How Do I Know If My Invention Is "Nonobvious" When Applying for a Patent?

What makes an invention non-obvious under patent law?

In order to qualify for a patent, an invention must meet several legal hurdles. One of those requirements is that the invention must be "non-obvious." What is this non-obvious requirement, and how might it affect your invention?

Higher Requirement Than Other Forms of Intellectual Property

The requirement that patents be "non-obvious" stands in sharp contrast to anything required in either copyright law or trademark law.

In copyright law, there is a relatively low bar for creativity: originality and "improvements" over prior registrations. While the U.S. Supreme Court has said that raw information such as the names in a phonebook, without any element of creative assembly, cannot qualify for a copyright, essentially any minimal amount of creativity is sufficient. For example, a doodle of your dog could receive copyright protection, even if the doodle is bad or looks nothing like your dog. An original piece of music can receive copyright protection, even if the music itself is an extremely simple melody that virtually any high school piano student could master. There is no requirement that the music convey a sound that no existing piece of music has previously conveyed.

Similarly, when it comes to trademarks, the U.S. Patent and Trademark Office (USPTO)―the federal agency charged with issuing and administering patents and trademarks―will issue trademarks for business names that are short or even boring, so long as they do not conflict with existing marks or confuse consumers. Similarly, the USPTO will register logo marks even if they are not stunningly beautiful or unique.

Patent law is different. Under the U.S. Patent Act, claimed inventions must be non-obvious in order to receive protection―a bar that is higher than that for either copyrights or trademarks.

What the Patent Act Says About Non-Obvious Requirement

According to 35 U.S. Code § 103, "A patent for a claimed invention may not be obtained... 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."

In other words, the USPTO cannot issue a patent to a claimed invention that would be "obvious" to a person with "ordinary skill in the art to which the claimed invention pertains" (meaning means someone who has some basic skills and knowledge of the field in which your invention might be used).

What Makes an Invention Non-Obvious?

A particularly important aspect of the language of the U.S. Patent Act is that the relevant standard is not merely whether your invention seems obvious to the average person walking on the street, or even to the average well-educated person. Rather, the relevant standard is whether someone with basic skills and familiarity with your patent's relevant areas would find the invention relevant.

What does this mean in practice? Your invention must be a departure from what has been previously registered with the USPTO, and also must not be immediately apparent to folks with knowledge of your patent's application.

Imagine that your invention involved a new computer processor that could run without taxing the laptop's battery as much as existing processors. This invention might be "new" in the sense that existing laptops do not use it. However, if it is widely known by the relevant audience―computer engineers or mechanical engineers―but perhaps rejected because the proposed design causes overheating or slow speeds, then it would not be patentable. It would be seen as obvious to people with "ordinary skill in the art."

Sometimes the USPTO patent examiner reviewing an application may request additional detail about the prior art (that is, related prior inventions) in the relevant field. Be prepared to answer questions along these lines, particularly if your invention is not that different from other similar patents that have been previously issued.

on-obviousness is a somewhat subjective requirement, meaning that it is open to interpretation and debate. In this situation, you may also find it helpful to speak with an experienced patent attorney who can provide you with guidance on the non-obviousness requirement and how you might overcome it.

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