intellectual-property patents
&quot;Flash of Genius&quot; - Intermittent Windshield Wipers
<p>In the movie "Flash of Genius," which covered the law suit involving intermittent automobile windshield wipers, it seemed that the individual parts (wipers, control box, electrical components) were already available, but what was done with the wipers was not done previously.  In the rulings for the claimant engineer (he was finally awarded something like $18m from Ford and $30m from Chrysler), what met the requirement for being: </p>

<ol>
<li>Beyond prior art?</li>
<li>More than an obvious extension of knowledge possessed by the ordinary person skilled in that discipline?</li>
<li>More than an extension of known engineering techniques?</li>
</ol>

<p>For beyond prior art, is it enough to show that prior art didn't exist?  Wouldn't that be difficult in terms of proprietary (non-public) trade secrets held by claimants?  A defendant auto company could build a similar device or control box "over the weekend," and over the >10-year case, multiple designs could actually have been manufactured.  (that's what actually happened, since the claimant was a contractor to Ford, and he noticed "his" intermittent wipers appeared on a newly manufactured car).   </p>

<p>Why were intermittent wipers considered more than an obvious extension of knowledge of an ordinary engineer in automobile manufacturing?  I think introducing intermittency control for wipers is an obvious extension of knowledge by an automobile engineer, but maybe it was not obvious because it was not thought of by another engineer.   </p>

<p>Lastly, how could intermittent wipers be considered to be more than an "extension" of known engineering techniques?  Maybe it was enough to show that the technique for intermittent design was not a known technique.  </p>

<p>Something leads me to believe that there was an element of "first to file" in this suit, but that didn't exist by USPTO in the 60's/70's.  In the first answer to this <a href="https://law.stackexchange.com/questions/34351/patent-law-what-is-the-litmus-test-for-inventive-step-non-obvious">OP</a>, it is stated that an examiner only needs to argue that an ordinary person in the field could eventually come up with the invention using individual components.  Given this, and given the fact that automobile manufacturers would eventually develop and manufacture intermittent wipers, why was the ruling for the claimant?  (I don't know if it was patent infringement and/or damages related to lost financial opportunities).     </p>

<h2>The bar for <a href="http://www5.austlii.edu.au/au/legis/cth/consol_act/pa1990109/s7.html" rel="nofollow noreferrer">novelty, innovation and inventiveness</a> is not as high as you seem to think</h2>

<p><a href="/questions/tagged/australia" class="post-tag" title="show questions tagged &#39;australia&#39;" rel="tag">australia</a></p>

<p>A process is novel or innovative or inventive <em>unless</em> it is not novel or innovative or inventive when compared to prior art where that prior art is:</p>

<ul>
<li>a single document,</li>
<li>2 or more <em>related</em> documents,</li>
<li>a single specification.</li>
</ul>

<p>While there was prior are for windscreen wipers and prior art for interrupting things (interruption gear for WW1 aircraft machine guns spring to mind) these were not combined in a single document or set of related documents.</p>

<blockquote>
<p>For beyond prior art, is it enough to show that prior art didn't exist? Wouldn't that be difficult in terms of proprietary (non-public) trade secrets held by claimants?</p>
</blockquote>
<p>By definition prior art is prior publicly known art. For anything to be considered in either a novelty analysis or an obviousness analysis the reference needs to qualify as prior art.</p>
<blockquote>
<p>More than an obvious extension of knowledge possessed by the ordinary person skilled in that discipline?</p>
</blockquote>
<p>Actually the test for obviousness takes the person of ordinary <em>skill</em> in the field who knows <em>everything ever published anywhere in the world</em> in the field.</p>
<p>To show obviousness the examiner needs to find a base reference that has some of the elements of the claimed invention and other references that, collectively, have all of the remaining elements of the claimed invention. And needs to successfully argue that there would be a reason for the POSITA (person of ordinary skill in the art) to make the combination to achieve the claimed invention.
Prior to the early 2000's this required the examiner to find a motivation, teaching, suggestion or motivation in the written prior art that would cause someone to make the combinations. That was to try to work against the hindsight bias.</p>
<p>If someone had written &quot;When the rain is light it would be great if there was a way to keep both the water and the wipers from obscuring the view.&quot; That might provide motivation.</p>
<blockquote>
<p>In the first answer to this OP, it is stated that an examiner only needs to argue that an ordinary person in the field could eventually come up with the invention using individual components.</p>
</blockquote>
<p>I'm the one who posted the answer you are referring to and this is a misunderstanding of that answer.</p>
<p>There can be a patentable invention in recognizing and addressing the problem, even if would not take great engineering skill to solve the problem once it was articulated.</p>
<hr />
<p>Note - this text is from Kearns's patent. It is more clever than I had thought.</p>
<blockquote>
<p>During the decelerating period, the drag encountered by the Wiper
blades moving over the windshield exerts a braking force on the motor
which varies with the condition of the windshield. When the wiper
blades are operating over a wet windshield, such as during a heavy
rainfall, they are well lubricated and the braking force is very
small. When the wiper blades are operating over a wet-dry windshield,
the braking force is significantly greater and decelerates the
windshield wiping system faster during the decelerating period so as
to bring the motor to a complete stop in 21 fewer number of degrees as
compared to a wet windshield. By selecting a number of degrees 6
between these two position and automatically re-energizing the motor
after 6 degrees, an effective degree-of-dryness control is achieved.</p>
</blockquote>

<p>I think the rule is that if you combine two or more patented items, and the combination does exactly what you would expect it to do, then it's not patentable. If the combination does something unexpected, then it's patentable. And it has to be unexpected when it was invented; many inventions seem obvious in hindsight. I have seen personally cases where X was thought to be impossible; but being told convincingly that it was possible made it obvious in hindsight how to do it.</p>
<p>A good method to judge whether it was non-obvious: If it was of commercial value (the intermittent windshield wipers are), and if it was obvious, then clearly everyone would have done it earlier, right?</p>
