We're now to the third requirement of
Protecting Business Innovations via Patents Non-Obviousness.
This is the hardest of the three elements of patenting.
Non-obviousness is really, you could summarize it just in a couple of expressions.
Is it brilliant?
Is this really a new innovation that no one else would have thought of?
Or at least, it's not obvious somebody would have come up with it.
So, if an invention is non-obvious,
you would say, "That's really smart,
" or "Wow, that's cool," or "You're so smart."
That's what you're looking for.
Now, what does it really mean?
Well, first, it has to be non-obviousness to someone skilled in related fields.
There are many things which I can go to my daughter who's
a violin maker and a violin-playing musician and say,
"I learned about this in a physics class,
" and she would say, "Wow.
That's cool!" but it's just because she doesn't know physics.
I mean, it's obvious to a physicist.
And so, the issue is it has to be non-obvious to somebody who has the relevant skills.
So, you can't go to a history major and say,
I came up with a great idea in chemistry,
and expect whether that person can judge whether it's obvious.
So, you have to go to a chemist.
Now, the obviousness factor is viewed from the perspective of an industry expert.
You look for top people in your field,
but it's a layman review.
What do we mean by that?
Layman means non-professional, expert means professional.
So, we're looking for the expert viewpoint on obviousness,
but the judge or the patent officer who are making the final decision,
they're not experts, they are laymen.
Meaning, not skilled in that field.
And they're the ones that are going to make the final decision.
So, they're going to rely on other people.
They're going to rely on expert counselor advice or
testimony to try and get a sense of how non-obvious is this.
And so, that makes it tricky and sometimes mistakes happen.
Now, the general rule of thumb in addition to being non-obvious,
is it has to represent some significant advance over prior state of the art.
When we mean state of the art,
we're not talking about art like paintings,
we're talking about art like science.
State of the art means best practices in the field.
It has to be some significant advance over prior knowledge in that relevant field,
which could be science,
or business, or engineering,
but it has to be non-obvious to a person in that field.
Now, it's also possible that something can be new and still obvious.
If the person skilled in the relevant field of technology or business,
and is familiar with the subject matter could have invented that with comparable ease,
such an invention would be novel,
but obvious to that person.
You could say, "Yeah.
I've never seen that before. That's new."
But it's a trivial invention,
it's easy to do.
A trivial invention is still novel, but it's obvious.
And so, that's where you get denied a lot in patent application.
At one point, this was used to deny almost every patent application.
The patent office would say "obvious, obvious, obvious,
" and to some extent,
everything in hindsight might be viewed as obvious.
It's easy once you know the answer.
Of course, it's obvious now,
but you wouldn't have thought of that ahead of time.
The Supreme Court then struck that down and they said "No,
non-obviousness does not mean genius.
We do not require a brilliant act of new genius.
We require something that would have taken
work for someone skilled in the field to have come up with."
They also said that all the elements of an invention can be obvious, all the components,
if the combination is greater than the "sum of the parts" They said,
you could have a new invention,
which is a new process or a new product,
and all the pieces of it may be known.
But the way you put it together was novel.
I mean, you could argue that virtually everything in an iPod,
the music player from Apple,
was known before they brought it out.
There's not a lot of new novel inventions in there,
but the way they put it together was creative,
and maybe non-obvious at the time.
So, they may be able to get a patent on something which
is a combination in ways that were
not obvious to the common person or to someone skilled in the field.
Patents are designed to encourage invention.
And the point of this non-obviousness is we don't need to
encourage people to invent the obvious. They'll do that.
If there's a need, and it's easy to do,
somebody will do it,
we don't have to reward them.
Many countries have something called a Utility Model Patent or Petty Patent.
I shouldn't say many countries,
some countries do, China,
Germany, other countries have this Utility Model Patent or variations on it.
Sometimes they call it a petty patent.
I believe that's what they use in Japan.
But Utility Model is used in China and many other countries to describe this.
It does not require non-obviousness.
It requires some degree of invention but not the same level.
The U.S. says, "No,
we're not interested in that.
We want something to be more brilliant than that and we only have Utility Patents.
We require a higher level of non-obviousness than
a petty patent or Utility Model Patent would require."
Non-obviousness, therefore, must be brilliant or smart.
It has to be more than novel.
It could still be new and obvious.
It could be more than the sum of the parts,
so even if the parts or elements are obvious,
it might be non-obvious as an application that combines a lot of different ideas.
And genius is not required to be non-obvious,
but cleverness or being smart is.
It has to be more than just a trivial invention or adaptation.
That's it. Thank you.
Now, this is just the first of our lectures on non-obviousness.
We're going to go into more about this in our next two lectures on this topic. Thank you.
Theodore Henry King CLARKAssociate Professor
