This fourth requirement of patentability is probably one of the most-oft discussed and definitely the one that I have written the most about on this blog. This requirement is that of non-obviousness, or the notion that an invention must be non-trivial and must be demonstrably original.
The reason for this goes back to the basis of the patent-awarding system. Patents were designed to protect unique, original inventions, so as to encourage those who have some extraordinary skill in an art to pursue their passions and move society forward. As such, the obviousness requirement mandates that an invention must demonstrate some ingenuity and skill beyond the scope of a person holding ordinary skill in the art (PHOSITA).
There are four factual questions that need to be asked to determine obviousness. First, one must understand the differences between the prior art and the current invention. Second, one must compare the difference in skill required for this invention and in the field from those of ordinary skill. This allows the court to determine that this invention is really one requiring extraordinary ingenuity and skill. Third, one must understand what a PHOSITA would call obvious, since they are the only ones qualified to judge what can be obvious in that given field. Finally, there must be some objective evidence of obviousness or non-obviousness.
This objective evidence can include "(1) the commercial success of the invention; (2) whether the invention satisfied a long felt need in the industry; (3) failure of others to find a solution to the problem at hand; and (4) unexpected results." These are extremely important measures of evaluating the obviousness of a given invention because if it is found to be a unique solution that others could not determine that brings about a great deal of commercial success, then clearly there is some unique value-add from this invention that prior art did not enable.
There are many many court cases which have debated the issue of obviousness and it is from these standards that we have developed these metrics for determining obviousness.
Source: http://www.ipwatchdog.com/2012/06/09/patentability-overview-obviousness-and-adequate-description/id=25191/
The reason for this goes back to the basis of the patent-awarding system. Patents were designed to protect unique, original inventions, so as to encourage those who have some extraordinary skill in an art to pursue their passions and move society forward. As such, the obviousness requirement mandates that an invention must demonstrate some ingenuity and skill beyond the scope of a person holding ordinary skill in the art (PHOSITA).
There are four factual questions that need to be asked to determine obviousness. First, one must understand the differences between the prior art and the current invention. Second, one must compare the difference in skill required for this invention and in the field from those of ordinary skill. This allows the court to determine that this invention is really one requiring extraordinary ingenuity and skill. Third, one must understand what a PHOSITA would call obvious, since they are the only ones qualified to judge what can be obvious in that given field. Finally, there must be some objective evidence of obviousness or non-obviousness.
This objective evidence can include "(1) the commercial success of the invention; (2) whether the invention satisfied a long felt need in the industry; (3) failure of others to find a solution to the problem at hand; and (4) unexpected results." These are extremely important measures of evaluating the obviousness of a given invention because if it is found to be a unique solution that others could not determine that brings about a great deal of commercial success, then clearly there is some unique value-add from this invention that prior art did not enable.
There are many many court cases which have debated the issue of obviousness and it is from these standards that we have developed these metrics for determining obviousness.
Source: http://www.ipwatchdog.com/2012/06/09/patentability-overview-obviousness-and-adequate-description/id=25191/
No comments:
Post a Comment