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Patentability requirement – Nonobviousness

The term nonobviousness is a legal term of art in the patent world.  The question is would the invention have been obvious to  a person having ordinary skill in the art (a PHOSITA) at the time of invention.  While this appears to be a simple question, it requires a significant amount of analysis to determine if an invention is obvious or if it falls under the non-obvious category and thus suitable for being protected by a patent.  The Manual of Patent Examination and Procedure (commonly called the MPEP by patent practitioners) defines the obviousness bar as stating “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”  See MPEP 2141.

The framework for deciding what is, or is not, obvious was set forth by the United States Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966).  In sum, the considerations set forth by the U.S. Supreme Court focus on if a PHOSITA faced with a problem would be led, in the ordinary course of proceeding to solve the problem, to the Applicant’s invention as claimed.  If the invention provides more than just a combination of known elements in a new form, it may be patentable.  If the invention provides a combination of known elements in a new form and provides unforeseen results, the invention may be patentable.  The non-obviousness requirement to obtain a patent is assessed on a case by case basis that can quickly lead to a very complex procedure.   If your invention as claimed receives an obviousness rejection, there are a variety of arguments that, depending on the rejection itself, can be used to overcome these rejections.  Additional evidence of nonobviousness, called “secondary considerations of nonobviousness,” can also be used to overcome a patent examiner’s obviousness rejection.

Each foreign country or entity has its own requirement akin to the nonobvious patent requirement set forth in the United States.  In Europe, a comparative term is the “inventive step” requirement, meaning did the inventor have to undergo an inventive step to reach the application.  Each of these individual countries has a different standard for determining what is patentable, and it may be easier in some countries to obtain a patent and more difficult in other countries to obtain a patent.

Our patent attorneys can assist you in overcoming an obvious to try patent rejection or to draft your patent application to try and avoid these patent rejections whether you or located in Boise, Idaho, elsewhere in the United States, or abroad.