Is obvious now defined as "predictable"

Life is full of subjective measures - Am I a "good" person? Depends. Is this a "long" piece of string? Depends. Is Playboy "pornographic"? Depends. Is that figure skating routine worthy of 9.8 or 9.9? Depends. Is my invention "obvious"? Depends.

By now, you probably know that the Supreme Court, in the "KSR" ruling, made getting a patent significantly harder by throwing out a test that had been [mis]used for many years. This week, according to Greg Aharonian of the Internet Patent News Service, the PTO issued revised guidelines for obviousness determination during patent examination in response to the KSR decision. According to Greg, who has time to read these things, the new guidelines effectively define obvious as "predictable".

Like trying to prove the non-existence of a non-observable phenomenon, being absolute about what's good, pornographic, or obvious is clearly impossible. If we agree with the premise that patents should only accrue to inventors who make a meaningful improvement (by which I "obviously" mean to make an improvement that was not "obvious" to the bulk of society) to their fields of endeavor, then we buy into the conclusion that some subset of society will have to sit in judgment of these improvements and try to apply a fair (= equally applied) standard to all inventions. That the current situation is a poor implementation of this goal does not invalidate the goal.

The standard to which inventors are held, however, will always be defined by a sense of what society believes or understands. The KSR ruling was to obviousness what Potter Stewart's words were to pornography ("I shall not today attempt further to define [pornographic] material...but I know it when I see it.") Or, to paraphrase Cole Porter, "In olden days a glimpse of prior art was looked on as something shocking but now, God knows, anything goes" (sorry Cole).

Anyway, I think we'd just better suck it up and work our arguments at the PTO or CAFC the best we can. I personally don't like moving from "obvious" toward "predictable" because I don't want to limit inventions to items developed by trial and error (like Edison's light bulb filament); I want to reward the inventor who uses whatever skills he or she has to predict a result that the rest of us didn't have the insight to consider.

"I've got an invention, now what?"

Last week I spoke to a potential client who essentially asked me the question posed in the title: Now that I've invented something, what do I do next to protect my invention. Unfortunately, I needed to explain that, no, she didn't have an invention, she had an idea. An idea that, perhaps, with a bunch of development effort, might become an invention - in which case we could evaluate the pros and cons of filing a patent application.

We've all noticed problems in our daily lives and said something to the effect of "what is needed is a [fill in the blank] that would do [fill in the blank]. The difference between an idea and an invention is the difference between observing a need and filling that need. I wish my garden were lush and beautiful, but without a lot of sweat it will remain a weedy patch.

Previously, most people quickly passed from the idea stage to the "forget about it" stage as they realized A) they didn't know anything about how to implement their idea and B) they had no reason to think their idea would be a commercial success. More recently (this millennium), however, the very public, huge successes of certain ideas (think Google, Facebook, UTube), aided and abetted by television entertainment shows ("American Inventor" reality show, Good Morning America's "Mothers of Invention" contest) have changed people's perception of what they have. Novelty be damned, obviousness - what's that, let's patent this and make a bundle!

This desire to turn every idea into an invention is not limited to "amateurs". Often clever engineers get an ah ha moment and want to rush to the patent office. But again, without the usually hard effort of working through the details they often don't yet have an invention.