Academic journal article Research-Technology Management

Unobviousness Now Less Obvious

Academic journal article Research-Technology Management

Unobviousness Now Less Obvious

Article excerpt

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. …

Search by... Author
Show... All Results Primary Sources Peer-reviewed

Oops!

An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.