CanadaPatentBlog

The US Supreme Court has now issued its long-awaited decision in KSR International versus Teleflex Inc. And the earth is still shaking.

The Court rejected the “rigid approach” of the US Court of Appeals for the Federal Circuit (page 11). The CAFC had been applying a test for obviousness requiring that prior art, in order to defeat a patent application for lack of invention, must contain a “teaching, suggestion, or motivation” (TSM test) that would point to the invention. The TSM test was, in essence, a test for the presence of obviousness. Patents are not supposed to be granted for obvious inventions.

The US Supreme Court reiterated its previous observation that: “(a) patent for a combination which only unites old elements with no change in their respective functions… obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men”. And the Court presently stated: “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”

These observations are in keeping with the “Golden Rule” of patent law that a patent should not withdraw from the public anything that was previously available to the public. Things that were “available to the public” include not only everything previously disclosed, but obvious variants on everything previously disclosed.

The CAFC, wrestling with the disputes arising between patent applicants and patent examiners over when an application should be rejected on grounds of obviousness, had previously objected that examiners cannot merely declare an invention to be obvious as a conclusory statement. The CFAC had stated: “There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. The US Supreme Court in the present decision has now emphasized that an examiner need not seek-out precise teachings in the prior art in order to make an obviousness rejection. Instead, an examiner, or court, can take into account the inferences and creative steps that a person of ordinary skill in the art would employ.(page 14)

The US Supreme Court offered as part of a better analysis the observation that: “…any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” (Page 16)

In considering the hypothetical standard of a “person of ordinary skill in the art”, the court observed that such a person: “is also a person of ordinary creativity, not an automaton.”

The consequence of this decision is that there will be many more rejections of patent applications before the US Patent Office. And additionally, there could be a considerable number of patents already issued that will be declared invalid. The US Supreme Court has opened the floodgates to permit large number of patent rejections and declarations of patent invalidity.

The statement that the hypothetical ordinary person used to test the concept of “obviousness” may be taken to be “a person of ordinary creativity” will render the obviousness test much more subjective. The policy of the CAFC to introduce more certainty into this delicate central issue of patent law has been set aside in favor of reducing the extent to which patent protection may be granted.

This is definitely an anti-patent initiative by the US Supreme Court which may eventually be echoed by courts around the world. It may take time for this new attitude towards patents to have its full effect, but henceforth, certainly in the United States, numerous patents will have to be enforced under dark clouds of uncertainty. This may lead to many cases being settled on terms more favorable to competitors, accused of being infringers. Perhaps this is what the Supreme Court of the United States intended.