The meaning of the word ‘obvious’ to most seems – well, obvious. This might be the single most reason responsible for the complexity of the patent system. The word ‘obvious’ in the English language is nothing like the word ‘obvious’ in patent law. Other than the similar spelling, these words have remarkably different meaning. Yet many who use patents attempt to use the English definition of obvious when they make a patentability determination to arrive at a total failure of a result. For patentability questions, the patent law definition of ‘obvious’ must be considered – and one should ignore the common English meaning of that word.
To determine whether or not some invention is patentable in view of prior art, one must make a determination if the new invention is non-obvious in relation to the related inventions and science, in combination, of all things publically known, patented or not. This is a difficult test to perform. There are many text and treatise which explain this in detail, however it is not important to repeat that here. For an understanding of the term ‘obvious’ as it applies to patents and invention, one should first get used to the notion that it really has little to do with what we might all imagine a general definition of obvious to be. Rather, about 50 years of case law, sets the definition and only those who have considered the many bits and pieces of these cases will be most successful at making a patentability determination – as it might related to obviousness.
Try to resist the temptation to apply the English definition. Instead, you might start with the idea that nearly everything is non-obvious. That is, even very slight changes, differences, and alterations, no matter how slight, have been generally interpreted as non-obvious. Until recently, the patent office has considered most any argument sufficient to prove non-obvious. This all came to a crashing blow in 2007 when KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), upset a large part of the case law – and gave us all guidelines which are largely not in line with 50 years of practice coming before.
What does all this mean to most inventors? Not much. Maybe it means your patent attorney will be spending a few more hours convincing the patent office KRS Teleflex isn’t as big as we all thought it could be. Nevertheless, the patent office is a bit less likely to accept every argument on patentability these days.
OK – for those of you who are determined readers and have made it this far, here are some of the details. An obviousness determination is made in view of a three part test given to us in Graham v. John Deere Co. in 1966. We must first determine the scope and content of prior art, discover the differences between the prior art and the claimed invention, and finally ascertain the level of ordinary skill of those practitioners in the art – no fair considering what the genius knows!. To do these three things – is the bulk of the work your patent examiner is charged with doing. Often, they don’t do it well. In response, the applicant must point to the errors in the reasoning of the examiner – with respect to these principles. For example, if the examiner doesn’t correctly determine the true scope of the prior art – but instead affords greater scope to some reference than he should, then she/he must be set straight. Or, if the examiner fails to properly mention and consider all differences, the examiner must be told of the differences he failed to consider and those must be considered before a legal conclusion of obvious can be reached. Finally, the examiner must ascertain what is the ordinary skill in art. Against these criteria a determination must be made.
So where is KSR Teleflex you may ask? Well, in 95% of cases (I just made that number up, but it is very high indeed) the prior art put forth by an examiner to reject your patent claims will be a combination of two related references. It is unfair (determined in cases adjudicated long ago) to combine references where there is no teaching, suggestion, or motivation to combine them. That is, the examiner can’t just combine references, the references themselves must somehow suggest the combination. Huh? Yeah; me too. KSR Teleflex aims to remove this bit. However, the court didn’t tell us what to do next. Only after hundreds of additional cases reach the high appeal courts, will we know how this shapes up. For now, obvious is quite a bit uncertain in its definition. This is where the skill of your patent attorney will come in – and why it is important to hire a good one. If you get to the final portion of the patent journey – i.e. litigating a multi-million dollar case, to find out this part wasn’t done just right – the patent might be invalidated and all was for naught. Not good.