Drastically Increase Your Chances of Getting a Patent
Today, we want to discuss something you can do in your patent applications to drastically increase your chances of getting them granted as patents.
In order to get a patent, an invention has to be novel, and it has to be non-obvious. An invention is “novel” when no single piece of prior art discloses all of the claimed features. That piece of prior art could be a patent or a patent application that’s published or a journal article or even a commercial product. “Non-obvious” means that persons of ordinary skill in the art would not have been led by known design incentives or design goals to combine pieces of prior art or modify a single piece of prior art in a manner that would yield the claimed invention. So when you’re dealing with obviousness, you’re not looking at a single piece of prior that discloses all the features, you’re looking at modifying a piece of prior art or combining different pieces of prior art.
When inventors come to me and I ask them, “Hey, what’s new about your invention?” They inevitably focus on the novelty piece. They’ll go through each individual piece of prior art and say, “I’m different from reference A because of this. I’m different from reference B because of this.” And they’ll go down the list, but that only answers half the question, because when you’re trying to address non-obviousness, you’re not looking at each reference individually, you’re looking at how somebody of skill in the art might combine those references or modify them in order to obtain the claimed invention.
So, one thing that can really help improve your chances of getting a patent application allowed is if you address non-obviousness in some fashion within the patent application. One way to do that is to look at the strongest pieces of prior art that are aware of and ask yourself, “If I put these together, would I get my invention or is there some way to modify them that would get my invention?”
Go through the thought exercise of asking yourself, ” Is there some reason that somebody skilled in the art would not have been led to combine these references or would not have been led to modify this single reference to get my invention?” That thought exercise will focus you on the key benefits of your invention and the key features that allow you to obtain those key benefits. Then, you can weave in a story or an explanation into the patent application of how the claimed invention achieves those benefits.
So there are a number of ways that people address non-obviousness. One way is to show that an invention achieves unexpected benefits that you would not have predicted from the prior art. So for example, I have a client who makes this industrial gas and they have a lot of patents on the process for making the gas. The patents usually involve the manipulation of known variables in the process to make the gas. So you would readily expect an examiner to say, “Hey, you’re just modifying known variables. That’s routine optimization. It’s obvious.” So knowing that in advance, what we do is we come up with examples that show that the claimed invention performs better, more efficiently, than the prior art does in a way that you’d never expect. That set of examples with that kind of data is what we use to persuade the examiners that the invention is not obvious.
Another thing that you can do to show non-obviousness is that the invention addresses long felt, but unsolved needs in the prior art. So I have another client that makes transdermal drug delivery devices, and they had a compound they were trying to deliver transdermally. They were having trouble getting it to go through the skin at the rate they needed. Now, these devices not only have a compound they deliver, but they have adhesives that hold the patch on your skin. So what they did is they came up with a particular adhesive that interacted with the drug in a way that didn’t slow the drug’s diffusion rate down. That allowed the drug to go into the skin much faster than the prior art had been able to achieve previously. And they provided some data to show that and that’s how they addressed that long felt but unsolved need.
I had another client who did something similar. He had a new propulsion system for ships. And what we did to show the benefits of the propulsion system was to compare in the same vessel, the same hull, his propulsion system to the ones that are known the prior art and show that with his propulsion system a ship could remain at sea much longer than the prior art was able to. That was a benefit that no one would have expected just from switching propulsion systems.
So, the bottom line is, however you do it, you want to come up with some theory or some story to explain why persons of ordinary skill in the art would not have been led to the claimed invention or why the claimed invention works so much better than the prior art would have ever expected, and you build that into the application. Then, if the examiners do assert an obvious rejection, you have a response at the ready that is supported by your application that you can use to address that rejection. In our experience, this does drastically increase your chances of succeeding and getting a patent.
So remember, don’t forget about obviousness and try to build in some story or theory into the application to increase your chances of getting a patent.