By Jad A. Mills and James F. Ewing, Foley & Lardner LLP
This article is part of our Summer 2009 edition of Legal News: China Quarterly Newsletter, Eye on China.
U.S. patent protection is increasingly important to Chinese companies. As it becomes more difficult to obtain a patent, applicants must become aware of which practices lead to successful patent grants. U.S. law disallows the grant of a patent for inventions if the “subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art to which [the] subject matter pertains.” (35 U.S.C. § 103). This is commonly referred to as the non-obviousness requirement for patentability. The 2007 U.S. Supreme Court decision in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) (KSR) articulated a flexible approach to obviousness. The KSR decision made patents harder to obtain by making rejections based on obviousness easier to render and support. The improved ability to combine prior art references to deny patentability or invalidate patents for obviousness impacts prosecution, reexamination, and litigation strategy.
In one aspect, KSR made it significantly easier to prove obviousness by redefining the person of ordinary skill in the art. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” (KSR, 127 S.Ct. at 1742). A person of ordinary creativity may employ common sense to recognize which combinations of prior art might be successful. As the Supreme Court explained, common sense also teaches that “familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” (KSR, 127 S.Ct. at 1732). Although KSR requires the examiner at the USPTO to outline the reasoning behind the obviousness rejection, the decision allows the examiner to appeal to her own understanding of common sense instead of forcing the examiner to point to a specific reference. The examiner’s common sense may be more prone to hindsight bias because the examiner’s common sense is generally informed by several years of technological development that occurred after the patent application was originally filed, while specific references are frozen by the time of publication. Furthermore, a creative puzzle-solver is much harder to convince that an invention is non-obvious than an automaton. Applicants must adjust their patent strategies in view of the major impact of KSR on the obviousness inquiry.
By taking careful note of KSR and the obviousness standard, innovators can avoid falling prey to the threat of KSR obviousness rejections and guard against future challenges to patent validity. Key elements to an effective patent strategy to avoid pitfalls may include:
With application numbers continuing to rise without any increase in patent grants, understanding KSR will help Chinese companies continue their expansion into U.S. markets.