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US Supreme Court Makes it Easier to Find Patents Obvious

May 1, 2007

In a much-anticipated decision, KSR International Co. v. Teleflex, Inc., the U.S. Supreme Court, in a unanimous decision, overruled the Federal Circuit’s longstanding test for determining when an invention is "obvious" under the patent statute. The Court determined that the "teaching, suggestion, or motivation" ("TSM") requirement was too "rigid" and that a proper framework requires a more flexible and common sense approach tied to the "ordinary creativity" of persons skilled in the art. The practical effect of the Supreme Court's ruling will likely make it more difficult to obtain patents before the U.S. Patent and Trademark Office while, at the same time, making it easier to invalidate issued patents.

Under the new ruling, the Supreme Court returns to the principles set forth in its 1966 decision of Graham v. John Deere and unanimously rejects the Federal Circuit’s TSM standard that had developed since that time. By establishing guidelines rather than a precise test, the Court made clear that if a person skilled in the art, using ordinary creativity, would "try to solve" a problem by examining a group of predictable solutions, the test for obviousness could be satisfied. Moreover, persons skilled in the art can be expected to look at any relevant art, and the obviousness inquiry should therefore not be limited only to prior art designed to solve the same problem as the purported invention. Rather, if there is "an apparent reason to combine … known elements in the fashion claimed by the patent at issue," the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Market demand and design needs as well as scientific literature should also be considered.

The new, broader obviousness standard creates a more demanding environment for those seeking to obtain and enforce patents. Before the U.S. Patent and Trademark Office, patent applicants may need to dedicate more resources to patent prosecution in order to overcome increased obviousness rejections. Similarly, patent holders can expect stiffer invalidity attacks during patent litigation. Business method and software patents may be particularly vulnerable, along with patents from traditional "bricks and mortar" companies that simply try to optimize factors such as size, weight, and numbers of components.

For more information, please contact the professional(s) listed below, or your regular Crowell & Moring contact.

Jeffrey D. Sanok
Partner – Washington, D.C.
Phone: +1.202.624.2995