Is My Invention New, Useful, and Non-Obvious? Episode 3

Introduction

I recommend starting with the first two episodes. However, if you've already determined that you want patent protection and your invention falls into one of the patent-eligible categories, the next step is to determine whether your invention is:

• New

• Non-obvious

• Useful

  
  

These are the three key factors that a patent examiner will evaluate to decide whether your invention qualifies for a patent.

Usefulness

In reality, patent examiners rarely question whether an invention is useful because the standard is extremely low. Almost anything is considered useful. Notice that I said useful, not a great idea. Your invention doesn’t have to be a great or even a good idea—it just has to be useful.

There is even a website called Stupid Patent of the Month that highlights patents for seemingly ridiculous inventions. However, whether an invention is stupid is irrelevant to whether it qualifies for a patent.

One famous case highlighting the low standard for usefulness involved two orange drink companies: Juicy Whip and Orange Bang. You may have seen juice dispensers where it looks like the orange drink is being mixed before it is served to the customer. However, in Juicy Whip’s machine, the liquid that appears to be mixing is not actually the liquid that is dispensed—it’s just a trick to make customers think the juice is freshly mixed.

Juicy Whip sued Orange Bang for patent infringement. Orange Bang argued that Juicy Whip should never have received a patent because their machine wasn’t actually useful—it just tricked people into thinking it was doing something useful. The court disagreed, ruling that even tricking people into thinking there is a use is itself useful.

So, the takeaway is that the usefulness standard is very easy to meet, and you likely won’t need to worry about it.

Novelty (Is Your Invention New?)

The next requirement is that your invention must be new. This is relatively straightforward—if your invention differs in any way from what already exists, it is considered new.

Example:

Let's say you want to patent a pencil with three erasers on the end, each angled differently so you can choose which one to use. You’ve searched and found pencils with:

• One eraser

• Two erasers

  
  

However, no one has made a three-eraser pencil. If that’s the case, your three-eraser pencil is new.

Now, this doesn’t mean you will automatically get a patent. The bigger issue is whether it is obvious.

Non-Obviousness

The most common reason patent applications are rejected is obviousness. Based on my experience, at least 80% of patent applications receive an initial rejection for obviousness.

I’ll cover specific strategies for responding to obviousness rejections in later episodes. For now, let’s go over the basics of how obviousness is determined.

The Graham Test for Obviousness

A Supreme Court case involving John Deere established a four-part test for obviousness, known as the Graham Test:

1. Identify Prior Art:

   • Prior art refers to anything publicly known before your invention.

   • You can find prior art through Google searches, catalogs, and patent databases.

   • In the next episode, I’ll walk you through how to conduct a patent search.

2. Determine the Differences:

   • Identify the key differences between your invention and what already exists.

   • In the pencil example, the difference is the third eraser compared to the known two-eraser pencil.

3. Establish the Level of Ordinary Skill in the Art (PHOSITA):

   • PHOSITA stands for Person Having Ordinary Skill in the Art.

   • Obviousness is not determined by a random person on the street or by a world expert—it’s judged from the perspective of someone with ordinary skill in the field.

   • For the pencil example, a PHOSITA might be a mechanical engineer with a few years of experience in pencil design.

4. Consider Objective Indicia of Non-Obviousness:

   • This step considers whether there are reasons why the invention would not have been obvious.

   • Factors that can support non-obviousness include:

     • Commercial success: If your three-eraser pencil sells significantly better than two-eraser pencils, that’s evidence it was not an obvious improvement.

     • Industry skepticism: If experts believed a three-eraser pencil was impossible, that supports non-obviousness.

     • Unexpected results: If your three-eraser pencil provides a surprising benefit, that could make it patentable.

For most people, obviousness is the hardest part of the patent process. The biggest challenge is effectively arguing that your invention is not obvious.

Next Steps

Before applying for a patent, it’s crucial to search for existing inventions (prior art) to assess the likelihood of an obviousness rejection. In the next episode, I’ll walk you through how to conduct a patent search on your own.

Until next time, keep on inventing!