[Patents] Legal definition of "non-obvious".

[ramon@jl1.quim.ucm.es (Ram'on Garc'ia Fern'andez)]

Hello, 

In the court's judgement of the case Lilly ICOS versus Pfezier of invalidating
of the Viagra patent

http://news.findlaw.com/cnn/docs/viagra/viagrapatent.html

we can find a legal definition of "non-obvious".

As soon as there is something minimally creative or original we have
something "non-obvious". This is the law.

Here is the relevant part:

    62. The question of obviousness has to be assessed through the
        eyes of the skilled but non-inventive man in the art. This is
        not a real person. He is a legal creation. He is supposed to
        offer an objective test of whether a particular development
        can be protected by a patent. He is deemed to have looked at
        and read publicly available documents and to know of public
        uses in the prior art. He understands all languages and
        dialects. He never misses the obvious nor stumbles on the
        inventive. He has no private idiosyncratic preferences or
        dislikes. He never thinks laterally. He differs from all real
        people in one or more of these characteristics. A real worker
        in the field may never look at a piece of prior art for
        example he may never look at the contents of a particular
        public library or he may be put off because it is in a
        language he does not know. But the notional addressee is taken
        to have done so. This is a reflection of part of the policy
        underlying the law of obviousness. Anything which is obvious
        over what is available to the public cannot subsequently be
        the subject of valid patent protection even if, in practice,
        few would have bothered looking through the prior art or would
        have found the particular items relied on. Patents are not
        granted for the discovery and wider dissemination of public
        material and what is obvious over it, but only for making new
        inventions. A worker who finds, is given or stumbles upon any
        piece of public prior art must realise that that art and
        anything obvious over it cannot be monopolised by him and he
        is reassured that it cannot be monopolised by anyone else.

    63. Of particular importance in this case, in view of the way that
        the issue has been developed by the parties, is the difference
        between the plodding unerring perceptiveness of all things
        obvious to the notional skilled man and the personal
        characteristics of real workers in the field. As noted above,
        the notional skilled man never misses the obvious nor sees the
        inventive. In this respect he is quite unlike most real
        people. The difference has a direct impact on the assessment
        of the evidence put before the court. If a genius in a field
        misses a particular development over a piece of prior art, it
        could be because he missed the obvious, as clever people
        sometimes do, or because it was inventive. Similarly credible
        evidence from him that he saw or would have seen the
        development may be attributable to the fact that it is obvious
        or that it was inventive and he is clever enough to have seen
        it. So evidence from him does not prove that the development
        is obvious or not. It may be valuable in that it will help the
        court to understand the technology and how it could or might
        lead to the development. Similarly evidence from an
        uninspiring worker in the field the he did think of a
        particular development does not prove obviousness either. He
        may just have had a rare moment of perceptiveness. This
        difference between the legal creation and the real worker in
        the field is particularly marked where there is more than one
        route to a desired goal. The hypothetical worker will see them
        all. A particular real individual at the time might
        not. Furthermore a real worker in the field might, as a result
        of personal training, experience or taste, favour one route
        more than another. Furthermore evidence from people in the art
        as to what they would or would not have done or thought if a
        particular piece of prior art had, contrary to the fact, been
        drawn to their attention at the priority date is, necessarily,
        more suspect. Caution must also be exercised where the
        evidence is being given by a worker who was not in the
        relevant field at the priority date but has tried to imagine
        what his reaction would have been had he been so.



Ramon