QUESTION
Biomedical patent: conflict between showing utility using reasoning+existing literature and "non-obviousness"
Asked on Feb 21st, 2021 on Patents - California
More details to this question:
So I read that one does not need to use experiments done by oneself to patent a biomedical patent. Rather, the person can put together other people's published work and with scientific reasoning, arrive at a conclusion that leads to the new invention. So let's say I do exactly do that and check the utility part. But wouldn't that mean that it was obvious? If I could put together things existing in the literature, isn't that the typical patent objection under the "Y" category... where examiner says put two and two together, it's obvious it's four and thus it is not an invention? So I'm confused how the situation works that I can put existing literature together to claim an invention without inevitably making it obvious.
1 ANSWER
Patent Applications Filling and Prosecution Attorney serving Bellevue, WA
Partner at
Claiborne Patent Law Services
4 Awards
The standard for finding obviousness is "would a person of ordinary skill in the art, having the references before them, find it obvious to combine the references to create the claimed invention?"
Very few patented inventions are the result of totally novel discoveries. The vast majority are non-obvious combinations of things already existing in technology. The non-obvious combination may be a synthesis of findings from seemingly unrelated technological fields. Or the combination may be one that others before had thought would be inoperative. A determination of "obviousness" is a question of both fact and law.
Progress in technology depends more upon the combination of things that already exist by a person who is beyond the level of ordinary skill in the art, than it does upon truly novel discoveries.
Answered on Feb 22nd, 2021 at 7:10 AM