Most people know an invention must be new, useful, and non-obvious. Obviousness or inventive step asks whether the claimed invention would have been an expected development to a skilled person in light of the prior references and products. This is an important concept in patent law that we, as IP managers in companies, had to explain repeatedly, so here are some notes for you and your company to use.
How to Explain the Concept
Obviousness asks whether the invention is something a skilled practitioner would have arrived at by routine work or predictable modification of what was already known, not whether it is new. Novelty or newness is often a simpler concept.
Whether something is obvious is a question. Patent laws provide a way of answering the question. One compares the claimed idea to the prior references, imagines a notional skilled person with ordinary knowledge, and asks whether that person would have been motivated to make the claimed change with a reasonable expectation of success.
If your business partner invokes their expertise as to what is obvious, then redirect that activity. There is room for gut feel or intuition, but only in answers to the sub-questions. Indeed, knowledge of the expectation of success or quantification of success is helpful. However, in general, experts in a field tend to overestimate what is needed for an invention.
Emotion shouldn’t come into whether something is obvious or not. If an inventor feels their invention is being unfairly characterized as obvious, tread carefully.
Obviousness and Inventive Step in Various Places
In Canada and the United States, the term used is “obvious” where an invention is non-obvious. In Canada, the French word is evident. In Europe, the phrasing is more positive as an invention is the result of an “inventive step”.
Obviousness in Canada
Canadian law asks whether the claim would have been obvious to a person skilled in the art at the relevant date, using a structured four‑step inquiry:
- Identify the skilled person and common general knowledge;
- Determine the inventive concept by a purposive construction of the claim;
- Compare that concept to the prior references or products, and
- Decide whether the differences would have been obvious without hindsight.
The first step is important because what is obvious in automechanics differs from what is obvious in pharmaceuticals. Courts allow an “obvious to try” analysis where appropriate, and consider secondary factors such as commercial success and long‑felt need to rebut an obviousness finding. For more information, see Apotex Inc v Sanofi‑Synthelabo Canada Inc., 2008 SCC 61.
Obviousness in the United States
US law applies the Graham factual framework – scope and content of the prior art, differences from the claims, level of ordinary skill, and objective indicia of nonobviousness – with KSR v Teleflex endorsing a flexible, common‑sense approach to combining references rather than a rigid teaching‑suggestion‑motivation test. Examiners and courts must articulate a reasoned rationale for combining references, and objective evidence, such as unexpected results or commercial success, is weighed as a check against hindsight. For more information, see Graham v. John Deere Co., 383 U.S. 1 (1966) and KSR Int’l Co v Teleflex Inc., 550 U.S. 398 (2007).
Inventive step at the European Patent Office
The EPO uses the problem–solution approach – select the closest prior art, identify distinguishing technical features and their technical effect, formulate the objective technical problem, and ask whether the skilled person would have arrived at the claimed solution with a reasonable expectation of success. The EPO’s could‑would analysis focuses on whether the previous documents and products would have prompted the skilled person to adopt the claimed solution for a technical reason.
Practical Pointers and Examples
As an IP manager, you might want to know about hindsight, which is not allowed, and other factors to consider. Plus, we recommend that you generate a list of examples relevant to your employer.
Hindsight
Hindsight is the ability to understand an event or situation only after it has happened. It refers to the clarity and knowledge you gain in retrospect. In patent law, hindsight refers to the impermissible use of the inventor’s own disclosure to reconstruct the state of the art just before the application date, making an invention seem obvious when it was not. Because “hindsight is 20/20,” courts and patent offices strictly prohibit using the application under examination, or an impeached patent, as a roadmap to piece together the references.
Details on the Law
Here are some details of the law on obviousness:
- Motivation to combine – Courts and examiners require a clear rationale why a skilled person would combine references; post‑KSR, that rationale may be implicit in common sense or market forces, but it must be explained.
- Motivation to modify and reasonable expectation of success – An obviousness finding is stronger where the prior documents and products teach a modification, and the skilled person would have had a reasonable expectation that the modification would work.
- Lead compound and lead reference selection – choose a realistic starting point that a skilled person would have considered the closest public document or product; improper selection can skew the problem‑solution analysis.
- Inoperative combinations – It is extremely satisfying to show an examiner their proposed combination or modification of a reference won’t work; inoperative creations are not obvious.
- Weighing secondary considerations – objective indicia such as unexpected properties, commercial success, long‑felt need, and failure of others are used to rebut an obviousness conclusion and must be supported by contemporaneous evidence.
- Secondary considerations – Something could appear obvious as directly taught or suggested creation and still be non-obvious in some cases, in view of factors like:
- Long felt but unsolved needs
- Commercial success,
- Unexpected results, or
- Failure of others.
Examples
A predictable mechanical combination of known parts is typically obvious; a chemical substitution that yields an unexpected, reproducible technical effect can support nonobviousness.
Providing examples for all readers is difficult. Generally, examples from chemistry don’t work for mechanical engineering, etc. So, as an IP manager, you will want to collect examples of obvious changes and non-obvious changes.
Conclusion
If you would like to discuss protecting your company’s inventions or practices as an in-house IP manager, please contact us.
