvious?

According to Jay Sandvos, a partner with Bromberg & Sunstein LLP, a Boston law firm focusing on intellectual property and business litigation, the recent Supreme Court decision makes it much easier for the Patent Office to reject claims as obvious just by adding together pieces of different prior-art references to resemble the claims.

In the past, this had to be supported by an analysis. Such analysis would have to demonstrate that someone in the same field tackling the same problem could have combined the prior art to make what the patent claims. That difficult analysis is no longer required. Now it's simply enough if a person in the field might have combined the teachings of the prior art for any reason at all. That's a big change, and the new test will be much easier to meet.

In addition, the judge and jury in a court case are complete novices where the technology of the patent at hand is concerned. Juries are also unfamiliar with legal concepts generally, whereas individual trial judges vary widely in their experience and skill in handling the unique legal issues arising in patent law.

By contrast, the examiners at the Patent Office are relatively knowledgeable about the technology of the patent and are familiar with the legal niceties of patent validity. Where an obviousness challenge in court is often characterized as a roll of the dice, one would expect the Patent Office to understand a genuine and well-supported obviousness argument and act appropriately.

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