Not so fast! Why you may not be able to receive a patent for your unique invention…

Photo by Kai Pilger on Unsplash

Just because your invention has not been made yet, does not necessarily mean that it automatically qualifies to be protected by patent rights. You see, the Patent Office wants to ensure that only new and useful inventions that were conceived through human ingenuity receive a patent. This essentially means that if somebody of “ordinary skill in the art” could have created your invention or seen that it would be an obvious deviation from another invention, the USPTO will not be so quick to grant you a patent.

35 USC 103 states, “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” In short, if your invention is “obvious” then you are barred from receiving a patent and to determine whether your invention is “obvious” or not, the Patent Office uses a variety of determinants known as KSR Rationales.

Determining Obviousness

Following the Supreme Court's decision in KSR International Co. v. Teleflex Inc., they decided on a list of rationales to support the conclusion of obviousness, known as KSR Rationales, which include:

1. Combining prior art elements according to known methods to yield predictable results;

2. Simple substitution of one known element for another to obtain predictable results;

3. Use of a known technique to improve similar devices (methods, or products) in the same way;

4. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

5. “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

6. Known work in one field of endeavor may prompt variations of it for use in either the same field or different one based on design incentives or other market forces in the variations are predictable to one of ordinary skill in the art; and

7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

Although these are the primary rationales used by patent examiners, the Manual of Patent Examining Procedure (MPEP) makes clear that these are not the only rationales that examiners may rely on.

Prior Art and Obviousness

Obviousness rejections can only be made when there is sufficient prior art (i.e., the other technologies and inventions publicly available) to wholly support these rationales. There is no limit to the number of prior art references that may be combined by the examiner to denote an obviousness rejection, but they must suggest each and every limitation of your invention, whether explicitly or implicitly.

Conclusion

Although you may be the first one to inventor your new and creative invention, it may not be patentable and to spend the thousands of dollars that it costs to find this out from the patent examiner reviewing your application is something that can and should be avoided if possible. By performing a prior art and patent feasibility report, you as an inventor could save yourself a lot of time and money.

Here at IP Cleveland, we strive to make sure that inventors to not blow their wallets on hiring expensive patent attorneys or submitting applications to the Patent Office just to thousands of dollars to be rejected over prior art references. We provide in-depth and extensive patentability searches to ensure our clients can understand the technological landscape, patentability, and most importantly decide whether they can use their inventions freely, without risk of infringement.

For more information, or if you have any questions, feel free to contact me at mgeorgia@ipcleveland.com and I will do my best to assist you.

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