EPO, UK approach to non-obviousness

According to The Business of Patents, several different approaches are mentioned with regard to non-obviousness. In European countries, they call it "inventive step". Though the interpretation of such equivalent requirement varies from country to country. I would like to briefly summarize them:

European Patent Office

• Identify the relevant prior art
• Identify the technical problem the claimed invention solved in relevant field
• For a skilled person in the field, examine whether the technical problem is obvious to be solved

UK approach

• Identify inventive concept in the claimed invention
• Identify common general knowledge in the art by a normally skilled but unimaginative person
• Identify the difference between prior art and the claimed invention
• Examine whether the above difference would've been obvious to the skilled but unimaginative person

The author argued that he prefers the EPO approach, since it starts with defining set of prior art and further narrows down the scope of the problem. I personally feel like USPTO could have adopted EPO's approach with the objective evidence of obviousness or non-obviousness exception. Engineering-minded (EPO approach) approach is considered more specific. Though it is true that whether inventive step or non-obviousness, they all inevitably involve some degrees of subjectivity.

Non-obviousness requirement of a claimed invention

I've discussed about eligibility weeks ago, but that is only one out of the five patent requirements. This week we are assigned to look into the non-obviousness requirement.

IPWatchdog author Gene Quinn posted an article to talk about patentability overview, which describes the subject matter in layman's term. I am no good at interpreting very official description from USPTO. Thus, I'd like to walk through the non-obviousness requirement by looking at different sources and interpret it myself. If you feel like you have second thoughts on this post, please feel free to give me feedback by commenting below. Thanks!

To reiterate, there are five requirements to determine whether a claimed invention is valid (aka patentable).

• patent eligible
• useful
• novel
• non-obvious
• adequately described

If we already know a claimed invention is patent eligible, useful, and novel, why do we still need to determine its non-obviousness? Well, what if any skilled expert in the relevant prior art can easily identify such invention with obvious added factor?

"A patent may not be obtained if it contains only obvious differences from prior art"¹. I'll take a really silly example to demonstrate this fact. Say a LED display attached to a microfiber cleaning cloth, this silly "invention" wouldn't be considered patentable because it is so obvious regardless of the fact that it is also not inventive.

The obviousness is ruled based on four inquiries

• The scope and content of the prior art
• The difference between the claimed invention and the prior art
• The level of ordinary skill in the prior art
• Objective evidence of obviousness or non-obviousness

The fourth factor is "secondary considerations" that is usually used to argue non-obviousness for defendant or applicant. I'd like to further address the fourth factor as it seems to be vague.

An applicant can supply evidence for secondary considerations if the invention is:

• commercial success
• long-felt but unsolved needs
• failure of others

This will be considered the exception to the non-obviousness requirement if any of the above three factors is identified. Since "obvious" evidence is more convincing to simply debate on the literal explanation of obviousness.

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1. source http://www.ipwatchdog.com/2012/06/09/patentability-overview-obviousness-and-adequate-description/id=25191/ ↩

Permanent injunction?

According to this article on by FOSS patents, I turned my attention back on these big corporations, Apple and Samsung. Knowing that they've been fighting over each other on the court for patent issues, now this article starts to give me a clearer picture on the intention behind the war.

The latest update for the legal case between Apple and Samsung is that Apple got denied for a permanent injunction request against Samsung.

The judge Koh said the following that I personally think reasonable: "Apple, in other words, cannot obtain a permanent injunction merely because Samsung's lawful competition impacts Apple in a way that monetary damages cannot remedy. To award an injunction to Apple in these circumstances would ignore the Federal Circuit’s warning that a patentee may not ''leverage its patent for competitive gain beyond that which the inventive contribution and value of the patent warrant.''"

The article also noted that "Apple's previous appeal related only to the denial of a permanent injunction, not to infringement, validity or damages issues", which not only it shows the only intend is to drive Samsung out of the market by all means.

This is pure greed, period. However I understand the reasonable reaction for Apple is to lower competition in the market by any possible legal action. If a permanent injunction is the only way Apple shows their competitiveness, it certainly does not work well in the long run. Samsung has been spending good fortune on marketing, revealing new products, making measurable incremental innovation. I wonder if Apple is making another investment on legal fees just to make this permanent injunction work.

Patent eligibility further read

Last week I talked about the pending legal case between CLS Bank and v. Alice Corp., now I would like to continue further with the topic of patent eligibility.

In the article posted on PatentlyO, the author mentioned about the difficulty of the patentability.

Whether a subject matter is patentable is determined by possibly a judge or by a jury and a patent examiner. I can certainly imagine a patent examiner should know what s/he is talking about in terms of the expertise in the relevant technical field. However, a patent examiner may have little knowledge of legal matter, which judges often communicate in such terms. Whereas a judge usually doesn't have much understanding of the technical side of the subject matter. This leads to the question of how to determine patentability? Who should be the one that finalizes the decision? Or even better, how do the expert and the judge should work together to draw a fine line of patentability?

Luckily, USPTO (United States Patent and Trademark Office) put some effort into simplifying/clarifying the patentability process by providing useful information:

• Flowchart
• Guideline reference

Note that the second question in the flow chart asks whether the claim involves judicial exception. This is the issue of CLS Bank v. Alice Corp. and many other litigation cases. Judicial exception is a claim involves an abstract idea, such that it needs careful judgement on the novelty of the idea.

Though each question can only be answered yes or no, the final decision is made on the totality of the weight for each question. Therefore, it really is not a yes/no question, more of a evaluation process that involves different degrees of judgment. I would like to discuss a little bit of the details about each factor USPTO weights based on the provided guideline.