As briefly discussed in my recent article titled Obviousness & USPTO Guidance (click here), a couple of issues relating to prior art have been making news lately. The two prior art topics I’m referring to are (i) the analogous prior art test and (ii) the scope of permissible motivations to combine prior art references. In addition to the recent Guidance, an even more recent decision by the Court of Appeals for the Federal Circuit (CAFC) addresses how these prior art considerations impact obviousness determinations made in U.S. patents and patent applications. So, if obviousness is an issue with one of your issued patents, one of your pending patent applications, or one of your recently-conceived inventions – and I’m guessing that it is - then you may want to continue reading.

On February 27, 2024, the United States Patent and Trademark Office (USPTO) published another formal Guidance aimed at clarifying the determination of obviousness (or nonobviousness) for claimed inventions recited in patent applications. The Guidance focuses on the case law from the past fifteen (15) years in order to assist Examiners at the USPTO in making obviousness decisions in pending and future patent applications. Below is a summary of the highlights from the Guidance.

Have you ever hired a photographer to take a family portrait or capture the highlights of a wedding reception? Or maybe you paid a graphic designer to create a new logo for your business or new product line? Maybe you paid an artist to paint a pet portrait of your favorite dog or a musician to compose a song celebrating a loved one? Or maybe you hired a developer to build out and design your new website?

So, you have an idea for a new invention, and now you might be asking yourself, “Do I really need to spend money hiring a patent lawyer?” After many years of preparing, filing, and prosecuting hundreds of patent applications in the United States and abroad, I know there a many reasons why it does make sense to spend money on a patent lawyer to optimize the value and competitive advantage realized from your invention. But one reason in particular has applied to all but a handful of patent applications I have handled over the past three decades. That reason is the “obviousness” requirement for patentability (sometimes also appropriately called “nonobviousness,” but that doesn’t work so well in the title of this article).

So what exactly does a granted patent give its owner the right to do? The most common response to this question is that a granted patent gives its owner the right to make, use, and sell the patented invention. The most common response, however, is NOT accurate. In fact, it is a potentially costly misunderstanding of what a granted patent entitles its owner to do. If you were under the impression that a granted patent gives its owners the right to make, use, and sell the patented invention, you may want to read on.

So, you have an idea for an invention. And more than once you’ve thought to yourself, this could be the next BIG thing! And more than once, your next thought has been, yes, but someone or some company with more resources will see my idea, rip it off, and beat me to and/or in the marketplace.

You’ve probably heard someone refer to the “secret sauce” when talking about a new, improved product or process for making something. And you’ve probably also heard about the “secret formula” for the world-renowned soft-drink commonly known as Coca-Cola or just Coke.

You’ve probably wondered if you could get a registered trademark for a clever phrase you blurted out. Or maybe it was a memorable name for a new product or business or a logo, symbol, or design you created? These are the types of identifiers most of us usually think of as being something that can be protected as trademarks. Let’s call them the “traditional” types of trademarks.

Did you know that you may also be able to get a trademark protection for a variety of less “traditional” types of marks? It might to news to some that among the different types of registrable “non-traditional” trademarks are color and product shape and packaging? And unless you are an experienced trademark attorney or share a home with one, you probably don’t know that you can get a trademark registration for a smell, a sound, and motion as well.