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Based on the information uncovered during the patent and prior art search, your patent counsel informs you that your invention
meets the statutory criterion for "novelty" because no exact matches have been found in the literature. The attorney must
now analyze the information to determine if your invention is rendered "obvious" in light of any of the identified art — i.e.,
is it an obvious variation of what is taught in any of the documents the attorney has uncovered, and if so, can your invention
still be patented, as it has provided "unexpected results"? This analysis involves a three-pronged factual inquiry to: (1)
determine the scope and content of the prior art, (2) compare the prior art and your proposed claims to determine whether
a patentable distinction has been made, and (3) make a comparison and determination, from the point of view of a person having
ordinary skill in the particular art as to whether the invention would be obvious (this criterion typically is defined by
the sophistication of the technology and industry being evaluated). Following the analysis, your patent attorney will render
an opinion as to whether any teachings illustrated or disclosed in any of the previous patents teach or render the invention
"obvious."
There may be other relevant issues to examine, called "secondary considerations." In many instances, these considerations
are important items of evidence that the invention was not obvious in nature, and they are often viewed as a fourth factual
inquiry. An exemplary list of these considerations includes:
- Long felt, but unsatisfied need for, the invention while the needed implementing arts and elements had long been available
- Commercial success of the invention causally related to the invention itself, rather than to companion factors such as advertising
- Copying of the patentee's invention by competitors, as distinguished from their independent development thereof
- Teaching by those skilled in the art, away from the technical direction pursued by the patentee
- The unexpectedness, to those skilled in the art, of the results of the invention
For purposes of this article, it is assumed that all of the relevant art has been found, and that no evidence was discovered
to suggest the value of switching to a methyl group to achieve similar pain relief without the associated negative effects.
Your patent attorney will likely conclude that this invention is not an "obvious" variation of the prior art.
However, was your initial question —"Do we have an invention?"— the right one? Did your question lead to the maximum amount
of information? The answer to your initial question will be "yes" or "no" and will include some amplification. While this
response has value, of equal or greater importance is the scope of protection that your patent attorney expects to be able
to secure. In other words is this an invention for which broad or narrow protection will be available? Such an analysis, while
difficult to make, is exceptionally helpful to any decision-maker and may influence whether the invention is maintained as
a trade secret or patented.
The Follow-Up Question: Now that I have the patent, am I able to use it?
Assuming your patent attorney was correct in concluding the invention is patentable, and you have just obtained your patent
from the US Patent and Trademark Office, are you free to use the teachings and protection contained in the patent and market
your product? While the answer intuitively seems to be "yes," reality unfortunately is quite different, and the initial answer
is "maybe." Let's see why.
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