Patent Law

Non-Obvious Claiming; Obvious?

By Gary Odom and Jordan Kuhn

Arguably the best-known bit of patent law: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C §101. Also, lamentably, commonly ignored during claims drafting.

If you know anything about patents, you know that a person is granted the right to a patent for inventing something new. Yet, many prosecutors, supposed patent experts, continue to file claims that are easily shown to be non-novel or obvious over the prior art cited in the background of their own application. Their inventor client may very well have a novel and innovative idea, yet it is not sufficiently portrayed in the claim language. For some reason, after writing a lengthy specification, prosecutors lose sight of the inventive novelty, completely erase from memory discovered prior art, and draft claims that are as broad and non-novel as possible.

But don't fret, if you've truly invented the greatest thing since sliced bread, or even just an innovative method for conversing with foliage, drafting novel non-obvious claims is as simple as dancing the two-step -

Step 1: Identify at least one novel non-obvious feature of your invention.
Step 2: Recite the novel non-obvious feature(s) in each of your independent claims.

I hope you dance. If you need a partner, contact Platinum Patents. Because we also kill patents for a living, we know how to fortify them for life.

Full post as published by The Patent Prospector on January 23, 2009 (boomark / email).