non-obviousness

1. Non-Obviousness The Legal Standard is Objective and a question of law Rejection of Flash of Genius/Brilliance Subjective Standard Rejection of Preference for Inventor over Skilled Mechanic The application is Subjective and is a question of fact and considers primary as well as secondary factors

2. The Legal Standard for Non-Obviousness The Section 103 analysis, non-obvious conclusions are reached after considering the following: the scope and content of the prior art the difference between the prior art and the claims presented by the patent seeking inventor the level of ordinary skill in the pertinent art secondary considerations

3. Secondary Considerations Commercial success Long felt but unsolved needs failure of others industry/commercial acquiescence (competitor trying to build around the patent) NOTE: The court must look to see if the secondary factors result from the quality of the invention as opposed to extrinsic market forces. The Court of Federal Claims has synthesized the standard for non-obviousness to include secondary considerations as the fourth element in the objective test.

4. Question of Law or Fact Question of Law The legal standard to apply for non-obvious determinations The province of the courts Question of Fact The actual patentability of the subject matter according to the legal standard embodies in Section 103 and judicial cases The province of the Patent Examiner

5. Section 103 Non-Obvious Analysis Based on Traditional Sec. 102 Prior Art Section 103 A patent may not be obtained Even though no identical prior art is cited If the difference between the subject matter sought to be patented and the prior art are such that the S.M. as a whole (all prior art combined) would have been obvious at the time of invention To a person with ordinary skill in the art

6. Section 103/102 Continued Section 102 Prior Art used for Sec. 103 comparison Traditionally considered to be inventions that are public or will eventually become public Sub-sec (a) � known, used, patented or described (public) = prior art Sub-sec (b) � patented, described, public use more than one year (public) = prior art Sub-sec (c) and (d) � loss of right provisions (not public) = not prior arts

7. Section 103/102 Continued Sub-sec (e) � application for patent, still secret (eventually public) = prior art Sub-sec (f) � joint/team effort that is prior art for those on the team who wish to patent, but not prior art for those with no disclosure info, e.g., because they are not on the team (public for some/not public for others) = prior art for some/not prior art for others) Sub-sec (g) � invention made that was not abandoned (eventually public) = prior art

8. Before the 1984 Congressional Amendments Commonly-assigned, pending applications were prior art (Sub-sec (e)) Team research or joint ventures that were disclosed to the inventor and, in turn, inspired an invention were prior art (Sub-sec (f)) Inventions that have not been abandoned, suppressed or concealed will likely become public and, therefore, are prior art (Sub-sec (g)) Thus, prior art included a, b, e, f, and g.

9. After the 1984 Amendments Congress intended to avoid the invalidation of patents under Section 103 non-obviousness standards on the basis of the work of fellow employees engaged in team research. Exclusions from Section 103 non-obvious determinations in post 1984 amendment era encourage communication among members of research teams, who are not constrained by earlier, non-public inventions being considered prior art during pre-1984 prior art era under Sections 102(f) and (g)

10. After the 1999 Patent Reform Act The Exclusions from Section 103 non-obvious conclusions premised on prior art was expanded to cover Subsection (e). Now, non-obvious determinations that use prior art of Section 102 do not include as prior art subsections (e), (f), and (g).

11. The Impact of the 1984 Amendments and the 1999 Patent Reform Act Thus, subject matter that qualifies as prior art under (e), (f), and (g), cannot be combined with other prior art to render a claimed invention obvious when the relevant prior art is commonly owned with the claimed invention at the time the invention was made. What about the individual inventor who is not part of a team and who does not have access to the subject matter not yet patented, and the subject matter is held in abeyance under a patent application?

12. The Apparent Riddle Under Section 102(e) novelty, a patent can be barred by an earlier patent application if such application, as prior art, anticipated the invention. Such Prior Art is also available to make the later inventor�s invention obvious, even if the patent application, which is confidential until protection is granted, was factually unavailable at the relevant time. Policy: Prior Art should be treated the same for Section 102 Novelty determinations as well as Section 103 Non-obvious determinations.

13. The Answer to the Riddle The above slides illustrate the problem of retroactive obviousness. This problem is given the name Constructive Prior Art, which can be used by courts for non-obviousness purposes. IN PRACTICE: Because a patent may be granted long after its application date, it suddenly may become available as constructive prior art w/r/t/ an already issued patent, since that issued patent may have been filed after the constructively and retroactively available application was filed.