Patent Basics: Nonobviousness

For a patent to issue, the invention must not only be new and useful, it must be “nonobvious.” Unlike the concepts of novelty or utility, you probably don’t have an immediate, intuitive notion of what nonobviousness really is. First of all, isn’t it difficult to define something by what it isn’t? And nonobvious to whom?

It’s not surprising if the nonobvious requirement seems the most opaque. Of the three hallmark qualities that inventions must have to be patentable, nonobviousness has been the most debated and least clear-cut, and it has had the rockiest history.

The “to whom” question is the easiest to tackle. An invention must be nonobvious to a person of ordinary skill in the art. That’s not your standard Joe Schmoe out shoveling snow, but it is your standard Joe Schmoe who is reasonably well-trained in the field – not necessarily the Einstein of quantum physics either, but maybe a quantum physics professor.

The first question is a little trickier. Let’s start with looking at how the need for nonobviousness came about in the first place.

The requirement for nonobviousness was not in the original patent statute, drafted in 1790. It was “new and useful,” plain and simple. Eventually, though, in the 1850 case Hotchkiss v. Greenwood, the courts decided that those terms were not stringent enough; the Supreme Court stated it well in Atlantic Works v. Brady in 1882:

It was never the object of patent laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention.

It was clear that inventions needed something more, some je ne sais quois, to warrant the power of patent protection. But what, exactly, was it that set apart “trifling” devices from meatier, worthier ones? After the 1850 decision, a vague, subjective, almost mystical attempt at defining the je ne sais quois developed: a “standard or level of invention” that a device must meet in order to be patent-worthy. The trouble was that this standard of invention was a defining quality that was itself undefinable, and it caused confusion for patent seekers until the Patent Statute of 1952.

A group of patent attorneys got together and proposed that the real question shouldn’t be whether the subject up for a patent met some ill-defined standard of invention, but rather whether or not it was nonobvious to a person of ordinary skill in the art. Relevant questions toward deciding nonobviousness, like “how long did the need that this device fills exist?” and “how many others had tried to find a way to solve the problem?” centered on facts surrounding the invention and the inventor rather than subjective notions like inventive steps or creative leaps or a “flash of genius.”

The requirement for nonobviousness was added to patent law contained in Title 35 of the United States Code in 1952, and in the intervening 50 years the courts have interpreted it in a host of patent cases.

Nonobviousness rejections are very common in prosecution of patent applications before the United States Patent and Trademark Office. Thus, this somewhat subjective requirement is a key issue in almost every patent case. The PTO is somewhat hamstrung in its application of the nonobviousness standard. Examiners are not allowed to simply conclude that an invention is obvious; instead, an examiner must show specific documents that set out the various elements of the invention, along with some reason to combine the different documents to arrive at the invention. On top of that, examiners are given a very limited time to do a search for the documents. Moreover, it is the burden of the examiner to show an invention is obvious. For that reason inventions that may seem obvious to a layperson are sometimes issued patents.