43 IDEA 475 (2003)

handle is hein.journals/idea43 and id is 485 raw text is: 475

Under United States patent law, a patent shall not be issued if 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. Patentability shall not be negatived by the manner in which the
invention was made.' Contemporary patent law has weakened this non-
obviousness requirement, leading to the grant of many patents on trivial
inventions. As will be shown in this article, this proliferation of patents is
economically wasteful.
This article examines the non-obviousness standard, and explores ways
to set the standard at a level that rewards significant inventions while avoiding
proliferation of economically undesirable patents. Part I shows the actual
workings of the standard, as that standard is applied by the Court of Appeals for
the Federal Circuit (CAFC) and the United States Patent and Trademark Office
(PTO). Part I also includes examples that show the weakness of the standard.
Part II reviews the historical and constitutional sources of the standard, and
shows that a higher standard than that which has been applied may be
constitutionally required. Part III shows that a higher standard is economically
desirable, and suggests a specific higher standard. Part IV demonstrates the
workability of such a higher standard by showing how it can be applied in
A. The Concept of Non-obviousness
Non-obviousness, or, as known in Europe, inventive step,2 is one of
four traditional and internationally accepted requirements for the grant of a
George E. Osborne Professor of Law, Stanford Law School. B.S., Marquette, 1958; J.D.,
Stanford, 1968.
35 U.S.C. § 103 (2000).
2  An invention shall be considered as involving an inventive step if, having regard to the state
of the art, it is not obvious to a person skilled in the art. European Patent Convention

Volume 43 - Number 3

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