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© 2002, Gallagher & Dawsey Co., LPA
October 2002
When applying for a patent, applicants and patent attorneys are often
confronted with whether the present invention would have been
"obvious" in light of the prior art (that which was previously known).
In fact, obviousness is generally the most difficult hurdle to clear
in obtaining patentable subject matter.
The terms "obviousness" and "nonobviousness" are terms that are often
used loosely. Nonobviousness tests are rooted, but are not spelled
out, in 35 USC §103. Paraphrasing, Section 103 prohibits the grant of
a patent when: (a) the differences between that which is sought to be
patented and (b) the elements of the prior art (c) are such that the
subject matter as a whole would have been obvious (d) at the time the
invention was made (e) to a person having ordinary skill in the art to
which the subject matter pertains. As one can imagine, application of
Section 103 may be very subjective.
Fortunately numerous judicial decisions have set forth principles that
must be considered when determining obviousness. The primary focus of
this article is to illustrate "secondary considerations" that may
assist in establishing the nonobviousness of an applicant's invention.
In order for the secondary considerations to play a role in the
determination of nonobviousness they must relate to the advantages of
the applicant's invention. It is important to note that secondary
considerations are by no means secondary in importance, only secondary
in sequence after analysis of traditional obviousness considerations.
Courts have considered the following secondary considerations in
determining obviousness; (1) the invention's commercial success, (2)
long felt but unresolved needs, (3) the failure of others, (4)
skepticism by experts, (5) praise by others, (6) teaching away by
others, (7) recognition of a problem, (8) copying of the invention by
competitors, and (9) other relevant factors.
First, it is assumed that if the solution to a problem rewarded the
problem solver with commercial success and the solution were obvious
then someone would have brought the solution to market to gain the
commercial success. In other words, if the applicant's invention is
rewarded with commercial success then the assumption can be made that
if the invention were obvious then someone else would have previously
brought it to market. The commercial success must relate to the
applicant's claimed invention and not merely what the application
discloses. Additionally, the commercial success must arise from the
benefits of the claimed invention and not from factors such as
advertising and marketing.
Secondly, if the invention solves a long felt unresolved need, one may
infer that the invention was nonobvious. Again, if it were obvious
someone would have previously developed the invention to solve the
need.
Thirdly, the failure of others to determine a solution to the
long-felt need assists in establishing that the solution was
nonobvious. Further, a showing that the solution was developed amidst
the skepticism of experts is additional persuasive evidence of the
nonobviousness of the invention. Similarly, praise by others,
specifically competitors, provides evidence of nonobviousness. Such
evidence of positive feedback and industry acceptance may be extremely
persuasive. As with commercial success, the positive feedback and
industry acceptance must be a result of the claimed invention and not
auxiliary factors.
Additionally, evidence that prior art teaches away from the
applicant's invention supports the argument of nonobviousness. For
example, an issued patent that reveals one particular method of
obtaining a specific result while disclosing inadequacies in other
potential methods is said to teach away from the other potential
methods. Therefore, an inventor that later perfects one of the other
potential methods to obtain the specific desired result is unlikely to
have an application on this new method rejected due to obviousness in
light of the original method because it tends to teach away from the
disclosed method.
Interestingly, the recognition of a problem may be considered in
determining obviousness. For example, once a problem is known the
solution is often obvious. However, recognizing the problem is often
not obvious.
After learning of the factors above, it should not be a surprise that
the copying of the invention by competitors, rather than designing
around the invention, may also be considered in the determination of
nonobviousness. Even better is evidence that competitors have tried to
design around the applicant's invention without success. And lastly,
Courts have left the door open to consider other factors that are
found to be relevant in determining obviousness.
Therefore, it is only after determining the differences between the
subject matter sought to be patented and the prior art, the ordinary
skill level in the field, and evaluating the secondary considerations
discussed herein, that a determination of the obviousness of the
subject matter as a whole, at the time the invention was made, by one
of ordinary skill in the art may be made. |
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