Imagine you have developed a method that you believe is an innovation in your field and you prepare to file a patent application. Your patent attorney calls you and says “Your invention appears to be novel, but I think we face a possible rejection for obviousness.” She continues talking, but you’re still hung up on the word “obvious.” How can something that no one else has done before in this field, something you have put so much thought into developing, be considered obvious?
Many phrases in patent law and patent drafting have specific definitions and developments of law which govern their use. In order to be eligible for a patent, an invention must: contain patentable subject matter and be novel, useful and “non-obvious.” When determining both novelty and non-obviousness, a patent examiner at the USPTO looks at “prior art,” which are inventions previously disclosed in a number of ways, such as in patent applications or scholarly publications. An invention may be found obvious in light of one or more pieces of prior art, if the combination of the art teaches or suggests each element of the invention. The prior art must render the invention obvious to a hypothetical person who has “ordinary skill in the art.” This level of skill is determined considering the education level of the inventor and other workers in the field, and the sophistication of the technology and problem addressed.
The test for determining obviousness is flexible and considers the whole invention in light of the prior art. Inventions which combine known elements from prior art tend to be scrutinized most heavily. Such inventions may be found obvious even when the elements cross disciplinary fields, particularly if design or market incentives exist for the combination. An invention may also be obvious if there are a particularly limited number of possible experimentation outcomes, so research would necessarily lead to its development.
Conversely, if your invention is discouraged in some way by the current state of the art, it may be found non-obvious. A series of other secondary factors may also assist in a finding of non-obviousness, such as long felt and unsolved needs addressed by the invention or the failure of others to succeed. Ultimately, an initial rejection for obviousness by a patent examiner is not necessarily fatal to your application. Coming to the table with an understanding of the above points on obviousness in patent law will help you work with your patent attorney to address the examiner’s concerns.
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