What Makes an Invention too Obvious to Patent?

Transcript

for an invention to be patentable it needs to be new useful and nonobvious but what is this word nonobvious mean it seems like such a simple word but it's actually pretty complicated for example what if I build a new bicycle and my bicycle is just like all the other bicycles except that I add colorful handlebar streamers to the handlebars Now The Handlebar streamers make my bicycle more fun to ride they look beautiful in fact I might even argue that my bicycle with handlebar streamers is even safer to ride because it's easier for traffic to see and avoid others might argue that my decorative streamers are an obvious Improvement to a bicycle they would say that decorative streamers and ribbons are well known that they've been around for hundreds if not a thousand or more years and that merely adding streamers to the handle of a bicycle to decorate it would just be an obvious Improvement to a bicycle and would not rise to the level of a patentable Improvement in this video I want to talk about the legal standards of obviousness with respect to patents what does obviousness mean and who gets to decide whether an invention is obvious or not hi my name is John Ferell I'm a Silicon Valley patent attorney welcome back to my channel now as we said at the beginning in order for an invention to be patentable it must be new it must be useful and it must be non obvious now the usefulness standard is pretty low it's a pretty low threshold to meet so we're going to set that one aside for now what does new mean for purposes of patenting new means that others haven't invented it known about it or used it before you new means that you're the first to invent it and you haven't put it out in public more than one year since the filing date of your patent application now the non obvious requirement is a little more tricky nonobvious means that it would not be obvious to combine the known elements of your invention to produce predictable results a simple example of this would be a chocolate chip cookie if you started with a sugar cookie sugar cookie dough and you mixed in chocolate chips and nuts and you bake it just as you would a sugar cookie obviously and predictably the results are going to be amazing it's going to be like a sugar cookie but with chocolate chips and nuts mixed in we can predict what the chocolate chip cookie will look like and how it will taste we would say that combining the known elements of this chocolate chip cookie would produce predictable results a predictable cookie but what if we replace the water in our chocolate chip cookie dough with dark dark rum in xantham gum and after baking this new chocolate chip cookie recipe we found that surprisingly the chocolate chips didn't melt as they did before and that the resulting cookie instead of being crisp like a sugar cookie was actually soft and chewy we might also find that after the cookies cooled they didn't crumble as much or produces many crumbs now I don't know anything about baking or chocolate chip cookies except that they're ious I don't know anything about xantham gum so don't rely on my recipe here but the point is that if we combine these elements and they produced an unexpected result it may be possible for us to get a patent on this invention as a general rule if we combine elements either known or unknown and they produce unpredictable unexpected results we would say that this combination is non obvious it wouldn't be obvious to combine the elements and the results themselves are non obvious so this begs the question of who gets decide whether the results are predictable or unexpected we all come at problems with varying difficulties of knowledge skill experience and training and each of us looks at problems in different ways based on these what might be impossible for me to comprehend might be self-evident to you or to others the loss solves this problem by making up a fictitious person a fictitious person through whose eyes we can look at a problem and determine whether there is an obvious predictable result or not in determining obviousness we ascribe certain skills and training to this fictitious person we call this fictitious person the person of ordinary skill in the art sometimes it's referred to as the posita this fictitious person is assigned the ordinary skill and general training of someone who practices in the art if there's a dispute as to whether an invention is obvious or not then a federal court judge would assign certain traits and skills to this person of ordinary skill in the art and we would evaluate the obviousness based on what would be known at the time the invention was made let's say for example that I tried to patent a chocolate chip cookie with nuts and chocolate chips and dark rum and let's say that I did get the patent and someone was infringing my patent and I decided to bring a lawsuit charging that infringer with patent infringement trying to stop them or enjoy them from continuing to bake cookies using my patented recipe the defense that they would raise in court is that my patent is not valid because everybody in their grandmother knew how to make chocolate chip cookies by combining chocolate chips nuts and dark rum the judge in this case might decide that the person of ordinary skill in the art appropriate for evaluating this cookie recipe would be a bakery chef with 2 years of experience in a commercial kitchen or commercial Bakery then the question to be decided is whether this Bakery Chef having ordinary skill in the yart and two years of experience at the time the invention was made would this person believe that the invention was obvious and if it was found that this person of ordinary skill would believe this would be an obvious invention then the patent would be held invalid for obviousness there's obviously a lot more to talk about when it comes to non-obviousness and patents this has just been a highlevel look at the topic if you'd like to learn more about this let me suggest two Supreme Court cases that'll be really helpful in diving deeper into the topic of non-obviousness the seminal case is John Deere versus Graham where the Supreme Court discusses several key factors that should be considered when analyzing problems involving non-obviousness and the second case is ksr versus tlex where the Supreme Court further discusses deer versus Graham and provide some additional guidance on how to think about combining known elements non obviousness is such a fascinating legal topic but that's really all I have to say about it today if you found this video useful I'd really appreciate it if you'd like And subscribe so that the YouTube algorithm will help other people find this video and if you have comments or questions leave them in the comment section below I'd love to read your comments in the meantime I'll see you over on the next video [Music]