The Non-Obvious Problem: How the Indeterminate Nonobviousness Standard Produces Excessive Patent Grants

Gregory Mandel, Professor of Law, Temple University - Beasley School of Law

12/01/2008
(Original Publish Date: 1/2/2008)

The dominant current perception in patent law is that the core requirement of nonobviousness is applied too leniently, resulting in a proliferation of patents on trivial inventions that actually retard technological innovation in the long run. This Article reveals that the common wisdom is only half correct. The nonobviousness standard is not too low, but both too high and too low. It is indeterminate. Three principal factors produce nonobviousness indeterminacy: a failure to identify the quantum of innovation necessary to satisfy the standard, a failure to define the baseline level of ordinary skill against which to measure an innovation, and the epistemic infeasibility of requiring a technologically lay decision maker to judge from the perspective of a more highly trained and educated person of ordinary skill in the art.