This week I will be talking about
predictability and obviousness in patents. The case of KSR vs. Teleflex was
revolutionary in the obviousness and predictability space. Teleflex claimed
that KSR infringed on their patent connecting adjustable vehicle controls
pedals to electronic throttle control. The district court ruled in favor of
KSR, but the decision was over turned in the Court of Appeals for the Federal
Circuit in January 2005. After the case, obviousness is about the predictability
of results. In the past, one was able to argue that obviousness was
inappropriate if there was no teaching or suggestion on how to combine prior
art. After this landmark case however, teaching and motivation to combine prior
art are not required for the patent examiner to reject the application.
According to IP watchdog, the patent examiner has six rationals available to
reject the patent. They are:
1.
If the invention a product of combining
prior art elements according to known methods to yield predictable results the
invention is obvious.
2.
If the invention is created through a
substitution of one known element for another to obtain predictable results the
invention is obvious.
3.
If the invention is achieved by using a
known technique to improve a similar device in the same way the invention is
obvious.
4.
If the invention is created by applying
a known improvement technique in a way that would yield predictable results the
invention is obvious.
5.
If the invention is achieved from
choosing a finite number of identifiable, predictable solutions that have a
reasonable expectation to succeed the invention is obvious.
6.
If known work in one filed of endeavor
prompts variations based on design incentives or market forces and the
variations are predictable to one of skill in the art the invention is obvious.
Please check out my next blog post for
an example of how a company beat patent obviousness in the pharmaceutical
industry.
Hey Ryan,
ReplyDeleteI thought that this was a great summary of last week's class and articulated the idea of obviousness well. I particularly liked how you listed the different rationale of the patent examiner to determine obviousness. This helped to clarify the concept for me a lot! I'm looking forward to your next post.
Hey Ryan,
ReplyDeleteI thought that this was a great summary of last week's class and articulated the idea of obviousness well. I particularly liked how you listed the different rationale of the patent examiner to determine obviousness. This helped to clarify the concept for me a lot! I'm looking forward to your next post.
Great blog post. I also blogged about this case because I thought it was so revolutionary to the patent law world. It established a precedent about obviousness such that following cases can do the same. I also like how you listed the six examiner rationals out. Good post!
ReplyDeleteRyan,
ReplyDeleteGreat blog post. I think that I might have read the same article as you on IP watchdog. Thanks for listing the examiner's obviousness checklist-- it made your post clear and easy to read.
Daniella
Hey Ryan!
ReplyDeleteI almost blogged about this case after watching your video of it on YouTube! It definitely is an extremely interesting case, and one that proved to be revolutionary for the patent system in the U.S.! Also, I really appreciate the fact that you listed the actual checklist used to determine whether it was obvious or not!
Hi Ryan, good job on your blog post about the KSR v. Teleflex case. I enjoyed your summary of the case along with the key product details. It will be interesting to see how this case continues to serve as precednet for other obviousness-related patent cases. Thanks!
ReplyDelete