When handling cases involving nonobviousness, there is a set of factors known as the Graham factors that are examined. This originated from the Supreme Court case Graham vs. John Deere in 1996. Below are the list of the 4 commonly used Graham factors. I will also give some background information or input on each one:
1) Prior art - this is the most important factor when looking at nonobviousness - typically an examiner will put together a list of citations or references of all the elements of prior art used in the invention
2) Ordinary skill in the art - defines a certain category of people who identify with the subject area of the said invention - these will end up being critical people to understand what levels of knowledge would have been capable of easily thinking of the invention
3) Claimed invention vs. Prior art - this area will be crucial in terms of how the inventor will set up their argument of why their invention is not simply contained in prior art - for more information on this, see this week's videos
4) Objective evidence of nonobviousness - tests such as the TSM can be applied here, which adds to the objectivity in a naturally subjective concept
-Commercial success - even if a invention may seem obvious, if it proves commercial success there is a likely a desire that it meets that wasn't previously met by prior art
-Long felt but unsolved needs - even if people have felt the need for a certain invention, if it has gone unsolved until the said invention, it is likely the patent will be approved
-Failure of others - even if others have tried it, if they have failed, it is likely due to a lack of expertise or the lack of a necessary element either contained in a prior art or a newly synthesized element
1) Prior art - this is the most important factor when looking at nonobviousness - typically an examiner will put together a list of citations or references of all the elements of prior art used in the invention
2) Ordinary skill in the art - defines a certain category of people who identify with the subject area of the said invention - these will end up being critical people to understand what levels of knowledge would have been capable of easily thinking of the invention
3) Claimed invention vs. Prior art - this area will be crucial in terms of how the inventor will set up their argument of why their invention is not simply contained in prior art - for more information on this, see this week's videos
4) Objective evidence of nonobviousness - tests such as the TSM can be applied here, which adds to the objectivity in a naturally subjective concept
-Commercial success - even if a invention may seem obvious, if it proves commercial success there is a likely a desire that it meets that wasn't previously met by prior art
-Long felt but unsolved needs - even if people have felt the need for a certain invention, if it has gone unsolved until the said invention, it is likely the patent will be approved
-Failure of others - even if others have tried it, if they have failed, it is likely due to a lack of expertise or the lack of a necessary element either contained in a prior art or a newly synthesized element
Hello,
ReplyDeleteI did an exact post on this! I think this goes a long way to explain obviousness. The 3 subset to explain obviousness definitely is important because even though it might be objected due to obviousness, one can argue against it. For instance I thought explaining that my product succeeded even though it may seem obvious was a good point. However, I cannot seem to erase that all these are very subjective. And even though patent is approved, it can always be rejected later.
I also agree with the importance of the three subsets. Making the invention is majority of the process, but application seems like a whole different subject. Creating ways to use a product is also a unique idea in and of itself, and the owner of that idea should be given credit. Product use should be treated as an invention itself, so inventors of such ideas should be given some form of payment since it is the actual use of the product that generates revenue, not just developing something.
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