Sunday, May 06, 2007

Boston Globe on KSR

The Rocky Mountain News had an editorial on May 6 titled No patent on common sense and the Boston Globe (Drake Bennett) had text including:

Suddenly, according to patent attorneys and legal scholars, much that seemed settled law may be up for grabs. The KSR decision, says David Frazier, a partner at the intellectual property law firm Finnegan Henderson Farabow Garrett & Dunner, "is going to come up in practically every patent case that's currently pending."

Odd as it may seem, the question of what deserves a patent and what does not turns on how courts define that one term: "obvious." The discussion might sound comical if so much didn't rest on its outcome -- without a clear definition of what's obvious, at least to someone with a little expertise in a particular field, there can be no objective definition of what constitutes an invention, and without that the patent regime would make no sense. As lawyers often put it, obviousness is "the final gatekeeper of the patent system."


All of these tests leave a fair amount of wiggle room for patent examiners and judges, but the fear among some patent attorneys is that last week's Supreme Court decision opened patent law up to a whole new level of subjectivity. That's because the court weakened one obviousness test without offering an alternative. The prior test had required that an invention, to be dismissed as obvious, had to be connected to a specific "teaching, suggestion, or motivation" that a person of average skill could acquire. The Supreme Court argued that lower courts had been relying too much on that test, and suggested that, in general, courts should be more picky in upholding patents, but didn't say whether another test would work better.

See also The TSM test after KSR v. Teleflex at


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