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Top tip, if you want to irritate a patent attorney, tell them something is “patently obvious”. I know that’s a common usage in English, but to us it jars because the one thing that makes something non-patentable is if it is “obvious”. The definitions vary – the US denies a patent to an invention that is obvious, whereas Europe requires an invention to have an “inventive step” and defines that as something that is “not obvious to a person skilled in the art”. Either way, though, obviousness is not a good look if you’re asking for a patent.
But what does “obvious” mean, in this context? I touched on it in my last newsletter – I explained that it’s a somewhat subjective test, requiring us to take into account all the things that were disclosed before the filing date (known as the “art”), identify the closest one, and look at the difference(s) between it and the claimed invention. If those changes are trivial, or just workshop variants, or just routine optimisation, or just the application of a suggestion made (publicly) somewhere else, then it’s obvious. If there’s no suggestion in the art to head in that direction, and it’s not within the common general knowledge of a skilled person to make that change, then it’s non-obvious and potentially patentable.
But how much of a step is needed? Does it need to be groundbreaking? Surprisingly, no – and this is something I find myself explaining a lot to clients who are wondering whether or not to file a patent application for their invention. The relevant bit of the definition is that the idea must not be obvious “to a person skilled in the art”. So who is the “person skilled in the art”? In short, they’re another one of those fictional personalities that the law sometimes comes up with, the “man on the Clapham omnibus”, the “reasonable person”, or (my favourite), the “officious bystander”.
The definition of the “skilled person” has varied from time to time (and from jurisdiction to jurisdiction), but they are, generally speaking, knowledgeable about the usual practices in a particular field, the common general knowledge, so when presented with a specific suggestion they will do the work of filling in the gaps, making suggestions based on what is normally done in the field, and perhaps bringing in suggestions from related fields. What they can’t do is suggest something that isn’t obvious.
The important thing to remember is that the skilled person is not capable of an invention (and if you think that definition is circular, you’d be right… but it seems to work). So anyone who is an inventor is – by definition – more inventive than the skilled person. So the fact that something was obvious to them doesn’t mean it is “obvious” in patent law. So don’t be fooled – don’t think that just because you think something is obvious means that a Patent Office will, you might be way cleverer than the skilled person.
Until next time.
Best wishes,
Michael
