Patenting for Inventors Ep. 140 - What is Analogous Art for Patents?
Illustration by @max_gps
Patenting for Inventors Ep.140
Your patent application can be rejected because your so-called invention is "obvious." But how is obviousness determined? What's the difference between "prior art" that can be cited to reject your invention for lack of novelty, and "analogous art" which is the requirement to reject your invention based on obviousness? Listen to the latest "Patenting for Inventors Podcast" episode to find out!
Podcast Transcript:
Speaker 1:
You are listening to the Patenting for Inventors podcast, part of the LOOK.Legal Pods from the law firm of Nolan Heimann, the number one source for your intellectual property, business, and entertainment law needs. Now here's your host, registered patent attorney, Adam Diament.
Adam Diament:
Hello and welcome to the Patenting for Inventors podcast. My name is Adam Diament, a registered patent attorney and partner at the law firm of Nolan Heimann in Los Angeles, California. This is episode 140, What is Analogous Art for Patents? We are continuing our legal adventure into the world of patents, specifically focusing in this episode on a concept that might sound a little like something straight out of an art gallery, but is actually a cornerstone of patent law called analogous art. Now, maybe you're thinking that analogous art is when you made a portrait of your mother and you made it look a little bit like the Mona Lisa, so your art is analogous to the Mona Lisa, this has nothing to do with that in the patent world. Let's talk about what it has to do with for patents with a little background. As I've mentioned before, to get a patent, your invention has to be considered new, non-obvious, and useful.
Pretty much everything is useful from a legal standpoint, so that's hardly ever an issue. Being new oftentimes isn't an issue either because any little tweak you make makes your invention new. So the big hurdle is obviousness, and what the patent examiner does is look for things that are in existence, and then we'll say, "Those two or three things that maybe are a little bit different in your invention, they already exist somewhere else, and if you just combine their parts, then you have your invention. So your invention is obvious and you can't get a patent." The things that the patent examiner finds to put together is called prior art. An analogous art is a subset of prior art. So all analogous art is prior art, but not all prior art is analogous art. An examiner can use anything that has come out previously, any prior art to reject your application if the rejection is based on lack of novelty, that means that your invention is not new.
So if you're saying your invention has parts A, B, and C, and the examiner finds something else that has parts A, B, and C, that's something else that's prior art, and it doesn't need to be related to your invention at all. Let me give you an example. Let's say that you invented a bicycle with handles that have a foam grip, and you want really broad protection. So when you claim your invention, you said, "I claim handles having a foam grip," and you don't even mention bicycles. You just want that foam grip handle. All the examiner has to do is find any product that has a foam grip handle, let's say a dumbbell and can reject your application because that dumbbell is prior art and can be used in a novelty rejection.
But let's say the examiner doesn't reject your invention based on it already existing for novelty, but that is obvious because related things already exist, in an obviousness rejection that's different than novelty, the examiner isn't allowed to just use any reference that came before your invention. It has to be somehow related to your invention, and that could come in a variety of ways. So if the examiner is going to reject your bicycle invention, the examiner probably can't just start citing references having to do with dumbbells because they're not related. To put it simply, analogous art in patent law refers to prior art references that are considered relevant to your invention's obviousness analysis. And in order to be considered analogous, it must be one of two things, one, within the same field or endeavor as your invention or two, reasonably pertinent to the particular problem with which the invention is involved.
Let me give you an example. Imagine you're an inventor. You've just come up with a revolutionary way to save water, and you invented a new type of garden hose nozzle designed to save water. If there's a previously patented nozzle with similar water saving features, that's what I wouldn't even call analogous art. That's the exact same art because it's exactly the same category. If there's something exactly the same, you don't even need to do an obviousness analysis because your invention fails a novelty test. But what if there's a patent for an entirely different product like a shower head that uses a similar mechanism to reduce water flow? That could be considered analogous art because even though one is for gardening and the other is for showers, they share a similar purpose, water conservation and they employ related technology. Here's another example.
Imagine you're baking a cake and you're convinced your secret ingredient is groundbreaking and that it makes a cake much more moist. Then you find out that there's a bread recipe from 10 years ago, use the same ingredient to solve a similar issue with moisture. Different dishes, yes, but the underlying problem and solution are closely related. That's analogous art for you, making your secret ingredient not so secret in the eyes of patent law. But let's say that same ingredient that you found to make better cake was also used to make steel harder. And the examiner says, "Well, adding your ingredient to the cake mix is obvious because it's already known that this chemical exists, and it's already known that there's a positive aspect to adding this chemical with other chemicals to make a better product." So the examiner rejects your patent application on the grounds of obviousness. This would be a clear example that making better steel and making cakes that are better because of moisture, they're not in the same field and they don't solve the same problem.
So the examiner isn't allowed to use the existence of that chemical in steel to reject your application for making a better cake. Now, this is not to say that you automatically will get a patent. There may be other reasons you can't get a patent, but this analogous art question is only about what references the patent examiner can use to say whether your invention is obvious or not. Now, let's go back to my first example of an examiner using dumbbells to reject something having to do with your bicycle invention. Can't you do it? Can't you use pre-existing dumbbell features to reject your bicycle invention? Now, in the beginning of the episode, I implied that she probably couldn't because they're not really related, but not so fast. Let's say that I'm trying to get a patent for foam handlebars as part of the bike, and the reason I'm doing that is to increase grip on the handles by absorbing moisture.
Let's say that dumbbells had a foam grip and the reason for the foam grip on the dumbbells was also to increase grip by absorbing moisture. So the purpose of both of these features solve the same problem. So in this example, it probably is analogous art, which goes to show you analogous art isn't just about what the product is, but the purpose of the features on that product that can make it analogous or not. Now, sometimes there's a gray zone on whether something is analogous or not, let's say you came up with a new medical adhesive for skin, but it was very similar to an adhesive used to attach two pieces of wood together in building houses. Is closing skin wounds and attaching pieces of wood analogous? Now, maybe the examiner will say, "That it's all about solving the same problem of attaching two things together, so it's analogous."
But you might argue that no one in the carpentry business who knows anything about wood adhesives is going to know anything about what's appropriate for skin adhesives. And the problem of attaching skin is very different from the problem of attaching wood beams. So maybe yes, maybe no, and that's why you have attorneys helping you with the patent process so you know what cases to cite in your arguments and present the best case forward to the patent office so you get your invention patented. So that's the basics of what analogous art is all about in the patent world. I hope you've enjoyed. Thanks for listening, and until next time, I'm Adam Diament and keep on inventing.
Speaker 1:
Thanks for listening to the Patenting for Inventors podcast. If you enjoy the show, please kindly rate and review on your favorite podcast platform. The contents of this podcast are intended for general informational purposes only. The facts of every legal matter are unique, and the content of this podcast should not be construed as offering legal advice for your specific legal situation. For more information about how we can help with your own legal needs, check out our services at nolanheimann.com, that's N-O-L-A-N-H-E-I-M-A-N-N.com, or call Adam Diament directly at (424) 281-0162. The preceding information may be considered an attorney advertisement and does not establish any attorney-client relationship.