Emory Law Journal


The common saying ¿hindsight is 20¿20¿ rings true in many different areas; in patent law specifically, hindsight bias has the potential to affect a patent examiner¿s determination of whether an invention is ¿obvious¿ under 35 U.S.C. § 103. The examiner may permissibly rely upon a combination of prior art references to find that a claim would have been obvious to a person having ordinary skill in the art. However, the examiner may not use ¿that which only the inventor taught . . . against its teacher.¿ Structural flaws within the examination process place pressure upon examiners to reject claims upon first examination, regardless of the content of those claims. This Comment proposes a framework that focuses on the question of whether an examiner has impermissibly relied upon hindsight to combine references in determining obviousness. This framework provides an avenue for discussion between the patent examiner and the prosecuting attorney and provides substance to be considered by decisionmakers on appeal.