Keeping with the subject of obviousness this past week, I wanted to expand on what obvious means. According to the NOLO 'Patent it Yourself' book, and the discussions in class; it is clear that most patent attrneys, patent examiners, and judges can't agree on the meaning of the term. What makes this situation even more complicated is the fact that courts have used different definitions of the term over the year. One used is that unobviousness equates to a "flash of genius". Another phrase used to define it was "a synergistic effect (the whole is greater than the sum of its parts). Foreign courts usually require an "inventive step." The problem or confusion is only extrapolated by the fact that these definitions are just as difficult to fully understand as the term obviousness itself.
As we learned in class, in 1966 with the court ruling on Graham v. John Deere; the Supreme Court set these guidelines for classifying an invention as obvious or unobvious. These were the following steps:
In my opinion, the first thing you should do to determine if your invention is patentable is to follow the John Deere case and see if achieves new and unexpected results. But even the courts deem that it doesn't, remember there are ways around these technicalities. One of which being is that if your product enjoyed commercial success it may be considered unobvious.
Like always, article was referenced from the following:
Pressman, David. Patent It Yourself: Your Step-by-step Guide to Filing at the U.S. Patent Office. Berkeley, CA: Nolo, 2012.
As we learned in class, in 1966 with the court ruling on Graham v. John Deere; the Supreme Court set these guidelines for classifying an invention as obvious or unobvious. These were the following steps:
- Determine the scope and content of the prior art
- Determine the novelty of the invention
- Determine the level of skill of artisans in the pertinent art.
- Against this background, determine the obviousness or unobviousness of the inventive subject matter
- Also consider secondary and objective factors such as commercial success, long-felt but unsolved need, and failure of others.
In my opinion, the first thing you should do to determine if your invention is patentable is to follow the John Deere case and see if achieves new and unexpected results. But even the courts deem that it doesn't, remember there are ways around these technicalities. One of which being is that if your product enjoyed commercial success it may be considered unobvious.
Like always, article was referenced from the following:
Pressman, David. Patent It Yourself: Your Step-by-step Guide to Filing at the U.S. Patent Office. Berkeley, CA: Nolo, 2012.
As with your more opinionated blog posts before, these are well written, clear summary of relevant topics. Easy to read, informative, and good quality writing, well done. Keep up the excellent work!
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