September 2007

Non-Obviousness requirement of Patents

A patent gives an inventor a right to exclude others from making, using, or selling the patented invention for a certain period of time. Patents are a form of property right that is granted by federal patent law, which is administered by the United States Patent and Trademark Office USPTO. The main objective of patent law is not to reward inventors but rather to promote the advancement of science and technology through the disclosure of new ideas. Accordingly, there are several requirements for an invention to be eligible for a patent, including it must be new, useful, of patentable subject matter, and non-obvious. Useful and patentable subject matter is generally easy to determine. With research one may be able to determine how likely it is that the invention is new. However, it is more difficult to determine if the invention non-obvious.

The nonobviousness requirement provides that an invention is not patentable if it would have been obvious to a person having ordinary skill in the pertinent prior art as it existed when the invention was made. The “prior art” is simply all of the information available that might reveal that a claimed invention has either already been patented or described in a publication, either of which will render the claimed invention unpatentable. The “pertinent prior art” is the art that pertains to the particular field in which the claimed invention would be classified. For example, if the claimed invention was a tool or a machine or improvement to either, prior art pertaining to chemical compounds would not be pertinent and would not be considered in the non-obviousness determination. In considering what constitutes the hypothetical “person having ordinary skill in the art,” the patent examiner considers the educational background of the inventor; the problems encountered in the art and the solutions the claimed invention is intended to provide; prior solutions to those problems present in the art; the level of sophistication of the particular technology involved; and the educational background of workers in the particular field.



Patent Examining Procedure

Determining whether an invention is nonobvious can be exceedingly difficult. As described in the U.S. Patent and Trademark Office’s Manual of Patent Examining Procedure, the examiner must step backward in time to just prior to the existence of the invention to determine whether a person of ordinary skill in the art would find the invention obvious. An invention is presumed to be obvious or nonobvious depending on whether certain factors are found. The two factors necessary to a finding of a presumption of obviousness are: (1) something in the prior art or general knowledge in the field that suggests the invention to a person of ordinary skill and (2) indications that the invention had a reasonable chance of succeeding as an invention. Both the suggestion of the invention and the assessment of the chance of success must be based on the prior art or general knowledge in the field and not on the information in the patent application, and the assessments must be made as of the time of the invention and not with the benefit of hindsight. If these factors are present, the applicant may provide information in order to rebut the presumption.


As part of the analysis, the patent examiner is allowed to analyze several secondary considerations, including the commercial success of the invention, the long-felt need that the invention would fill, and whether there is commercial acquiescence in the invention. Commercial success provides evidence in favor of nonobviousness because if the invention had been obvious, it would have been invented previously, particularly where the success is due to the invention’s utility and not because of intense promotion and publicity. Moreover, commercial success is an indicator that the invention is considered to represent useful progress in solving the problem toward which it is directed.

The rationale is similar with long-felt need. If the invention filled a need that survived for a long time, the invention must not have been obvious or someone else would have filled that need long before the claimed invention was invented. Commercial acquiescence means that competitors have recognized the validity of an invention’s patent and are willing to pay the necessary license to use or sell the invention. Competitors that felt that the invention was not entitled to a patent might use or sell the invention without paying claimed inventor. None of the secondary factors are determinative and simply represent factors that the patent examiner might consider in the difficult process of deciding whether a claimed invention is obvious or not.

Determining Foreign Priority

International Patent Priority

One of the trickiest aspects of patent applications, particularly in the international context, is establishing the priority of patent rights. Rules applying to priority differ starkly between the United States and many foreign countries. The United States currently has a “first-to-invent” rule, which means that if an inventor can establish that he or she was the first to conceive of and diligently, create an invention will be given priority over another inventor of the same invention even if the second inventor applies for a patent first. In contrast, many foreign countries have a “first-to-file” rule, which means that the first inventor to apply for a patent will be given priority even if another inventor actually conceived of and created the same invention first. Further complicating the issue of priority is the fact that, in the United States, an inventor may publicly disclose an unpatented invention and will have a year to file for a patent. In many foreign countries, any public disclosure of an invention renders it ineligible for a patent. Thus, a U.S. inventor might be able to obtain a U.S. patent but be ineligible for patent protection in other countries even though U.S. patent rules were correctly followed.

Through international treaties, for instance, the Paris Convention, the U.S. inventory can establish a right of priority in foreign countries based upon U.S. law. If a U.S. inventor files an application for a patent covering an invention not previously disclosed to the public, foreign patent applications may still be filed. The foreign patent must, however, be filed within one year and the U.S. filing date will serve as the filing date of the foreign applications as well. Once the U.S. patent application is filed, the invention may be publicly disclosed or even sold without rendering it ineligible for foreign patent protection.

Another treaty affecting patent priority is the Patent Cooperation Treaty (PCT), under which an international “patent application” may be filed. The PCT patent application does not result in the issuance of a patent but rather establishes a filing date for patent applications in those countries that are members of the PCT. The PCT international patent application may be filed within one year of filing for a patent in the United States or any of the other PCT-member countries, and additional patent applications in other PCT-member countries may be filed within 18 months of the PCT international patent application.


The primary advantage of the PCT international patent application is that the inventor establishes a date of filing for priority purposes without having to spend a large amount of money which would be required to file the same application in all foreign countries. In addition, the inventor gains time to assess the viability, of the invention and whether and in which foreign countries it would be beneficial to seek patent protection. As the invention grows, some information may come to light which reveals that the expense of pursuing patent protection in certain countries will provide insufficient return on the required investment to make pursuing the foreign patents worthwhile.

Fair Use under Trademark Law

In light of Donald Trump and Paris Hilton’s attempt to monopolize a common phrase, (such as “Your Fired” or “That’s Hot”) which is used by the public in non-trademark way, it may be useful to review how one can use a trademark without running a-foul of these well known celebrities’ rights. Under US law, a party may use a trademark in such as way as to describe the qualities that a mark represents as long as the use is not in a trademark way, but is only used in a descriptive sense. Under trademark law, fair use of a trademark occurs when a defendant uses a descriptive trademark, of another party, to describe the defendant’s own product. This is the fair use defense set forth in the Lanham Act, which provides:

the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark…of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.

While a trademark will protect a word which is used by a manufacturer or merchant to identify goods and distinguish them from others, trademark law will not prevent the use of such a word in good faith where the primary purpose is to describe a product or service, not to infringe the trademark resembled by it. The statutory fair use defense provided in the Lanham Act prevents a trademark owner from monopolizing or appropriating a descriptive word or phrase. It allows non-owners of the trademark to accurately describe their goods. Therefore, the defense is only available when the mark at issue is descriptive, and then only where the descriptive term is used descriptively.

Judge-Made Categories of Fair Use

In addition, although the Lanham Act contains the statutory fair use provision mentioned above, there are three additional judge-made categories where use of the trademark of another may be considered non-infringing. They are (1) nominative fair use, (2) comparative advertising as fair use, and (3) parody as fair use.

Nominative fair use involves the descriptive use of another’s mark to describe or identify the plaintiff’s goods or services, not the defendant’s. Comparative advertising involves a situation where the trademark of a competitor is used to refer to the competitor’s goods. Parody is a humorous form of social commentary and literary criticism.

Factors Considered in Determining Fair Use

Several different factors are considered by courts to determine whether a particular use is an infringing use or a fair use. Those factors are as follows:

  • the manner in which the word or mark is being used by the defendant is considered;
  • whether the defendant is using the word or mark in good faith is considered; and
  • whether the use of the word or mark is likely to confuse consumers is also considered.

The author’s use of the mark must accurately describe the trademark owner’s product or service, the author must use the mark in a non-trademark manner and not as a source identifier of the author’s work, and the author’s use must be in good faith in order for the fair use defense to be successful.

Improper Use of a Trademark

Continuing with this month’s theory of improper use, under trademark law, one can improperly use a trademark or service mark under a legal theory referred to as passing off. In “passing off,” a seller associates another party’s mark with a good or service. The law of passing off concerns unfair competition more generally in situations where there does not need to be a registered trademark or any other intellectual property right. Where a second business does something so that the public is misled into thinking that the activity is associated with a first business and as a result the first business suffers some damage, then it may be possible for the first business to sue the second business for passing off. One area where passing off might apply is where a second person uses an unregistered trademark normally used by a first person and in so doing passes off, or represents, goods or services in such away that the public is deceived into thinking the goods or services are being offered by the first person.

Reverse Passing Off

In “reverse passing off,” a party misrepresents the source of its product by not informing the public who created it. The seller misrepresents the source by removing or obliterating the original trademark. The removal or obliteration of the original trademark is completed prior to sale of the associated goods or services. Reverse passing off falls into two categories, “express reverse passing off” and “implied reverse passing off.”

In express reverse passing off, the infringer replaces the original mark with his or her mark and sells the product. In implied reverse passing off, the infringer only removes the mark prior to selling the product, leaving the product unbranded. The infringed party suffers damages by implied and express reverse passing off. An infringer thwarts the purpose of a mark by its removal.

Damages Caused by Reverse Passing Off

A trademark serves three purposes: it designates origin, it develops goodwill by allowing customers to associate a level of quality with a product from a specific origin, and it serves as advertising. By removing the mark, the infringer prevents the ultimate customers from knowing the true source of the product, creating a means for deceiving the customer. The deception can occur if the infringer replaces the unbranded products with products of a lower quality. Additionally, the removal of the mark denies the infringed party the opportunity to further develop the advertising value of the mark. on.

Plagiarism Under Copyright Law

A copyright holder has the exclusive rights to reproduce, display, transmit, perform, and modify a work as well as the right to publicly perform a sound recording by digital transmission. There are exemptions in the Copyright Act that provide for certain exceptions to those exclusive rights, many in favor of limited nonprofit educational purposes. If none of the exemptions apply, the proposed use of someone else’s copyrighted work will probably be copyright infringement. If proper attribution is required and is missing, the proposed use will also be plagiarism. Copyright laws prohibit plagiarism.

Copyright Infringement

Copyright infringement occurs when someone other than the copyright holder reproduces a work without permission. Excessive use of another’s original work, even if the source is properly acknowledged, may be a copyright infringement. Copyright infringement is a violation of federal law. Wholesale copying of copyrighted material is an infringement of a property right, and legal remedies are available to the copyright holder. But the copying of brief passages, even from copyrighted materials, is permissible under the doctrine of “fair use,” while wholesale copying from material that is in the public domain, which may be material that never was copyrighted or material on which the copyright has expired, presents no copyright issue at all.


Plagiarism is different from copyright infringement. Plagiarism occurs when someone copies the intellectual property of another and attempts to pass it off as his or her own work without crediting the source. This is true even if the ideas of someone else are paraphrased or summarized. In scholarly research, plagiarism is considered unethical and dishonest. Plagiarism is a form of dishonesty because it involves passing off the ideas or creative expression of someone else as one’s own; it involves the misappropriation of ideas or creative language without attribution.


Examples of Copyright Infringement

Quoting extensively from a book without the copyright holder’s permission would likely be copyright infringement. Extensive quoting without permission but with attribution would not be plagiarism but would still be copyright infringement. Using a copyrighted illustration in a book without permission is copyright infringement even if credit is given for the picture. Giving credit does keep it from being plagiarism.

Examples of Plagiarism

Using someone’s exact words without putting them in quotes and giving credit would likely be plagiarism. Paraphrasing someone’s work without giving credit is plagiarism. Including a photo or illustration in a book without giving credit is plagiarism. Also, extensive copying with permission but without attribution would be plagiarism but not copyright infringement. Extensive quoting without permission and without attribution would be copyright infringement and plagiarism.

Safeguards Against Copyright Infringement and Plagiarism

Making certain that permission is obtained before using the work of another is the best way to avoid a charge of copyright infringement. Proper citation of sources is the best safeguard against plagiarism.