The following is a transcript of Episode 3 from the "Patenting for Inventors" Podcast.
I’d recommend starting with the first two episodes, but if you’ve already determined that you’d like patent protection and your invention is in one of the patent eligible categories, then the next question is whether your invention is new, non-obvious, and useful.
These are three things that a patent examiner is going to look at in order to determine whether your invention is patentable. In reality, the examiner doesn’t even look at whether your invention is useful because its such a low standard that pretty much everything is considered useful. Notice how I said “useful,” and not, “great idea.” There’s no requirement that your invention has to be a great idea, or even a good idea. There’s even a website called stupid patent of the month because whether your invention is stupid doesn’t make any difference on whether you’ll get a patent.
Now as I mentioned, usefulness is a really low threshold. There’s a famous case of two orange drink companies, Juicy Whip, and Orange Bang. You may have seen these types of machines, where it looks like the orange juice is being mixed around before being given to the customer. Now what’s interesting about this machine, or at least the one that was the subject of this patent dispute, is that it only looks like the orange juice is being mixed around, but really, what you see being mixed around isn’t what’s dispensed from the machine. The visual look of mixing just tricking the customers into believing that what’s coming out of the machine is a freshly mixed orange drink.
Juicy Whip got a patent on their machine and sued Orange Bang because they made the same kind of machine. Then what happened is that Orange Bang said that Juicy Whip should never have even gotten a patent, because their machine didn’t actually do anything useful, it just tricked customers into thinking it was doing something useful. The court disagreed and basically said that even tricking people into thinking that there is a use, is itself useful.
The point is, it’s an extremely low standard to whether something passes the utility or use test, and you probably don’t have to worry about it.
The next two go together, which is whether your invention is new and non-obvious. The new is a little bit easier to tackle. If there is any difference in your invention compared to what is out there, then it’s considered new. Here’s an example, let’s say that you wanted to patent a pencil that has 3 erasers on the end of it. The erasers come off at different angels so you have a choice of what eraser you want to use if you want to erase something. You’ve looked everywhere and you can only find pencils that have one eraser, and two erasers, but a three eraser pencil does not exist. Now if you want to see one example of a two eraser pencil, go to google and type in hammer, pencil, and eraser and you should see some images that pop up. It kind of looks like a hammerhead shark but the hammerhead is two eraser. Is your 3 erasure pencil invention new? Probably, I haven’t seen one. It’s possible it exists, but for my example, let’s just pretend that a three eraser pencil doesn’t exist. Now this doesn’t mean you’ll be able to a patent on it, but it’s not because its not novel or useful, it’s probably because it’s considered obvious.
An obviousness rejection is the most common type of rejection I see for patent applications. From my personal experience, I’d say at least 80% of applications get a rejection for obviousness at least on the first review by a patent examiner.
Now, in later episodes I’m going to go through how to respond to specific kinds of obviousness rejections, but for now I just want to go over the very basics of what obviousness means. And this is actually not a simple thing to do, because what might be obvious to one person is not obvious to another person. How do you figure out whether your invention would be considered obvious?
The basic test is what has been come to be known as the Graham test for obviousness and it came from a Supreme Court case where the court was trying to determine whether a patent should have been granted to a new kind of plow made by the John Deere company.
The test has four parts. First, you look at the the prior art at the time the invention was made. Prior art is just a fancy term for things that were already publicly known. So you gather everything that was already known at the time of your invention. And how do you do this? You can start with a google search, looking at catalogs, and looking through patent databases. The next episode I will specifically go through how to conduct a patent search so you can gather prior art.
Then the second part of the test is to determine what the differences are between your invention and what was already known. In my pencil example, the difference between the prior art and what is known is the addition of an extra third eraser compared to the known two eraser pencil.
The third step is to resolve the level of ordinary skill in the art. You’ll hear this language of a PHOSITA, which is an acronym for for “person having ordinary skill in the art,” and you’ll come across it all the time in patent rejections. All it means is that obviousness isn’t determine by Joe Shmoe on the street. It’s also not determined by the world’s expert on a particular topic. It’s determined by a person having ordinary skill in the art, and that’s going to be different for each invention.
In the pencil example, who might be a person having ordinary skill in the art? It might be a person involved in pencil engineering or design. Maybe that person has a bachelors degree in mechanical engineering with a couple years experience specifically in pencil engineering.
There’s not bright definitive answer of who this person having ordinary skill in the art is, but it's just a hypothetical person, and you have to figure out whether this hypothetical person would have thought that the distinction between your invention and what was already known, was obvious.
The last step in the Graham test is to consider what are called “objective indicia of non-obviousness." This is just a fancy way of asking whether there are reasons why this person having ordinary skill in the art would not have found your invention obvious given what was already known.
There are many facts that you can use in this fourth step to your advantage. Maybe your invention was very commercially successful and your three eraser pencil sold like hotcakes compared to the two eraser pencil.
Maybe you can find experts in the field that said that three eraser pencils were impossible to make but you’re the one that figured it out. There are lots of ways you can try to convince the examiner that your invention would not have been obvious to a person having ordinary skill in the art and I’ll go through those strategies in a later episode.
Now in this example, it's probably pretty easy to see that three erasers on a pencil is an obvious modification to a two eraser pencil but most modifications, especially if you think that your idea is really clever, probably isn't going to be so cut and dry. And the biggest challenge in the application process is probably going to be how to effectively argue that your invention isn’t obvious.
But in order to determine whether you’re even likely to get an obviousness rejection, you should first look to see what’s already out there, and the best way to do that is to do a patent search. In the next episode I’m going to walk you through how to do a patent search on your own.