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This is the third  and concluding part of the Non obviousness Requirement for Patentability.

You would do well to study a US Supreme Court case KSR International on Nonobviousness. Study also the Federal Circuit decision against which appeal was filed in the US supreme Court. You can google for the case or find it at findlaw.com

Arguments that can be advanced to defeat Obviousness Objections.

These are also the defences to an obviousness rejection. I’m not covering them all here as this is only an introductory course. Nor am I giving a lot of information on the headings below. That will be stretching this limited course a little too much.

Basically the arguments to overcome obviousness rejections are based on common sense approach. The following are the grounds normally used.

1. Failure of others to accomplish what the invention teaches. In other words other scientists have recognized the problem, tried to solve it but could not and your invention did it.

2. Your invention recognizes an unrecognized problem and solved it. In other words the invention identified a problem that could not even be identified by others and you identified the problem and your invention solved the problem.

3. Your invention is a commercial success.

4. If your invention has omitted some elements in the prior art documents and still achieves same or better results in an economical way, it is not obvious.

5. If the combination of the invention was not suggested by the prior art documents, then your invention is not obvious.

6. If the prior art documents taught away from the principle of the invention, then the invention is not obvious.

7. If the prior art documents specifically teach away from combining them and the examiner has combined such prior art documents then the invention is not obvious.

8. If the invention solves an ancient problem for which no solution existed and your invention came up with the solution, then it is nonobvious.

9. Where the invention used elements that are thought to be impossible to combine and combined them then it is not obvious.

10. If the prior art documents cited are from non analogous fields, and their combination is required to make the invention obvious, then the invention is not obvious.

11. The decision is based on hindsight. Every thing is obvious after it is pointed out. Rejection was bad due to hindsight.

12. The combination of the prior art elements and the rejection of the invention was based on obvious to try principle.

13. The suggested combination of prior art documents do not assure success by mere combination and extensive experimentation, research and studies would be needed to combine them to reach the results taught by the invention.

One more possible defence but weak defence.

14. If multiple prior art documents are needed to be combined then the invention may be deemed non obvious.

There is a case that approved combining 13 different documents by the patent examiner to reject an invention on the ground of obviousness. You can use the 14th ground as a supporting ground to the first 13 but the ground No. 14 alone would not stand on its own.

Let me state that the list is not exhaustive but merely indicative of the defences that can be made. Let us also remember that the case law on patents and patentability in particular in India is limited at the moment but it is bound to change in future.

This concludes our lessons on Patentability.  While the last lesson here is the most important one, I’m not sure how many of you are going to be patent agents who are going to raise these points in future. This topic is for advanced patent prosecution persons and not for beginners any way and if you feel that you were able to understand the lessons on obviousness hats off to you and you are heading in the right direction.

Note however I have oversimplified things here for you to understand. If you do not understand todays lesson, please do not feel bothered. You don’t learn to swim until you jump in to the water.

By the way let me know how many of you are interested in writing the next Patent Agent Examination? Do you really intend to learn Patent Law to an extent that you would like to become a Patent Agent? Let me know. I ask precisely because a lot of members have written to me about the need to conduct a certification exam of this course. I have been looking at the click through stats and I find that the number of persons who are seriously following up all the lessons is only about 300 or so.

I believe that enabling our members to become Patent Agents which is a professional qualification and can make you earn at least about Rs. 6 lakhs per annum in India is the best benefit that we can give our members.  We made it a point to tell you when you joined that we are not an educational institution and we do not want to deviate from that stated fact. But we would certainly give you a special personal training if you want for the Patent Agent examination.

We would be interested to provide intense training to about 30 members to write the Patent Agent examination. You will need to study for about 90 days and if you are working in any corporate will need to take study leave or special permission to study for this program. Only absolutely serious and sincere members please contact us. You need to have the required qualifications to become a Patent Agent and must have excellent written English plus an ability to grasp quickly and write the answers.

aswami Natarajan
Patent Attorney
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