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Inventions could fall prey to Monday morning quarterbacking

The United States Supreme Court soon will decide whether to change the current long-standing patentability standard for obviousness. To be patentable, an invention must not be "obvious" in light of what was publicly known at the moment it was created by the inventor, and any change in the legal test for obviousness would profoundly impact the ability to procure and enforce patents.

One only has to look at the list of non-party briefs to appreciate the importance of this case: IBM, Ford, Intel, the American Association of Retired Persons, Time Warner, U.S. Solicitor, Business Software Alliance, American Intellectual Property Law Association, and Cisco, to name a few.

In KSR International v. Teleflex, (No. 04-1350), the U.S. Supreme Court will decide whether to modify or replace the current "teaching, suggestion, or motivation" standard, which requires a patent examiner (or an accused infringer trying to invalidate a patent) to find some teaching, suggestion, or motivation ("TSM") in the prior art (i.e., known technology) in order to sustain an obviousness rejection of an application for patent.

The Court of Appeals for the Federal Circuit, the exclusive patent appellate court from which the KSR decision was appealed, recently has gone out of its way to clarify that its precedent permits the TSM to be explicit or implicit in the prior art (see Alza v. Mylan, No. 06-1019, Sept. 6, 2006, and Dystar Textilfarben v. CH Patrick Co., No. 06-1088, Oct. 3, 2006). It's the implicit (i.e. implied or capable of being understood from something else, though unexpressed) TSM in the prior art that is causing all the controversy.

Hindsight is 20/20
Implicit TSM comes in many forms, some permissible and some impermissible, to prove obviousness. Currently, permissible implicit TSM includes nature of the problem solved, knowledge and predictability of the technology, nature of the advance in technology, and maturity and congestion of the technology. To establish obviousness, any explicit or implicit TSM must have had a reasonable expectation of success.

Currently, the most important impermissible TSM is "hindsight." For example, many patent examiners reject patent applications by citing two or more earlier patents that, in the aggregate, teach every element of your invention. Similarly, during litigation, accused infringers attempt to invalidate patents by assembling new prior art to show that the invention was obvious. Hindsight occurs where explicit information in the earlier patents, along with implicit knowledge in the relevant scientific field, fails to sufficiently "teach, suggest, or motivate" a hypothetical person of ordinary scientific skill to invent your invention with a reasonable expectation of success.

In other words, current case law does not permit Monday morning quarterbacking of inventions because mere hindsight is always 20/20 when the hypothetical person is using your patent application as a blueprint for assembling the earlier patents to show that your invention is obvious.

Inventive Europeans

Interestingly, the present standard for obviousness in Europe, which is referred to as "inventive step," sets the bar higher than that set by the United States Patent and Trademark Office and Federal Circuit. Although European patent law also forbids hindsight, it further requires that any invention solve a technical/scientific problem, and that a combination-type invention be synergistic. So, the U.S. Supreme Court may harmonize American law by adopting the European standard, which would raise the bar in the U.S.

The organizations weighing in on what should be done with obviousness law also are quite interesting. The Business Software Alliance, AARP, and others hostile toward the current patent system advocate changes that would render virtually every invention obvious and unpatentable unless the inventor can show some level of synergy realized by the invention. Synergy occurs where the invention is surprisingly better than one would have expected.

A high level of synergy is rare and difficult to prove, so a robust synergy requirement for demonstrating non-obviousness may raise the bar so high that only truly pioneering inventions could be patented and survive litigation. A minimal synergy requirement would seem more workable and less disruptive.

In contrast, the American Intellectual Property Lawyers Association advocates maintaining the status quo and affirming the Federal Circuit's recent clarification that obviousness may be based upon TSM implicit in the prior art. Presently, synergy is not necessarily required under U.S. patent law; however, synergy is highly relevant and useful to overcoming obviousness rejections. In any event, the non-obviousness bar has been raised somewhat due to the court's clarification of the law.

So, what does this all mean?

As the non-obviousness bar is raised, it will be correspondingly more difficult for patentees to patent inventions, prevail in re-examination proceedings, and survive invalidity challenges during litigation. The cost of procuring and enforcing patents will also increase proportionately, unless, of course, inventors and companies curtail patent filings in lieu of trade secrets.

Who knows? The Supreme Court may require synergy or fashion a completely new test. A decision in KSR International v. Teleflex will happen soon, so stay tuned!

Another column by Chris Rogers

Christopher Rogers: The top 10 misconceptions of life-science patents

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Christopher Rogers is a registered patent attorney with the law firm Quarles & Brady. He has a law degree from John Marshall Law School, and he has a bachelor's degree in chemical engineering from Purdue University. He is not licensed to practice law in Wisconsin.

Disclaimer: This article presents general information concerning legal issues and does not constitute legal advice. Accordingly, this article should not be relied upon as legal advice applicable to a specific issue, policy or circumstance. It is recommended that you retain legal counsel if legal advice is needed.

The opinions expressed herein or statements made in the above column are solely those of the author, & do not necessarily reflect the views of Wisconsin Technology Network, LLC. (WTN). WTN, LLC accepts no legal liability or responsibility for any claims made or opinions expressed herein.

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