The Supreme Court's new opinion KSR Int'l Co. v. Teleflex Inc. on the "obviousness" inquiry under ยง103 of the Patent Act has IP bloggers hopping. Michael Barclay calls KSR "the most important patent case of the last 20 years, and perhaps since the passage of the 1952 Patent Act." Dennis Crouch is not so moved, stating that "the opinion appears to simply refine the particulars of how prior-art can be combined and when a 'combined patent' will be seen as obvious."
David French calls the opinion an "anti-patent initiative by the US Supreme Court," and Mike Madison offers examples from the opinion where "Justice Kennedy, writing for the Court, may have let his pen run away from him," but Joe Miller loves this sentence from the Court's opinion: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."
For my money, the most interesting part of the opinion is the section in which the Court discusses the effect of the obviousness inquiry on innovation:
The obviousness analysis cannot be confined by a formalistic conception ofthe words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
The bloggers seem to agree that KSR could lead to more patents being rejected by the PTO and more existing patents being declared invalid. Is this a good thing?
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1. Posted by Joe Miller on April 30, 2007 @ 23:36 | Permalink
Gordon,
I think the answer is more clear if we ask, Is this a good thing compared to what's been happening recently? The passage you quote (an interesting one, I agree) indicates that there is strong reason to doubt the wisdom of the Federal Circuit's rigid approach to proving obviousness, i.e., requiring an explicit teaching toward the invention under review. Let's say the Supreme Court is right here. (We have nothing but casual empiricism to guide us, but that's not so bad.) That means that, for some time now, the Federal Circuit has effectively been preferring erroneous patent grants to erroneous patent rejections. If, like me, you think that competition (like patent protection) drives innovation, then we should be quite skeptical about preferring erroneous patent grants in that way.
Best,
Joe
2. Posted by Gordon Smith on May 1, 2007 @ 10:10 | Permalink
Thanks, Joe. That's a helpful response. I found myself liking the opinion by Kennedy, but I haven't spent as much time as you thinking about this issue.
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