Is it Obvious or Not? Martin S. High, P.E., Ph.D., J.D School of Chemical Engineering Legal Studies in Engineering Program Office of Intellectual Property Management School of Chemical Engineering Oklahoma State University Stillwater, OK 74078 NCIIA 13th Annual Meeting March 19-21, 2009 • Washington, DC
Slides & Manuscript Availability
Electronic copies of both the presentation and final version are available at http://mhigh.okstate.edu
Demonstrate the interplay between obviousness and novelty
Provide a few “best practices” to help overcome obviousness rejections
Patents as a Societal Contract
A patent system is a contract between society and the inventor.
Society grants a limited monopoly
Inventor agrees to various requirements
Society agrees to impose certain constraints on the monopoly
The details that make up these requirements are what make patent law so challenging to patent practitioners and so maddening to inventors
Likely the most important requirement
From an inventor’s perspective, the easiest to define (and satisfy).
Unfortunately, the legal standard is not as forthcoming. Case law must be consulted.
“ Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
Readily understood from an engineering and legal standpoint:
The invention must not have been available before.
35 U.S.C. § 102 (a) “A person shall be entitled to a patent unless the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent….”
Again, we must consult the case law to fully define the terms
This portion of the patent law gives the first person to conceive of an invention the sole right to patent the invention.
This might possibly change to first to file.
In other countries, the concept of obviousness is given the (slightly) more helpful term “inventiveness.”
“ A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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 the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.” U.S.C. § 103 (a)
Analysis done in a series of smaller sub-analyses – the Graham analysis
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966),
Obviousness analysis under Graham
Under § 103 , the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject matter is determined.
Secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented."
Obviousness – What is an inventor to do?
So what does this rather muddy area of patent law tell participants in entrepreneurship programs?
Date of invention is a critical
When considering whether to pursue patenting, the inventor must look objectively at the invention relative to other prior art.
If close to other areas then it more likely that an obviousness rejection
If the invention appears to be on the verge of commercial success, the risk of not having a patent protecting the idea may outweigh the cost of obtaining patent protection.
Commercial success is one method of overcoming an obviousness rejection
A successfully sold product may in itself support the patentability of an invention.
(Most) Frequently Asked Question
Q: What do you mean by obvious (or not obvious)?
A: The bases for obviousness are not clearly laid out by the patent laws. An inventor must look to the obviousness statute, but mostly to Graham .
(Second) Frequently Asked Question
Q: Can I patent combinations of old elements
A: Yes, as long as the combination is among the statutorily allowed inventions, and the invention has utility, is novel, and is not obvious.
If a combination of well known elements is used, the combination must be “greater than the sum of the parts” – result must be synergistic
Is combination obvious to one with average skill in the art?
(Third) Frequently Asked Question
Q: If my invention is found to be obvious, do I give up?
Overcoming Obviousness: Secondary Considerations
Failure of Others
Commercial Success Evidence
Commercial Success must be shown due to the claimed element(s) of the invention
Must prove that your commercial success did not come from a superior marketing campaign
Invention must go equally head to head with others on market
If possible, show that your invention gained market share after introduction - Market share very important
Clearly show sales information
Long-Felt Need Evidence
Recognition of need can be technical know based or market based
Need must be recognized by others than the inventor
Evidence of prior failed attempts
Need must be satisfied by invention before others satisfied need
Recent Case Law Developments - KSR International Co. v. Teleflex Inc. , 550 U.S. 398
Competitor modified design for an adjustable pedal system for vehicles by adding a modular sensor
Licensees alleged that competitor infringed the patent claim of a position-adjustable pedal assembly
Prior art taught a number of methods of solving the problem
Supreme Court held that the claim was invalid as obvious since mounting an available sensor on a fixed pivot point of the competitor's pedal was a design step well within the grasp of a person of ordinary skill in the relevant art, and the benefit of doing so was obvious.
Obvious since the market created a strong incentive to convert mechanical pedals to electronic pedals
The Teaching, Suggestion, Motivation (TSM) test was rejected (but TSM is not eliminated completely)
A reference that “teaches away” militates towards non-obviousness
Secondary considerations still important
SCOTUS meant what they said in Graham.
Recent Legislative Developments – Patent Reform
H. R. 1260 / S. 515 - Patent Reform Act of 2009
Replaces “first to invent” with “first to file”
Replaces interference proceedings with derivative proceedings.
Senate Hearing last week focused on damages
If the damages issue can be resolved it appears likely that “patent reform” will become reality
House has not yet begun conference hearings
“ This piece of legislation is among the most important things that we will work on as our Nation's economic future is dependent on our ability to innovate and efficiently and effectively protect the products of that innovation. I look forward to working with all interested parties in perfecting the Patent Reform Act in the coming months.” 155 Cong. Rec. E537 (daily ed. Mar. 3, 2009) (statement of Rep. Conyers).
Recent Legislative Developments
Both versions of the Patent Reform Act of 2009 allow for interlocutory appeals to the Federal Circuit on claim construction issues – likely not a
“ First to Invent” to “First to File”
“ We have made some changes … in response to concerns we heard from groups ranging from labor unions to small inventors to manufacturers. …. [A]s business and competition become more global, patent applicants are increasingly filing patent applications in other countries for protection of their inventions. The filing system in the United States, known as ‘first-to-invent,’ differs from that in other patent-issuing jurisdictions, which have ‘first-to-file’ systems. This causes confusion and inefficiencies for American companies and innovators.” 155 Cong. Rec. S2707 (daily ed. Mar. 3, 2009) (statement of Sen. Leahy).
Patent protection is a powerful ally to inventors – provides a enforceable right to exclude others from making, using, selling or importing the invention covered by the patent.
Society will only allow a patent if the invention has utility, is novel and not obvious.
Obviousness clearly one of the most significant hurdles to overcome.
Major changes are on the horizon in the name of patent reform
Feel free to download my slides and manuscript at http://mhigh.okstate.edu .