by Randy Fairchild

Created on: May 24, 2007   Last Updated: October 31, 2008

So you have invented something "useful" and "new." Though both of those qualities are required, they are not sufficient to obtain a valid United States patent. In addition, your new invention must be "non-obvious." See 35 U.S.C. section 103 (a) (provided below).

Obviousness is a matter of degree, which makes use of the term in a binary legal sense (i.e. patentable or not patentable) somewhat artificial. Nontheless, the essential concept is that, although no one created the invention before, it would have been easy to do so for "a person of ordinary skill in the art." Ordinary skill in the art depends on the average level of education and experience in the field of the invention, (e.g., a 5th-year electronic engineer with an E.E. bachelor's degree in the case of a computer chip invention).

The rationale behind the nonobviousness requirement is that the patent system should reward true contributions to industry, rather than create squatters' rights on basic elements of industry. The patent system is not the California gold rush.

One difficulty in applying the obviousness test is the tendency toward hindsight. When you are aware of a very useful solution created by an invention, it is impossible to "unlearn" that solution, and fairly evaluate the difficulty of achieving it. To combat that tendency, the Federal Circuit (a United States Court that deals exclusively in patent cases) required proof of some "teaching, suggestion or motivation" toward the invention in the prior art to establish obviousness.

In the recent case of KSR v. Teleflex, the Supreme Court redefined obviousness, overruling the Federal Circuit. The Court specifically abandoned the Federal Circuit's mandatory "teaching, suggestion or motivation" test, and stated that where elements of an invention behave as they would be expected to behave (with no surprising "synnergy"), the invention should be considered obvious.

The Supreme Court's new standard for obviousness harkens back to caselaw from the 1970s, when it was very difficult to obtain a patent. This is an intentional move on the part of the Supreme Court, reacting to vocal activist groups against the recent proliferation of unconventional patents in the fields of software and business methods.

As a counter-point, the United States economy has become more intellectual and service-based in recent decades. Erosion of the patent system, and its protection of useful new inventions, will undermine the United States economy.

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35 U.S.C. section 103 provides:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

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