Monday, May 07, 2007

Is TSM still required to establish obviousness?

A comment to my May 5, 2007 post entitled The TSM test after KSR v. Teleflex states:

Regarding the above criticism of my blog posting: The CAFC had applied TSM as an "exclusive" test, that is, as a requirement to prove non-obviousness. That exclusive, required test no longer exists, which is what I meant by the word "abolished" -- the test is gone as an absolute rule. The fact that patent defendants and PTO examiners can continue to use the **existence** of a TSM to prove obviousness doesn't undermine my conclusion, since patent owners and applicants will no longer be able to rely, as before, on the **absence** of a TSM to **disprove** obviousness.

IPBiz notes 35 USC 103 has text: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In patent examination, the Patent and Trademark Office (PTO) has the burden of showing a prima facie case of obviousness. In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1530 (Fed. Cir. 1993); see In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In patent litigation, the party challenging the patent has the burden of proving invalidity. For example, Helifix, 208 F.3d 1339.

Thus, IPBiz notes that fulfilling the requirements of the TSM is a burden of the patent challenger to establish obviousness. It is not, as suggested by the commenter, "a requirement to prove non-obviousness." Further, of --TSM as an "exclusive" test, that is, as a requirement to prove non-obviousness--, the PRESENCE of a teaching, suggestion, motivation is used to show OBVIOUSNESS, not non-obviousness.

If the Supreme Court were abolishing proof of TSM as a requirement to establish obviousness, the holding of KSR v. Teleflex will not do the job, as the Supreme Court found proof of TSM to establish obviousness in the case.


See also

Paul Morgan's personal comments on DOJ/FTC proceedings (2002).


The orangebook blog noted on May 13, 2007, concerning Janssen Pharmaceutica et al. v. Mylan Pharms.:

The Federal Circuit judges specifically asked whether KSR called the lead compound standard into question. Counsel for Janssen replied, "no," arguing that whether you call it "lead compound analysis," "motivation," "reason," or "common sense," the district court's analysis was correct. Janssen's attorney further expressed his belief that the Supreme Court in KSR essentially endorsed the TSM test, so long as it is not rigidly applied.


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