Only New Patents are Patentable

A patent gives an inventor a right to exclude others from making, using, or selling the patented invention for a certain period of time. Patents are a form of property right that is granted by federal patent law, which is administered by the United States Patent and Trademark Office USPTO. The main objective of patent law is not to reward inventors but rather to promote the advancement of science and technology through the disclosure of new ideas. Accordingly, there are several requirements for an invention to be eligible for a patent, and one of the most difficult determinations that is required to be made in assessing a patent application is whether an invention is non-obvious.


The nonobviousness requirement provides that an invention is not patentable if it would have been obvious to a person having ordinary skill in the pertinent prior art as it existed when the invention was made. The “prior art” is simply all of the information available that might reveal that a claimed invention has either already been patented or described in a publication, either of which will render the claimed invention unpatentable. The “pertinent prior art” is the art that pertains to the particular field in which the claimed invention would be classified. For example, if the claimed invention was a tool or a machine or improvement to either, prior art pertaining to chemical compounds would not be pertinent and would not be considered in the non-obviousness determination. In considering what constitutes the hypothetical “person having ordinary skill in the art,” the patent examiner considers the educational background of the inventor; the problems encountered in the art and the solutions the claimed invention is intended to provide; prior solutions to those problems present in the art; the level of sophistication of the particular technology involved; and the educational background of workers in the particular field.



Patent Examining Procedure


Determining whether an invention is nonobvious can be exceedingly difficult. As described in the U.S. Patent and Trademark Office’s Manual of Patent Examining Procedure, the examiner must step backward in time to just prior to the existence of the invention to determine whether a person of ordinary skill in the art would find the invention obvious. An invention is presumed to be obvious or nonobvious depending on whether certain factors are found. The two factors necessary to a finding of a presumption of obviousness are: (1) something in the prior art or general knowledge in the field that suggests the invention to a person of ordinary skill and (2) indications that the invention had a reasonable chance of succeeding as an invention. Both the suggestion of the invention and the assessment of the chance of success must be based on the prior art or general knowledge in the field and not on the information in the patent application, and the assessments must be made as of the time of the invention and not with the benefit of hindsight. If these factors are present, the applicant may provide information in order to rebut the presumption.

As part of the analysis, the patent examiner is allowed to analyze several secondary considerations, including the commercial success of the invention, the long-felt need that the invention would fill, and whether there is commercial acquiescence in the invention. Commercial success provides evidence in favor of nonobviousness because if the invention had been obvious, it would have been invented previously, particularly where the success is due to the invention’s utility and not because of intense promotion and publicity. Moreover, commercial success is an indicator that the invention is considered to represent useful progress in solving the problem toward which it is directed.


The rationale is similar with long-felt need. If the invention filled a need that survived for a long time, the invention must not have been obvious or someone else would have filled that need long before the claimed invention was invented. Commercial acquiescence means that competitors have recognized the validity of an invention’s patent and are willing to pay the necessary license to use or sell the invention. Competitors that felt that the invention was not entitled to a patent might use or sell the invention without paying claimed inventor. None of the secondary factors are determinative and simply represent factors that the patent examiner might consider in the difficult process of deciding whether a claimed invention is obvious or not.

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