The Hunt for the Inventive Concept is the Flash of Creative Genius Test by Another Name

By Gene Quinn
November 6, 2018

“The hunt for the inventive concept is no different than the flash of creative genius test. It is untethered, subjective and seeks to pick and choose what is patentable based on subjective perceptions using undefined criteria.”

The Hunt for the Inventive Concept is the Flash of Creative Genius Test by Another Name“Since Hotchkiss v. Greenwood, decided in 1851, it has been recognized that, if an improvement is to obtain the privileged position of a patent, more ingenuity must be involved than the work of a mechanic skilled in the art… That is to say, the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain.” Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941)(emphasis added).

The 1952 Patent Act codified existing case law with one exception: the flash of creative genius test. The legislative history is as clear as the statute itself, Congress did not want the manner in which the invention was created to create any negative inference with respect to the patent worthiness of the invention. Thus, 35 U.S.C. 103 specifically included language, which remains there to this day, that is by its explicit language supposed to prevent consideration of the manner of making of the invention: “Patentability shall not be negated by the manner in which the invention was made.”

The flash of creative genius test was more than simply about the manner of making the invention. Yes, the test was couched in terms of the invention needing to reveal a flash of genius, but the test is really about whether the decision maker subjectively believes a certain quantum of innovation has been achieved. If it is simple or trivial in the eyes of the decision maker than there would be no invention because the claimed invention did not meet some subjective, unknowable threshold. The invention did not exhibit the requisite innovative contribution to be worthy of a patent.

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The flash of creative genius test was viewed by Congress and commentators as too restrictive, inherently subjective, and not particularly attune to how innovation actually occurs. Innovation occurs through hard work and is frequently measured in inches or centimeters, not meters or mile long jumps that exhibit extraordinary insights that put one on the short list for a Nobel Prize.

Today the flash of creative genius test has reared its ugly head once more, this time as a consideration under a patent eligibility inquiry and 35 U.S.C. 101 instead of under an obviousness inquiry and 35 U.S.C. 103. Today, thanks to the Supreme Court’s unintelligible Alice/Mayo framework, one must ask whether significantly more has been added to a patent claim such that the claim does not merely claim an abstract idea, law of nature or natural phenomenon. This final step in the Alice/Mayotest is referred to by the Courts as the hunt for the inventive concept. It is difficult not to notice the similarity between this hunt for the inventive concept that takes place when reviewing a claim under 101 and the supposedly defunct flash of creative genius test Congress attempted to write out of patent law in 1952.

For reasons that are unclear, when a claim is reviewed to determine whether it exhibits patent eligible subject matter a proper claim interpretation is not conducted. A proper claim interpretation must consider both intrinsic evidence (the claim, the specification and prosecution history) and extrinsic evidence, if presented. When a motion to dismiss for invalidity based on patent ineligibility is filed district courts simple conduct a perfunctory facial review of the claims without attempting to determine the true meaning of the claim terms or identify what the claims actually cover based on a proper claim construction under Markmanand its progeny. This means the district court is left to determine based on its own subjective inclinations whether there is a sufficient inventive concept incorporated into the claims. In other words, are the claims sufficiently inventive enough, or not, based on a facial review of the claims and without the benefit of a proper claim interpretation.

A facial review of patent claims cannot and does not result in the real meaning and scope of the claims being identified. Thus, district court judges are merely engaging in a determination of whether a claim appears on its face to capture a certain quantum of innovation sufficient to pass a subjective threshold; a threshold untethered by any well-established legal principles. In fact, the Supreme Court and Federal Circuit have refused to define the term significantly more, which only goes to prove this entire exercise is at best a subjective reflection of the value judgments of the decision maker.

The hunt for the inventive concept is no different than the flash of creative genius test. It is untethered, subjective and seeks to pick and choose what is patentable based on subjective perceptions using undefined criteria.

 

Image Source: Deposit Photos.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments. Join the discussion.

  1. Anon November 6, 2018 3:36 pm

    An interesting piece that provides a view, although different than mine, is nicely complementary.

  2. Pro Say November 6, 2018 4:07 pm

    Right again Gene.

    That said:

    To all inventors (and their attorneys) who’s invention WAS the result of a flash of genius, you need to also argue this against any s101 rejections:

    The Supreme Court’s Cuno Decision Proves Claims Eligibility

    Further, Inventor hereby declares and states for the record that he didn’t take the path some others apparently have – merely taking some previously existing “bricks and mortar” / pre-Internet / offline (or some other previously-existing) process / system and “computerizing” and / or “Internetizing” it.

    Instead, (your invention’s title) genesis – (your flash of genius)! — was an out-of-the-blue light bulb moment; an epiphany; what’s often referred to as a “flash of (creative) genius.”

    It did not result from his/her thinking up / inventing a way to computerize or move to the Internet or computer networks something currently in existence or from the past. (of course, modify the above wording if your invention is in the life sciences or other art field)

    While the Patent Act of 1952 eliminated the requirement for a flash of creative genius to be present in order for an invention to be patentable; “[p]atentability shall not be negatived by the manner in which the invention was made.” See 35 U.S.C.§ 103; the Supreme Court’s test and guidance remains a useful guidepost to and indicator of patentability where such flash of creative genius is present. See, e.g., Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941).

  3. anony November 6, 2018 5:47 pm

    So the anti-patent argument would be that if Congress had really meant all machines, processes, … , and improvements thereof, then Congress would have stated “Eligibility shall not be negated by the type of subject matter to which the invention pertains.” But Congress didn’t so courts get to whimsically interpret and apply 101.

  4. Paul Cole November 7, 2018 6:06 am

    I did not find a link to the relevant decision.

    But a surprising new function or result that is the inventor’s own discovery has ALWAYS been an essential. That goes back to the Supreme Court decision in the Hopper Boy case in the 1810’s or 1820’s, and to earlier UK case law. It is also written into the PCT and is the key to problem/solution analysis at the EPO. Most of the Section 101 cases I have reviewed (and I have reviewed many of these cases) have over-broad claims for which over-broad scope no new function or result is discernible.

  5. Benny November 7, 2018 6:48 am

    The word “subjective” appears 7 times in the article. That’s the problem. What is creative in the mind of an examiner may be blindingly obvious to a first year engineering student, and vice versa.

  6. John White November 7, 2018 7:40 am

    The comments above bear out the confusion in the courts. A 101 inquiry is not and should not be a 102/103 “lite”. It is not about being new or inventive, it is about eligibility. Period. Let each of 101, 102, and 103 play their respective statutory roles.

  7. Night Writer November 7, 2018 8:28 am

    I’ve said it a thousand times. The game is create a new word and then come up with some indefinite test. The Scotus plays this same game all the time.

    How you can tell that this does not belong in patent law is that we have the elements of the claim and enablement (and written description). These are sufficient to police patent claims. Creation of new words that are untethered from the elements of claims is not law but equity.

  8. Night Writer November 7, 2018 9:30 am

    >>Most of the Section 101 cases I have reviewed (and I have reviewed many of these cases) have over-broad claims for which over-broad scope no new function or result is discernible.

    Sounds like a 103 problem.

    >> “ALWAYS”

    In the US what happened was our patent system had come to an almost complete halt because of the “flash of genius” requirement. Congress rewrote patent law to remove these type of requirements from 101. The idea of a filter with 101 being very broad and 102, 103, and 112 narrowing what could be patentable was enacted as law.

    What you are saying sounds like your feelings. Try citing elements, cite to prior art and then cite a reason to combine. And stop with this claim makes me feel it is not a good claim.

  9. EG November 7, 2018 10:02 am

    “What is creative in the mind of an examiner may be blindingly obvious to a first year engineering student, and vice versa.”

    Benny,

    That’s not the standard for obviousness, but “one of ordinary skill in the art.” That first year engineering student could be considered a “genius,” (and may have knowledge that didn’t exist when the invention was made or even when the patent was filed for), but that doesn’t mean they’re “one of ordinary skill in the art.” Indeed, “hindsight’ isn’t the proper standard.

  10. step back November 7, 2018 11:33 am

    The flash in the pan is the Medieval thinking of the SCOTUS retrogrades.

    We can make a long list of violations of law (Constitutional) and of rational scientific understanding as committed by these retrogrades:

    1) Bypassing all the checks and balances of jurisprudence in the lower courts when the case comes to the “supreme” level: No Daubert standard applied; Not-crossexamined assertions of “friends” of court admitted as blind truths; They legislate new witch detecting tests out of thin air from the bench; They lie about past decisions (e.g., Alice says we created this 2-part test back in Mayo. Yeah? Where is it?)

    2) BS on the “building blocks” of human “ingenuity”. (If humans are so ingenious, how do we explain away the insanity of the SCOTeties?)

    3) BS on potential of “stifling” innovation (might impede).

    4) Belief in Laws “of Nature”. (Mother does not reveal any laws to us. We make them up. E=m*c^2 is not written on cosmic stone. Newton was not exactly on target. Same could be true for Einstein. The Supremes fancy themselves as 9 infallible Einsteins.)

    5) … Your turn to add to this list

  11. Keir Finlow-Bates November 7, 2018 1:32 pm

    1. “an abstract idea, law of nature or natural phenomenon” – ultimately, everything is one of these three things, if you dig down deep enough.
    2. “must reveal the flash of creative genius, not merely the skill of the calling” – sometimes things I’ve invented have occurred this way, other times it’s been weeks, months or years of research and pondering resulting in the gradual chipping away of the marble to reveal the shape of the invention beneath.

    I wish that the patent offices would actually hire a few genuine inventor to consult for them. At the moment the laws look like they’ve been assembled by a committee comprising members without a single original thought between them, so how are those applying them ever going to recognize true inventiveness?

  12. B November 7, 2018 2:25 pm

    @ Gene “The Hunt for the Inventive Concept is the Flash of Creative Genius Test by Another Name”

    Actually, it’s a flamethrower used by dullard liberal-arts degree judges to torch any idea that does not suitably impress them.

  13. B November 7, 2018 2:27 pm

    BTW, Gene, did you pick up John Witherspoon’s book? Best repository of 101 lore on the planet

  14. step back November 7, 2018 10:32 pm

    CNN reports that an additional 6 real scientists have joined the ranks of Congress. Maybe these newbies can explain to the rest why SCOTUS is operating in a fantasy universe and must be stopped before it takes the whole country down? (i.e. corporations are people, patents stifle innovation, DNA fragments are plucked from the double helix just like leaves from a tree)

    https://www.cnn.com/2018/11/07/health/scientists-in-congress-trnd/index.html

  15. Joachim Martillo November 10, 2018 11:18 pm

    One would think that “significantly more” is something that is neither abstract idea nor natural law nor natural phenomenon nor praxis (“well understood, routine, conventional activity”).

    Electromagnetic wave transmission, time dilation, simple harmonic motion, Wulff–Bragg’s condition, etc. are examples of natural phenomena.

    Maxwell’s Equations, Newton’s Laws, the Schrödinger equation, etc., are all examples of natural laws.

    Propositional logic, Bayesian Inference, Linear Algebra, etc. are all examples of abstract ideas (purely mathematical).

    Joining by insertion (RUBBER-TIP PENCIL COMPANY v. HOWARD) is a type of engineering fit and an example of praxis. Nowadays, one can consider computerization of a mathematical calculation to represent an example praxis.

    Is quantifying a natural phenomenon itself a natural phenomenon? No, it is not.

    Why is genetic fingerprinting (Alec Jeffreys) patent eligible (US5175082A, US5413908A), but non-invasive fetal diagnosis (US6258540B1) is not (ARIOSA
    v. SEQUENOM)? Methods of producing better information (e.g., genetic characterization or medical diagnosis) should be patent-eligible just as producing a better material composition is (Samuel Hopkins, X000001).

    Obviousness constitutes a completely different question, and it is completely baffling that the US legal system is stumbling over such simple concepts in the 21st century.

    The issue of patent-eligibility and patentability of in-memory data structures may be rather more complex, but if one is open to learning the concepts that underlie digital circuits, the reasons for such patent eligibility and patentability are straightforward.

  16. Joachim Martillo November 11, 2018 12:41 pm

    I converted my comment above into a short Linkedin essay so that I could add an image and active links.

  17. Night Writer November 11, 2018 4:58 pm

    RUBBER-TIP PENCIL COMPANY was another horrible decision. The Scotus tried to say it was an “idea” because it did not include something beyond ordinary skill to attach the eraser to the pencil.

    This is another case that should be expressly overturned. It would be OK to say it was obvious so let’s invalidate the claims. But instead the Scotus created a whole new set of cases saying that a mere idea was not patentable. Just idiotic.

    And this was before the 1952 Patent Act and should go down with flash of genius.

    “praxis” Oh gee just what we need another new word with a new definition (or no definition.)

  18. Joachim Martillo November 11, 2018 5:37 pm

    Do you really prefer writing “Well-understood, conventional, or routine acitivity”? Isn’t it just a lot easier to refer to praxis?

    Anyway 19th century SCOTUS seems to have realized fairly quickly that Rubber-Tip Eraser v. Howard was a dead dog with fleas as SCOTUS decisions go. SCOTUS followed quickly with an almost identical case and a better worded decision in Reckdorfer v. Faber. (Check the notes!)

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