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Don’t overlook the importance of an obviousness inquiry

| Mar 15, 2021 | Intellectual Property Law

An invention can carry a tremendous amount of value. For that reason, you should do everything you can to protect it. But you’re invention can enjoy protection only if you’re able to successfully obtain a patent for it. To do that, you’re going to have to show that the invention is, amongst other things, useful, novel, and nonobvious. This last element, nonobvious, may sound pretty easy to show, but the issue can be a lot more complicated than you think.

A closer look at nonobviousness

Even if the other elements of a patent are met, an invention that is deemed obvious is non-patentable. Therefore, the nonobvious nature of an invention needs to receive just as much attention as the other elements of a patent.

To start, consider the big picture: an invention can’t be protected if there was a reasonable expectation that combining certain elements would result in some sort of success. It may be helpful to look at the invention from the perspective of someone else who is knowledgeable in the field and consider whether he or she would consider the invention to be nothing more than the combination of two elements or references to obtain an obvious result. For example, if A and B are already known, then A+B resulting in C will likely be deemed obvious. Another way to look at the invention is to consider whether it’s trivial and actually non-inventive in nature.

Each case is unique

It’s important to note that issues regarding obviousness need to be addressed on a case-by-case basis. Sometimes combining two elements isn’t obvious. Sometimes it is. That’s why you may need help to address four key elements of the inquiry, which include:

  • Differences between prior inventions and the invention in question;
  • The level of ordinary skill in the field;
  • Whether one possessing that level of skill would deem the invention in question to be obvious in light of other existing material; and
  • Any other objective evidence that may speak to obviousness.

These can be in-depth inquiries, and each of them can have a subset of issues that need to be addressed. So, if you’d like assistance in evaluating your invention to maximize your chances of succeeding on a patent application or a legal claim involving a patent, now may be the time to speak with an attorney who is well-versed in this area of the law.