What does patent obvious mean?
To be patentable, an invention must be novel and nonobvious. Between these two requirements, novelty is easier to grasp. A novel invention is new, unique, something hasn’t been before. OK, we get that. But, what makes a patent application obvious? If you get an obviousness rejection under Section 103, how do you show that you are trying to patent a nonobvious invention?
Who really decides if a claimed invention is obvious?
In most cases, obviousness will be determined by the primary examiner assigned to your application. So, it basically boils down to one person. If you think this is rather subjective and unpredictable, you’re not alone. Nevertheless, this is the reality that every utility patent applicant must face.
Who is the person of ordinary skill in the art?
Theoretically, a person of ordinary skill in the art is the standard for determining whether or not an invention is obvious. But, who is this person? We can discuss theory and reality.
In theory, it is a hypothetical person who is presumed to have known the relevant art at the relevant time. In reality, that hypothetical person might not matter to the examiner who is intent on issuing an obviousness rejection.
How to prepare a nonobvious patent application
Building a case for nonobviousness should occur before you get a rejection. Experienced practitioners recognize that a typical utility nonprovisional application may encounter several rejections under Section 103. Expecting that obviousness rejections will occur, practitioners may beef up the specification prior to filing the application.
By front-loading the specification with more descriptions and fuller details, more ammunition is provided for amending claims if and when the examiner rejects the claims for being obvious.
How would you know if an invention is obvious or not?
My hunch is that most inventors who go through the expense and burden of filing a utility patent application do not think that their inventions are obvious. Even a patentability search would not predict all the ways in which an examiner may combine multiple prior art references.
So if you commit to filing a utility patent application, expect to take a wait-and-see approach. You can’t predict what the examiner will do, and what prior art patents they might combine in order to arrive at an obviousness rejection.
How to make an obvious patent application nonobvious
Hindsight might reveal that certain features should have been included or described more fully in your original filing in order to show nonobviousness of your invention. If that happens, you might consider filing a child application to add new matter. You can file a continuation-in-part application in addition to, or in lieu of, an Office Action response.
A CIP application has advantages and disadvantages. You get to add new content in a CIP application, but that new subject matter gets a later filing date. And a later filing date means more potential prior art may be cited by the examiner to reject your claims.
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