“To some lay inventors, [the person having ordinary skill in the art] standard sounds like patentability turns upon the opinion of a fantastical imaginary character, and invoking this character would be like asking, ‘What would Santa Claus think of my invention?'”
It is one of the greatest ironies in patent law: obviousness is not obvious. Lay people struggle with the concept of patent-related obviousness all the time.
It is easy to understand their confusion. As lay people see it, an inventor can create and claim something that has never before been patented by anyone, has never been sold by anyone, has never been built by anyone, and has never even been publicly described by anyone; and can nevertheless be denied a patent “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.” (This is a quotation from the post-AIA statute, 35 USC § 103(a), though language in the pre-AIA statute 35 USC § 103 is similar, obviously.)
Because of their confusion about obviousness, lay inventors often see obviousness where there is none, and fail to see obviousness where the courts and the United States Patent and Trademark Office (USPTO) say that they see it quite clearly.
Why? Obviously, it is because the way lay people use the term “obvious” (what I’ll call “colloquial obviousness”) and the way the term is used in patent law (what I’ll call “legal obviousness”) do not mean the same thing.
If you want to help your client understand the differences, you may explain that there are several ways in which “colloquial obviousness” differs from “legal obviousness.”
The Need for Proof
One principal difference is evidence. Legal obviousness needs it, colloquial obviousness typically does not.
Colloquial obviousness typically does not call for any proof of any kind. The end result itself is all that is needed. The very existence of the thing is self-evident as to its nature. There is no need to consult any literature or acquire the testimony of experts or evaluate any history of technological development. One only needs to slap one’s forehead and say, “Well, DUH!” When something is colloquially obvious, that means that nothing more need be said; or that if anything more were to be said, it would be redundant.
It is because of this colloquial meaning that some people shy away from using the word “obvious” and its variations in the colloquial sense, as they see such words as inherently unhelpful. Author Michael Crichton, for example, fondly quoted this dictum from his father, who had been a journalist and an editor: “If it’s really obvious, you don’t need to say it, and if it’s not obvious it’s insulting to say that it is.” Travels (1988) p. 71.
But in patent law, that is not how things work. (Or, to put it perhaps more correctly, that is not how things are supposed to work.) Legal obviousness is never assumed; it must be proven by evidence. In a proceeding before an examiner, the burden of proof is on the examiner to demonstrate obviousness. E.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In an inter partes review proceeding, the burden of proof is on the petitioner challenging a claim. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
The purported inventor does not have to prove legal nonobviousness. This may make sense to those lay people who think that “you can’t prove a negative”; and yet, in the field of patents, you actually can do that very thing. There are several recognized types of evidence of legal nonobviousness (but that is a subject for a later essay).
Determining legal obviousness requires delving into the past, examining the technical publications to determine what the prior art disclosed and how close the claimed invention is to what was shown in the public record.
The Time Frame
Another difference between colloquial obviousness and legal obviousness is this: whether a claimed invention is obvious today is not what matters. Rather, the inquiry is whether the claimed invention “would have been obvious before the effective filing date of the claimed invention” (or in pre-AIA days, “would have been obvious at the time the invention was made”).
Technology is always on the march, and some technological developments become adopted so widely and so quickly that it is easy to forget that there was a time when they didn’t exist at all. A legal obviousness analysis is not concerned with what is known or what is commonplace today; it’s what was known “before the effective filing date” that matters.
The Objective Standard
A further difference is that colloquial obviousness is highly subjective, while legal obviousness is supposed to be objective. The subjective/objective distinction is one with which many lay people have difficulty. Their confusion is totally understandable.
Consider: Whether a claimed invention is legally obvious or not is supposed to be viewed from the standpoint of “a person having ordinary skill in the art to which said subject matter pertains.” This is a person who is totally fictitious. This is a person who has even fewer legal rights in the United States than do corporations. This is a person who has never invented anything or published a single work. This is a person who is assumed to have knowledge about technology and opinions about obviousness, yet has no brain with which to hold that knowledge or to form those opinions. This is a person who has no physical body, and therefore cannot answer questions, cannot sign an affidavit, cannot be deposed, and cannot be impeached. This is a person whose only attribute is ordinary skill in the art, and that skill changes radically depending upon the subject matter of the claim at issue.
Some have suggested that this fictional person has two additional rather remarkable attributes: this person understands every human language on Earth; and this person has personal access at no cost to every publicly available repository of technical information for every technical subject on the entire planet. In spite of these super-human capabilities, however, this person’s level of skill in the art is no more than “ordinary.”
To some lay inventors, this objective standard sounds like patentability turns upon the opinion of a fantastical imaginary character, and invoking this character would be like asking, “What would Santa Claus think of my invention?” (It may be worth noting that there is actually more evidence for the existence of Santa Claus than there is for the person having ordinary skill in the art. There is, for example, substantial eyewitness testimony about the existence of Mr. Claus, as well as widespread consensus as to his attributes.)
The way to resolve the confusion is to point out that this fictional person is never represented as an entity having any sort of physical existence. Rather, this fictional person is a yardstick against which obviousness is evaluated.
One way to give some insight to a lay inventor about the objective standard is to show how applying a subjective standard would not make much sense. It would be pretty easy to defeat an obviousness challenge, wouldn’t it, if all the inventor had to do was file an affidavit saying that, “When I invented the thing, it wasn’t obvious to me.” Wouldn’t every inventor say such a thing? So, whether a supposed invention was obvious to the inventor (a subjective analysis, in other words) cannot be the proper way to look at legal obviousness, can it?
Some lay inventors may also be familiar with other fictional persons used throughout the law as yardsticks. Anyone who has sat on a jury and heard a case involving fault would probably have heard that the defendant’s conduct has to be measured not in relation to what the defendant thought was the proper thing to do, but rather against what a “reasonable person” would do in such a situation.
There are other differences between colloquial and legal obviousness, but one is worth a mention. Colloquial obviousness often involves plenty of hindsight. Legal obviousness is not supposed to involve hindsight.
When someone says that something is colloquially obvious, that often means, “Now that you’ve shown it to me, it’s readily apparent.” But when someone says that a claimed invention is legally obvious, that’s more akin to “Now that you’ve shown it to me, it’s readily apparent; and I can prove that I would have said so even if you hadn’t shown it to me in the first place.”
Legal obviousness requires evidence (as has already been mentioned), and the hindsight restriction means (among other things) that the evidence cannot come from the claimed invention being evaluated.
The general rule (subject to some exceptions) is that it is not proper to use an inventor’s own disclosure against the inventor, in order to establish obviousness. In the case of In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999), the Federal Circuit opined that taking the inventor’s disclosure “as a blueprint for piecing together the prior art to defeat patentability [is] the essence of hindsight.” Similarly, in Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012), the Federal Circuit said, “The inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight. What matters is the path that the person of ordinary skill in the art would have followed.”
The Obvious Conclusion
So, in the event you find your lay clients a bit befuddled by obviousness in the patent context, you can now outline for them some of the ways in which legal obviousness differs from colloquial obviousness. Legal obviousness cannot merely be declared to exist but must be shown by evidence. That evidence must be grounded in the prior art that existed and was available when the claims for the invention were first officially made. Whether the inventor knew or didn’t know about what the prior art disclosed is not determinative. What is determinative is whether the prior art includes information that would have suggested the claimed invention to a person having ordinary skill in the art.