Determination of Obviousness/Inventive Step in United states of America
FollowIntroduction – Non obviousness
Non obviousness is one of the essential patentability requirements to obtain a patent in United States, as stated under section 35 U.S.C. § 103. The purpose of including a non-obviousness requirement is to encourage innovations that are not mere combination of prior art, without any technical advancement.
Title 35, United States Code 103(a):
- Determining the scope and content of prior art
- Analysing the differences between the prior art and the claims at issue
- The level of ordinary skill in the pertinent art
- Evaluating evidence of secondary considerations. Secondary considerations include commercial success, a long felt but unmet need for a device, and the failure of others to solve the particular problem addressed by the invention in question.
Further, the Supreme Court in KSR v. Teleflex case identified a number of rationales to support a conclusion of obviousness, which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham.
Case Law:
Teleflex, Inc. sued KSR International, claiming that one of KSR's products infringed Teleflex's US 6237565 entitled “Adjustable pedal assembly with electronic throttle control”. KSR argued that claim 4 of US 6237565 was obvious under 35 U.S.C. § 103 and therefore invalid. The district court ruled in favor of KSR, but the Court of Appeals for the Federal Circuit reversed the order in January 2005. However, on April 30, 2007, the Supreme Court unanimously reversed the judgment of the Federal Circuit, stating that claim 4 of US 6237565 was obvious under the requirements of 35 U.S.C. §103.
Guidelines to evaluate obviousness
Combination of prior art elements:
One of the steps to determine obviousness is to articulate whether the claimed invention is a result of mere combination of prior art elements. It is always desirable to find, if a person skilled in the art can come up with the claimed invention by combining the elements of known methods, wherein each element would have performed the same function as it would have separately. Sundance, Inc. v. DeMonte Fabricating Ltd is a hallmark case for revocation of patent based on aforementioned statement. Sundance, Inc invention was related to a segmented and mechanized cover for trucks, swimming pools, or other structures. Sundance, had sued DeMonte Fabricating Ltd for infringement of their US patent 5026109. However, DeMonte Fabricating Ltd argued that claim 1 of US patent 5026109 was invalid and obvious citing two prior art references. The first prior art reference taught a reason for making a segmented cover with ease of repair, in which a single damaged segment could be readily removed and replaced when necessary. A second prior art reference taught the advantages of a mechanized cover for ease of opening. The Federal Circuit noted that the first reference and the second reference would perform in the same manner it would have individually, even after combination. Therefore, it was obvious for a person of ordinary skill in the art to expect that addition of replaceable segments as taught by the first reference to the mechanized cover of the other would result in a cover that maintained the advantageous properties of both of the prior art covers.
Substitution of elements to obtain predictable results
Substitution of an element by another element (analogue) performing similar function is considered as one of the grounds for determination of obviousness. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) had claimed decaffeinating coffee or tea from fatty material. In re Fout, had substituted an evaporative distillation step for separating caffeine from oil. However, prior art disclosed an aqueous extraction step (Pagliaro) and direct distillation process (Waterman) for decaffeinating coffee or tea from fatty material. The court stated that both Pagliaro and Waterman taught a method for separating caffeine from oil and therefore, it is obvious for a person skilled in art to substitute a method for another performing similar function.
Known technique to improve similar devices:
A method is said to be obvious if it enhances a particular class of devices (methods, or products) known in the prior art by using a known technique. In re Nilssen case, the invention was directed to a means by which the inverter can be disabled if current exceeded pre-established threshold level for a specified period. The United States Patent and Trademark Office Board of Patent Appeals and Interference rejected claims 1-4, 9-11, and 16 of Nilssen's patent application Serial No. 476,150 on the ground of obviousness citing two prior art references as provided below: The first prior art USSR Certificate No. 729,738, described a device for indicating the high-load condition via a control means in an inverter, but did not indicate the specific manner of overload protection.The second prior art U.S. Patent No. 3,305,793(Kammiller) disclosed disabling the inverter circuit by means of a cut off switch if there exist a high load current condition. The federal circuit stated that it would have been obvious to one of ordinary skill in the art to use the threshold signal produced in the USSR device to activate a cut off switch to render the inverter inoperative as taught by Kammiller.
Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results
Applying a known technique to a known device (method or product) for improvement of the device, and finding that the results obtained over such improvement would have been predictable by a person of ordinary skill in the art can be considered as obviousness. Nilssen case can be cited in this context as well.
Obvious to try
The concept of “obvious to try” is a quite sensible requirement for determination of obviousness. “Obvious to try” can be examined as follows:
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The need for designing the claimed invention to solve a problem being recognised at the time of invention.
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Existence of a finite number of known solutions for the problem recognised
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Implementing one of the known solutions, which is obvious to a person skilled in the art for solving the problem recognised.
Pfizer, Inc. v. Apotex, Inc
Pfizer had been selling amlodipine besylate drug in tablet form under the trademark Norvasc® in U.S. At the time of invention of amlodipine besylate, amlodipine (Apotex) was known to posses similar therapeutic properties as were claimed by Pfizer for amlodipine besylate. Pfizer however, argued stating that amlodipine besylate had better manufacturing property as compared to amlodipine.
Court’s decision:
The court found that a person skilled in the art would have obviously tried to formulate the salt form of the compound, if he had problems with the machinability of amlodipine and would have been able to narrow the group of potential salt-formers to a group of 53 anions known to form pharmaceutically acceptable salts, which would be an acceptable number to achieve “a reasonable expectation of success.”
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art
The scope and content of the prior art, whether in the same field of endeavor as that of the applicant’s invention or a different field of endeavor, including a similar or analogous device should be identified to examine obviousness. Further, design incentives or market forces prompting to adaptation of the known device (method, or product); the differences between the claimed invention and the prior art encompassed in known variations or in a principle known in the prior art are important aspects for determining obviousness relating to the claimed invention. In addition to the above mentioned criteria for determining obviousness, it is also essential to know how a person with ordinary skill in the art, in view of the identified design incentives or other market forces, would have implemented the claimed variation of the prior art, and how would have been the claimed variation predictable to a person of ordinary skill in the art.
The claimed invention in Ex parte Catan, 83 USPQ2d 1568 (bd. Pat. App. & Int. 2007) was a consumer electronics device using bio authentication for enabling sub users to place orders up to a preset maximum credit over.
The first prior art (Nakano) disclosed a consumer electronics device like the claimed invention, which provided security through a password authentication rather than a bio authentication device. The second prior art (Harada) disclosed the use of a bio authentication device (fingerprint sensor) on a consumer electronics device (remote control) to provide bio authentication information (fingerprint). The third prior art (Dethloff) disclosed that it was known in the art at the time of the invention, to substitute bio authentication for PIN authentication to enable a user to access credit via a consumer electronics device.
The Board stated that a person with ordinary skill in the consumer electronic device domain at the time of the invention would have been familiar with using bio authentication information interchangeably with or in lieu of PINs to authenticate users. The Board concluded that it would be obvious to a person with ordinary skill in the art of consumer electronic devices to update the prior art password device with the modern bio authentication component and thereby gain, a secure and reliable authentication procedure.
TSM test
TSM stands for teaching, suggestion and motivation. A claimed invention fulfils the requirement of being non obviousness, if combination of know elements, which forms the invention, not motivated, suggested or taught in prior art.
Conclusion:
The very fact that a number of approaches have been suggested to determine whether a proposed invention is obvious or not, is an evidence that determining obviousness is a complex subject. Hence, it is important for patent professionals to be abreast with the subject, so that informed advice can be provided to clients at least based on existing guidelines.
You may be interested in reading our articles:
- Determination of Obviousness/Inventive Step by the European Patent Office
- Determination of Obviousness/Inventive Step- Indian Approach
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Determination of Obviousness/Inventive Step by the European Patent Office
Introduction
Basic Patentability requirements are
- NOVELTY/NEW – Not previously known by others or previously available in the public domain
- USEFUL- Must have practical utility to accomplish an useful purpose
- NONOBVIOUSNESS / INVENTIVE STEP-The invention must not be obvious to one of ordinary skill in the art.
- State of the art: "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of the filing of the European patent application"
- Person skilled in the art: “should be presumed to be a skilled practitioner in the relevant field of technology, who possesses average knowledge and ability, and is aware of what was common general knowledge in the art at the relevant date ".
- Selecting the closest prior art
- Formulating the technical problem
- Assessing the obviousness of the claimed solution
- additional features
- modified features
- functional features
- whether the content of the disclosures (e.g. documents) is such as to make it likely or unlikely that the person skilled in the art, when faced with the problem solved by the invention, would combine them – for example, if two disclosures considered as a whole could not in practice be readily combined because of inherent incompatibility in disclosed features essential to the invention, the combining of these disclosures should not normally be regarded as obvious;
- whether the disclosures, e.g. documents, come from similar, neighbouring or remote technical fields;
- the combining of two or more parts of the same disclosure would be obvious if there is a reasonable basis for the skilled person to associate these parts with one another. It would normally be obvious to combine with a prior-art document a well-known textbook or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art. It would, generally speaking, also be obvious to combine two documents one of which contains a clear and unmistakable reference to the other. In determining whether it is permissible to combine a document with an item of prior art made public in some other way, e.g. by use, similar considerations apply.
- Determination of Obviousness/Inventive Step in United states of America
- Determination of Obviousness/Inventive Step- Indian Approach
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US – Patent Cases – Weekly Update – August 27th – September 3rd, 2013
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Patent Office India – Published Patent and Design registration Information – August 30th, 2013
Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.
Data sourced from Indian Patent Office by Team InvnTree.
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Significance of Statement of Working In The Indian Patent System
Introduction to statement of working
Statement of working is a disclosure provided by the patentee or the licensee to the patent office stating if the patent is commercially exploited in the country to meet the reasonable requirements of the public.
Governing statute
Statement of working of the patent has to be submitted as per Section 146(2) of the Indian Patent Act and rule 131. This statement can be submitted in Form 27 each year within 3 months from the end of the calendar year.
Section 146(2) of The Indian Patent Act:
Rule 131 of The Patent Rules:
Section 146(2) of The Indian Patent Act:
(i) The patented invention: { } Worked { } Not worked
(a) If not worked: reasons for not working and steps being taken for working of the invention.
(b) If worked: quantum and value (in Rupees), of the patented product:
i) manufactured in India
ii) imported from other countries (give country wise details)
(ii) licenses and sub-licenses granted during the year;
(iii) State whether public requirement has been met partly/adequately/to the fullest extent at reasonable price.
Section 122(1)(b) of The Indian Patent Act:
122. Refusal or failure to supply information (1) If any person refuses or fails to furnish—
(b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with fine which may extend to ten lakh rupees.
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An Indian perspective on licensing or sale of patents
Patent licensing- Introduction
A patent grants the patent owner the right to stop others from making, using, selling or offering for sale the patent owner’s invention without consent. In effect, this allows the patent owner to license or sell their invention to other parties on mutually agreed terms. A license is a legal tool by which a patent owner can transfer the patent rights to any person seeking the rights to work the invention at any time before the expiry of the patent. By granting a license to a person, the patent owner authorizes the person (licensee) to exercise the patent rights under certain circumstances. Patent licensing plays a vital role in technology commercialization.
The patent owner and the licensee should mutually arrive at and sign an agreement in writing, as recited in Section 68 of the Indian Patents Act. The agreement should include the terms and conditions of the license.
Registration at the Patent Office:
Following the signing of the license agreement, the party acquiring the license has to write to the Controller to register the title or interest in the patent within six months from the date of agreement. The registration has to be done in accordance with Sections 69(1) and 69(2) and rules 90(1) and 90(2). The application must be accompanied by the agreement signed by both parties to support the validity of the license. The terms and conditions of the license can be kept confidential by the Controller on request by licensee or the licensor.
Review by the Controller:
The Controller reviews the application upon reception. Once reviewed, the controller enters all details along with the details of the supporting documents in the register of patents as per Section 67.
Any unregistered license agreement will be considered invalid by the controller or the court in case of related proceedings.
In the case of National Research Development Corp (NRDC) v. ABS Plastics, NRDC was the assignee of two patents relating to a process for the manufacture of Terpolymers of Acrylonitrile Butadine (ABS Resigns) using emulsion technology. NRDC licensed the patents to ABS Plastics on 23 July, 1975 for a period of eight years. Under the license, ABS paid a lump sum royalty and agreed to pay a running royalty as well. As ABS failed to pay the royalty due under the license agreement, NRDC filed a suit to claim the pending royalty with interest. After reviewing the case and hearing the arguments of both the parties, the court held that the license was invalid and therefore unenforceable because it was not registered at the patent office. Further the court cited that under section 69 of the Patent Act a license agreement must be registered at the patent office for it to be valid.
- to require the purchaser or licensee to acquire from the vendor or licensor or his nominees, or to prohibit from acquiring or to restrict in any manner or to any extent his right to acquire from any person or to prohibit him from acquiring except from the vendor or licensor or his nominees any article other than the patented article or an article other than that made by the patented process or
- to prohibit the purchaser or licensee from using or to restrict in any manner or to any extent the right of the purchaser, lessee or licensee, to use an article other than the patented article or an article other than that made by the patented process, which is not supplied by the vendor or licensor or his nominee or
- to prohibit the purchaser, lessee or licensee from using or to restrict in any manner or to any extent the right of the purchaser, lessee or licensee to use any process other than the patented process,
- to provide exclusive grant back, prevention to challenges to validity of Patent & Coercive package licensing, and any such condition shall be void.
- Options to restore lapsed patents in India
- Significance of Statement of Working In The Indian Patent System
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US – Patent Cases – Weekly Update – August 20th – August 27th, 2013
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Options to restore lapsed patents in India
Introduction to patent maintenance
The term of a patent is for twenty years from the date of filing of the patent. The patentee has to pay renewal fee according to Sec 53 of the Indian Patent Act. Renewal fee or Maintenance fee is paid every year for keeping a patent in force for the term of patent. Renewal fee specified in the first schedule is payable before the expiration of the second year from the date of patent in respect of third year. Thereafter, renewal fee should be paid before the commencement of every succeeding year. However, this period is extendable by six months by requesting extension of time.
- Application for restoration of lapsed patent should be made by the patentee or his legal representative according to Sec 60 and Rule 84
- Application is to be filed within the eighteen months from the date of lapse
- However one month extension can be sought under rule 138 of Patent Rules, which is a discretionary power of the controller
- Submit Form – 15 with prescribed fees (Section 60 and rule 84), which is INR 2400/6000/12000 for natural persons/small entity/other than small entity respectively.
- Submit substantial evidence to support that the non payment of renewal/maintenance fee was unintentional
- The Application must include statement setting out the circumstances which led to the failure to pay the renewal fee. This statement may be supported by evidence and copies of any document referred to.
- The evidence must support the patentee's claim that the failure to pay the renewal fee was unintentional and that there has been no undue delay in applying for restoration.
- The controller may call for further evidence, which may include letters, deeds etc.
- If the patentee deliberately elects not to pay a fee under an erroneous supposition that he secured no advantage by doing so, he cannot claim that the failure to pay was unintentional even though he would have wished to pay if he had known the true position.
- The patentee who has to pay the fee is usually the patentee himself, but may be a licensee or agent, under which circumstances the Controller recognizes the acts of a person apparently for the patentee where a business arrangement is complex.
- In deciding whether the failure to pay renewal fee was unintentional, consideration is only to the patentee's last decision before expiry of the extended time for paying renewal fee under Section 53(2). No attention is paid to previous changes of mind. Any post-cessation decision not to apply for restoration is fatal to the applicant.
- The patentee's financial inconvenience is not admitted as a ground of unintentional failure, but destitution resulting in physical impossibility to pay is considered.
- As a patentee must exercise reasonable diligence in maintaining his patent, it is not necessarily sufficient to allege innocence of undue delay, because he was ignorant of the lapsing through the fault of his 'agent'. An evidence of proved negligence in the office of the agent may however be sufficient to secure restoration.
- If the Controller does not agree that a prima facie case for restoration has been made out, the applicant is so notified and unless the applicant states within one month that he desires to be heard, the application may be refused.
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Patent Office India – Published Patent and Design registration Information – August 23rd, 2013
Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.
Data sourced from Indian Patent Office by Team InvnTree.
The attached Pdf can be downloaded here and can also be accessed below.
If you would like to get weekly email updates of Indian Patent office's published patent information, Subscribe to this service free of cost
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
US – Patent Cases – Weekly Update – August 13th – August 20th, 2013
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