A NON-OBVIOUS IMPROVEMENT MAY NOT BE ENOUGH FOR PATENTABILITY

A basic tenet of patent law has been that an invention must be new and non-obvious for it to be patentable.


"New" means that the invention has not been previously invented. In other words, the identical invention has not been previously invented.


"Non-obvious" means that a person skilled in the art of the invention, and having knowledge of all prior inventions in the art, would not find the current invention obvious. Getting over the non-obvious hurdle has been the bane of many inventors in getting the patent office to approve their patent application.


Now, the non-obvious bar may have been raised.


Recently, in Adaptive Streaming v. Netflix, Adaptive owned a patent for transcribing an incoming video into a different format that is more suitable for a playback device.


The Federal Circuit explained that the patent was directed to collecting information and transcoding it into multiple formats - which is an abstract idea. No specific technique was required. Indeed, the patent was premised on "basic communication practices." And the patent did not require anything other than off-the-shelf computer components.


Importantly, the Federal Circuit said that even in the presence of novelty (i.e., "new") and non-obviousness, an invention can be an abstract idea which is not patentable.


What does this mean for patent applicants? Novelty and non-obviousness should still be a focus in the patent application. Perhaps the difficulty in the Adaptive patent was the absence of novelty and/or non-obviousness, which made it easier for a court to ignore novelty and non-obviousness.

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