How High is The Inventive Step? Some Empirical Evidence

Abstract

The inventive step is nowadays generally regarded as the key threshold variable ensuring balance in patent systems, effectively operating as a proxy to ensure benefits exceeding costs. Despite the active debate about the current inventiveness standard, there has been little attempt to measure it. The study reported here uses data from recently granted Australian business method patents, and tests these inventions against an economic rather than a legal yardstick. The 72 cases were assessed for their contribution to knowledge or know-how—none were found. The data are organised here to throw light on the key reasons underlying the monopoly grant to these uninventive patents. The first issue addressed is whether there was a problem identifying existing knowledge. In 12 out of 69 cases no novelty or inventiveness objections were raised, either in Australia or for parallel overseas applications (USPTO or EPO). Lengthy and complex drafting contributes to the few cases where existing knowledge did not lead to inventiveness objections. The cases demonstrate that a range of procedural rules operate to allow grant of a patent monopoly to many ‘inventions’ that do not offer any advances in knowledge or know-how,and so provide no social benefits. The rules and procedures arising from the research are: · the ‘reverse onus of proof’—that the patent office has to prove obviousness, not the applicant inventiveness; · the ‘suggestion’ test for assessing combinations of existing elements; · amendment of specifications to allow narrow differences from the existing knowledge identified by examiners; · acceptance of trivial differences, sometimes simply semantic, to determine inventiveness; · failure to apply the analogous use test to processes, despite its obvious suitability for this purpose; and · policy presumptions that the solution to a trivial problem is inventive, or that ideas themselves merit monopolies. Many of the cases in the dataset have parallel overseas applications and review of the communications between applicants and examiners at the EPO and the USPTO throws light on overseas grant practices. While half the applications that have been assessed by the USPTO have been rejected, the other half have been accepted, and the procedural problems identified in Australia are also evident in the USA. The situation at the EPO is more complex,as rejection is usually based on the lack of a “technical effect”. But three very trivial software systems have been granted patents by the EPO. It is unclear how they managed to pass either the technical effect test or the inventiveness test. As it is a range of rules and procedures which have allowed the grant of these patents, it seems likely that equally trivial patents are being granted in other fields of technology. Show more