The Non-Obvious Problem: How the Indeterminate Nonobviousness Standard Produces Excessive Patent Grants
Gregory Mandel∗ 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. This Article introduces a mathematical model of innovation and patenting to analyze the effects of nonobviousness indeterminacy. Based on the model, indeterminacy in nonobviousness decisions has several unexpected consequences. First, indeterminacy results in an excessive total number of patent grants, and in many patent grants on obvious inventions. Second, indeterminacy leads to too many patent applications on obvious inventions and too few applications on non-obvious inventions.
∗ Professor of Law, Temple University — Beasley School of Law. I am grateful for comments on earlier drafts from David Adelman, Rochelle Dreyfuss, Mark Lemley, Robert Merges, Joseph Miller, and Katherine Strandburg, and for feedback from participants at the Nonobviousness — The Shape of Things to Come, Lewis & Clark Law School Business Forum, and the Works in Progress — Intellectual Property, American University Washington College of Law. Erica Young