On April 30, 2007 the U.S. Supreme Court delivered a unanimous decision in a case that appears to raise the bar for establishing patentability of inventions in the U.S. The case, KSR International Co. v. Teleflex Inc., suggests that it is now more difficult to obtain patents from the United States Patent and Trademark Office (USPTO) and to enforce patents in federal courts.
Prior to KSR, patentability was premised upon the “Teaching-Suggestion-Motivation” or “TSM” test that has been used by the USPTO and federal courts for more than a quarter of a century. Under the TSM test, an invention was deemed unpatentable if the USPTO or a federal court found that there was an express or clearly implied teaching, suggestion or motivation in one printed publication which could be combined with information in another printed publication to produce the invention. In KSR, the U.S. Supreme Court made it easier for the USPTO and the courts to deny a patent. Under the new standard, a patent may be denied if the invention is derived by merely sensibly combining the inherent disclosures contained in previously existing publications. The new standard does not require that the fact finder, when denying patentability, show any express or clearly implied teaching, suggestion or motivation in order to combine the inherent disclosures.
It is far too early to predict the full fallout from the KSR case. The USPTO and lower federal courts will interpret its meaning and scope over the course of time. However, because of the unanimity of the decision, we believe it is likely that the case will be construed broadly — at least in the short term — to the detriment of patent applicants and patent holders.
The U.S. patent system was created to stimulate innovation by rewarding inventors with exclusive property rights in their inventions. If the practical impact of the KSR case is a stifling of innovation or a lessening of competitiveness of novel U.S. products and services in the marketplace, then we expect Congress will face concerted and forceful lobbying efforts to amend the Patent Act to a more patent-friendly “pre-KSR” state of affairs.
Check back in the near future for the latest developments in the KSR decision.