key term - Obviousness

Definition

Obviousness is a legal concept in patent law that evaluates whether an invention would have been obvious to a person having ordinary skill in the relevant art at the time the invention was made. This determination is crucial in assessing the patentability of an invention and preventing the granting of patents for trivial or predictable advancements.

5 Must Know Facts For Your Next Test

1. The obviousness determination is based on the Graham v. John Deere test, which considers the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the art, and any secondary considerations.
2. The PHOSITA standard is used to assess whether the claimed invention would have been obvious to a person of ordinary skill in the art at the time of the invention, not to the inventor or a genius in the field.
3. Combining prior art references to arrive at the claimed invention is not necessarily sufficient to establish obviousness, as there must also be a reason or motivation to make the combination.
4. Unexpected results or properties of the claimed invention can provide strong evidence of non-obviousness, even if the individual elements of the invention were known in the prior art.
5. Objective evidence of non-obviousness, such as commercial success, long-felt but unresolved needs, and failure of others, can help overcome a prima facie case of obviousness.

Review Questions

• Explain the role of the PHOSITA standard in the obviousness analysis.
  • The PHOSITA (person having ordinary skill in the art) standard is central to the obviousness analysis. The invention is evaluated from the perspective of this hypothetical person, who is presumed to have the typical knowledge and skills of an average worker in the relevant field of technology at the time of the invention. The PHOSITA standard ensures that the obviousness determination is based on the level of understanding and capabilities of a person of ordinary skill, rather than the inventor or a genius in the field. This helps to prevent the granting of patents for trivial or predictable advancements that would have been obvious to the skilled artisan.
• Describe the importance of secondary considerations in overcoming a prima facie case of obviousness.
  • Secondary considerations, such as commercial success, long-felt but unresolved needs, and unexpected results, can provide objective evidence of non-obviousness and help overcome a prima facie case of obviousness. These secondary considerations can demonstrate that the claimed invention was not obvious to the PHOSITA, even if the individual elements were known in the prior art. For example, if the invention has achieved significant commercial success or solved a long-standing problem in the field, it may indicate that the invention was not obvious to the skilled artisan. Similarly, unexpected or surprising properties of the invention can also be strong evidence of non-obviousness.
• Analyze how the combination of prior art references can impact the obviousness determination.
  • The mere fact that the claimed invention can be constructed by combining prior art references is not sufficient to establish obviousness. There must also be a reason or motivation for the PHOSITA to make the combination at the time of the invention. The court must consider whether the prior art would have suggested the claimed combination to the skilled artisan and whether the combination would have yielded predictable results. If the combination of prior art references would have been obvious to the PHOSITA, then the claimed invention may be considered obvious. However, if the combination produces unexpected or surprising results, or solves a long-standing problem in the field, it may be deemed non-obvious, even if the individual elements were known in the prior art.

Related terms

Prior Art:

Prior art refers to the existing knowledge, technology, and information that was publicly available before the filing of a patent application. It is a key factor in the obviousness analysis.

Person Having Ordinary Skill in the Art (PHOSITA): PHOSITA is a hypothetical person who is presumed to have the typical knowledge and skills of an average worker in the relevant field of technology at the time of the invention.

Secondary Considerations:

Secondary considerations, such as commercial success, long-felt but unresolved needs, and unexpected results, can provide objective evidence of non-obviousness and help overcome a prima facie case of obviousness.