Among the requirements to patentability is the nonobviousness codified at 35 U.S.C. § 103. Specifically, that section states that a patent may not be obtained “if the differences between the subject matter sought to be patented and the prior art are such that 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 to which the subject matter pertains.” In other words, the law asks us to imagine a person “having ordinary skill in the art,” and hypothesize as to whether the claimed invention would be obvious that person. If so, then the invention is not patentable.

Part of this inquiry relates to the prior art. Prior art is patent speak for the inventions and patents which are closest in kind and in operation to the patent currently being sought, but how different the claimed invention is from the prior art can at times be a highly subjective question. It is thus not surprising that nonobviousness is one of the most controversial and commonly argued issues in patent law cases, and is heavily dependent upon the patent examiner and the court’s interpretation of case law.

In determining whether an invention is nonobviousness, there are a number of useful tests. Courts have articulated the Graham factors in an effort to assist those attempting to make this determination, which include the scope and content of the prior art, the differences between the patent claims at issue and the prior art, the level of ordinary skill in the particular art at issue, and any secondary considerations. Those secondary considerations may include the commercial success of the subject matter, whether the invention meets long unmet needs, whether the prior art has moved away from the subject matter, whether experts are skeptical, and whether use of the invention would be preferable to use of the prior art.

The Graham factors continue to be in use, however, the U.S. Court of Appeals for the Federal Circuit has formulated the “TSM” test for determining nonobviousness as well. The “TSM” test requires that there be some teaching, suggestion, or motivation in the prior art to modify a reference or combine reference teachings pursuant to the creation of the invention; in other words, the prior art has to support the invention in some material way. That test was rejected by the Supreme Court in KSR v. Teleflex, where the Court reiterated the importance of the Graham factors, and rejected the rigidity of the TSM test.

The various tests and approaches to determining nonobviousness illustrates the complexity of the issue, and highlights the need for an inventor dealing with these issues to consider raising them with an experienced patent attorney. An attorney fluent in the pertinent patent case law will be able to address the particular facts and issues faced by the tech startup, but developing a working understanding of the legal problems, and addressing them by amassing appropriate evidence is sure to save a tech startup time and money.