What is obviousness in patent law?
Patent examiners often reject an application based on an obviousness rejection. Obviousness means that someone who has ordinary skill in the field of the invention would have easily come up with the same idea, based on what was already known before you filed your patent application. If an invention is obvious, it can’t get a patent. But obviousness is not always clear-cut, especially when there are many different sources of information to consider. Sometimes, examiners might fall into the hindsight trap, which means using the invention itself as a guide to find reasons to combine or change existing information to get to the invention. This is not fair, because it ignores the creativity and originality of the inventor.
What is the Hindsight?
The Manual of Patent Examining Procedure (MPEP), which is like a handbook for examiners, says that the hindsight is “the tendency to resort to ‘hindsight’ based on the applicant’s disclosure” when judging obviousness. In other words, it’s using the invention as a cheat sheet to find clues in the existing information to reach the invention.
The hindsight trap can happen when examiners:
- Use the invention itself or how it’s described to define the problem or goal of the invention;
- Pick and choose information from different areas or problems without a good reason;
- Ignore information that would have made someone think twice or give up on the invention;
- Overlook the differences or challenges between the existing information and the invention and assume that they would have been easy to solve;
- Make vague or generic statements without backing them up with evidence or analysis.
How to Fight Back Against a Prima Facie Case of Obviousness?
If an examiner makes a prima facie case of obviousness, which means showing enough evidence to support an initial conclusion of obviousness, then it’s up to the applicant to fight back with arguments and/or evidence to show why it’s not obvious . According to MPEP section 2145, arguments and evidence can be presented in the application itself, by lawyers, or by way of a sworn statement under 37 CFR 1.132. However, arguments by lawyers cannot replace factual evidence.
Arguments and evidence should address the specific reasons and sources of information given by the examiner to support the prima facie case of obviousness.
Arguments and evidence may include:
- Evidence of “other factors” that show nonobviousness, such as commercial success, long unsolved needs, failure of others, copying, licensing, praise, etc. ;
- Evidence that the invention has surprisingly better or different properties than what was already known ;
- Evidence that the existing information discourages from making the invention or combining or changing things ;
- Evidence that the existing information is not related or relevant to the problem solved by the invention ;
- Evidence that the skill level in the field of the invention is lower or higher than what the examiner assumed ;
- Evidence that the differences between the existing information and the invention are significant or nonobvious ;
- Evidence that the reason or suggestion to combine or change things is wrong or missing.
Office personnel should consider all arguments and evidence presented by applicants and weigh them against the evidence supporting the prima facie case of obviousness. The final decision of obviousness is based on the whole picture of the facts and circumstances in each case.
Conclusion
Obviousness is a complicated and subjective issue that requires careful analysis and evaluation of the existing information and the invention. A hindsight rejection can further complicate this analysis and result in unfair denial of patentable inventions. To challenge a prima facie case of obviousness, applicants should present arguments and evidence that address the examiner’s reasons and sources of information and show why the invention is not obvious. By doing so, both examiners and applicants can improve the quality and efficiency of patent examination and encourage innovation and progress.