|
During my engineering career, I’ve encountered quite a few business owners and inventors who are completely in the dark when it comes to intellectual property rights. In particular, there are plenty of misconceptions floating around about utility patents. To learn more about utility patents, I invite you to read an excellent article by attorney Thomas F. Zuber: Patent Law Basics For The Non-practitioner – Part II Of IV: UTILITY PATENTS *This article is for non-practitioners seeking to familiarize themselves with the basics of patent types and patentability requirements. This article is Part II of a four part series. Parts III and IV will follow in biweekly installments, and will address Design Patents and Plant Patents, respectively. Utility patents are the most common type of patent, and they’re what laypersons are usually referring to when using the word “patent.” For an invention to be patented, ….. Read the full article by going to: ________________________________________________________________ |
Tags: engineering expert witness, patent infringement, utility patent
The section with regard to non-obvious is not accurate based on some recent case law decisions as it relates to obviousness. Specifically, the Supreme Court has recently reaffirmed the principle that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the art…. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). The Court further stated that “[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). However, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. And the Court expressly encouraged the use of common sense in such analysis. Id. Finally, the Court agreed that the teaching-suggestion-motivation test (“TSM test”) captured a helpful insight to prevent hindsight bias, but the Court held that “[h]elpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents.” Id. As a result, the obviousness inquiry now requires consideration of common knowledge and common sense. (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.”) “A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). To find obviousness, the Examiner must “identify a reason that would have prompted a person of ordinary skill in the art in the relevant field to combine the elements in the way the claimed new invention does.” Id.
Thanks for this important information, Peter.