The Obviousness of Patent Law and how it has Changed since 2007 Supreme Court Opinion

United States patent law ensures the protection of inventor’s products and methods. There are many requirements for a company or person to qualify for a patent; one of the most recently divisive requirements being that of non-obviousness or obviousness in patent law.

Non-obviousness is the term used in patent law that describes one of the requirements that an invention must meet to qualify for patentability. The obviousness law states that the invention being patented cannot be obvious; that is to say, it would not be obvious to a person having ordinary skill in the art (PHOSITA) to come up with the patented item. The standard for obviousness in patent law was recently discussed in the 2007 Supreme Court opinion of KSR vs. Teleflex.

The KSR Teleflex case was considered the furthest-reaching patent ruling in decades. Teleflex sued KSR International, claiming that one of KSR’s products infringed upon one of Teleflex’s patents. KSR said the combination of two elements used in Teleflex’s patents as obvious, which made the method and product non-patentable. The District Court ruled in favor of KSR, but the Court of Appeals for the Federal Circuit reversed the ruling. The case went all the way to the Supreme Court, which decided against the Federal Circuits ruling and held that the patent was in fact obvious.

The primary factors that convinced the Supreme Court to invalidate the patent had to do with PHOSTA and the application of the “teaching-suggestion-motivation” (TSM) test, as well as the Graham Factors.

The Graham Factors, shown below, are items looked at when a patent is being reviewed as to the obviousness of the patent.

• The scope and content of the prior art.
• The level of ordinary skill in the art.
• The differences between the claimed invention and the prior art.
• Objective evidence of non-obviousness.

In addition, the court outlined examples of factors that show “objective evidence of non-obviousness”. They are:

• Commercial success.
• Long-felt but unsolved needs.
• Failure of others.

The TSM test has been openly criticized but was formed originally to prevent hindsight bias. It requires a patent examiner (or accused infringer) to show there was something in the art that left a wide desirability for a solution to a problem to make the patent obvious. 

 The implications of this ruling are many and of great importance.  Here are some of them:

• This ruling made it easier for patents to be invalidated based on non-obviousness.
• The USPTO Board of Patent Appeals and Interferences (BPAI) is citing KSR in about 60% of its decisions related to obviousness.
• The cost and uncertainty of patent litigation was lowered.
• Makes it harder for software and other patent seekers to obtain a patent.