Inventio ad hominem? Is there really a logical fallacy at the core of patent law?
Recently Dr. Mo Albokheir, a “philosopher of inventions and patents” at the University of Bristol, published an article in the Journal of Intellectual Property Law & Practice, alleging that there is a logical fallacy at the core of the concept of non-obviousness in patent law.[1] As a humble practicing patent attorney, I disagree.
Dr. Albokheir identifies the logical fallacy as inventio ad hominem, in which the invention is judged based on the characteristics of the inventor, as opposed to the characteristics of the invention itself. How does he reach that point? And where (if at all) does he go wrong?
Dr. Albokheir starts off reasonably well: “Inventive step is taken to mean that the core inventive concept is not obvious to a person skilled in the art.” This closely tracks the language of EPC Article 56, which states, “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.” The mention by Dr. Albokheir of “the core inventive concept” is a little troubling, as it calls to the mind the concept of a “heart of the invention,” an idea that the U.S. Supreme Court has rejected.[2]
The next sentence begins on solid ground, but veers off onto increasingly thin ice:
The skilled person here is not an actual person but a notional one, who is assumed to have relevant knowledge in the field of the invention and neighbouring fields, and competent but average powers of imagination — put differently, the skilled person possesses no inventive capacity and will not undertake creative thinking.
The EPO examination guidelines state that the “’person skilled in the art’ is presumed to be a skilled practitioner in the relevant field of technology who is possessed of average knowledge and ability (average skilled person).”[3] But there is no mention there of things like the “powers of imagination,” a lack of “inventive capacity,” or an unwillingness (an inability?) to “undertake creative thinking.” In my view, this is the critical move that sends Dr. Albokheir off in the wrong direction.
But before further criticism, here is Dr. Albokheir’s statement of the alleged logical fallacy, inventio ad hominem, which makes the further linguistic move of linking powers of imagination with the ability to grasp an inventive concept:
For an invention to be patentable, the core inventive concept must be beyond the grasp of those with average powers of imagination.
The inventor has grasped the core inventive concept.
Therefore, the inventor’s powers of imagination are above average—i.e. it is the inventor’s powers of imagination that are being examined as the basis for patentability, not the invention.
In Dr. Albokheir’s view, the obviousness standard, besides comparing the invention to the prior art, also is “indirectly testing the inventor’s powers of imagination as the basis for patentability.” In my view, this is incorrect, and the standard does not involve any sort of logical fallacy.
Start with the idea that being able to grasp an inventive concept is somehow an indication that one’s powers of imagination are above average. This is contradicted by the requirement that a patent application be written so as to allow the person skilled in the art to make and use the invention.[4] So a person of ordinarily skill in the art is not only capable of grasping an inventive concept, that they are able to do so is actually a requirement in patent law.
Yet it may be contended that an ex post grasping of a concept is not the same as an ex ante capability of grasping the same concept. After all, patent examiners are cautioned against evaluations of the inventive by a hindsight analysis.[5] The ex ante capability of grasping a concept is akin to the “inventive capability” or “powers of imagination” referred to by Dr. Albokheir.
But is invention merely a thinking process, or even primarily accomplished through thought? Thomas Edison credited hard work (perspiration) as much more important than inspiration. Rarely is invention birthed from a sudden flash of insight. More often it is the end result of a long process of sustained effort, involving persistence through failed attempts at a solution, and in refining the invention to successfully address the relevant problem. Thought is involved, of course, but it is only one of a variety of ingredients, and probably not the most important one.
What then is the proper standard for obviousness, one that captures the range of relevant inputs? Such a standard is necessarily nebulous, due to the wide variety of types of inventions and ways that they are produced, but I think it is best captured in Japanese patent law. Article 29(2) of Japanese patent law states that patent may not be obtained when “a person of ordinary skill in the art of the invention would have easily been able to make that invention.” To me, this takes into account the range of skill and effort that is put into invention. There may be insight or imagination beyond what would have been easy to that hypothetical person of ordinary skill, but just as likely (if not more so) there was experimentation and dogged persistence by the inventor, uncommon hard work to produce an advancement in the relevant art. The patent rewards achievement of this end result, not any specific characteristic of the inventor that may have gone into the inventive process.
[1] Albokeir, Mo, “The logical fallacy at the core of patent law: what does non-obviousness really test?,” Jour. Intell. Prop. Law & Practice, October 15, 2024.
[2] See Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 345 (1961) (“there is no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent”).
[4] EPC Art. 83 (“The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.”); 35 USC 112(a) (“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same”).
[5] EPO Guidelines, G-VII.8 (cautioning the examiner that once “a new idea has been formulated, it can often be shown theoretically how it might be arrived at, starting from something known, by a series of apparently easy steps”); MPEP 2142 (“impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art”).