When is an invention obvious and not patentable?

A patent is a set of exclusive rights granted by a government to the inventor of an invention, when the invention meets certain criteria. In the United States, a patent is granted when an inventor files a patent application which demonstrates the invention is new, useful and not obvious. The United States Patent and Trademark Office reviews patent applications and grants patents to inventors whose inventions meet the retirements.

The requirements that an invention be new, useful and not obvious, are more complex than they appear. Like many phrases in law, years of court rulings have changed the meaning of these words from their dictionary definitions to very specific meanings which are sometimes counter intuitive. The phrase not obvious has been given a special meaning unique to patent law which is worth learning in detail. The reason that obviousness has been given such a detailed definition in patent law is because it is human nature to use hindsight. It is easy to use hindsight to say that an invention from the past is obvious, but hindsight is not an objective standard. To eliminate hindsight from the analysis the obviousness inquiry has been given an objective test.

Whether or not an invention is obvious is a question of law based on underlying facts. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1358 (Fed. Cir. 2017). The obviousness inquiry requires consideration of the four Graham factors: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective considerations of nonobviousness. Prior art is information that has been made available to the public in any form.

A case which illustrates how courts determine whether an invention is obvious is LIQUIDPOWER SPECIALTY PRODUCTS v. BAKER HUGHES, 2018-1141 (C.A.F.C. 2018). This case revolves around a patent on chemicals added to oil so that the oil flows through pipelines easier. Liquidpower had a patent on adding certain polymers to very thick types of oil, which makes made it easier to get the oil to flow through pipelines. Baker Hughes petitioned the United States Patent and Trademark Office for inter partes review to get some of the patent claims invalidated. Baker Hughes cited three different pieces of prior art, to argue that Liquidpower’s patent was obvious. The Patent Trial and Appeal Board reviewed the first three Graham factors, found that Liquidpower’s patent was obvious based on the three pieces of prior art and invalidated the patent. The Patent Trial and Appeal Board refused to consider Liquidpower’s evidence for the fourth Graham factor. Liquidpower appealed the Patent Trial and Appeal Board’s decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit affirmed the Patent Trial and Appeal Board’s holding for the first three Graham factors, but disagreed with the Patent Trial and Appeal Board’s decision to not consider Liquidpower’s evidence for the fourth Graham factor. “The objective indicia of non-obviousness play an important role as a guard against the statutorily proscribed hindsight reasoning in the obviousness analysis.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). The Federal Circuit held that as one of the four Graham factors, objective indicia must be considered.

The Federal Circuit remanded case to the Patent Trial and Appeal Board to reconsider the case with objective evidence of nonobviousness.

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