Patent drafting is a delicate art and science. One of the most common hurdles inventors and patent practitioners face is overcoming objections related to obviousness or lack of inventiveness. These objections arise when the patent examiner believes that the claimed invention does not involve a sufficient “inventive step” over the existing prior art.
What is an inventive step?
Inventive step (or non-obviousness) is a fundamental requirement for patentability in most jurisdictions. It means that the claimed invention must not be obvious to a person skilled in the art, given the state of the prior art at the time the invention was made.
Legal Tests for Non-Obviousness
Different jurisdictions use specific criteria to evaluate inventive step:
- United States (35 U.S.C. § 103): Requires that the invention would not have been obvious to a skilled artisan in light of the prior art.
- Europe (EPC, Article 56): Assesses if the invention involves a step that is not obvious to a skilled person.
- India (Section 2(1)(ja) of the Patents Act 1960): Requires a technical advance or an economic significance beyond prior art.
Common Scenarios Indicating Obviousness
- Simple substitution of one known element for another.
- Combining two known techniques or elements without any surprising technical effect.
- Routine optimization of parameters (e.g., temperature or proportions) without any inventive contribution.
Strategies to Overcome Obviousness and Non-Inventiveness in Patent drafting
1. Comprehensive Prior Art Search
- Conduct a detailed search of prior art to identify potential overlaps and similarities.
- Compare the claimed invention with the prior art to highlight differences, particularly in structure, function, or technical effect.
2. Highlight Unexpected Technical Advantages
- Emphasize the unexpected results or advantages that the invention provides compared to prior art.
- Use experimental data or specific examples that show how the invention solves a long-standing problem or provides an improvement.
Example: If a composition has enhanced durability, provide experimental comparisons with prior compositions.
3. Focus on Specific Technical Features
- Draft claims that emphasize unique, non-generic technical features of the invention.
- Highlight specific parameters, configurations, or process steps that distinguish the invention.
Example: Instead of claiming “a method for data compression,” claim “a method for data compression using [specific algorithm or process] with defined thresholds that achieve a [specific benefit].”
4. Demonstrate a Synergistic Effect
- If the invention combines known elements, show how the combination produces a synergistic result that exceeds the sum of individual parts.
- Explain why a person skilled in the art would not have combined those elements in the same way.
Example: A chemical composition that performs better than any single ingredient would suggest.
5. Address the Problem-Solution Approach
- Clearly define the problem the invention solves and explain why existing solutions are insufficient.
- Frame the invention as a non-obvious improvement over prior art using this problem-solution framework.
Example: “While the prior art achieves X, it fails to address Y. The claimed invention addresses Y in a novel and non-obvious way.”
6. Avoid Common Knowledge Assumptions
- Avoid claims that could be seen as an obvious application of general knowledge.
- Justify why the specific application or adaptation is inventive.
Example: Explain why adapting an existing material for a new use was not obvious or why a skilled person would not have made that leap.
7. Include Multiple Embodiments
- Draft the patent to include alternative embodiments or variations that highlight inventive aspects in different contexts.
- This broadens the scope while reinforcing the inventive concept.
8. Use Strong Technical Language
- Avoid vague or broad terms like “novel,” “better,” or “improved” without context.
- Provide precise and detailed descriptions of how the invention operates and achieves its goals.
9. Address Potential Examiner Arguments Pre-emptively
- Anticipate potential rejections based on obviousness and provide rebuttals in the specification.
- Include examples, experimental data, or theoretical explanations to pre-emptively address concerns.
10. Consult with Inventors for Insights
- Work closely with inventors to uncover nuances in the invention that may not be immediately apparent.
- Use their insights to articulate why the invention is a departure from the prior art.
Conclusion – Overcoming obviousness and non-inventiveness in patent drafting
By applying these strategies, you can strengthen the inventive aspects of your patent application and improve its chances of overcoming objections related to obviousness.
Would you like assistance drafting claims or reviewing a specific case? Please feel free to approach Videaim IP. Let’s connect to turn your innovation into a strong IP asset!
Learn more about Prior Art here – WHAT IS PRIOR ART SEARCH OR PATENT SEARCH?
Learn more about Patent Drafting – How to write a patent – Guidelines on Patent Drafting [Mechanical]