James Nurton reports in yesterday's, November 27, 2006, Weekly News at Managing Intellectual Property:
The US Supreme Court will tomorrow hear arguments in what some are calling the most important patent case in 40 years.
The case, KSR v Teleflex, will determine the standard that examiners and courts should apply when assessing whether a patent is invalid because it is obvious.
The Court of Appeals for the Federal Circuit, which handles all appeals in patent cases in the US, has developed a "teaching-suggestion-motivation" test for obviousness.
This test says that an invention which combines elements present in the prior art is not considered obvious unless there is a teaching, suggestion or motivation in the prior art that would lead a person of ordinary skill to combine the prior art references to come up with the patented invention.
That approach, which has been developed over 20 years of patent cases, was criticized by the US solicitor general who said, in an amicus curiae brief in this dispute, that it "extends patent protection to non-innovative combinations of familiar elements". Such an extension, said the solicitor general, "retards, rather than advances, new discoveries".
If the Supreme Court follows the solicitor general's advice and overturns the Federal Circuit practice, it will have "a ripple effect" on every granted or pending patent across all industries, according to Robert Sterne of Sterne Kessler Goldstein Fox, who is advising Teleflex: "This case has huge implications – beyond the intricacies of patent law – to public policy."
But John Duffy, professor of law at George Washington University Law School, who is co-counsel for KSR, said the Federal Circuit's test is a "radical departure" from traditional practice and "an experiment by a lower court that has been terrible for the patent system".
He added: "The Federal Circuit test is looking at the wrong issue by focusing on the Patent Office and the accused infringer. Instead, they should ask the inventor: what is technically difficult about this invention?"
Duffy said the only patents that would be invalidated if the Federal Circuit's test were changed were "gamesmanship" patents, such as those used by so-called patent trolls.
See the rest of the article here. The article includes links to:
- The background to KSR v. Teleflex from the June 2006 issue of MIP Week;
- The Supreme Court context in the July/August issue of MIP; and
- The Federal Circuit opinion in the case published in January 2005.
See also InformationWeek for Paul McDougall's brief discussion of the case.