Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 89

The first U.S. Patent Act in 1790 provided for the issuance of patents by the Secretaries of State, the Department of War, or the Attorney General, or any two of them, who should deem the invention or discovery sufficiently useful or important. After 3 years, the Patent Act of 1793 eliminated altogether the examination procedure in the grant of patents. However, the language regarding “useful” and “important” as to patents did reappear in the patent statute of 1836, which also reinstituted the patent examination process. This language was also included in all patent acts preceding the 1952 Patent Act, which is primarily the law in operation today, with periodic amendments. The latest major amendment was the AIA enacted in 2011.

Apparently, the fact that an invention had to be both useful and important was universally ignored by the U.S. courts prior to 1952. However, in dealing with patents, the courts did institute certain criteria for innovation above and beyond the test of novelty. Thus, case law began to develop around this test of “importance” of the invention. The various cases decided by the several courts set forth a great variety of definitions relating to the requirement for innovation, in addition to novelty, to support patentability. The question always has been, and still is, to determine whether a novel invention is a sufficient advance in the art that its disclosure to the public warrants granting the right to exclude others from use of the invention for a limited time period. This is the statement of the law as it exists today, and the answer to this question lies in the analysis of the technological advance of the particular invention over the content of the prior art.

The requirement that the subject matter of a patent grant be non‐obvious was first embodied in statutory form in the 1952 Patent Act in Section 103, which stated:

Conditions for Patentability: Non‐Obvious Subject Matter

“A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title (novelty requirements), 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. The patentability shall not be negatived by the manner in which the invention was made.…”

The AIA made a change to Section 103 as follows:

“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in Section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”

The key change made by the AIA was in making the non‐obviousness test applicable at the time the patent application for the claimed invention was filed, and not as of the invention date as in pre‐AIA §103. This conforms the definition of prior art in Section 103 with the definition of prior art in Section 102. The only other material change in the obviousness section relates to situations where (1) the prior art under consideration (“subject matter developed by another” in the statute) was commonly owned with the claimed invention, or (2) if the subject matter sought to be patented was subject to an obligation of assignment to the same person on the filing date of the application under examination. In either situation, patentability will not be precluded. In other words, the common ownership, obligation to assign, or a joint research agreement must exist on or before the effective patent application filing date of the claimed invention. Under the previous law before the AIA, these conditions had to be in existence before the date the invention was made. If any one of these conditions are met, a disclosure is not prior art at all, and cannot be used to reject a patent claim for lack of novelty or obviousness.

The legislative history of the 1952 Patent Act indicates that there was no provision in prior patent acts that corresponds to rejecting patents on the grounds of obviousness. However, U.S. courts had been holding patents invalid on the grounds of lack of invention since at least as early as 1850. The statement about non‐obviousness was purposely left broad in the statute, with no definition of “obvious” offered by Congress. Congress hoped that the courts would later develop a more explicit statement of criteria that may be worked out to determine whether inventions are obvious or not in view of the prior art. Also, the legislative history indicates that the second sentence, relating to how the invention is made, states that patentability is not to be negated by the manner in which the invention is made. That is, it is immaterial whether or not the invention resulted from long toil and experimentation, or from a “flash of genius.” This specific provision overruled a series of prior Supreme Court and other court cases, which held that, to meet the requirement of inventiveness, or non‐obviousness, the invention had to be the result of a flash of genius, rather than something resulting from long efforts and constant empirical experimentation, as is the case with most modern innovation. For example, it took Thomas Edison and his team of 20 or so engineers 2 years of steady work and experimentation to develop the first practical incandescent lightbulb.