Talk:Inventive step and non-obviousness
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[edit] Systematic Bias
I don't understand the presence of the systematic bias tag; if the term is only used in Europe then surely its okay for the article to have a European perspective? If the term is used elsewhere, then shouldn't there be at least some reference to this fact in it already? The Non-obviousness article seems similarly slanted towards the US, but it doesn't have a tag. Should not an apparent bias in this article imply a similar bias there? --Neo 10:01, 26 September 2005 (UTC)
- The article is biased because it presents only the view of the European Patent Office and its Boards of Appeal while a type of inventive step test is also used for instance in the UK [1] and Germany. European national laws do not necessarily reflect the practice of the EPO, even though some sort of harmonization exists on a theoretical level (see for instance Strasbourg Convention). Especially the way the inventive step criterion is assessed varies across Europe. Inventive step is also used in Australia [2], and probably also in Brazil, China, and so on.
- It might be interesting to merge "Non-obviousness" and "Inventive step" under an umbrella article such as Inventive step and non-obviousness or Non-obviousness and inventive step (?). --Edcolins 10:55, 26 September 2005 (UTC)
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- Done. --Edcolins 20:41, 16 October 2005 (UTC)
[edit] Temporary material
The following material has been excised from patent, we may wish to include it here. Kcordina Talk 09:04, 11 April 2006 (UTC)
Generally, the patent laws make it difficult for patent examiners to employ hindsight reasoning in rejecting a claim as obvious, by requiring some teaching that would motivate a person of ordinary skill in the art to modify the technology found in the prior art to arrive at the claimed invention. In the United States, objective evidence or secondary considerations of non-obviousness can overcome a proper obviousness rejection. Such secondary considerations can include unexpected results, commercial success, long-felt need, failure of others, copying by others, licensing, and skepticism of experts.
As a practical matter, during examination the patent examiner will attempt to locate two or more references that when combined show all of the features of the claimed invention and indicate that one of ordinary skill would make that combination.
The threshold for the obviousness or inventive step standard can be particularly ambiguous in genus–species situations. For example, if an inventor finds two species of a particular genus, e.g. two particular chemical compositions out of 10,000 in the broader genus, should the inventor be entitled to a patent on the entire genus? Further, if someone has discovered the genus already, but not isolated any of the species, are the species obvious in light of the genus? Under U.S. law, the species may still be patentable if they produce results that are unexpectedly different from those of other previously known members of the genus.
For example, suppose a software inventor unveils the quicksort sorting algorithm to the world but only discloses it using integers (this is the species). Can someone else then obtain a patent on an "improved" quicksort suitable for use on any partially ordered set (this is the genus)? Under U.S. law, this is not a question of obviousness since a claim to the genus lacks novelty as the species is known.
Finally, in spite of all precautions, some patents still give a general impression of triviality. An example is given by the "combover" patent (U.S. Patent 4,022,227, filed December 1975), which has also been awarded the 2004 Ig Nobel Prize in engineering for its apparently unintentional ridiculousness.
The sentence (under US) that "Ordinary food and drink recipes cannot be patented because they are considered obvious" is not correct. They are difficult to patent because they tend to be inherrently obvious, but they are patentable. See US Patent 3870803 [3] (aka Stove Top Stuffing).--Jurisnipper 20:38, 12 April 2006 (UTC)
[edit] Updates regarding U.S. obviousness law
I made some changes to the discussion of U.S. obviousness law. In particular, the pending Supreme Court case (KSR v. Teleflex) is not addressing the applicability Grahmn factors, instead it will decide whether there needs to be a suggestion or motivation to combine prior art references to render a claimed invention obvious. I added a paragraph regarding the Federal Circuit's TSM test to provide some background on the issue. A detailed discussion of the issue can be found at http://www.patentlyo.com/patent/2006/08/ksr_v_teleflex_.html.
[edit] Smuckers peanut butter and jelly sandwich case
The reference to the Smuckers case needs to be dated, not just labeled "recent". --Shawn K. Quinn 22:09, 30 October 2007 (UTC)
- Done (didn't notice at first that the reference had the dates in it). If I made mistakes let me know. --Shawn K. Quinn 22:14, 30 October 2007 (UTC)
I removed the bit about the Smuckers patent being invalidated for being obvious. The article referenced did not make this claim. Albie's Foods' challenge was dismissed, see 170 F.Supp.2d 736, and Smuckers suit against Albie's Foods was dismissed without prejudice, see 5:01 CV 1182 (Ohio). --The Empiricist (talk) 02:49, 4 January 2008 (UTC)
I did a little more research on this. There was news about the the court rejecting a related Smuckers patent application. Court reject's J.M. Smucker's PB&J patent. The Federal Circuit affirmed a Board of Patent Appeals and Interferences rejection of a claimed method of making the sealed PB&J sandwich. Ex parte LEN C. KRETCHMAN and DAVID GESKE. This did not invalidate the original patent on the food item itself, it just prevented Smuckers from obtaining additional claims that would have given it some additional protection were the original patent invalidated. Interestingly enough, the BPAI case discusses tarts, but not ravioli. --The Empiricist (talk) 05:42, 4 January 2008 (UTC)
