Talk:Inventive step and non-obviousness

Latest comment: 2 years ago by Wgullyn in topic Split proposed

Systematic Bias

edit

I don't understand the presence of the systematic bias tag; if the term is only used in Europe then surely its okay for the article to have a European perspective? If the term is used elsewhere, then shouldn't there be at least some reference to this fact in it already? The Non-obviousness article seems similarly slanted towards the US, but it doesn't have a tag. Should not an apparent bias in this article imply a similar bias there? --Neo 10:01, 26 September 2005 (UTC)Reply

The article is biased because it presents only the view of the European Patent Office and its Boards of Appeal while a type of inventive step test is also used for instance in the UK [1] and Germany. European national laws do not necessarily reflect the practice of the EPO, even though some sort of harmonization exists on a theoretical level (see for instance Strasbourg Convention). Especially the way the inventive step criterion is assessed varies across Europe. Inventive step is also used in Australia [2], and probably also in Brazil, China, and so on.
It might be interesting to merge "Non-obviousness" and "Inventive step" under an umbrella article such as Inventive step and non-obviousness or Non-obviousness and inventive step (?). --Edcolins 10:55, 26 September 2005 (UTC)Reply
Done. --Edcolins 20:41, 16 October 2005 (UTC)Reply

Temporary material

edit

The following material has been excised from patent, we may wish to include it here. Kcordina Talk 09:04, 11 April 2006 (UTC)Reply

Generally, the patent laws make it difficult for patent examiners to employ hindsight reasoning in rejecting a claim as obvious, by requiring some teaching that would motivate a person of ordinary skill in the art to modify the technology found in the prior art to arrive at the claimed invention. In the United States, objective evidence or secondary considerations of non-obviousness can overcome a proper obviousness rejection. Such secondary considerations can include unexpected results, commercial success, long-felt need, failure of others, copying by others, licensing, and skepticism of experts.

As a practical matter, during examination the patent examiner will attempt to locate two or more references that when combined show all of the features of the claimed invention and indicate that one of ordinary skill would make that combination.

The threshold for the obviousness or inventive step standard can be particularly ambiguous in genusspecies situations. For example, if an inventor finds two species of a particular genus, e.g. two particular chemical compositions out of 10,000 in the broader genus, should the inventor be entitled to a patent on the entire genus? Further, if someone has discovered the genus already, but not isolated any of the species, are the species obvious in light of the genus? Under U.S. law, the species may still be patentable if they produce results that are unexpectedly different from those of other previously known members of the genus.

For example, suppose a software inventor unveils the quicksort sorting algorithm to the world but only discloses it using integers (this is the species). Can someone else then obtain a patent on an "improved" quicksort suitable for use on any partially ordered set (this is the genus)? Under U.S. law, this is not a question of obviousness since a claim to the genus lacks novelty as the species is known.

Finally, in spite of all precautions, some patents still give a general impression of triviality. An example is given by the "combover" patent (U.S. patent 4,022,227, filed December 1975), which has also been awarded the 2004 Ig Nobel Prize in engineering for its apparently unintentional ridiculousness.

The sentence (under US) that "Ordinary food and drink recipes cannot be patented because they are considered obvious" is not correct. They are difficult to patent because they tend to be inherrently obvious, but they are patentable. See US Patent 3870803 [3] (aka Stove Top Stuffing).--Jurisnipper 20:38, 12 April 2006 (UTC)Reply

Updates regarding U.S. obviousness law

edit

I made some changes to the discussion of U.S. obviousness law. In particular, the pending Supreme Court case (KSR v. Teleflex) is not addressing the applicability Grahmn factors, instead it will decide whether there needs to be a suggestion or motivation to combine prior art references to render a claimed invention obvious. I added a paragraph regarding the Federal Circuit's TSM test to provide some background on the issue. A detailed discussion of the issue can be found at http://www.patentlyo.com/patent/2006/08/ksr_v_teleflex_.html.

Smuckers peanut butter and jelly sandwich case

edit

The reference to the Smuckers case needs to be dated, not just labeled "recent". --Shawn K. Quinn 22:09, 30 October 2007 (UTC)Reply

Done (didn't notice at first that the reference had the dates in it). If I made mistakes let me know. --Shawn K. Quinn 22:14, 30 October 2007 (UTC)Reply

I removed the bit about the Smuckers patent being invalidated for being obvious. The article referenced did not make this claim. Albie's Foods' challenge was dismissed, see 170 F.Supp.2d 736, and Smuckers suit against Albie's Foods was dismissed without prejudice, see 5:01 CV 1182 (Ohio). --The Empiricist (talk) 02:49, 4 January 2008 (UTC)Reply

I did a little more research on this. There was news about the the court rejecting a related Smuckers patent application. Court reject's J.M. Smucker's PB&J patent. The Federal Circuit affirmed a Board of Patent Appeals and Interferences rejection of a claimed method of making the sealed PB&J sandwich. Ex parte LEN C. KRETCHMAN and DAVID GESKE. This did not invalidate the original patent on the food item itself, it just prevented Smuckers from obtaining additional claims that would have given it some additional protection were the original patent invalidated. Interestingly enough, the BPAI case discusses tarts, but not ravioli. --The Empiricist (talk) 05:42, 4 January 2008 (UTC)Reply

Poor article

edit

This is a very poor and amateurish article that does no credit to Wikiprdia. It needs an enormous amount of cleanup, Cn fixing, and putting into NPOV. It clearly has not been written by a person with familiarity with the subject it addresses. Will someone knowledgeable volunteer to improve this ardticle? PraeceptorIP (talk) 19:58, 1 October 2015 (UTC)Reply

edit

Hello fellow Wikipedians,

I have just modified 2 external links on Inventive step and non-obviousness. Please take a moment to review my edit. If you have any questions, or need the bot to ignore the links, or the page altogether, please visit this simple FaQ for additional information. I made the following changes:

When you have finished reviewing my changes, you may follow the instructions on the template below to fix any issues with the URLs.

This message was posted before February 2018. After February 2018, "External links modified" talk page sections are no longer generated or monitored by InternetArchiveBot. No special action is required regarding these talk page notices, other than regular verification using the archive tool instructions below. Editors have permission to delete these "External links modified" talk page sections if they want to de-clutter talk pages, but see the RfC before doing mass systematic removals. This message is updated dynamically through the template {{source check}} (last update: 5 June 2024).

  • If you have discovered URLs which were erroneously considered dead by the bot, you can report them with this tool.
  • If you found an error with any archives or the URLs themselves, you can fix them with this tool.

Cheers.—InternetArchiveBot (Report bug) 22:32, 15 November 2017 (UTC)Reply

Split proposed

edit
The following discussion is closed. Please do not modify it. Subsequent comments should be made in a new section. A summary of the conclusions reached follows.
The result of this discussion was to split. Wgullyn (talk) 13:20, 30 January 2022 (UTC)Reply

The section about the U.S. is too long and detailed. It should be split IMHO. The new article could be named Non-obviousness in United States patent law. Any objections? --Edcolins (talk) 12:14, 30 March 2018 (UTC)Reply

I support the splitting. — Preceding unsigned comment added by Walter Tau (talkcontribs) 13:53, 19 June 2019 (UTC)Reply
Pinging @Edcolins: - It's been almost 4 years since this was proposed. Would you like to perform a split? I can if you don't want to. Wgullyn (talk) 21:47, 29 January 2022 (UTC)Reply
@Wgullyn: Thank you for your message. I am still in favour of the split. I would be more than happy if you do it. --Edcolins (talk) 09:41, 30 January 2022 (UTC)Reply
The discussion above is closed. Please do not modify it. Subsequent comments should be made on the appropriate discussion page. No further edits should be made to this discussion.