The Supreme Court, in its most important patent ruling in years, on Monday raised the bar for obtaining patents on new products that combine elements of pre-existing inventions.
If the combination results from nothing more than “ordinary innovation” and “does no more than yield predictable results,” the court said in a unanimous opinion, it is not entitled to the exclusive rights that patent protection conveys. “Were it otherwise,” Justice Anthony M. Kennedy wrote in the opinion, “patents might stifle, rather than promote, the progress of useful arts.”
Because most inventions combine previously known elements, the court’s approach to deciding what sort of combination is so “obvious” as to be ineligible for patent protection will have widespread application. The result will be to make patents harder to obtain and defend.
“Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress,” Justice Kennedy said. He added that such patents were also undesirable because they might deprive earlier innovations of “their value or utility.”
Patent law experts said the ruling created a common sense standard that could have a broad impact.
“Nearly every patent that contains a combination of prior ideas is at risk because the court has dramatically broadened the standard of obviousness,” said Cynthia Kernick, an intellectual property lawyer at Reed Smith in Pittsburgh.
Judges will have more leeway to dismiss patent infringement lawsuits without requiring a jury trial, and patent examiners, who generally grant patent applications unless they find prior references to the same invention, will now feel freer to deny claims, said Matthew Kreeger, an intellectual property lawyer at Morrison and Foerster in San Francisco.
This seems a good thing from where I sit, but I'm gonna query my USPTO students and see what they think...
[Update: one of my students pointed me to this blog post:
Though the Supreme Court’s unanimous reversal in KSR v. Teleflex, No. 04-1350, 550 U.S. ___ (2007), contains some harsh words for the Federal Circuit’s teaching, suggestion, or motivation (TSM) test, the decision itself appears to leave the TSM requirement roughly intact. Justice Kennedy’s opinion emphatically rejects an 'explicit' TSM test—one that would require explicit prior art teachings in order to combine given references in the obviousness analysis. At the same time, the decision appears to essentially recreate the 'implicit' or 'flexible' TSM test—one that would allow implicit suggestions, such as the nature of the problem, to provide the requisite motivation to combine.
The KSR opinion is more a critique of the Circuit's application of the obviousness (and TSM) standard to the specific facts in KSR than a critique of the need to rigorously (and expansively) evaluate what would lead a PHOSITA to combine certain references in the obviousness analysis.
The opinion also clearly (appropriately in my opinion) invites greater analysis of the PHOSITA and the circumstances surrounding the PHOSITA and the pertinent technology than the Circuit has engaged in in some of its decisions.
PHOSITA, I just learned, stands for 'Person having ordinary skill in the art'.]
['nother update: one of my USPTO folks:
There are two sides on this.
The first side says that the entire obvious rejection changed. No longer do we have to find motivation to combine on any rejection. Further, in courts, a competitor will try and invalidate your issued patent with the same logic. It really isn't so novel, look it would have been obvious to do so.
The other side says that this is only a limited decision. In most instances you still have to find motivation and someone claiming an invalid patent would also have to show reasons for combining.
I am leaning towards the second side although I don't know where the demarcation lies. Some patents/ applications will be obvious just because. Others will require reasoning.
Since the Amazon "one click" has been simmering for years, I imagine someone is going to again try and invalidate it. The courts will let us know where the boundaries are.
Also points me to this article saying, "This is kind of where I was going. The courts will figure this out." BTW, I'm one handshake away from the dude who granted Amazon's patent, and have walked by him in the hallway. Cool, huh?]