There are essentially five patentability requirements. In order for a claimed invention to be patented each of these requirements must be satisfied. The claimed invention must be (1) comprised of patent eligible subject matter; (2) useful; (3) novel; (4) nonobvious; and (5) adequately described. The first two of these requirements were recently discussed in Patentability Overview: When can an Invention be Patented? The novelty requirement was recently discussed in Patentability: The Novelty Requirement of 35 U.S.C. 102. This article picks up with our patentability overview and discussed the law associated with the nonobviousness requirement.
The nonobviousness requirement is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done, or if there is some reasonable expectation that the combination of elements would achieve a successful result. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.
A patent may not be obtained if it contains only obvious differences from prior art. Today, under the U.S. first to file system, an invention is obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time a patent application is filed describing the invention. This is a major shift from the first to invent laws that applied prior to March 16, 2013, which asked whether at the time the invention was made whether it would have been obvious to a person having ordinary skill in the art to which said subject matter pertains. For more on first to file please see: First to File Means File First! and First to File Becomes Law.
The obviousness inquiry is highly fact specific and not susceptible to per se rules. For example, a patent infringement defendant or one challenging a patent at the Patent Office cannot simply present evidence of anticipation and then say “ditto” to establish obviousness. Nevertheless, for a patent to be nonobvious it must display “ingenuity beyond the compass” of a person of ordinary skill in the art.
In a nutshell, an invention would be obvious when someone knowledgable about the area would look at your invention and consider it to be already known; not exactly but rather known if one were to combine several references. In other words, the predictable and non-unique combination of what multiple references teach would yield your invention. The prototypical example is when you have invented A+B. A is known in the prior art, and B is known in the prior art. Upon looking at A and then looking at B, would someone of skill in the art consider A+B to be already known? If the answer is yes, then A+B is obvious. If the answer is no, then A+B is not obvious.
Sometimes combining things is not readily apparent, sometimes it is. That is what makes obviousness a tricky inquiry. Obviousness is a fact based and subjective inquiry, and in my experience many inventors are simply not capable of making an honest determination. Frequently inventors are blinded by the fact that no single reference describes the invention in total. That is the first step in determining whether you can obtain a patent, but that exact identity inquiry relates to novelty. Obviousness is the next step in the road to patentability, and a significant hurdle.
While the obviousness inquiry asks about whether something is a trivial, non-inventive combination of prior art references, the inquiry is not boundless. For example, hindsight is not permissible. Therefore, in order to demonstrate obviousness the patent examiner would need to establish that there existed some reason to anticipate that one could successfully combine A and B to result in A+B. Therefore, when a patent examiner says that A+B is obvious and would work you might consider experimenting and attempting to combine A+B to see if it does actually work as the examiner predicted. If A+B cannot be combined as the examiner hypothesized, or if A+B does not work as expected or predicted by the examiner, that would be evidence to rebut the obviousness rejection.
The obviousness determination is based on four factual inquiries: (1) the differences between the prior art and challenged claims; (2) the level of ordinary skill in the field of the pertinent art at the time of plaintiff’s invention; (3) what one possessing that level of skill would have deemed to be obvious from the prior art reference; and (4) objective evidence of obviousness or nonobviousness. Notwithstanding these factual inquiries, objective evidence of obviousness or nonobviousness MUST also be considered before reaching a conclusion on obviousness. Objective evidence (or secondary considerations as they are sometimes called, includes: (1) the commercial success of the invention; (2) whether the invention satisfied a long felt need in the industry; (3) failure of others to find a solution to the problem at hand; (4) unexpected results; (5) copying by others; (6) licensing by others; and (7) skepticism of experts. Not all of these secondary considerations of nonobviousness are of equal strength and persuasiveness. Long felt need in the industry when coupled with failure of others is quite strong, while commercial success might not be quite as useful as you think because the success in commerce could be potentially explained by marketing prowess and business acumen and not any particular technological advance.
In determining what would have been obvious to a person of ordinary skill in the art, the decision maker may also examine the following factors: (1) type of problems encountered in the art; (2) prior art solutions to those problems; (3) rapidity with which innovations are made; (4) sophistication of the technology; (5) educational level of the inventor; and (6) educational level of active workers in the field.
The nonobviousness requirement is one of the most difficult concepts to explain because as hard as decision-makers may try the ultimate conclusion necessarily incorporates a certain amount of subjectivity. With that in mind, to get a complete picture of obviousness it will be helpful to do further reading on this unfortunately difficult topic. Please see Understanding Obviousness and When is an Invention Obvious?
CLICK HERE to CONTINUE READING… Up next is the final installment of our Patentability Overview series, which ends with a discussion of the description requirement of 35 U.S.C. 112(a).
For more information on patent basics please see:
- IP Goes Pop! You Can’t Do That – What IP Cannot Protect
- How to Use the USPTO Patent Public Search Tool
- Using Analytics to Assess the Effectiveness of Common Patent Prosecution Practices
- Tips from a Former Examiner on How to Conduct Interviews at the USPTO
- Ten Mistakes to Avoid When Drafting Information Disclosure Statements
- Defanging Descriptive Material Rejections
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Disclosure Requirements in Software Patents: Avoiding Indefiniteness
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
- Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
- Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Errors in Issued Patents as a Measure of Patent Quality
- Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
- Why the Patent Classification System Needs an Update
- Understanding What a Design Patent is Not
- Design Patents: Under Utilized and Overlooked
- Deciding Where to Obtain International Patent Rights
- When to Use the Patent Cooperation Treaty—and Why It’s So Popular
- Why and When Design Patents are Useful
- PCT Basics: Obtaining Patent Rights Around the World
- ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
- Successful After Final Petitions Can Help Advance Prosecution (Part V)
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- WIPO’s INSPIRE Offers a New Way to Select Databases for Patent Searches Involving Machine Translations
- Understand Your Utility Patent Application Drawings
- Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First
- Implications of Filing Subsequent Patent Applications in the United States (Part III)
- Types of Subsequent Patent Applications in the United States (Part II)
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Applying for a Patent in Germany
- Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO
- Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table
- Patent Office Insights from Two Former Examiners
- Conventional Patent Wisdom Revisited
- Develop Your Database of Templates for Responding to Office Actions
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- Four Things C-Suite Executives Need to Know About Patents
- Starting the Patent Process on a Limited Budget
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
- Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment