What Is Obviousness?

Patent obviousness is the idea that if an invention is obvious to either experts or the general public, it cannot be patented. Obviousness is one of the defining factors on how to patent an idea and whether or not an idea or invention is patentable. It is one of the hardest concepts to understand since it is often subjective and even arbitrary.

The case of Graham v. John Deere is the best way to understand obviousness. Using this case, the Supreme Court came up with the Graham Test for obviousness, which helps determine obviousness as a question of law through factual inquiries:

To determine the scope and content of prior art, the inquiry considers similar patented inventions. Each is defined in the broadest reasonable terms that are consistent with the patent claims. Then the invention at hand is compared with these other inventions, looking for differences. This requires a deeper investigation into the wording of claims and a look at both the prior art and invention at hand as a whole.

One of the hardest aspects of obviousness is determining the level of ordinary skill. If a person of ordinary skill in an industry could have easily developed the invention, it's not patentable. Thus, the inquiry must identify this hypothetical person using questions such as:

  • What type of problems are encountered in this field?
  • How have these problems been solved in the past?
  • How quickly does innovation occur in this field?
  • How sophisticated is the technology in this field?
  • What level of education is typical for workers in this field?

Finally, secondary considerations help determine whether the invention only appears obvious on paper or in hindsight. These "objective indicia of non-obviousness" may include the following:

  • Commercial success
  • A long-felt but unsolved need within the industry
  • The failure of others
  • Copying by industry leaders
  • Unexpected but positive results (important in post-KSR tests of obviousness)

Secondary considerations help guard against unreasonable declarations of obviousness, but they aren't as straightforward as they appear. For instance, commercial success only counts towards non-obviousness if it due to the merits of the invention rather than other factors, such as marketing or distribution.

Similarly, although an invention that solves a long-standing problem may seem obvious, that isn't always the case. If a need has gone unfilled for years despite efforts to find a solution, that indicates the invention is non-obvious.

Why Is Obviousness Important?

In most instances, obviousness is the largest obstacle in getting a patent. Judges and attorneys have different views, so rulings are hard to predict. Generally, a test for obviousness considers all prior art, including patents and printed media, and tries to determine whether the combination of these ideas into a new invention is obvious to an ordinary, skilled person.

The definition of obviousness has also changed over time. Thirty years ago, the Federal Circuit Court applied the teaching, suggestion, and motivation test to find obviousness in patent ideas. This was later abandoned in favor of six criteria that define obviousness:

  • Predictable results
  • Invention is created from prior art using only a substitute element
  • Using a known technique to improve a machine or device
  • Applying a known improvement to achieve predictable results
  • Invention achieves success from a number of finite, known solutions
  • Designs that are obvious to a person of skill

Even with these definitions, the 7,500 patent officers in the U.S. Patent and Trademark Officers are still allowed their own judgment. This leads to much confusion for inventors. For example, a patent was given in 2014 for a glowing blade for a ceiling fan, even though both fan blades and glow-in-the-dark products are common. The moral is that patent obviousness differs from industry to industry. What some see as obvious, others do not.

Common sense is another hard part to grasp. While the Supreme Court wants to maintain an analytical basis for obviousness, sometimes common sense overrules. The case of KSR v. Teleflex showed that although evidence and analysis are at the forefront of an obviousness debate, common sense must also have a role.

Attacking the Claims of a Patent to Prove Obviousness

Before obviousness is determined, the claims of a patent are up for consideration. The claims are the ideas of the patent, including how the invention works and what results it achieves. Patent officers use the claims to separate good patents from bad ones.

There are two types of claims:

  • Dependent claims contain references to other claims. The dependent claim typically contains one or two measures or limitations.
  • Independent claims do not contain references to other claims. Patent infringement can be claimed when another device does what is described in one or more independent claims.

In both cases, claims help define the scope of patent protection by determining whether the claim is specific enough. Claims that are too broad can make a patent invalid.

First, these officers analyze the claims for novelty — a fresh idea that has no resemblance to old patents. Then they ask whether the invention is merely a natural progression of technology, or inventive step, that someone else could easily have come up with. Both documents and general knowledge are used to figure out whether obviousness applies.

Non-Obvious vs. Useful vs. Novel

To obtain a patent, an invention must be non-obvious, useful, and novel. Without these three characteristics, a patent will not be granted. Novelty is similar to non-obviousness, but it involves the following considerations:

  • Whether the invention was known to others prior to the patent filing
  • Whether the invention was described in print
  • Whether the invention was patented or printed anywhere in the world more than a year ago
  • Whether the invention was being sold before the past year

An invention is considered useful if:

  • A person of skill would find it a positive addition to the industry
  • It has at least one use (and possibly more)

Recently, there have been attempts to skirt obviousness by applying for a double patent (two patents for the same invention). This has created a divide in the review process, especially when the two patents in question are similar.

Anticipation vs. Obviousness

Anticipation is similar to obviousness in that it can often nullify a patent. If a claim, also known as the description of the invention, includes a single reference to prior art, the prior art is said to have anticipated the invention. Sometimes a claim bears a resemblance to more than one piece of prior art, combining details from multiple sources. In that case, anticipation does not apply — but obviousness might.

In either case, the patent will be denied. The examiner will state the prior art references that anticipate the claim or make the claim obvious. The inventor is then given a chance to respond and defend the non-obviousness of the invention. Alternatively, the inventor can amend the claim to add new elements.

Typically, an examiner will consider a claim twice before the rejection is final. After that, the inventor must pay an additional fee for further consideration or make an appeal to the Board of Patent Appeals and Interferences.

Common Mistakes

The most egregious error that most inventors make is thinking their invention is obvious without contacting a patent lawyer for help. Because they are trained to check all the aspects of an invention, patent lawyers have a better understanding of what makes an invention obvious.

Steps to File

To file for a patent, you must first determine what type of invention you have, as well as the type of patent to apply for. Once you have these, you can file a patent in just a few steps. Hiring an attorney makes this step much easier, as they handle the paperwork for you.

If you need help with avoiding obviousness in your patent claims, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.