Perhaps the most complicated and challenging requirement for obtaining a patent is non-obviousness. It is outlined in 35 U.S.C. Section 103, and generally it requires the U.S. Patent and Trademark Office to determine whether an invention would be obvious to the typical person in the field. This means someone who has a general understanding of the field but not necessarily someone who has the same degree of expertise as the applicant. However, it requires more than not being obvious to the ordinary person or a person with an average education.
The non-obviousness requirement sets a higher standard than parallel requirements for copyrights and trademarks. Copyright protection can apply to something that has a minimal amount of creativity, even if it is not unique or complicated. Trademark protection can apply to a business name that is not unprecedented or ingenious. The USPTO just needs to establish that the proposed trademark would not confuse consumers or overlap with an existing trademark. Understanding these different standards may help an applicant determine which form of intellectual property rights to seek.
The USPTO will compare an invention to inventions that have previously received patent protection to ensure that it is sufficiently different. It also will consider whether people who know about the patent application would find that the subject matter is obvious. Even if an invention is new, such that it is not currently used by the general public, this might not be enough. The USPTO would need to further investigate whether it was known to the relevant audience in the industry. Sometimes there is a reason why something that is not in public use has not been patented. There might be drawbacks to the invention that outweigh its benefits.
If you have filed a patent application, and the USPTO examiner suspects that non-obviousness may be an issue, they may ask you to provide more details about previous inventions in your industry. These are often known as “prior art.” (Read more here about prior art.) If you are already aware that your proposed invention is only slightly different from previously patented inventions, or if it offers only a minor improvement on an existing invention, you may want to prepare to explain in more detail how it is different or improved.
In contrast to some of the other patent requirements, non-obviousness is not always easy to determine, and reasonable people may differ in their opinions. If you believe that your invention is likely to face a challenge in this area, you may want to seek advice from a patent attorney on how to satisfy the requirement.
