ABC’s of Patent Drafting After KSR v. Teleflex

In its biggest patent decision since eBay v. Mercexchange (limiting the use of injunctions by patentees), the United States Supreme Court refused to end the patent obviousness inquiry at the Federal Circuit’s teaching-suggestion-motivation (TSM) test. Before KSR, the Federal Circuit held that even if all of the elements of a claimed invention were known in the prior art, the invention was not obvious unless there was some teaching, suggestion or motivation in the prior art to combine the elements in the claimed manner. In KSR, the Supreme Court stated that even if a claimed invention passes the TSM test, the United States Patent and Trademark Office (USPTO) may still reject a patent claim using things such as "common sense."

The Board of Patents Appeals and Interferences is now wielding KSR like a broadsword, affirming Examiners 64% of the time. What can you do to be in the other 36%, or better yet, not have to appeal at all, even in the face of KSR? Following these ABC’s is a good place to start.

Anticipate– Do not get caught off guard by KSR. Read the KSR opinion, spend more time discussing inventions and prior art with inventors. Draft patents proactively.

Be more selective in filing patents – Is the invention really mind-blowing? If the invention is not is not a quantum advance over the prior art, you may want to have a frank discussion with your inventor about the USPTO's new stance on obviousness.

Common Sense- The new touchstone overshadowing the old teaching, suggestion motivation (TSM) standard. If the new combination your client created is within the purview of common sense, you may wish to forgo a patent.

Disclose disclose disclose – Do not wait for the USPTO to find prior art for you. Find it. Discuss why it would not be obvious to modify into your claimed invention. Repeat.

Expand your disclosure - What might have been “window dressing” in the past, can now be the difference between getting and not getting a KSR-backed 103 rejection. Write more about the problem, what others have tried and why they have failed at what your client is doing. Point out exactly why the invention is such a boon and addresses such a long felt, yet unfulfilled, need in the industry.

Functionality – add a little functionality in the linking of your claim elements. Nothing differentiates a set of claim elements from the prior art more than a few functional relationships.

Grahamalyze your application – In KSR, the Supreme Court ruled that the factors outlined in Graham v. John Deere Co., 383 U.S. 1 (1966) “continue to define the inquiry that controls [the determination of obviousness].” The Graham factors include: 1) the scope and content of the prior art; 2) the skill level of a person of ordinary skill in the art; 3) the differences between the claimed invention and the prior art’s teachings; and 4) any objective indications of nonobviousness (such as commercial success, long felt, but unresolved needs and the failure of others). Commit these considerations into not only your application, but into all phases of your prosecution.

Good Luck and let me know if you have any tips of your own.

Brett Trout KSR Teleflex patent drafting Federal Circuit Supreme Court

Don't fling me in that briar patch

Oral arguments in the Supreme Court patent case of KSR v. Teleflex (Supreme Court 2006, Oral Arguments)yesterday revolved around the test for determining whether an invention is "obvious" and therefore not patentable. The current test for obviousness has developed over a number of cases over the last twenty plus years. The test requires that to show an invention is obviousness, and therefore not patentable, one must point to some teaching, suggestion or motivation (TSM) in the prior art (old patents and publications).

Proponents of the current TSM rule, like all of the major patent bar associations, argue that the current rule has worked well for decades and that any change in the test would place the validity of hundreds of thousands of patents in jeopardy. Opponents of the TSM rule, such as the software industry, argue the current standard allows too many patents to issue.

One surprising comment in yesterday’s oral argument before the Supreme Court came from Chief Justice Roberts. Responding to the comment that every single patent bar in the country sides with maintaining the certainty associated with the current rule, the Chief Justice responded “That just indicates that this is profitable to the patent bar.”

I do not believe amici briefs filed by the major patent bars are motivated by money. In fact, changing the rule will increase fees paid to patent attorneys. Admittedly, a change in the rule may slightly decrease the fees patent attorneys collect for drafting patents, as a change may dissuade a small number of independent inventors from seeking patents.

Overall however, a change in the rule cannot help but significantly increase fees paid to patent attorneys. Fees associated with prolonged obviousness arguments before the United States Patent and Trademark Office and litigation over the formerly unassailable obviousness of a mountain of patents cannot help but provide patent attorneys job security and increased fees for at least the next twenty years. While I cannot quibble with making more money, I would prefer not to do it on the backs of independent inventors.

Brett Trout

Other Related Topics:
KSR, Patent, Obviousness, Supreme Court, Patent Validity