By: Tun-Jen Chiang*
The standard for determining whether an invention is innovative,
known as the “obviousness” standard, has been a continuing mystery
in patent law. Courts try to determine obviousness by asking
if the patented invention was “nonobvious” and embodied sufficient
“ingenuity.” The problem with this “ingenuity” approach is
that it lacks objectivity. What is ingenious to one person
appears obvious to another.
This Article proposes a new test for patentability, with two key
insights. The first is that what matters for society is not
whether the invention embodies ingenuity, but rather whether the
patent reward creates more benefits than costs. The second is
that the benefits and costs depend on when society would otherwise
have had the same invention. Social cost begins accruing
when, absent the patent reward, society would still have received
the same invention through an independent inventor. This cost
must be balanced against the benefits of having the invention
earlier, before independent invention, due to patent system
incentives.
* Associate, Quinn Emanuel Urquhart Oliver & Hedges,
LLP. I thank Judges Timothy Dyk and Richard Posner, and Professors
John Duffy, Mark Lemley and Douglas Lichtman, for their comments on
prior drafts of this article. The views expressed herein are my
own.