What Is Non-Obvious?

Non-obvious is a requirement for patent protection that literally means your invention is not obvious to someone who is in the same industry. A new invention needs to be unexpected or surprising and cannot be anticipated by looking at the existing technology or prior art. If an invention is non-obvious, then it cannot be disqualified by obviousness from being patentable. 

What Is Patentable Subject Matter?

A lot of people think that they can patent anything. The truth is that only certain allowable subject matter can actually be patented, including:

  1. Process - the method of doing something
  2. Machine - a new machine that can do something not previously done before
  3. Article of manufacture - physical items like pencils or chairs
  4. Composition of matter - the ingredients in certain things like paint or pharmaceutical drugs
  5. Any new and useful improvement: a new version of one of the above, such as a chair with a footrest

If your invention falls under one of these categories, it needs to also be:

Novel 

Novelty is defined by patent law as the originality of an idea. An invention can't be patented if:

  • The invention was previously known or used by someone else in the United States before the applicant invented it.
  • The invention was previously patented or talked about in any printed publication before the applicant invented it.
  • The invention was previously patented or talked about in a printed publication in any country more than one year before the inventor's U.S. patent application is received.
  • The invention has been used by the general public or has been on sale in the United States for more than one year before the inventor files their U.S. patent application.

These rules don't stop inventors from patenting improvements to inventions that already exist. If you have invented something that improves upon something that already exists then it is possible to patent the improvement.

Useful

You cannot patent something that has no use whatsoever. According to U.S. patent law, useful means the item or design must have an obvious purpose. As well as having a purpose, the invention must be able to perform its intended function. If both of these are not met, the item would not be useful in the traditional sense of the word.

In order to remove any question of the subjectivity of whether an invention is useful or not, the U.S. Patent and Trademark Office (USPTO) has created guidelines for what makes an invention useful or not.

  • An invention has a use if a person of ordinary skill in the art would immediately understand why the invention is useful based on the characteristics of the invention, and its use is specific, substantial, and credible.
  • The patent applicant must provide one credible and specific way that it is useful.
  • If the examiner feels that the invention is not useful, he or she must include a detailed explanation about why the invention has no specific and substantial use. Whenever possible, the examiner needs to provide documentary evidence.

Non-Obvious

A new invention must not only be different in one or more ways from another patented invention but also not obvious to someone in the same industry or field of work. This requires a considerable difference from what has already been described or used, but that an industry expert would not consider an obvious design change. It needs to be something that is more unexpected.

The non-obvious laws were set forth by the U.S. Supreme Court after a specific case known as Graham v. John Deere. Based on this case, an invention is deemed obvious or non-obvious after: 

  • Determining the scope and content of the prior inventions
  • Figuring out the differences between the newly patented invention and the prior inventions
  • Deciding what the level of ordinary skill is in the different inventions that are being prepared

Since the case of KSR v. Teleflex, determining when something is non-obvious has become more difficult. Before the case, the United States Court of Appeals for the Federal Circuit employed a "teaching, suggestion, or motivation test." If the invention was not teaching, giving a suggestion, or showing motivation, then the invention could not be obvious. This prevented people from using hindsight in their arguments, something that is incredibly important because, on some level, anything can be obvious once you know about it.

In the case of KSR v. Teleflex, the Supreme Court stated that the teaching, suggestion, or motivation test was too restrictive. They also stated that determining whether an invention is obvious is based on common sense. This has since caused a lot of turmoil in both the courts and the USPTO.

In addition to the teaching, suggestion, or motivation test, there are other rationales available to the USPTO examiner when reviewing a patent application:

  • If the invention is something that uses elements of an invention that are already known and yields a result that is predictable, then the invention is obvious.
  • If the invention is created by substituting one known element for another known element to obtain predictable results, then the invention is obvious.
  • If the invention is used by applying a known technique to improve a similar device in the same way as the previous known technique, the invention is obvious.
  • If the invention is created by using a known technique that produces a predictable result, then the invention is obvious.
  • If the invention is created by using previously known or predictable solutions that have a reasonable expectation of succeeding, then the invention is obvious.
  • If known work in one field prompts you to create a product that changes this work based on design incentives or market forces and the changes are predictable to someone in that field, then the invention is obvious.

Example of Non-Obvious

If your idea is to make clothes hangers in smaller sizes for petite women's clothing, it's possible that your invention is novel, but simply making clothing hangers in a smaller size would still be quite obvious to people who already make hangers. Because this does not meet the non-obvious requirement, the invention would not be patentable.

Frequently Asked Questions

  • Can I still get a patent if my invention doesn't fulfill all three of these categories?

Do not assume that your invention cannot receive a patent if it is not clearly novel, non-obvious, or useful. Something novel, non-obvious, and useful to you may be viewed differently by a patent examiner. It is important to speak to a patent professional so that they can analyze your invention from the perspective of a patent examiner. There are also ways that your application can be structured to make your invention fit the three criteria better. If you are unsure about whether or not your invention fulfills all three criteria, you should contact an intellectual property attorney. They are very experienced in making these small distinctions when they counsel inventors and business organizations.

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