Utility, Novelty, Statutory Bar, & Nonobviousness
The language in §101 permitting for patents of “new and useful” inventions means that in order to be patentable, an invention must have two elements: (i) utility, (ii) novelty. §102 goes on to define novelty, and §103 imposes a third required element: nonobviousness.
We can think of the utility requirement as one which demands the proper response to three questions:
The last of these questions seems to have become irrelevant in recent years, and so long as the patent serves some legal utility, this requirement is met. See Hornbook at 316-317. The other questions, however, remain at the heart of the utility requirement. Unfortunately, the answers to these questions are not self-evident in some cases.
Take for example the case of the Juicy Whip “post-mix beverage dispenser” and the alleged infringement on its patent by Orange Bang, Inc. A “post-mix beverage dispenser,” apparently, is what is used to make fountain drinks at a bar. That is, water and soda syrup are stored in separate tanks and mixed as they are dispensed. “Pre-mix” beverage dispensers contain the final product already prepared in a single tank, usually on display for the customer, thereby supposedly enticing purchasers. Post-mix dispensers, however, can hold less soda and are prone to bacterial growth.
The patent at issue was for “a post-mix beverage dispenser that is designed to look like a pre-mix beverage dispenser [and] simulates the appearance of the dispensed beverage and is resistant to bacterial growth.” Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1365 (Fed. Cir. 1999).
In defending the infringement suit, Orange Bang claimed that the patent held by Juicy Whip was invalid, as the invention lacked utility. The lower court agreed that “the invention lacked utility because its purpose was to increase sales by deception, i.e., through imitation of another product.” Juicy Whip at 1366. However, holding that the “threshold of utility is not high,” and that to lack utility “the claimed device must be totally incapable of achieving a useful result,” the Federal Circuit Court found that the Juicy Whip invention met the utility requirement of §101. Juicy Whip at 1366 (citations omitted).
So, following Juicy Whip, as long as an invention actually does something, it satisfies the utility requirement. The fact that the invention in Juicy Whip was meant to deceive did not excessively trouble the court, as the deception was not itself illegal, but merely had the capacity to fool the public.
While the utility requirement for patentability is not difficult to meet, the novelty requirement is central to the concept of patents. In order to receive a patent, an invention must be new. After all, would we call something an invention if it were not new?
Example: Joe “invents” a cup holder for cars which can be held in place by a rolled-up car window. Joe’s cup holder is identical to one already on the market. In this case, it would be odd to say that Joe has “invented” anything at all; Joe’s cup holder is nothing new.
Although the novelty requirement derives from §101, we must look to §102 in order to give context to the requirement.
In short, (i) a patent, (ii) a patent application, or (iii) an invention in use or known of in the United States, which pre-dates the applicant’s invention, prevents the applicant from meeting the novelty requirement.
Returning to Joe’s cup holder – if an identical cup holder has already been patented in a foreign country, Joe’s product is not novel. If an identical item was described in an Italian magazine 6 months prior to Joe’s creation, Joe’s product is not novel. Of course, this is in addition to the cup holders already being sold in the U.S. (being used) which also prevent Joe’s product from meeting the novelty requirement.
The three statutory bars to patents are found in §102(b)–(d). Each of these is designed to punish stragglers. §102(b) gives us the most important of the statutory bars, and prevents a patent from being issued if:
The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.
It is easy to confuse the §102 statutory bars with the novelty requirement, but the difference lies in our perspective.
The novelty requirement, as noted above, centers on the state of affairs prior to invention. If certain conditions exist before Joe invents his cup holder, his creation will not be novel and therefore cannot be patented. The §102 statutory bars, however, look backward from the date of application rather than from the date of invention.
Under §102(b), an invention which is novel might still be unpatentable. For example, an invention which is put into use by the public might well be the first of its kind and meet the novelty requirement. A year and a day after the invention was first offered for sale, the inventor files a patent application. §102(b) bars a patent in this case. Note, that even if nobody other than the inventor manufactures the product, the statutory bar still applies.
By operating in this way, §102(b) is intended to:
These considerations must be balanced against the goal of allowing an inventor time to perfect the invention, possibly through public testing, prior to filing a patent application. See TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965, 968 (Fed. Cir. 1984).
Example: In January of 1987 Joe invents a useful and novel new cup holder. By the end of the year he is producing the holder in large quantities and selling them to national chain stores. In 1991, Amanda learns that Joe does not hold a patent on the holder and begins manufacturing the same item. In order to begin production, Amanda must take out a second mortgage on her home. With the profits she expects to earn, however, paying back her debt should not be a problem. If Joe is now free to receive a patent and prevent Amanda from producing the cup holders, an injustice would be done to Amanda solely due to Joe’s unreasonable delay in seeking his statutory monopoly.
But if patent law is to continue to encourage innovation, the inventor’s interests must also be considered. While the one year time limit in §102(b) might be somewhat arbitrary, it would be impossible to establish a set period of time which would be fair in all cases, and granting inventors a year to “tweak” their inventions seems to be a good compromise.
Example: Amanda is not the only one who likes Joe’s idea, and in July of 1987 Wendy begins making cup holders identical to Joe’s. The §102(b) bar will not prevent Joe from receiving his patent if he applies later that same year. Forcing Joe to apply for a patent immediately after inventing his product is not the best way to encourage innovations of good quality.
Just like the statutory bars, it would be easy to accidentally conflate nonobviousness and novelty. Under §103(a), no patent will issue if “the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art….” In other words, if the invention would be obvious to anyone involved in the same area as the inventor, there can be no statutory monopoly granted in the form of a patent.
Nutshell at 71 does a good job of distinguishing the novelty requirement from the nonobviousness requirement:
It is possible that someone skilled in the relevant field of technology and familiar with its subject matter could have invented it with comparative ease had he tried; such an “invention” would be novel but obvious to that person.
Most would agree that one of the most important cases on nonobviousness is Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966). See Hornbook at 377–380; Nutshell at 74, 80. In John Deere three cases were combined (as often happens with the Supreme Court) in which the nonobviousness requirement of §103 was in dispute.
The John Deere Court does a fine job of discussing the history of patent law, and ultimately (at pp. 14-15) holds that the rule originally formulated in Hotchkiss v. Greenwood, 52 U.S. 248 (1851) was codified by §103. In Hotchkiss, the court found that the simple substitution of clay for wood or metal in doorknobs did not rise to the level of inventiveness required by patent. Instead, the material substitution was more like the work of a skilled craftsman than that of an inventor.
The §103 test for nonobviousness under John Deere requires a three-part factual analysis:
The Court also notes that:
Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. John Deere at 17-18.
Other secondary considerations not mentioned in John Deere which might play a role include acquiescence (i.e., does the world treat this as a nonobvious invention?) and the presence of unexpected results. On the other hand, if the invention is created more or less simultaneously by a number of people, that would tend to indicate that the invention was in fact obvious.
Example: Liser is a dog lover who works at a veterinarian’s office in Virginia. Recently, while washing a dog, she thought of an idea for a muzzle which would keep the dog’s jaws safely shut yet allow for full mobility of the head and neck. Phillip, who works at a veterinarian’s office in Connecticut, came up with the exact same idea just a few months ago. Deborah, who volunteers at a local dog pound, also had the same novel idea come to her just the other day. If these three inventors independently think up, and then make, muzzles which are substantially the same, the invention might be novel to each but likely will not meet the nonobviousness requirement. After all, with so many people simultaneously coming up with the same product, these are more appropriately described as cases in which people have had a “blinding flash of the obvious” than as cases in which true invention has taken place.
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