The Supreme Court recently issued an opinion (KSR International Co. v. Teleflex Inc.) regarding the standard for determining if a new apparatus or method is obvious, and thus not patentable. Under §103 of the Patent Act, no patent will issue 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.”
In making this determination, the Supreme Court requires that an assessment be made whether the improvement is more than the predicable use of prior-art elements according to their established functions. This can be done by looking: “to interrelated teachings of multiple [prior] patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art.” Moreover, consideration can be given to “inferences and creative steps a person of ordinary skill in the art would employ.”
The Supreme Court also stated that the test previously used for determining obviousness was insightful. This test is referred to as the “teaching, suggestion, or motivation” (TSM) test, wherein a claimed invention can only be proved obvious if the prior art, the problem’s nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.
The Court stated, however, that in some instances the test was too limiting on the obviousness inquiry. Accordingly, “[g]ranting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.”