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Friday, May 13, 2005

U.S. Law Professors On Non-Obviousness.

One of the present problems of the patent system is the fate of the languishing patentability criterion of the "inventive step" or "non-obviousness". Patents have been granted by various Patent Offices all over the world where the fulfilment of this mandatory patentability criterion might be seen as problematic. Now there is a new initiative from U.S. Academia to revive the very substance of this criterion.

Mr. Dennis Crouch, Patent Attorney at

McDonnell Boehnen Hulbert & Berghoff LLP,

reports in his blog

Patently-O: Patent Law Blog:

"In January 2005, the CAFC decided Teleflex v. KSR — holding that there must be a suggestion or motivation to combining two or more references in an obviousness finding. This 'teaching-suggestion-motivation test' has been a stalwart of Federal Circuit obviousness jurisprudence for twenty years. During that time, the Supreme Court has not heard a single obviousness case.

KSR has petitioned the Supreme Court for a writ of certiorari — arguing that the Federal Circuit’s obviousness standard is too low. In its petition, the KSR argues that the CAFC’s jurisprudence is inconsistent with the Supreme Court’s most recent obviousness decisions of Anderson’s-Black Rock (1969) and Sakraisa (1979). In Sakraisa, the High Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a). Under the Sakraisa standard, the Teleflex patent is arguably obvious. Although patent cases are rarely heard by other circuit appellate courts, a circuit split remains between the CAFC and several other circuits on this issue.

Two amicus curiae briefs have been filed in support of the petition for certiorari. An element of both briefs is that written proof of obviousness should not be required to prove basic knowledge or common sense.

An impressive group of law professors have banded together in support of KSR. The professors argue that the CAFC has essentially ignored the idea of a person having ordinary skill in the art (PHOSITA) and simply consults the scope and content of the prior art references. At best, the appellate court has relegated the PHOSITA to the role of a 'reference librarian, assisting in locating appropriate prior art references but apparently incapable of applying them in light of his or her knowledge or skill.'[...]"

The full text of the Amicus Curiae Letter is available

here. Moreover, there is

another Amicus Curiae letter from the

Progress & Freedom Foundation.

A thorough discussion of the "could/would"-approach used in EPO practice might also be helpful to improve the European patent system. Perhaps such debate might be triggered by the discussions just emerging in the U.S.

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