11

I understand the primary goal for AskPatents is to crowdsource the discovery of prior art. I think it's brilliant.

However, there will still be a lot of patents that will not be invalidated by prior art because the patent lawyers are very good at drawing up limits to the claims just to avoid the very issue of prior art.

So, having said that, will it be proper to respond to questions about patents with arguments attempting to persuade the USPTO examiners that the claims are obvious to those with ordinary skill in the related art (us)?

Update: I did find this example of a "good question" in the FAQ: “How is US493841. not an obvious improvement upon US3306512?”. Should I just hang my hat on that?

1
  • 1
    I was just about to post the same question but before I could type in my search this was the most recent question. This strikes me a hugely important since prior art and obviousness seem to be the biggest problems in patents that shouldn't have been granted, and the focus seems so heavily on prior art (presumably because it's somewhat more objective). – psr Sep 20 '12 at 17:22
6

YES.

Technically, the America Invents Act requires the USPTO to accept and review submissions of prior art from the public. Other things which might invalidate a patent application, such as obviousness or lack of usefulness, are not covered by this law.

That said, (and this is a really important point so pay attention), there is no requirement that submissions of potential prior art necessarily be very good, and there is no limitation on what can be included in such a submission.

So, for example, if someone was trying to patent something obvious, you could submit some potential prior art (which might or might not be valid) and also add an explanation for why you thought that the patent was really obvious, and you would have a reasonable degree of certainty that the patent examiner would be aware of that. If you made a good case for obviousness, that patent examiner could certainly take it into account in deciding how to act on the patent application.

So, essentially, as long as there is a fig-leaf of prior art in the submission, you can sneak in a payload of obviousness with a high probability that the examiner will become aware of it.

THUS, you should certainly document cases of obviousness as meticulously as possible on AskPatents.com, but look for prior art, too (which should exist if something is truly obvious).

Also please bear in mind that in the world of patents, "obvious" has a somewhat technical meaning and there are specific ways that the USPTO uses to determine obviousness.

3
  • 2
    A good starting point on obvious: en.wikipedia.org/wiki/Inventive_step_and_non-obviousness. In a specific US context then I would suggest that "objective evidence for obviousness" would be some combination of commercial failure, evidence that the needs this invention meets are well met elsewhere with other similar products, and that other products in the space have been produced with no patent implications. (I am trying to invert the Supreme courts tests - badly I suspect) – you cad sir - take that Sep 20 '12 at 20:04
  • 1
    I think "prior art" has been used here as a short hand for The term "Prior art" doesn't mean only things that anticipate a claim under section 102. It means everything that is valid to look in doing a patent examination. – George White Jan 17 '13 at 6:51
  • 1
    Also - Needs being met by other products or the patent implications of other products have nothing to do with obviousness. To show obviousness an examiner finds something with most elements of a claim and then finds the remaining elements of the claim in one or more other references. And then logic as to why they would be put together to solve the prob. – George White Jan 17 '13 at 7:19

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .