President Obama initiated his new Strategy for American Innovation to create sustainable growth and quality jobs, restore American leadership in fundamental research and harness technology that will address the "grand challenges" of the 21st century. The strategy calls for the United States Patent and Trademark Office (USPTO) to "issue high-quality patents on innovative intellectual property, while rejecting claims that do not merit patent protection."

Those of us who work with patents should be encouraged by the President's endorsement of our efforts to promote "the inherent ingenuity of the American people." We should also find it especially timely to review the objective distinctions between quality inventions and those that do not merit patent protection.

Patentability of Inventions

To be patentable, an invention must be useful, novel, and not obvious. Inventions are denied patentability most often for being obvious, even if they are both useful and novel. Specifically, under Section 103 of the United States Patent Act, an invention is not patentable if "...it would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains."

Inventors and patent attorneys sometimes complain that examiners at the USPTO think everything is obvious. Even Albert Einstein, as a former examiner at the Swiss Patent Office, frequently used the term "obviously" in Relativity, The Special And General Theory. But as we look back in hindsight to the early twentieth century, we know that whatever was obvious to Professor Einstein was not so obvious to anyone else at the time. Inventors currently applying for patents might well ask "obvious to whom?" and "obvious when?" We thus need an objective analysis for obviousness under Section 103 of the Patent Act.

According to the Supreme Court of the United States, we have just such an analysis. The Supreme Court requires each application of Section 103 to determine 1) the content of the prior art, 2) the differences between the prior art and the claimed invention, and 3) the level of ordinary skill in the art. Secondary considerations of commercial success, long felt but unsolved need, and failure of others might also apply. These are known as the Graham factors. "Against this background the obviousness or nonobviousness of the subject matter is determined." Graham v. John Deere of Kansas City, 383 U.S. 1, 17-18 (1966). According to a more recent Supreme Court decision, the Graham factors "continue to define the inquiry that controls," and "[t]he analysis is objective." KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

Content of the Prior Art

The prior art is nearly always found in patents and other publications, so its content is typically not in dispute. However, the question of "obvious when?" can sometimes arise in this context. This is because Section 103 applies "at the time the invention was made."

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