What is the ‘teaching away’ doctrine in patent law?

The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:

“A prior art reference that ‘teaches away’ from the claimed invention is a significant factor to be considered in determining obviousness; however, ‘the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.’“

Key points about the ‘teaching away’ doctrine:

• It’s a factor in determining non-obviousness, but not necessarily conclusive
• The substance and nature of the teaching must be considered
• Mere disclosure of alternatives doesn’t constitute teaching away
• A reference must actively criticize, discredit, or discourage the claimed solution to teach away

Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.

To learn more:

• teaching away
• obviousness
• prior art
• patent examination