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

[lachlanjames@innovationcapital.net (Lachlan S. James)]

At 01:11 AM 05/23/2001 +0200, Ram'on Garc'ia Fern'andez wrote:
>In ... Lilly ICOS v Pfezier ...
...
>we can find a legal definition of "non-obvious".

Is it really a "definition" of what is "non-obvious"?  A definition 
typically involves a list or description of the essential integers or 
qualities which distinguish one thing from another.  The excerpt you refer 
to may indeed provide a definition of the hypothetical skilled worker, 
his/her qualities, characteristics, propensities, etc.; but a definition of 
"non-obviousness"?

A definition of what is non-obvious in the eyes of the court might (off the 
top of my head) be something like 'that which the hypothetical worker of 
the relevant field, devoid whatsoever of any imagination and inventive 
capacity though infinitely knowledgeable of and versed in the prior art and 
the common knowledge of the relevant field, could never have produced.'

Accordingly, as it is not conclusive of the issue of obviousness whether I, 
the judge, experts in the field, or anyone mere mortal personally finds the 
product or process obvious/non-obvious, the issue is not subjective but 
objective (NB: my opinion, the judges, etc., may be determinative of the 
issue, but is never conclusive).  But such a definition merely moves the 
question of what is/is not obvious into the mind of this hypothetical 
worker; it does not help us much at all.  Accordingly, if thought of in a 
purely legalistic manner, obviousness has been, and remains, a vague and 
amorphous concept.  As Chief Judge Learned Hand commented:

"[The issue of obviousness] is as fugitive, impalpable, wayward, and vague 
a phantom as exists in the whole paraphernalia of legal concepts ... If 
there be an issue more troublesome ... than this, we are not aware of it."

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

Fundamentally, the function of the patent system is to promote the 
perceived socially beneficial end of disclosing to the public additions to 
the 'stock of human knowledge'.  It does this by providing, in return for 
disclosure, a limited monopoly.  What are indeed additions to knowledge is 
difficult enough; to begin to require a further hurdle of a particular 
quantum of addition before patentability is grounded is profoundly more 
complicated and would rarely (if ever) be resolved to anyones 
satisfaction.  Therefore, the issue of non-obviousness is fulfilled if the 
court is satisfied that there is at least a "scintilla of inventiveness" 
(insert "non-obviousness" depending on which jurisdiction your in).

Accordingly, the structure of the patent system is meant to deny 
proprietary rights being granted over the public domain of the pre-existing 
intellectual commons.

Lachlan

ps.  As a suggestion, I would proffer the following "definition":

"A product or process is non-obvious IF, relative to the underlying prior 
art, it represents or embodies a novel association between previously 
disparate concepts."

This definition/test would involve:
(1) notionally dismantling the product/process into its constituent 
concepts and creating a conceptual map therefrom (ie. linking the various 
concepts as per the product/process); and
(2) trying to find all these conceptual linkages in the prior art.
If the product/process embodies a conceptual link absent from the prior 
art, the product/process has added to the prior art, and is therefore 
non-obvious.

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