Stites & Harbison, PLLC

On April 30, 2007 the Supreme Court of the United States issued an opinion that could profoundly effect the patentability of inventions and the validity of issued patents.

The Patent Act provides that an invention is not patentable if the invention would have been obvious to a person having ordinary skill in the art at the time the invention was made. 35 U.S.C. § 103.  The Court of Appeals for the Federal Circuit, the court that hears all appeals in patent cases, had established a test to assist with obviousness determinations which had been a standard for many years.  In order for obviousness to be established, the Federal Circuit test required that there must be some "teaching, suggestion, or motivation" to combine or modify prior art teachings or knowledge possessed by "one skilled in the art" in order to arrive at the claimed invention. This requirement is commonly referred to in patent parlance as the "TSM test," or "teaching, motivation, suggestion" test and was followed closely by the federal district courts and the United States Patent and Trademark Office (the "PTO").   Patent practitioners came to rely heavily on this test when arguing against an obviousness rejection from the PTO, and when defending the validity of a patent in the federal courts.

The Supreme Court's opinion in KSR International Co. v. Teleflex Inc., No. 04-1350, 550 U.S. __ (2007) shook the patent world by sharply curtailing the TSM test, thus creating a great deal of uncertainty regarding the patentability of inventions currently being considered by the PTO as well as the validity of existing patents.

Although the Supreme Court did not outwardly reject the TSM test, it admonished the Federal Circuit for applying the test too rigidly, noting that the Supreme Court has consistently advocated an "expansive and flexible approach" to determining whether an invention is obvious. The Court repeatedly stated that "common sense" should be the best guide in determining whether an invention would be obvious to one skilled in the art, and that "[r]igid preventative rules that deny factfinders recourse to common sense are neither necessary under [its] case law nor consistent with it."  Thus, the TSM test will no longer be applied as a hard and fast rule, but will merely provide helpful insight into whether an invention is obvious.

The long-term effect of this opinion on patent prosecution and litigation remains uncertain.  There can be little doubt, however, that the PTO will more frequently and vigorously argue obviousness when rejecting patent claims.  The KSR opinion will likely have the same effect on challenges to the validity of patents in the courts.  Therefore, patent applicants and patentees should be aware that, under the Supreme Court's recent ruling, "common sense" may be used to reject a patent application or invalidate an existing patent as obvious under 35 U.S.C. § 103.