Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 96

Previously, I discussed the U.S. Patent Law of 1836, which was the basis for the existing modern patent law. In the 1836 law, the requirement of novelty was set forth in great detail; however, there was no standard of non‐obviousness written into the statute. The concept of an invention not only being novel, but also being non‐obvious to one skilled in the art, was created 170 years ago in the Supreme Court case of Hotchkiss v. Greenwood. This was the first case in which a court held that more than just novelty was required for patentability, even though the 1836 statute had specified nothing but novelty as a requirement for distinguishing over the prior art. Subsequent to the Hotchkiss case, thousands of cases were decided dealing with the subject of obviousness of inventions, without any apparent consistency or common thread through all these decisions. Thus, until only within the last 55 years or so, there was great confusion by the courts in applying the standard of what would be obvious to one skilled in the art differentiating an invention from the genre of the prior art.

When the 1952 patent statute was enacted, the drafters of the law included Section 103, which required that, to be patentable, the invention be non‐obvious, as well as novel and useful. However, the law did not state any single, generic, bold print rule as to how the law should be applied to enable an inventor or the courts to easily determine whether an invention was non‐obvious as compared to what had gone before.

The object of the non‐obviousness clause introduced in the 1952 patent statute was to indicate to the creative world that, while everyone who does something different or new has created an “invention,” unless the subject matter had been published, publicly used, or patented by someone else, a determination still had to be made whether the invention was non‐obvious and therefore meritorious enough to support the grant of exclusive rights. Even though you make an invention, because it is new to you, someone else unbeknownst to you may have come up with the same or a similar idea years before and obtained a patent on it or published it. These prior events may render your invention unpatentable, as not novel or non‐obvious under the patent statute—however, you have still created an “invention.”

Thus, the drafters of the law in 1952 set forth no exact test to be used to determine obviousness, and indicated that the determination of what is obvious is still one of judgment to be determined case by case, invention by invention.

During my career in patent law, which began in 1959, most of the inventors and engineers that I have spoken to tend to tell me, at the onset, that the invention they have just developed would actually be obvious to anyone. Of course, with hindsight, anything is obvious. Once the invention or the improvement has been shown, then everybody can say “Oh, I could have thought of that.” However, this is not true. During your engineering and science careers, before you make a decision as to whether or not the project you are working on and the results of that project meet the standards of patentability, ask yourselves these five questions:

1 How long did a need exist for the improvement you came up with?

2 How many inventors before you tried to find a solution, but could not?

3 Did the surrounding and analogous arts disclose the means or steps to make your improvement?

4 How immediately was your invention recognized as an answer to a problem by those who use your new variant?

5 Has your invention met with commercial success?

It was not until 1966, in a trilogy of cases, now referred to as the Graham v. John Deere Company, 383 U.S. 1 (1966) cases, that the Supreme Court set forth guidelines that now assist engineers, scientists, and their attorneys to determine whether or not an invention will meet the requirement of non‐obviousness necessary to secure a patent. The Supreme Court in the Graham case established the following test for determining obviousness:

1 Determine the scope and content of the prior art. This determination is made from an analysis of all prior art known by the inventor, and from additional prior art that may also be uncovered by a patentability search conducted prior to filing a patent application.

2 Next, determine the differences between the invention under consideration and the content of the prior art. Remember, if there are no differences, your invention is not novel and does not pass the first test for patentability—that is, novelty.

3 Next, determine the level of ordinary skill in the art. Imagine a hypothetical person, skilled in the art such as you are, and what that person would know and not know.

4 Keeping in mind the differences between the prior art and the invention you have just made, decide what modifications to the prior art would be necessary to make the prior art correspond to, or rise up to, your invention.

5 Determine whether the prior art materials you are aware of, or even common knowledge that would be available to one skilled in the art, taken in combination, suggest the “necessary” modifications to the prior art you have determined from Step 4. If the answer to this question is “yes,” the invention is obvious and not patentable. If the answer is “no,” the invention is patentable.

6 Keep in mind the so‐called secondary considerations bearing on the question of non‐obviousness:What is the commercial success, if any, of the invention you are analyzing in comparison with the prior art? If your invention has achieved commercial success, it would therefore not have been obvious to modify the prior art to derive your invention.Does the invention fill a long‐felt, but as‐yet‐unresolved, need in the relevant industry?The failure of others to solve the problem to which the invention is directed.The invention provides a new or different function as well as an unexpected result.A synergistic result is produced, wherein one plus one equals three.The invention you have just derived directs one contrary to the teachings of the prior art.

In determining the test of obviousness, I refer to the terms “prior art” or “references” that are used to make this comparison to your invention. This prior art is the same as defined under Section 102 of the patent statute, providing for novelty as a requirement of patentability. If a patent publication, prior use or sale, or publicly available knowledge of the product does not fall within the definition of “prior art” under Section 102, it is not “prior art” that can be used in combination with other prior art to determine non‐obviousness under Section 103.

In applying the test to determine non‐obviousness, the relevant time period is the time when the patent application, covering the subject invention, was filed. Also, when considering whether your invention can meet the standard of non‐obviousness, please consider a few other points that may help you in making this decision:

1 Does the combination of the devices or processes shown in the prior art lead to a device or process that produces the same or a different result as your invention?

2 Does the device or process derived from combining the prior art function the same as your invention?

3 Is the combined device or process derived from the prior art as efficient as your invention?

4 Is the combined device or process derived from the prior art operative—that is, will it work to produce the intended function and result of your invention?

5 Would the combined device or process from the prior art be more expensive to produce or operate as compared to your invention?

Answers to these questions will help determine whether or not the hurdle of non‐obviousness has been overcome.

The following are a few additional factors taken from cases decided in the field of patent law regarding the question of non‐obviousness over the past several years. For example, if the only difference between your invention and the prior art involves the selection or substitution of a known material due to its known suitability for its intended function or purpose, your invention may not be patentable. See, for example, the Hotchkiss Supreme Court case mentioned previously. Keep in mind, however, the common knowledge that a vast majority of all patentable inventions are combinations of known elements that are formed in a different and novel array to provide a new and unexpected result. Therefore, when determining whether the solution to the problem you have been working on is non‐obvious over the “known elements,” consider whether the result you have obtained is predictable or not from the known elements. As recently described to me by a sage colleague, the standard of meeting the requirement of non‐obviousness is not “Eureka!” It’s more along the lines of “That’s cool.”

If your invention involves the application of optimum ranges within ranges set forth in the prior art, or you merely provide the mechanical or automatic means to replace a manual operation, without any further contribution to the art, you also may not be able to obtain a patent. Additionally, changes in the size, degree, proportion, and sequence of adding ingredients do not lend patentability, unless some new and unexpected result or function can be derived from such changes. For example, making a catalytic converter smaller to fit smaller‐sized cars is not a patentable advance in the art, unless some new structure or function evolves from the change of size.

Conversely, a combination of elements in your invention that produces an improved and unexpected result will lead to patentability, since the invention would be non‐obvious. Also, if your invention omits one or more of the elements that are shown in the prior art devices, but still retains the function of those missing elements in the resulting combination, you may have a patentable invention.