Brian Brunsvold
John C. Paul

SUPREME COURT’S DECISION IN KSR ALTERS APPLICATION OF OBVIOUSNESS STANDARD BY THE FEDERAL CIRCUIT, AND THE BOARD OF PATENT APPEALS AND INTERFERENCES

Determining when a discover y is sufficiently inventive to be entitled to patent protection is one of the most complex challenges in patent law. To be entitled to patent protection in the United States, the discovery as defined in the patent claims must be novel and must not be obvious to a person having ordinary skill in that field of technology. The Court of Appeals for the Federal Circuit had developed an approach for analyzing obviousness known as the “teaching, suggestion, or motivation” test (“TSM test”) under which a patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. This test has been criticized by some as creating too low a burden for patentability, while others have considered it a good tool for analyzing obviousness. In KSR International Co. v. Teleflex Inc., No. 04-1350 (April 30, 2007), the US Supreme Court addressed the validity of the TSM test, and found that the test as applied by the Federal Circuit is improper