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Question from

How can someone get a patent on a system of off-the-shelf components such as this patent utilizes

Hypothetical Example

Is that patent-able? I understand it is highly dependent on system versus method, but both of those exist in the wild, but I do not see them used together as described in the process above?

Process of whether to patent components together/combination (Correct if Wrong)

  1. Is it novel?
    • i.e., has the particular combination of components in your claimed invention been described, sold, or used before you filed your application?
  2. Is it non-obvious from a legal perspective?
    • i.e., would a person with normal skills in this particular field, knowing everything that has ever been done before in this field, have a good reason for putting together the components to come up with your claimed invention
  3. Is it useful?

Source: Dan Homiller, patent attorney

Argument

If someone has a system or method claim on how to do something, which currently has not existed because of multitude of reasons, how is that not relevant to patentability?

  • Why should it be? Are you assuming that if something is easy to implement it can't be novel? – Eric Shain Oct 1 '17 at 16:54
  • @EricShain 'One of the main requirements of patentability is that the invention being patented is not obvious, meaning that a “person having ordinary skill in the art” would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.' How is something novel if a “person having ordinary skill in the art" would be able to do so? Source – Ted Taylor of Life Oct 1 '17 at 17:01
  • @EricShain "Are you assuming that if something is easy to implement it can't be novel? " "A person having ordinary skill in the art is a legal fiction defined in the Patent Act of the United States. The PHOSITA is a test of "obviousness" which is one of the largest gray areas in patent law." My point is that if someone has a system or method claim on how to do something, which currently has not existed because of a multitude of reasons( cost/feasability etc), how is that not relevant to patentability? – Ted Taylor of Life Oct 1 '17 at 17:06
  • Easy to implement and obvious are not the same thing. I would say many inventions are easy to implement once the inventor shows you how to do it. – Eric Shain Oct 1 '17 at 17:07
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    Not a problem. I was hoping Maca would answer but DonQuiKongs answer is a good one. – Eric Shain Oct 11 '17 at 15:43
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+50

There are a few aspects to the non-oviousness (US) / inventive step (EU) requirement.

You're asking why the difficulty of implementation is not relevant to patentability. I take it that your question is about the difficulty of inventing the invention (the invention that is to be patented), not about actually implementing it afterwards. However, the premise is not exactly correct. First, we should clearly parse between theory and (case) law.

In theory, non-obviousness and inventive step are the burden of not only providing a new combination of known objects/steps/whatever, but doing so in an inventive manner. That means, that a person skilled in the field(s) of the invention would not reach this invention if confronted with the problem, without acting "inventive". In other words, a person merely using the known skills and products would not necessarily arrive at the invention. The necessarily is important, because it doesn't matter if the person skilled in the art could arrive at the solution, but rather if they would.

If the person skilled in the art would not necessarily find the solution, it is considered inventive. The wikipedia page (section "rationale" and "Controversies and alternatives") provides some theoretical discussion and research for the question if that's enough, however it seems to be a little anti-patent-system, so I wouldn't say it's completly unbiased.

In the EU patent law, this has led to the problem solution approach, which I cite from the same wikipedia page:

Problem-solution approach

The Examining Divisions, the Opposition Divisions, and the Boards of Appeal of the EPO almost always apply the "problem-solution approach" in order to assess and decide whether an invention involves an inventive step. The approach consists in:

  • identifying the closest prior art, the most relevant prior art, or at least a realistic starting point;

  • determining the objective technical problem, that is, determining, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and

  • examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

This last step is conducted according to the "could-would approach". Pursuant to this approach, the question to address in order to assess whether the invention involves an inventive step is the following (the question is the climax of the problem-solution approach):

Is there any teaching in the prior art, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination. Problem inventions

"The discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious." However, "[t]he appreciation of a technical problem could thus only contribute to the inventive step in very exceptional circumstances."[19]

For a discussion of the inventive step test for "software patents" and "computer-implemented inventions" under the EPO case law, see also "Inventive step test" section in Software patents under the EPC. Combination inventions

Since most inventions comprise a combination of know features, European Patent Convention establishes specials rules regarding the inventive step requirement for such combinations. Briefly, in such cases involving "any combination of features having known advantages (and disadvantages) is obvious unless it provides an unexpected effect."2 For example, "in the absence of any unexpected effect, the mere substitution of an element by another known for its relevant properties to provide that known effect could not be regarded as patentable." http://www.epo.org/law-practice/legal-texts/html/caselaw/2013/e/clr_i_d_9_6.htm "It was said to be obvious to try to solve the individual problems as long as the corresponding solutions were "merely aggregated together" in the claim."http://www.epo.org/law-practice/legal-texts/html/caselaw/2013/e/clr_i_d_9_7.htm

The quote provides some more readings, especially to the question of what is considered inventive for combinations of known stuff.

There are other secondary indicators for inventivess, namely

  • Predictable disadvantage; non‑functional modification; arbitrary choice

  • Unexpected technical effect; bonus effect

  • Long‑felt need; commercial success.

As you can see, the "difficulty" is part of the inventive step. Or rather, it comes down to a binary decision - was something "easy", meaning someone skilled in the art would have had to find it if prompted with the objective technical problem, or was it "difficult", meaning the person skilled in the art would have to invent a solution and might arrive at a different one or not at all? If I tell you to turn the screwdriver to get the screw into the wall, without telling you in which direction, it's still obvious that it's either right or left, so you have to come to the conclusion that it's right after trying left. However, if I gave you a Hammer and you invented the nail, that wasn't obvious, because you could have used it to bash in my head, to pick your teeth or anything. (Bad example, I know, but I'm trying to brake it down).

For the US, let's say, they have some problems with defining their non-obviousness. If you read the rest of the wikipedia article, at the moment they combine something close to the EU definition with a question of combining elements in a predictable manner which yields obviousness. So without knowing the problem, if your solution could have been predicted to yield the result it did by knowing the prior art, it is obvious (very short, not complete explanation).

Citing wikipedia as to what is obvious in the US:

  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known technique to improve similar devices (methods, or products) in the same way;
  4. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
  5. "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
  6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
  7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

But still, and I think this might be the answer to your question, but the rest was necessary for explaining anyways, if you combine something and the result is unexpected (meaning the prior art doesn't hint that the result would be as it is) and it wasn't the obvious thing to try, it does not matter how easy it is to try. Selecting, even by luck, a good solution from an infinite number of possible solutions is, per definition, inventive. Either in the EU (secondary indicators cited above) or the US (one of the 7 points in the wikipedia page). This is the difference between an ex post facto and an ex ante analysis. It's a nice little latin phrase, but it just means that an invention, to be obvious, has to be obvious before knowing it. If I'm standing on a big Island and ask a hundred persons to dig for a gold treasure and one of them finds it, ex post it's obvious where it was - where he digged, but ex ante it was almost impossible to find and if the person that did thought of something the others didn't and saw some kind of different growing grass patern and therefore found the treasure, that was inventive (well, another bad example, but I think it makes my point).

In summary however, there is no one "obviousness" or "inventiveness". They definition is subject to change with every case that is decided and from patent examiner to patent examiner. It's not a line, it's a big grey region. Which explains why some patents are granted, that never should have been and maybe later revoked. or why the supreme court seems to change the definition every other decade.

There's a lot more of literature around this topic and a lot of case law. If your interested, follow the links behind the links I provided and you'll find some of it. It's not possible to give a complete analysis of inventiveness, but I think a good summary would be to say that an invention should be conceivable only by doing something which not everyone would do that way. In practice, sometimes examiners rely too much on prior art to prove non-obviousness, because they have to establish a case with what they have and cannot just say "ah but that's obviously obvious". But that's, especially in the US, a bug in the implementation which is beeing fixed bit by bit as you can see from the recent and not so recent supreme court decisions.

  • Bravo! You sir are well read. I am extremely impressed at how well you answered. This quote stands out to me I think a good summary would be to say that an invention should be conceivable only by doing something which not everyone would do that way. In practice, sometimes examiners rely too much on prior art to prove non-obviousness, because they have to establish a case with what they have and cannot just say "ah but that's obviously obvious". The hilarious thing is so on point, I do not know what to say. You clearly know what you are doing. Any other resources you can suggest? – Ted Taylor of Life Oct 11 '17 at 13:47
  • @TedTaylorofLife thanks. I think for a deeper understanding you could either search for patent law history and theory to see how different people theoretizise how it should be (practical relevance rather low) or start digging into case law. EPO has pretty good resources with case law from the board of appeals (epo.org/law-practice/legal-texts/html/caselaw/2016/e/…). I don't know a similarly good source for the US. The mpep uspto.gov/web/offices/pac/mpep/s2141.html is always a good start, but the case law apart from the KSR decision, is rather little. – DonQuiKong Oct 11 '17 at 15:19
  • Maybe starting with KSR google will turn up some blog posts which might mention other intersting sources, but it starts getting fuzzy from there on. – DonQuiKong Oct 11 '17 at 15:23
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Why is ease or difficulty of implementation, in general, NOT relevant to patentablity?

I think what Maca was getting at in his comment on the original linked question is that the fact that an invention is easy or hard to implement is not invalidating to its patentability. To illustrate lets consider a couple of hypothetical inventions. The transistor is one of the seminal inventions of the 20th century. Lets say someone invents a bacterial based transistor. Now it might be hideously difficult to execute, but it would be novel, non-obvious and probably useful. Thus it is and should be patentable. On the other hand we have graphene. A true wonder material. Lets say another person (I wish it were me) invents a new way of fabricating graphene which is faster and less costly than current methods. You might argue it is easier than the current approach but again, so long as it is novel, non-obvious and useful it is patentable. An invention does not have to be practical to be patented.

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In general, the end result of creative effort determines whether or not a patent is granted. Not the simplicity or complexity of the creativity that goes into the effort. There's a quote in Wikipedia under Inventive Step and Non-Obviousness that attempts to account for this "The non-obviousness bar, hence, is a measure of what we, as a society, accept as a valuable discovery." - [Mojibi, A. (2010). "AN EMPIRICAL STUDY OF THE EFFECT OF KSR V. TELEFLEX ON THE FEDERAL CIRCUIT's PATENT VALIDITY JURISPRUDENCE " Albany Law Journal of Science and Technology 20(3): 559-596]. Citation copied from source. Substituting parts to achieve a result that is not new is not enough to meet the minimum bar for a patent although the combination in the above example is quite unique. On the other hand, if by change the above combination resulted in a "valuable discovery", then congratulations. Chances are good that a patent would be granted even though it is a simple combination of parts.

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