ABSTRACT
The requirement of nonobviousness, codified in 35 USC § 103, has been called ‘the ultimate condition of patentability’ because of its crucial function of keeping technically trivial inventions out of the patent system. The obviousness determination must be made based on the state of the invention’s field at a particular point in time – in the Patent Act’s current version, the date that the patent application was effectively filed with the US Patent and Trademark Office (‘PTO’).
However, in spite of the critical role of time in patent law and the danger that hindsight bias could distort § 103 analysis when patentability is evaluated long after the relevant date (as it usually is), the seminal Supreme Court obviousness opinion in Graham v John Deere said little about temporal considerations. Instead, Graham’s lasting contribution was to suggest that the § 103 inquiry is to be divided into two stages based on the source of the proffered evidence. The Court said that as an initial matter, the PTO or a court should look to pre-patent publications and other materials in the public domain and determine the differences between those disclosures and the patent claim at issue …
Karshtedt, Dmitry, Nonobviousness: Before and After (April 6, 2021). 106 Iowa Law Review 1609 (2021), GWU Legal Studies Research Paper No 2021-25, GWU Law School Public Law Research Paper No 2021-25.
First posted 2021-07-09 10:00:58
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