Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 88

The preceding chapters were, in part, directed toward the requirement that an invention must be “novel” in order to be patentable, and must be a “patent‐eligible” invention. These represent threshold hurdles to overcome—however, establishing novelty alone does not automatically establish that your invention is patentable relative to the prior art. Thus, after it is established that the claimed invention differs structurally or functionally, or both, from the prior art, which means that the patent claim does not read literally on a single item of prior art, Section 103 of the U.S. Patent Statute (35 U.S.C. §103) becomes applicable. Section 103 requires that the claimed invention as a whole also be non‐obvious at the time of the effective filing date of the patent application claiming the invention to a hypothetical “person having ordinary skill in the art to which the subject matter of the patented invention pertains.” This condition deals with the level or degree of “invention,” or “inventive step,” required to obtain a patent. Thus, the non‐obviousness requirement comes into play only when the claimed invention is not identically disclosed or described in the prior art as set forth in Section 102 of the patent statute, the latter which determines novelty. If the claimed invention is not novel, it is identically described in the prior art, falling under one of the subsections of Section 102. If this occurs, no valid patent is possible, and the question of patentability is ended.

However, where the claimed invention is not identically described in any single prior art disclosure, there is then the hurdle of non‐obviousness that must be overcome to obtain a patent. The question becomes: does the invention for which you seek to obtain a patent represent sufficient innovation, or non‐obviousness, over the prior art to support the grant of a patent?