Have you ever thought to yourself, “I could have invented that.” Everybody does, but then the next time they think of something neat, they don’t act on it because they don’t think they can get a patent for it. So let’s dig a little deeper into Patentability: Novelty and Obviousness.
There is a four-prong analysis for whether something is patentable. It is: 1) is it patentable subject matter, 2) is it novel (new), 3) is it obvious to one skilled in art (the subject matter of the invention), and 4) does it have a utilitarian, or useful value, to the public?
The two prongs that everyone gets hung-up on are novelty and obviousness. When you ask the question, “Can I get a patent for the great new invention I’ve just thought up”, you need to analyze novelty and obviousness. So what are they?
When an invention is obvious to one skilled in the art, you can’t get a patent for it.
Simple example – Let’s say I invent a cool computer and get a patent for it. You can’t add a power switch to it, and say you invented the same cool computer with a power switch to turn it on and off. The cool computer obviously could be combined with a power switch. It fails the obviousness test.
This comes up in patent litigation all the time because inventions are usually small incremental steps in innovation. It’s okay to combine things together that are not obvious and still get a patent. However, it gets really tricky because a layperson on a jury or a judge, may not see how obvious the combination would be to a person “skilled in the art” (i.e. someone who is knowledgeable in the field of your invention), especially for high-tech innovation.
To illustrate, that’s where horse boarding comes in. Horse boarding is essentially chariot racing on a modified skateboard. It takes principles from chariot racing, skateboarding, and waterskiing and puts them all together.
But will it pass the novelty and obviousness tests for a patent?
If you didn’t know about these sports beforehand, you would think this is truly novel, or new. However, if you were a chariot racer or a skateboarder would you think it was new?
Skateboarders have been tying ropes to bikes and then getting pulled by the bikes for decades. I remember as a kid we called that game “whiplash” as the biker would try to snap the skateboarder off the rope with a tight turn at high speeds. And chariot racing is millennia old.
When you combine these things in horse boarding where a horse pulls a rider holding a waterski rope on a skateboard with off-road tires, have you really invented something new?
Maybe, but wouldn’t it be obvious to the kid getting pulled behind a bike to replace the bike with a horse? Or for a modern-day chariot racer to replace his chariot with a skateboard?
Maybe, maybe not.
Related, a huge dilemma is, who is the person with “skill in the art”? It can be tough to decide who a person skilled in the art is, or who is an expert in the field. However, these are the people we rely on to help us decide whether something is novel or obvious.
That’s the thing with innovation. Taking known devices and combining them so that they can do something new and innovative is the whole ball game when talking about obviousness.
Now compare this to the dilemma we face with high-tech innovation. In the horse boarding example, all of the sports are readily observable to the layperson. However, with high-tech, many of the things combined in innovations are invisible to the layperson or take years of training to understand.
For example, I once worked on a case where an important independent claim in the patent was for adding a password to a SATA storage device. The patent claimed that SATA existed, but adding a password to access a document on the system was novel to prevent more than one person working on the document at a time. They tried to make it look really novel and non-obvious by making the password concept seem complicated, but it wasn’t. It was simply using existing technology to lock-out other editors while 1 person was working on it. It was useful for document control, but it was obvious. The trouble is you had to know about these fields of engineering existed prior to the invention, and most people would not know that.
I think the problems have been sufficiently laid out, so let’s talk about some solutions.
1) For obviousness, in my experience, if you’re combining more than 3 things together, then an expert, judge or jury is not going to think that it was obvious. Especially when you’re pulling ideas from different disciplines.
2) On the other hand, if there is some publication that describes the state of the art in the technology, an article that takes you right up to the edge of the known technology, and then gives an idea about where the technology should go next, that may render the invention that makes that jump obvious, because someone has already made it clear that such a combination would be useful.
So the next time you think of something neat, consider the concepts of novelty and obviousness, and if you think you pass the tests, consider getting a patent for it. Then next time, instead of thinking, “I could have invented that.” You’ll be saying, “I did invent that!”