Frequently Asked Questions

What Makes an Invention Nonobvious?

What Makes an Invention Nonobvious?

Inventors who patent their work in the US have the right to exclude others from making, selling, marketing, importing or using their inventions. This exclusive right typically lasts for 20 years from the date of filing the patent application. Securing a patent is not always easy, however. The claimed invention usually must be novel, useful and nonobvious. Inventions that are found to be obvious do not have the right to patent protection.

Courts, lawmakers and the United States Patent and Trademark Office (USPTO) have worked to refine the meaning of "nonobvious," but it can be difficult to distinguish a nonobvious device or process from an obvious one. When decision makers consider whether an invention is nonobvious, they look at:

• The scope and content of the prior art (related inventions that came before the one in question)
• The ordinary skill level in the art
• The difference between the invention in question and the prior art
• Facts such as how much the invention was needed and how well it has sold

When a patent case goes to trial, the question of obviousness is fact specific. The invention must be looked at in the context of when it was made, rather than the time of the decision.

Why is it important for an invention to be nonobvious?

When an inventor applies for a patent, the patent may be denied on the grounds that the invention is obvious. (The inventor may then ask for reconsideration.) If the patent is granted, however, this does not mean that the invention will always be considered nonobvious.

An invention that is patented will be presumed nonobvious, but the presumption can be challenged. If, for instance, an inventor finds that a businessperson has copied an invention, the inventor may sue for patent infringement. One of the defenses the businessperson may use is that the patent never should have been issued because the invention was obvious. If the patent is found to be invalid, then the businessperson will not have violated the inventor's rights.

When will an invention be found to be obvious?

An invention may be considered obvious if:

• The invention was a mere change of form of the prior art.
• The invention only changed the dimensions of the prior art.
• The invention substituted the materials that make up the prior art.
• The invention varied the proportions of the materials in the prior art.

Factors that do not necessarily mean that the invention is obvious are:

• The "genius" required to make the invention was slight.
• The changes to the prior art were small.
• The invention was not an improvement on prior art.
• The invention is composed of exclusively old elements.

Factors that support a finding of nonobviousness are:

• The invention produced unexpected results.
• There is a large difference between the invention and the prior art.
• The invention was directly copied by someone else.
• The invention accomplished a new result.

Although nonobviousness may seem complex, it is critical to the success of an invention. An intellectual property attorney can answer your questions and explain your options.

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