Knowing whether an invention is obvious stands out as one of the most challenging concepts in patent law to grasp. This is precisely because the statute is so broad:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
35 U.S.C. § 103.
It’s deceptively simple. It’s a topic that consumes a significant portion of time for patent attorneys as we go back-and-forth with the patent office.
Let’s get into the intricacies of obviousness in patent law and look at some strategies attorneys use to build and challenge a case of obviousness against inventions.
Understanding Patent Novelty and Prior Art
Before diving into patent obviousness, it’s crucial to grasp the concept of novelty and prior art. Novelty requires that no single piece of prior art includes all the elements of an invention’s claim. Prior art encompasses anything published by the patent office, as well as publicly accessible work or products available before the patent application’s filing or its priority date. This is referred to as the “all elements” rule of novelty.
The Essence of Patent Obviousness
Patent obviousness takes the idea of novelty a step further. It questions if an individual with average skill in the related field—often referred to as a person having ordinary skill in the art (POSITA or PHOSITA)—would find the differences between a new invention and prior art obvious.
The Prima Facie Case of Patent Obviousness
The concept of the prima facie case is vital here. It consists of three requirements that a patent examiner must satisfy to deem an invention obvious:
- All Elements Addressed: The rejection must address every aspect of a claim for the invention to be obvious. This requirement prevents selective examination and insists on addressing every claim’s limitation.
- Motivation or Suggestion: The examiner needs to demonstrate a logical reason or motivation for modifying or combining prior art references to achieve the new invention. This rationale must be credible and not based purely on speculation or hindsight.
- Expectation of Success: There should be a reasonable expectation of success in recreating the claimed invention by combining or modifying the prior art, ensuring the feasibility of replicating the invention using this method.
Who Said This Invention Is Obvious? Challenging Obviousness Rejections
To combat rejections on grounds of patent obviousness, patent attorneys focus on dismantling the prima facie case. They demonstrate any lack of comprehensive coverage, absence of motivation, or failure to show a reasonable expectation of success in combining prior art. This legal maneuvering is central to protecting and asserting an invention’s uniqueness.
The Pitfall of Hindsight Reasoning
One common flaw in obviousness rejections is hindsight reasoning. This occurs when the examiner uses the patent claims as a template, rather than employing an independent evaluation of the prior art. But, the prior art must be assessed as it stood before the patent’s priority date, so this puts forward quite a challenge for the patent examiner. They must:
- Research the prior art, which naturally must be refined by what they know about your claims; and
- Forget your claims when they’re putting together an obviousness rejection.
Sounds hard right? It is. That is why the law puts in place the protection of the prohibition on hindsight reasoning when assessing whether an invention is obvious.
Strategic Preparation to Combat Obviousness
Understanding the market landscape and the breadth of prior art is best practice before filing a patent application. You don’t necessarily need to do a comprehensive patentability search, but you certainly should not go into the process blind.
Usually the market and competition research you’ve done, combined with your subject matter expertise, will give you a good idea of what the field knows and what it doesn’t.
This groundwork helps you put together robust patent claims and a tailored specification, strengthening the defense against potential obviousness challenges both during examination and if you attempt to enforce your patent during its term.
Conclusion
Though novelty might be the cornerstone of U.S. patent law, patent obviousness earns its place as a close second. Securing a patent requires demonstrating an inventive step or a spark of genius beyond what is known or commonly practiced. Knowing the nuances of patent obviousness will help you better work with your patent attorney on your patent strategy and handling office actions as they come.