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What is Non-Obviousness?
Most be non-obvious to someone skilled in
related fields to satisfy this test
Once used to deny almost all patent
applications, but restricted in application now
Does not require a brilliant act of new genius
All elements can be obvious if new utility and
insights are more than “sum of the parts”
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Obviousness Not Case Law
Based
This is a fact of analysis of the business
process or engineering applications involved
Obviousness viewed from perspective of
industry expert, but from layman review
New industry or product with lots of demand
can provide evidence of non-obviousness
If it was so obvious, why was it not done already?
Has to represent advance over prior “art”
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Statutory Test of
Nonobviousness
(1) survey of scope and content of prior art
(2) examination of differences between
invention and prior art
(3) determination of the level of ordinary skill
in the art that might measure obviousness
In light of this three stage process, the court
or the patent office can then determine if the
proposed innovation exhibits
nonobviousness.
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Survey of Prior Art
Duty of candor – the inventors and applying
attorney must disclose known prior art
Must provide survey of prior art
Must be relevant or pertinent or analogous
Prior art definition must not be too narrow
Definition is functional, not commercial
Second stage of process is patent office
review of prior art
Undisclosed discoveries not viewed positively
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Patent Application Process
In the USA (and in many countries), there is a
three step process of filing for patents:
File a provisional INTENTION to file patent form
Gives you ONE YEAR time to file actual application
Starts the clock on patent file time for “race to patent”
File the Formal Patent Application
Requires extensive details on all required patent issues
Navigate the Patent Review and Appeal Process
Lots of iterations and significant legal costs required
Can take more than one year to complete
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Provisional Intention to File Patent
The first step in the patent application process is
normally filing an intention to file an application
This is EASY to do and can be done yourself at low
cost, or by an attorney for you at minimal cost
This gives the right to say “patent pending” on all
products which may be covered by the future patent
This “intention to file an application” starts date from
which patent is granted, which is important in a race
to patent priority analysis (reduction to practice date)
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Complete Formal Patent Application
The Complete Patent Application must be
filed within one year of the Provisional Patent
Application, which is intention to file form
You may, however, skip the provisional intention
to file and can simply file the full and complete
patent application in full initially, although this is
not commonly done as it takes time to prepare
The Application may be revised to clarify
issues raised by the PTO, but not to add new
claims or new protections into the application
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Navigate Patent Review and Appeals
Most of the time, the PTO will decline the
patent initially, based on objections raised
You then have time to respond to these issues,
and may file additional information to amend the
application in order to address these issues raised
If you can not resolve disputes, the patent
application may be taken to administrative appeal
within the PTO to a higher level superviser.
Patent applications rejections also may be taken
to court for judgment overturning PTO rejection
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When Patent is Finally Issued
This gives you the right to sue others
Notification of patent (or patent pending) important
to protect some legal damages rights
Police or government will not protect your rights
Patent infringement is only a civil offense, not a
criminal offense, so only remedy is civil lawsuit
Patent lawsuits are expensive and risky
US attorneys unwilling to take risk on investing in
these cases to take contingency fee on success
Thus, cost of litigation paid for by both companies
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Costs of Obtaining US Patent
File provisional patent application
Can be done yourself or by attorney at low cost
Minimal information required; short application
File the Formal Patent Application
Takes a lot of legal time and technical inputs
Significant costs involved in this step (~ US$100k)
Navigate Patent Review and Appeal Process
Most of the costs come during this part of process
Costs of patent process can exceed US$1 million
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Patent Law Protections (Review)
Protects FUNCTION, not expression
Amazon patented its one-click function, as
copyright would not have protected this function
Replicating code for one-click function easy to do
Lengthy application and approval process
Significant legal costs may be required
Patents required in multiple jurisdictions
Patent limited to exact terms of application
Be careful to limit patent claims narrowly
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Prior Discussion for Utility
Patents
There are three types of patents which can
be granted under US laws
Utility Patents (this is what we have been talking
about and is the most common type of patent)
Protects product and process inventions
Must provide some form of concrete utility
Design Patents (much less common historically)
Protects any novel, original (rather than non-obvious)
and ornamental (rather than useful) design for an article
of manufacture (overlaps with copyright and trademark)
Plant Patents (asexually reproduced plants only)
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Design Patents
Protects design or appearance
Closer to copyright in some ways, but only for
articles of manufacture (which copyright does
NOT protect from duplication)
Duration of only 14 years (which is shorter
than utility patents and than copyright)
Traditionally, not used much, but becoming
more popular now due to simple application
process and lower cost than utility patents
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Plant Patents
Protects any distinct and NEW variety of plant
that is asexually producted (which means, not
reproduced by means of seeds, roots, or
other natural processes, and must be created
by human actions to create new plants)
Can not get patent on new wild plant
Can not get patent on self-replicating plant
Can not get plant patent on bacteria
Plant patents do not foreclose utility patent for
the same plants (e.g., can get both)