navigating the patent maze

Nonobviousness of an invention is one of the requirements for patentability.  It is perhaps one of the most difficult concepts of patent law for scientists to comprehend.  Part of the difficulty is that the legal definition of "nonobvious" is at variance with common usage in science and in everyday life.  Probably the most criticism of the patent system by scientists is leveled at what appears to be a lax standard for nonobvious.  Of course, some patent lawyers, companies and judges also think the standard is too lax.  The difference in arguments between scientists and others mostly reflects discrepancies in understanding the legal definition and its application by the Patent Office and by Courts. 

It requires a very unusual mind to undertake the analysis of the obvious.
- Alfred North Whitehead

Before discussing the legal viewpoint of nonobvious, I’d like to illustrate a variety of ways that "obvious" is used by scientists.  In freshman physics class, we were introduced to the Feynman concept of something that was "trivially obvious to the most casual of observers".  It was clear that I was not cut out to be a physicist because rarely were these things trivially obvious to me!   As a phrase however, it denotes the lowest form of obviousness. 

Probably the most common way scientists use the word is in describing the experiment that follows from a set of results as the obvious next step.  So from a set of basic facts or observations new theories, models, or experiments are devised and are said to be obvious.  Several examples taken directly from abstracts in PubMed can be found in this post’s continuation page.  In each of these examples the author has characterized their experiment as obvious to do.  Unfortunately, as will be discussed in a future post, these uses of the word "obvious", while innocently said and in a scientific context, can be deadly if the author is trying to obtain a patent. 

Hindsight renders most ideas "obvious".  Anyone that has ever had an "AHA!" moment, whether in science or elsewhere, often views the idea as obvious - and may express the concern that someone else (or everyone else) will think of it too. 

That’s the way things come clear. All of a sudden. And then you realize how obvious they’ve been all along. - Madeleine L’Engle in "The Arm of the Starfish"

A prime example is the inventor that came into my office one day to tell me of an idea he had thought of - several years earlier!  Why did he wait so long?  Because he concluded that his breakthrough was obvious, and so others would think of it too.  But as time went on and no one proposed a similar idea, he started to realize that maybe it wasn’t so obvious.  DUH!

Example 1

Analysis of blood samples from patients suffering from autoimmune
diseases remains a mainstay in the clinic for initial diagnosis,
prognostication, and clinical decision making. In particular, testing
for the presence of serum autoantibodies has proved to be one of the
most useful confirmatory assays for many different diseases. Recent
genomic and transcript profiling studies have implicated certain
cytokines, surface receptors, signaling pathways, and cell types in the
pathogenesis of inflammatory diseases. The next obvious step is to
delve into the much more complex level that follows the genome and
transcriptome-the expressed proteome.

Example 2:

Despite effectiveness of standard chemotherapy regimens, complete
responses are infrequent in Waldenstrom’s macroglobulinemia (WM) and
there are no cures. Since WM shares certain biological and clinical
features with myeloma, including responsiveness to alkylating agents,
evaluation of high-dose therapy (HDT) with transplant, which is
effective in myeloma, is an obvious next step in an effort to achieve
high response rates and improve survival.

Example 3:

Given the potential power of transgenic and knock-out procedures for
investigating the genetic and molecular bases of learning and memory in
laboratory rodents, not to mention the wealth of knowledge about the
neuroanatomy and neurophysiology of the rodent hippocampus (a brain
area heavily implicated in episodic memory), an obvious next step is to
develop a rodent model of episodic-like memory based on the
food-storing bird paradigm.