West Law Report

Patent of an obvious auto pedal system

Posted in Harvard Law Review (case), Patent, Supreme Court leading cases 2007 by mrkooenglish on May 18, 2008

A leading case summery of Harvard: KSR International Co. v. Teleflex Inc (2007) (11 pages)

Patent – Obviousness

One of the most vexing and important questions in patent law has long been how to determine if an invention is “obvious” without using hindsight in making the assessment.1 Under § 103 of the Patent Act, a patent may not issue when the patented design would have been obvious to a person having ordinary skill in the art. In 1966, the Supreme Court set forth a four-part framework for applying § 103 in Graham v. John Deere Co. In interpreting the Graham
factors, the Federal Circuit created a test requiring evidence of some teaching, suggestion, or motivation to combine elements of prior art (the TSM test) in order to find combinations obvious. This test, designed largely to combat hindsight bias and to create predictability in patent decisions, led to questions about patent overissuance.

Last Term, in KSR International Co. v. Teleflex Inc., the Court rejected a rigid application of the TSM test to the extent that it precluded approaching the obviousness inquiry with flexibility and common sense. However, neither the flexibility required by the Court’s ruling in KSR nor the Federal Circuit’s TSM test adequately confronts hindsight bias or deals with the problem of patent overissuance. While both of these courts attempt to address the two issues, courts in general remain ill-equipped to shape rules dealing with them. Instead of looking to the courts, reforms should take place at the level of the Patent and Trademark Office (PTO), where examiners are likely to be slightly less influenced by hindsight bias and where reforms could target both overissuance and hindsight bias simultaneously.

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