Nonobviousness

If your design would be considered obvious by others in your field, the USPTO will reject your design patent application. As is true of the novelty standard, a design concept may be obvious while the actual design is not. For example, Spiro Agnew—the late vice-president, famous for such alliterations as “nattering nabobs of negativism”—was depicted in caricature on the face of a watch. Although the concept of caricature was obvious, the particular design was not.

It doesn’t necessarily take great originality or craftsmanship to create a nonobvious design; sometimes, it requires only the ability to visualize things a little differently. 

Your design will be more likely to meet the “nonobvious” test if:

  • it has enjoyed commercial success
  • it has a visual appearance that’s unexpected
  • others have copied the design
  • the design has been praised by others in the field
  • others have tried but failed to achieve the same result, or
  • you created a design that others said could not be done.


Can a Design Be New and Obvious?

It is possible for a design to be new and obvious at the same time. For example, a court determined that a design (below) for an alcohol server that was shaped like an intravenous dispenser was new—no such design had been used for serving alcohol—but it was obvious and therefore not patentable. (Neo-Art, Inc. v. Hawkeye Distilled Products, Co,654 F. Supp. 90 (C.D. Cal. 1987), aff’d, 12 U.S.P.Q. 1572 (CAFC 1989).)

alcohol

The difference between novelty and nonobviousness is this: a design is novelty if no one has previously made a similar design, while a design is nonobvious if no one has even considered making the design. In practical terms, though, the two standards often overlap¾and lack of prior art becomes the measure of both nonobviousness and novelty.

Is Nonobviousness Nonsense?

If you find the nonobvious standard for designs confusing, you’re not alone. There aren’t too many clear standards for determining when a design is obvious and when it’s not, which means that individual patent examiner -- and judges, if someone files an infringement lawsuit -- have a lot of leeway in making these decisions. There have been periodic attempts to change the law, but the standard remains for now, in all its murky glory.

How to Demonstrate Nonobviousness

You can demonstrate nonobviousness by:

Using a familiar form in an unfamiliar medium—such as the use of a floral pattern as a candle holder. 

floralcandleholder







Making a slight change to an existing design that produces a striking visual effect—such as alternating the position of hearts on a wedding ring. 

weddingring med

Omitting a visual element commonly associated with similar designs—such as the waterbed design, which is distinguishable by the absence of visible seams on the top and sides of the mattress.



waterbed


Juxtaposing elements in a way that creates an unexpected visual statement—such as embedding a poker chip in the bottom of a shot glass.

shotglass




 

© 2012 Rich Stim