KSR International Co. v. Teleflex Inc.: the Supreme Court revises the standard for obviousness

May 1, 2007

In the recent case of KSR International Co. v. Teleflex Inc., et al (S.Ct. No. 04-1350 decided April 30, 2007), the Supreme Court considered the issue of what is required for an invention to be considered unobvious, and therefore potentially eligible for patent protection.  Previously, for an invention to be considered obvious, it was necessary to establish some teaching, suggestion or motivation to modify what was known prior to the date the invention was made in order to obtain the patent.  In practice, this requirement had the effect of making it relatively difficult to show an invention was obvious, even when the invention was no more than a combination of well known components functioning in their intended manner to achieve their expected effects.  In a unanimous ruling, the Supreme Court held that the Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over patent appeals, had used the teaching, suggestion or motivation requirement in a manner which granted patents on “obvious” subject matter.  In particular, the Supreme Court cautioned against granting or upholding patents which are merely combinations of elements found the prior art, and stated that a court must determine whether an alleged invention “is more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement.”  This harkens back to a 30 year old line of cases which indicated that inventions which are “merely” the combination of known elements would be held to a different, and higher, standard of patentability than other types of innovation.

The practical result of the Supreme Court’s decision is that it will likely be more difficult to obtain patent protection, or to convince a court to uphold a patent which has already been granted.  Patent holders, and those seeking patent protection can seek to overcome this new difficulty by focusing on establishing a positive case for why an invention is not obvious.  In particular, arguments showing that an inventor made an invention by breaking with the conventional wisdom which was accepted by his or her peers are likely to succeed in convincing the patent office to grant, or a court to uphold, a patent.  Additional factors which can be used to show an invention would not have been obvious include unexpected results achieved by an inventive combination, commercial success of an invention, the existence of a long-felt but unmet need satisfied by the invention, failure of others to solve the problem addressed by the invention, licensing of patents on the invention to the industry, and skepticism of experts in the likely success of an invention  Consequently, those seeking to obtain a patent, or to convince a court of a patent’s validity should be prepared to present evidence which can support one or more of the arguments listed above.  From a pharmaceutical perspective, it is likely that this decision will make it more difficult to get patent protection on enantiomers, polymorphs, and metabolites of pharmaceutical actives.

For further information, please contact William Morriss at wmorriss@fbtlaw.com, Ed Acheson at eacheson@fbtlaw.com, Ann Schoen at aschoen@fbtlaw.com, or Steven Goldstein at sgoldstein@fbtlaw.com.

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