Supreme Court Unanimously Tightens the Test for Patentability
R. Joseph Trojan and Olga Kay
Trojan Law Offices
On April 29, the US Supreme Court handed down a unanimous decision that changed the way inventions are tested for patentability (KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727 ). The court considered a patent for an adjustable car pedal with an electronic sensor. Pedals that could adjust to the height of the driver already were known. Electronic sensors also were known, although not in connection with pedals. The Court unanimously ruled that the combination was not worthy of a patent. Far from putting the brakes on a single company’s business, the decision nearly stopped the entire patent community in its tracks.
In general, to get a patent, an invention must, of course, be new. However, an invention still may be refused a patent if it is obvious. In simple terms, obviousness means that an ordinary person familiar with the state of the art easily could have come up with the invention. The formal obviousness test asks four questions: What is the state of the prior art? What are the differences between the prior art and the invention? What is the level of ordinary skill in the art? Finally, would the person of ordinary skill consider the differences obvious? But how can one get into the head of the elusive “person of ordinary skill” to see what looks obvious?
The two problems with obviousness are subjectivity and hindsight. After all, to Sherlock Holmes, almost anything is obvious. To Dr. Watson, most things are obvious in hindsight, when Holmes gives away the clue. For combination inventions, such as antibacterial soap or fabric detergent with added softener, hindsight is especially menacing. In hindsight, it often seems obvious to put together two known parts. To guard against hindsight, the courts have come up with a teaching- suggestion- motivation (TSM) test. Under this test, a combination is obvious only if the prior art itself gives a hint or nudges an ordinary person towards making a combination. If no such teaching, suggestion or motivation is shown, the combination is non-obvious.
Critics often complained that the TSM test is too rigid—precise teaching or motivation to combine references almost never is found. As a result, critics argued, routine improvements, lacking any ingenuity, are given patents. To the delight of such critics, the KSR decision introduced a new, flexible approach to obviousness. Specifically, teaching, suggestion or motivation to make a new combination may take a variety of shapes. Any market pressure may motivate an ordinary person to improve the product. Similarly, that a solution worked for one device is enough motivation to apply it to another device. Applying such known solutions is obvious as long as the result is predictable.
How Recent Decisions Impact Inventors
Many inventors already have experienced that the new obviousness test casts a much wider net and is much harder to satisfy. For example, one recent case before the Board of Patent Appeals and Interferences involved an intravenous catheter with two features. First, the catheter included an electronic device that could collect measurements from the surrounding tissue. Second, the catheter could be navigated with the help of special electroactive polymers that could stiffen and relax when electrical current was applied. The examiner found two earlier patents: one described a catheter with similar electroactive polymers. The other patent described a catheter with an electronic element. Would an ordinary bioengineer place electroactive polymers into a catheter that also had an electronic element? Nothing in the prior art gave a hint on improving either catheter. However, under the new rule, no hints are needed. The KSR opinion states: “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.” Perhaps an ordinary engineer would be motivated to search for a way to make catheters navigable. The KSR opinion continues: “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” What worked for one catheter would work for another one. Using electroactive polymers would predictably improve any catheter. The Board concluded that the improved catheter was not worthy of a patent.
The intellectual property (IP) community eagerly anticipated the outcome of the KSR dispute. When the Supreme Court took up the case, it received a record 38 briefs from the industry and consumer groups, IP law associations and inventors. Many cautioned that making the obviousness test more flexible would raise the bar and make patents very hard to get. Even worse, many existing patents would be open to an obviousness challenge and threatened with invalidation. This, of course, would decimate patent portfolios and dry up investments in IP-driven companies. In that respect, close to the worst-case scenario has played out.
Like the new Ice Age, the KSR rule is here to stay. A 9-0 decision is unlikely to be reconsidered by the Court in the foreseeable future. How can inventors adapt to the new standard of patentability?
Fortunately, all is not lost when the patent office finds evidence of obviousness. Such evidence may be rebutted. As a first line of defense, one can find references that “teach away” from the invention. For example, a reference may caution not to use particular compounds or predict that a particular method will fail. Disregarding such warnings and proving them untrue is non-obvious. Next, one can demonstrate synergistic results. A combination of known elements may work better than would be expected from a mere sum of the parts—where durability was expected to double, it, in fact, quadrupled. In anticipation of an obviousness challenge, one would be wise to seek and document any better-than-expected results. Such data may be gathered at any time, after the patent application has been filed or even when the patent is being challenged in court. However, if gathered early, the data may be included in the body of the patent and discourage future challenges.
If the device covered by the patent already is being sold, one may present “secondary considerations of non-obviousness.” These include commercial success of the product incorporating the invention, failure by others to solve the problem, successful licensing, praise and copying of the invention. Each item on the list of secondary considerations can be challenged by the patent examiner. For example, pharmaceutical companies are notorious for costly advertising campaigns. If a new drug enjoys commercial success, it is attributable not only to the improved potency but also to the ads. Likewise, copying and pirating the invention may be due to a fad rather than to a true technical advantage. Failure by others to come up with the invention may result from the lack of the market for the invention or general lack of interest. Finally, the loud praise may really be coming from the inventor’s grandmother or a business associate.
What is an ideal, challenge-proof invention in the post-KSR world? The one that works better than the sum of its parts, outperforms the competition by a wide margin, sells like hotcakes and elicits praise from every skeptic. As a whole, such perfection may be unattainable. However, picking up bits and pieces of evidence in each category will greatly improve one’s chances of getting a patent.
R. Joseph Trojan is a registered patent attorney and intellectual property trial lawyer with 18 years of experience. He supervises a staff of five intellectual property attorneys in Beverly Hills, CA. He can be contacted at Trojan@biomedlawyers.com.
Dr. Olga Kay is a registered patent attorney and an associate at the Trojan Law Offices, specializing in patent prosecution and litigation with a focus on biomedical inventions. She can be contacted at email@example.com.