Strong-Non-Obviousness ... Trap? I think so ...

Posted by Bill Meade at September 25, 2006 01:32 PM

Bill Meade

Q. What makes an invention disclosure easy to file as a patent?
A. Strong-non-obviousness.

What is strong-non-obviousness? It is a surprising way something is done. A disclosure that catches an entire patent committee by surprise in the "never seen anything like it before" way is strongly-non-obvious.

Think of the most surprising invention disclosure you have seen in your career. Think about the meeting you were sitting in when you decided what to do with this disclosure. Did the strong-non-obviousness wake up the participants in an otherwise sleepy meeting? Did the non-obviousness cause exclamations of surprise? How long did it take to decide to file on the strongly-non-obvious disclosure? Once understanding of the idea spread to the entire group, did agreement immediately ensue? Was opinion on filing unanimous? Did the disclosure feel like it was the proverbial needle in a haystack?

I've sat in patent committee meetings reviewing thousands of invention disclosures, and I've often observed strong-non-obviousness to completely disarm otherwise conservative, stodgy, risk-averse, analytical, and independent thinking people. I think strong-non-obviousness CAN BE a trap, and I'd like to explore why. Please comment on this post. I *think* that the effect that strongly-non-obvious IP has is widespread. I'm curious about what your experience is.

A trap? Why? First, because a patent committee's response to a strongly-non-obvious invention disclosures is often automatic. Automatic in the sense that decisions to file strongly-non-obvious disclosures are conditioned by disappointment and cause goal displacement.

When you review one uninspiring disclosure after another you can get hungry to see something great. Something that would make you proud as a patent attorney to have on your resume. Broad, genuinely new, useful, and with non-obviousness that even a *patent examiner* can understand. In fact, you may have caught yourself hoping for an office action stating the invention is obvious. Payback time for that "correction" the ESL examiner made to your EFL English last year.

Inspiration, pride, craft, payback, wow is there a lot of invisible baggage that is carried along with strongly-non-obvious invention disclosures. This baggage can, and frequently does, displace the goal of making a company money with IP, for other intermediate goals. When goal displacement happens because a decision is being made to file a strongly-non-obvious invention disclosure, patent geeks have fun, but shareholders suffer.

The second reason that strongly-non-obvious disclosures can be a trap has to do with the current carrying capacity of patent business processes. The more strongly-non-obvious and idea is, the higher its current. And when an idea's current gets high enough, the governing categories of the IP business process can burn out. If they do, you get thermal runaway.

For example, your company may be in the shoe business, but when you see an idea that is strongly-non-obvious from one of your shoe company employess, and the idea relates to HD DVDs, you will be way more tempted to file on it than you should be. Temptation is a result of high non-obviousness current burning out the category of "company-related" that should be leading to a defensive publication or an inactivation.

All business process categories are at risk from high-current strongly-non-obvous invention disclosures. For example, strong-non-obviousness can short out budgets "This idea is too good not to file!" It can burn out quotas across client organization. Strong-non-obviousness can wreak havoc wherever the phrase "Just one more ..." is listened to.

The final reason I think that strong-non-obviousness can be a trap is that non-obviousness is technical. The way we make money with IP is not just technical, it is technical+economic. My observation has been that strong-non-obviousness of a technical means is UNRELATED to the economic value of the invention.

Now, before you flame me, I must say that I yield to no one in admiration for strongly-non-obvious inventions that are of high economic value. What I'm cautioning against is assuming that because there is technical merit indicated by strong-non-obviousness, there must be economic value. Non-obviousness is a bad (unrelated) proxy for economic value, though non-obviousness is often used as a proxy for economic value in the excitement of an automatic committee decision.

In deciding whether a company should invest in a disclosure, we should measure the value of the patent that would ensue. A patent is valuable because it protects (i.e., reduces frequency of litigation and cost of litigation), because it preempts (opens revenue bearing opportunities, grabs valuable cross-licensing turf), because it promotes a differentiating feature (HP's Ret patent), or otherwise brings value into a company (visualize a net present value cash flow tree 17 years in length).

Strong-non-obviousness can short circuit the calculation of a patent's value, over-writing the economics of deciding on an expensive long-term investment for a company. When strong-non-obviousness does this, it is a trap.

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