The Concept of Obviousness in Patent Law

In what was hailed as a landmark case in U.S. patent law, the U.S. Supreme Court released the decision in KSR International Co v Teleflex Inc (KSR) in April 2007. This decision is considered to be one that could have a significant impact on patent prosecution and infringement in the U.S., particularly in relation to the concept of “obviousness.”

For those readers who may not be familiar with the concept of “obviousness,” the concept is central to the patent system.  Section 103(a) of the United States Patent Act provides that a patent should be denied or found invalid “…if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”  In very, very, very simplistic terms, this means that if a proposed patent does not reflect a true inventive step in the development of the subject matter, the patent should not issue (or be found valid). 

The “non-obviousness” requirement is crucial to how the patent system works.   Via this requirement, the PTO or the courts have the ability to deny or invalidate a patent even when it claims a product that has never been previously made, or a process that has never been previously performed.  In short, “non-obviousness” means that just because an idea is new or novel, it does NOT mean it is worthy of a patent. 

There are differing policy justifications for the existence of the “non-obviousness” requirement, including the need for skilled technicians and others to make routine adjustments and marginal improvements on products without fear of patent infringement; the difficulty of proving the invalidity of a patent by reference to a single piece of prior art that matches all the elements of a patent’s claims; and from an economic standpoint, to make patent issuance sufficiently challenging to cause an inventor to “stretch” to disclose a truly innovative idea.

The concept of “non-obviousness” is for most an inherently esoteric idea to begin with; its practical application by the courts has been made all the more ethereal by the panoply of factors and tests the courts have historically applied to determine whether a patent suffered from the malaria of “obviousness.”  The intended brevity of this note thus cannot provide the reader with a thorough review of the history of all the factors and tests that have been used in determining “obviousness.”  (Those interested in a very brief history of obviousness tests may refer to http://www.ipfrontline.com/depts/article.asp?id=16772&deptid=4, which provides a good overview of the subject.)

As noted above, KSR represents the latest word in how to determine the “non-obviousness” requirement of the Patent Act.  There remains a great deal of debate as to the scope of impact that KSR will have on the process of patent issuance, as well as on the success of invalidity challenges to issued patents.  As such, IP professionals are well-advised to understand some practical ideas on how to manage patent prosecution and existing patent assets in light of the uncertainty created by KSR.  An excellent presentation by Georgann Grunebach of Fox Group Legal provides some very useful information on some of the practical aspects of managing patent assets in the post-KSR era.  Her presentation may be found at the California State Bar website at http://www.calbar.ca.gov/calbar/pdfs/sections/ipsection/2007-11-10_ksr-v-teleflex_grunebach.pdf.