Friday, March 21, 2014

The Definition of Obviousness

In his blog post titled “United States: Patent Law 106: When Is An Invention Obvious And When Is It Patentable?” Ryan L. Marshall discusses Section 103 as it pertains to the definition of obviousness. It prohibits patents “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." In essence, this defines what obviousness means.

In addition to covering the definition of obviousness as we had discussed in class, the article specifically elaborated on evidence that inventors can use to support the nonobviousness of an invention. Referred to as “secondary considerations”, this can include:
·         the commercial success of products or processes arising from the invention,
·         long-felt but unsolved needs that are met by the invention,
·         failure of others to solve problems the invention achieves, and
·         unexpected results and superior properties imparted by practicing the invention.
One or more of these secondary considerations can be persuasive enough for a patent office or court to affect their decision.

The article also discussed the ambiguity of what “ordinary skill in the art” might mean. It compares “unpredictable” fields such as chemical and cosmetic arts, in which success is less obvious and people with ordinary skill in the art might not realize that the product will be successful, to more predictable fields requiring less skill where obviousness is more commonly determined.


Overall, I find Marshall’s summary of obviousness to be informative and an appropriate summary of Section 103. I think it would have been more interesting if he had gone into greater depth regarding how each of the secondary considerations might play into patent granting decisions, as I feel that they each might have a different weight.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=HiGn_Vw6RCw

1 comment:

  1. Hi Albert,
    Thanks for a great summary of the article! It was really informative. I think these secondary conditions are quite interesting and seem to add another dimension to the obviousness factor. It would be fascinating to see a case in which one of the secondary conditions helped determine a ruling or the future of a patent. Another note I wanted to make is in regards to your second to last paragraph, commenting on "ordinary skill in the art". I definitely agree that this term is rather ambiguous and seems to be left up to the patent examiner or a jury/judge. What is considered ordinary skill in an art? Is it something that's really comparable or does it change from on person to another? After all, you and I may both see the sky is blue, but we might describe them as different types of blue. Anything not completely defined and concrete is in a sense subject to human error.

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