Test For Determining Invention PDF Download

Pharmaceutical and other high tech science industries require patent protection to justify the risks of expensive research. Without protection a copycat could bring the same product to market without the expense of research, enabling them to undercut price. This might benefit the consumer in the short term with lower prices, but it will destroy incentives to innovate. Ultimately this would lead to no new pharmaceutical and other research-intensive products. There is a delicate balance between allowing patent protection for something truly innovative and denying if for a pedestrian advancement. It is the patentability standard of obviousness, where the proposed invention would have been obvious to a person of ordinary skill in the art, that controls this balance. The difficulty for courts in determining obviousness, and thus patentability, is hindsight bias. When someone already knows how an invention works it is all too easy to consider it obvious, yet before learning about the invention, the same person would not have been able to envision the invention. The Supreme Court in KSR recently revived an approach to determining obviousness through a test known as “obvious to try.” The “obvious to try” test attempts to determine whether the approach to create the invention would have been obvious to try by a person of ordinary skill. The danger with the “obvious to try” test is that it is especially susceptible to hindsight bias because it uses the inventor's own reasoned approach to solve a problem against him. The effect of extensive use of the “obvious to try” test will be to deny patent protection for logically guided research, while rewarding patent protection for inventions obtained through irrational behavior or luck. This will upset the balance of patent protection for innovative inventions by denying protection to those inventions derived though good research, and lead to a decline in new research-intensive products. Consequently, there must be a reasonable factor to rebut obviousness found through the “obvious to try” test. This factor should be significant unexpected results of the invention, because if a result is truly unexpected, then the invention could not have been obvious.