Post Hoc Evaluations of Obviousness: Preliminary Report of an Attempt to Identify, Empirically, the Characteristics of a Superior Evaluator

Over a century and a quarter have passed since the Supreme Court in Hotchkiss v. Greenwood held that more than mere novelty is necessary to support a valid patent. Congress, after 100 years of experience with a concept which came to be called invention, attempted to improve the situation by requiring that an invention not be obvious if it is to be patented. It seems safe to say that in the intervening time the doctrine of non-obviousness has not developed into a foolproof yardstick for measuring the quality of cerebral or other effort necessary to make an advance over the prior art a patentable one. Several years ago, as will be described in detail below, research was commenced in order to learn not about non-obviousness, per se, but rather to identify characteristics which might make some individuals more capable of hindsight evaluations of obviousness than others. It was thought that if such characteristics could be identified, they might be helpful in making policy decisions concerning the choices of fora which might be available for post-issue determinations of patent validity. While a great deal of data has been collected, progress has been hampered by the lack of resources for its analysis. Nevertheless, enough progress has been made to report on the research to date