The Layers of Obviousness in Patent Law

27 Pages Posted: 14 Apr 2008 Last revised: 14 May 2014

See all articles by Jeanne C. Fromer

Jeanne C. Fromer

New York University School of Law


Patent law has been missing the obvious. Tasked with advancing innovation by awarding an exclusive right to make or use certain inventions in exchange for their creation and disclosure to the public, patent law has installed certain threshold conditions as gatekeepers to ensure that the valuable patent right is granted only to worthy inventions. The Supreme Court's recent decision in KSR International Co. v. Teleflex Inc. shone a spotlight on nonobviousness and on articulating the criterion flexibly enough to guarantee that patents issue only to inventions constituting a sufficient advance in the state of the art, thereby encouraging, not stifling, innovation. Despite this overarching salutary and important purpose highlighted in KSR, neither courts nor scholars have analyzed or clearly settled on the object of the obviousness inquiry, a critical component of a nonobviousness determination. That is, what is it that must be nonobvious? Some courts have implied that the object that must be nonobvious is the concept of the invention (the complete idea as articulated in the patent's claims). Other courts have hinted that it might be some combination of the concept and the reduction to practice of a working model. As troubling as these irreconcilable judicial intimations are, they have been made by courts without any reflective analysis.

This Essay suggests that the correct object to be analyzed for obviousness is actually the union of two different aspects of invention that the courts have varyingly identified: the concept and the reduction to practice of a working model. Requiring an assessment of obviousness at each of these layers is more faithful to the nonobviousness doctrine and patent law's underlying policies than the current doctrinal state of confusion. Application of this layered inquiry indicates that obviousness is currently being assessed improperly, particularly with regard to technologies of relatively recent vintage, principally software and biotechnology, where the reduction to practice of a working model is inherently complex even once the inventive concept is fixed in the inventor's mind. A layered inquiry would advance the goals set out in KSR by properly and flexibly readjusting nonobviousness doctrine to exclude from patentability those inventions that are not significant leaps forward in the state of the art.

This exploration of the layers of invention in the context of the doctrine of obviousness has wide-reaching implications in patent law well beyond obviousness. This Essay is a first step in questioning the relative roles of an invention's conception and reduction to practice in patent law generally, by exploring it through the lens of obviousness. Until now, many areas of patent law seem to have elevated the inventive role of conception over that of actual reductions to practice, be it with regard to what must be accomplished to secure a patent, what must be contributed to an invention to be recognized as a joint inventor, or with regard to patent law's on-sale bar. But in other contexts in patent law, such as the availability of injunctive relief for patent infringement, the relative importance of reduction to practice is acknowledged. This Essay suggests that it is due time to question whether reduction to practice deserves an elevated role in patent law generally by demonstrating that it can be just as important as conception in the context of obviousness.

Keywords: obviousness, nonobviousness, patent law, intellectual property, KSR, conception, reduction to practice, software, biotechnology

JEL Classification: O31, O33, O34, O38

Suggested Citation

Fromer, Jeanne C., The Layers of Obviousness in Patent Law. Harvard Journal of Law and Technology, Vol. 22, p. 75, 2008, Fordham Law Legal Studies Research Paper No. 1119723, Available at SSRN:

Jeanne C. Fromer (Contact Author)

New York University School of Law ( email )

40 Washington Square South
New York, NY 10012
United States

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