1. Non-Obviousness and
the Patenting Process

2. HKUST Business School
2
What is Non-Obviousness?
 Most be non-obvious to someone skilled in
related fields to satisfy this test
 Once used to deny almost all patent
applications, but restricted in application now
 Does not require a brilliant act of new genius
 All elements can be obvious if new utility and
insights are more than “sum of the parts”

3. HKUST Business School
3
Obviousness Not Case Law
Based
 This is a fact of analysis of the business
process or engineering applications involved
 Obviousness viewed from perspective of
industry expert, but from layman review
 New industry or product with lots of demand
can provide evidence of non-obviousness
 If it was so obvious, why was it not done already?
 Has to represent advance over prior “art”

4. HKUST Business School
4
Statutory Test of
Nonobviousness
 (1) survey of scope and content of prior art
 (2) examination of differences between
invention and prior art
 (3) determination of the level of ordinary skill
in the art that might measure obviousness
 In light of this three stage process, the court
or the patent office can then determine if the
proposed innovation exhibits
nonobviousness.

5. HKUST Business School
5
Survey of Prior Art
 Duty of candor – the inventors and applying
attorney must disclose known prior art
 Must provide survey of prior art
 Must be relevant or pertinent or analogous
 Prior art definition must not be too narrow
 Definition is functional, not commercial
 Second stage of process is patent office
review of prior art
 Undisclosed discoveries not viewed positively

6. HKUST Business School
6
Patent Application Process
 In the USA (and in many countries), there is a
three step process of filing for patents:
 File a provisional INTENTION to file patent form

Gives you ONE YEAR time to file actual application

Starts the clock on patent file time for “race to patent”
 File the Formal Patent Application

Requires extensive details on all required patent issues
 Navigate the Patent Review and Appeal Process

Lots of iterations and significant legal costs required

Can take more than one year to complete

7. HKUST Business School
7
Provisional Intention to File Patent
 The first step in the patent application process is
normally filing an intention to file an application
 This is EASY to do and can be done yourself at low
cost, or by an attorney for you at minimal cost
 This gives the right to say “patent pending” on all
products which may be covered by the future patent
 This “intention to file an application” starts date from
which patent is granted, which is important in a race
to patent priority analysis (reduction to practice date)

8. HKUST Business School
8
Complete Formal Patent Application
 The Complete Patent Application must be
filed within one year of the Provisional Patent
Application, which is intention to file form
 You may, however, skip the provisional intention
to file and can simply file the full and complete
patent application in full initially, although this is
not commonly done as it takes time to prepare
 The Application may be revised to clarify
issues raised by the PTO, but not to add new
claims or new protections into the application

9. HKUST Business School
9
Navigate Patent Review and Appeals
 Most of the time, the PTO will decline the
patent initially, based on objections raised
 You then have time to respond to these issues,
and may file additional information to amend the
application in order to address these issues raised
 If you can not resolve disputes, the patent
application may be taken to administrative appeal
within the PTO to a higher level superviser.
 Patent applications rejections also may be taken
to court for judgment overturning PTO rejection

10. HKUST Business School
10
When Patent is Finally Issued
 This gives you the right to sue others
 Notification of patent (or patent pending) important
to protect some legal damages rights
 Police or government will not protect your rights
 Patent infringement is only a civil offense, not a
criminal offense, so only remedy is civil lawsuit
 Patent lawsuits are expensive and risky
 US attorneys unwilling to take risk on investing in
these cases to take contingency fee on success
 Thus, cost of litigation paid for by both companies

11. HKUST Business School
11
Costs of Obtaining US Patent
 File provisional patent application
 Can be done yourself or by attorney at low cost
 Minimal information required; short application
 File the Formal Patent Application
 Takes a lot of legal time and technical inputs
 Significant costs involved in this step (~ US$100k)
 Navigate Patent Review and Appeal Process
 Most of the costs come during this part of process
 Costs of patent process can exceed US$1 million

12. HKUST Business School
Patent Law Protections (Review)
 Protects FUNCTION, not expression
 Amazon patented its one-click function, as
copyright would not have protected this function
 Replicating code for one-click function easy to do
 Lengthy application and approval process
 Significant legal costs may be required
 Patents required in multiple jurisdictions
 Patent limited to exact terms of application
 Be careful to limit patent claims narrowly

13. HKUST Business School
13
Prior Discussion for Utility
Patents
 There are three types of patents which can
be granted under US laws
 Utility Patents (this is what we have been talking
about and is the most common type of patent)

Protects product and process inventions

Must provide some form of concrete utility
 Design Patents (much less common historically)

Protects any novel, original (rather than non-obvious)
and ornamental (rather than useful) design for an article
of manufacture (overlaps with copyright and trademark)
 Plant Patents (asexually reproduced plants only)

14. HKUST Business School
14
Design Patents
 Protects design or appearance
 Closer to copyright in some ways, but only for
articles of manufacture (which copyright does
NOT protect from duplication)
 Duration of only 14 years (which is shorter
than utility patents and than copyright)
 Traditionally, not used much, but becoming
more popular now due to simple application
process and lower cost than utility patents

15. HKUST Business School
15
Plant Patents
 Protects any distinct and NEW variety of plant
that is asexually producted (which means, not
reproduced by means of seeds, roots, or
other natural processes, and must be created
by human actions to create new plants)
 Can not get patent on new wild plant
 Can not get patent on self-replicating plant
 Can not get plant patent on bacteria
 Plant patents do not foreclose utility patent for
the same plants (e.g., can get both)