High Court Raises the Patent Bar

Eli is a contributing correspondent for Science magazine.

The U.S. government has considerable leeway to reject patent applications it finds obvious, the Supreme Court said today in a unanimous opinion on a case pitting manufacturers of brake pedals against each other. The ruling addresses the thorny problem for the Patent and Trademark Office of how to decide whether applicants have combined known elements to make a new discovery. But the court didn't go so far as to give examiners carte blanche to reject all patents that combine existing ideas, a possibility that biotechnology advocates had feared would come out of today's long-awaited ruling.

The case that the court decided today, KSR International Co. vs. Teleflex, Inc., started in 2002 as an infringement lawsuit focusing on whether Teleflex's invention of an automobile pedal, which combined known electric and adjustable pedals' technologies, was obvious (ScienceNOW, 28 November 2006). A federal appeals court in 2005 said no, deciding that no "teaching, suggestion or motivation" existed at the time of the invention to suggest that Teleflex's combination of the technologies was obvious. The Washington, D.C.-based Biotechnology Industry Association worried that an adverse decision by the high court "would negatively affect biotechnology research and development" by putting the bar too high for scientists to patent their findings.

Writing for the court in its 9 to 0 ruling, Justice Anthony Kennedy said the lower court should have been more discriminating in weighing the obviousness of an invention. In addition to factoring in whether specific teachings or suggestions would render a patent obvious, Kennedy explained, a court should take into account whether a person of "ordinary skill" in the given field would find the patent obvious. While lowering the bar on what can be considered obvious, the decision gives courts and patent examiners greater flexibility in making that decision.

"The court was careful not to throw the baby out with the bathwater," said biotech attorney Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. "What they said was a lot better than what I thought they were going to say."

Organizations that favor drastic reforms of the patent system cheered the ruling. "The Justices recognize the need to inject more common sense and balance into the patent system," said Steve Elmendorf, spokesperson for the Coalition for Patent Fairness, a powerful consortium that includes Intel, Microsoft, Chevron, and Time-Warner. The ruling "will improve the quality of patents," the group said.

The decision amounts to a big victory for KSR, which had been sued for infringement under the Teleflex patent that the high court invalidated with this ruling.

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