The Use of Secondary Indicia in Assessing Obviousness in the United States of America and Europe, a Comparative Study

Secondary-indicia are fundamental to the non-obviousness test undertaken to ascertain the patentability of an invention. It includes other subjective elements such as the existing state of the art, the presence of a novel step and if a person of ordinary skill in the art will find it obvious. While the test is termed differently in distinct jurisdictions, the aforementioned elements are common. This paper presents a comparative analysis of the United States of America (US) and the European States (EU) jurisdictions and their non-obviousness tests. The paper finds that the subtle difference between the two pertains to the way secondary-indicia is considered. Subsequently, it is argued that the status of secondary-indicia is ambiguous in the US due to the recent “KSR vs. Teleflex” judgment, whereas, the EU presents a more certain approach. Further, a critique of the aforementioned approaches is undertaken to highlight the constant undermining of secondary-indicia. Resultantly the same has diluted the non-obviousness test and increased the possibility of hindsight bias. The paper emphatically recommends that secondary-indicia are an objective sub-test which complements the subjective sub-test contained within the non-obviousness test. Lastly, the paper establishes the need to treat secondary-indicia as a mandatory element in the non-obviousness test