The Obviousness Test
“As a rule of thumb, an invention is patentable if it is “new, useful, and nonobvious.” Bonito Boats v. Thunder Craft Boats, 489 U.S. 141 (1989). For the last twenty years, the test for obviousness developed by the Federal Circuit has included what is known as the “teaching-suggestion-motivation” test. Under this test, a claimed invention may be obvious if there was a “teaching,” “suggestion,” or “motivation” to combine pieces of prior art into the claimed invention.
Locating the required “teaching,” “suggestion,” or “motivation” is exhausting at best and impossible at worst. The reason is simple: by definition the most obvious modifications and combinations are those which persons of ordinary skill in the art already know or will instantly recognize, and which no colleague who values his time would bother to teach or suggest. Thus, the “teaching-suggestion-motivation” test makes it more difficult than it should be to invalidate a patent on obviousness grounds because, in many cases, a “teaching,” “suggestion,” or “motivation” to combine cannot be located even though the combination would be obvious to one of ordinary skill in the relevant art.”
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Exclusions from Patentability
“Today, Jacob LJ handed down the Court of Appeal decision on the joint appeals of Aerotel Ltd v Telco Holdings Ltd and others and the Patent Application by Neal William Macrossan. The Lords Justice of Appeal, led by Jacob LJ, have held that the prepay telephone system in the Aerotel case is not excluded from patent protection, but that Mr Macrossan’s automated method of acquiring documents for the incorporation of a company is excluded.”
Sun dissapointed in UK patent office
“Bearing in mind all that is known, the advance at the heart of the invention lies solely in the concept of using a computer program to adapt a pre-defined generic computer program, using pre-defined data, of a standard structure, relating to a specific target mobile device, using standard programming techniques to output a computer program tailored to that specific device, in a form which is a known data structure. The resulting program is one which would previously have been generated by a programmer. I have, therefore, come to the conclusion that the invention must be regarded as a computer program as such. The advance is not a technical one, albeit one that automates the process and one which, by operating at the server, might make the overall process more efficient, but a computer program nevertheless which is excluded from patentability.”
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