Patently Obvious? KSR International Co. v. Teleflex Inc., 550 U.S. ___ (2007)
The Supreme Court recently issued a unanimous opinion that could change the way the United States Patent and Trademark Office and the courts decide whether an invention is obvious and, therefore, must be denied patent protection. In KSR International Co. v. Teleflex Inc., 550 U.S. ___ (2007), the Court does away with the strict “teaching, suggestion, or motivation” test employed by lower courts in favor of a reiteration of its previous, more flexible approach. Under the standard of obviousness announced by the Court, it may be possible for the USPTO to find more inventions to be obvious and thus unpatentable and for the courts to find more patents invalid due to the obviousness of their inventions. The Patent Act states that an invention cannot be patented if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” In other words, even if your invention has never been done before, you cannot get a patent if your invention would have been obvious to someone with ordinary skill in the field of your invention. The Court previously stated in the 1966 case Graham v. John Deer Co. of Kansas City, 383 U.S. 1, that obviousness is assessed after determining three elements: (1) the scope and content of what came before your invention (the prior art); (2) the differences between the prior art and your invention; and (3) the level of ordinary skill in the field of your invention. The Court also stated that secondary factors may be considered in determining whether an invention is obvious, such as commercial success and the previous failure of others. Subsequent to Graham, the Court of Appeals for the Federal Circuit adopted the “teaching, suggestion, or motivation” (TSM) test in an attempt to determine obviousness consistently. Under the TSM test, an invention is obvious only if there is a motivation or suggestion to combine prior art in either the prior art itself, the nature of the problem, or the knowledge of a person having ordinary skill in the art. In other words, if the idea to combine prior art is solely that of the inventor, the invention is not obvious. The Court of Appeals for the Federal Circuit went even further by holding that an invention based on a combination of prior art is not obvious even if it would have been obvious to try combining the prior art absent a teaching, suggestion, or motivation to so combine. The United States Supreme Court in KSR holds that the Court of Appeals for the Federal Circuit erred in adopting the TSM test, and that such a strict test is inconsistent with the Court’s previous standard and the Patent Act. The Court emphasizes that its approach has always been expansive and flexible, as opposed to the rigid TSM test. The Court notes that combining familiar elements according to known methods to produce predictable results is likely to be obvious. Merely substituting one element for another in a previous structure or method must produce an unpredictable result in order to be non-obvious. Conversely, successfully combining elements previously thought to be un-combinable is more likely to be non-obvious. The key is that the results would not be expected by one skilled in the art. Similarly, combining two elements that behave in the same way and produce the same result as they would separately is obvious. In these situations, combining the elements may not have been explicitly suggested in the prior art, but may still be obvious when the interrelated teachings of multiple patents, the demands in the marketplace, or the background of a person with ordinary skill in the art are considered. The Court holds that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” That is not to say that all inventions comprised of previously-known elements are obvious. To the contrary, the Court recognizes that most inventions “rely upon building blocks long since uncovered.” The key is to look for a reason for a person of ordinary skill in the art to combine the elements. To this end, the TSM test may be a useful tool; however, it should not be applied as a mandatary rule. To do so would be incompatible with the Court’s previous interpretation of the law. Throughout its description of the proper method of determining obviousness, the Court emphasizes common sense. The Court notes that it is common sense to use items beyond their primary purposes; therefore, it is not necessary for prior art to have been directed toward the same problem as the current invention. As the Court notes, “A person of ordinary skill is also a person of ordinary creativity.” If a person of ordinary skill attempts to solve a problem by combining prior art, resulting in anticipated success, “it is likely the product not of innovation but of ordinary skill and common sense.” Ultimately, the Court holds that “the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.” Essentially, the Court’s decision means that an invention arrived upon by using common sense to combine known elements to produce an expected result is obvious and not entitled to patent protection. This is true even if there is no teaching, suggestion, or motivation in the prior art to combine these elements. Under this standard, it may be harder to get a patent, as a rejection based on obviousness can no longer be countered by an argument that there is no teaching, suggestion, or motivation to combine the elements of the invention. Likewise, it may be easier to get an already-issued patent invalidated, particularly if it was allowed only because there was no teaching, suggestion, or motivation. Proponents of the Court’s decision say that this will cut down on the number of patents for ridiculously obvious inventions. Others say it will stifle innovation by sole inventors and small businesses who will be less inclined to pursue patent protection given the increased uncertainty as to whether their invention may be deemed obvious. Either way, it is now increasingly important to collect and maintain evidence of secondary factors of non-obviousness, such as commercial success, previous failure by others, praise by experts, and long-felt but unsolved problems. With teaching, suggestion, and motivation being relegated to mere factors in the obviousness consideration, proof of these other factors may be the only way for you to prove that your invention is not obvious and that you are entitled to a patent.