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Unobviousness now less obvious.

A recent U.S. Supreme Court decision has made it more difficult to patent combinations of known elements. The decision was handed down on April 30 in the case of KSR International vs Teleflex.

The Court's decision affects the analysis of "obviousness." The requirements for patentability are that the invention be new, useful and not obvious (to someone skilled in the art). The first two criteria are easily tested and met, but obviousness has been very much a gray area, and especially so for combination patents.

For many years, the courts have relied on a TSM test. If the elements being combined are Taught (i.e., known) and there is a Suggestion or Teaching that suggests (to someone skilled in the art) that they might be combined, then the "invention" is not patentable. If no such suggestion is found in the literature, it had usually been a winning argument to say that combining the known elements is only obvious in hindsight and the patent should be granted. This will no longer be the case.

The Court's Ruling

The Supremes have ruled that the TSM test must be used flexibly, in combination with common sense. They comment that "a person of ordinary skill is also one of ordinary creativity not an automaton." The judger of facts (i.e., patent examiner) can look away from the narrow invention area to other fields and use common sense to decide whether there is "real innovation." They have given no more specific guidance.

Some observers estimate that hundreds of thousands of granted patents are now rendered questionable. Others point out that the Supremes, in their wisdom, have pronounced circularly that: an invention is obvious if it includes an obvious solution to a related problem. It is expected to take years before it is clear how this pronouncement will be interpreted and used by patent examiners and lower courts. However, the direction of the effect is clear. It will become harder to get combination patents. This continues the trend of swinging the pendulum back to reverse the pro-patent stance of the courts that began in 1982.

More Challenges?

We can expect to see an increase in challenges to existing patents. Indeed, the day after the ruling by the Supreme Court, Vonage sought a retrial to vacate an infringement ruling granted to Verizon.

If you are trying to patent an invention involving a combination of known elements, it will be important to document and emphasize the difficulty of arriving at the combination with such things as history of failed efforts, suggestions that teach away from the combination, efforts by others to discourage the idea, etc. Secondary considerations such as meeting a long-sought need and commercial success may also be helpful.

M. F. Wolff, Editor

Leonard Berkowitz, IRI Emeritus in Berkeley Heights, New Jersey
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Title Annotation:PERSPECTIVES: Views and News of the Current Research--Technology Management Scene
Comment:Unobviousness now less obvious.(PERSPECTIVES: Views and News of the Current Research--Technology Management Scene)
Author:Berkowitz, Leonard
Publication:Research-Technology Management
Geographic Code:1USA
Date:Jul 1, 2007
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