Secondary consideration for Inventive Step: From an eye of a Patent Attorney
Any invention in term of either product or process, to be patentable, it should qualify the patent eligibility criteria or patentability criteria implies to patent law which is mainly
(i) Novelty (ii) Non-obviousness or Inventive step and (iii) Industrial Applicability.
The inventive step and non-obviousness are one of the most discussed or debated patentability requirement in most of the country’s patent laws. Non-obviousness or Inventive step can be explained as the invention under question, must not be a part of routine work or obvious to someone who is having the knowledge of the same field of invention. Compare to novelty which is easy to evaluate and decide, Inventive step is a subjective requirement and difficult to decide as it varies from one invention to another. There is no any cleat cut guideline to evaluate the inventive step and each invention to be evaluated differently considering different parameters.
From stringent test for Inventive step to more liberal, flexible and subjective approach, some non-technical facts appeared impactful in inventiveness inquiry. Instead of focusing on specifics of technological advancements, such as non-technical facts or secondary consideration or objective indicia of non-obviousness examines economic and motivational issues.
Many secondary considerations have been proposed by scholars and cited by courts.
The most common include
- Commercial success
- long-felt but unmet need
- Failure of others or copying of the invention by competitors
- Unexpected results
- Professional approval or scepticism by expert or praise by others
- Teaching away by others
- Recognition of a problem
In the theory of commercial success, if a product that is expected to be commercially successful was obvious to invent, then other competitors likely would have already developed it. If an inventor develops a product that is commercially successful, presumably competitors recognized the product’s potential for commercial success, attempted to develop a solution to the same problem, and failed. However, while considering this factor, the evidence must be relevant to the analysis. Commercial success might be because of packaging or advertising and not to the invention itself.
The rationale of long-felt but the unmet need is closely related to commercial success. The driving force for inventors is to formulate solutions to existing problems to satisfy marketplace demands. If the demand for a solution persists over time, despite this potential reward, the solution may be assumed to be nonobvious.
Suppose, a problem exists in the market and there is a demand to resolve that problem to satisfy marketplace demands, presumably others recognized and attempted to develop a solution to the same problem, and failed. Thus the solution employed by the inventor to achieve success must be nonobvious. If it is obvious, others would have succeeded.
In the field of Pharmaceutical and chemistry, an unexpected result is an important secondary consideration. The rationale behind this consideration is if the invention, the probable or anticipated result of an experiment is likely to be embodied in an obvious invention.
Professional approval by an expert of the invention being revolutionary or as answering a long-felt need as well as surprise or doubt of competitor to whether the invention was possible can be constructed as evidence to Inventive step. Evidence of unexpected results is likely to be an indicator of Inventive step.
