PLI's In Brief: The Leader in Continuing Legal Education Since 1933

Tuesday, August, 11, 2009

If You Build It, They Will Come...To Tell You It's Not Patentable: Post-KSR Obviousness

When it comes to inventions, Toolbox has the desire, but lacks the know-how. In any event, if Toolbox invented something, it would no doubt fail any standard of obviousness under the patent law. Toolbox even daydreams of taking its invention before a panel of whatever experts, patent examiners, patent lawyers, you name 'em, and hearing under-the-breath mutterings, "Bzz, bzz, bzz, could that be more obvious? That thing doesn't just have prior art; it has prior music and dance, too. He might as well have reinvented the wheel for all that thing is worth." Of course, to yours truly, the obvious wouldn't have seemed so obvious. And what Toolbox finds most ironic about obviousness doctrine is that, given the Supreme Court's decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), even it wasn't quite so obvious, which is why so many scholars are writing about obviousness in the wake of KSR.

Toolbox has one of those writings, Post-KSR Obviousness, a white paper by Karen Canaan (Sheppard Mullin Richter & Hampton LLP) that reviews obviousness doctrine before and after the Supreme Court's decision, offering suggestions on how to prepare and prosecute a patent post-KSR. And it would appear that after KSR, Toolbox's fear of obviousness is overblown, as the Court acknowledges, on a certain level, that there is nothing new under the sun. Before KSR, the U.S. Court of Appeals for the Federal Circuit had applied the "teaching, suggestion, motivation" or TSM test to determine obviousness under 35 U.S.C. §103(a): "in order for an invention to be held obvious, there must be a teaching, suggestion, or motivation to combine the prior art elements." The Supreme Court held that the lower court had been applying the TSM test too narrowly and rigidly. And while not throwing out the test altogether, here's the part of the Court's decision that made Toolbox happy, as quoted by Ms. Canaan: "[i]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known." KSR, 550 U.S. at 419. Maybe it's time for Toolbox to dust off some of those old, seemingly obvious, ideas.

Posted at 11:06AM | Permalink | Comments (0)

Comments

The comments to this entry are closed.

« Now, Everybody Really Is "Working For The Weekend": Developments In China Labor Law | Main | Security And Perfection In One Little Package: Sample UCC Article 9 Agreement »

About "In Brief"
PLI in Brief is the online home of Practising Law Institute's popular weekly eNewsletter series more...

Recent Archives
• June 2010
• May 2010
• April 2010
• March 2010
• February 2010
• January 2010
• December 2009
• November 2009
• October 2009
• September 2009
• Complete Archive

Categories
• All-Star Briefing
• Compliance Counselor
• The Lawyer's Toolbox
• The Pocket MBA
• Accounting
• Antitrust
• Bankruptcy
• China
• Class Actions
• Communication & Media
• Compliance
• Consumer
• Copyright
• Corporate
• Corporate Governance
• Due Diligence
• Employee Benefits
• Employment Law
• Environment
• Estate Planning
• Estates & Trusts
• Ethics
• Executive Compensation
• Export Control
• Financial Institutions
• Financial Products
• General Practice
• Government Contracting
• Green Tech
• Hedge Funds
• Immigration
• Information Technology
• Insurance
• Intellectual Property
• Internal Investigations
• International
• Law Practice Management
• Licensing
• Litigation
• Mergers & Acquisitions
• Patent
• Privacy
• Private Equity
• Real Estate
• Secured Transactions
• Securities
• Tax
• Taxation
• Trademark

20% off PLI Treatise!
Employment Law Yearbook 2008, by Orrick Herrington & Sutcliffe LLP, the one volume source to help your clients lessen their legal exposure, no matter what front, including whistleblowing, workplace violence, downsizing, privacy, and trade secrets.
order...

20% off PLI Treatise!
Accountants' Liability, by Dan L. Goldwasser (Vedder Price Kaufman & Kammholz PC), M. Thomas Arnold (University Of Tulsa College Of Law), and John H. Eickemeyer (Vedder Price Kaufman & Kammholz PC). Use the link to order this uniquely comprehensive legal and tactical resource.
order...

PLI Patent Blog
Law Professor Blogs
WSJ Law Blog
DealLawyers.com Blog
CorporateCounsel.net Blog
US Supreme Court Blog