Planning for Patenting Success in a Post-KSR World Is Not Always So Obvious

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:

• Understand KSR’s application to your technology: the impact of KSR and common rationales to support obviousness rejections differ from technology to technology
• Understand examiner guidelines as well as the point of view of the examiners who will be assessing the patentability of your invention
• Understand the approach of the Board of Patent Appeals and Interferences (BPAI) for cases in your technology area and align arguments with reasons for BPAI reversal; that is, be aware of rationales that have been found persuasive by the USPTO in cases similar to yours
• Follow the case law as it evolves to stay abreast of how the courts are evaluating obviousness
• Provide experimental support in your application for a range of examples within a genus
• Avoid a “problem-solution” approach and refrain from presenting extensive background to your invention, which may be used to your disadvantage in the prosecution process
• Utilize carefully crafted declarations by experts and inventors to support possession of an invention
• Utilize examiner interviews to understand fully an examiner’s concerns and to help the examiner understand the basis of your arguments
• Highlight unexpected results and particular advantages of your invention
• Carefully evidence the knowledge of a person of ordinary skill in the art as it relates to your technology
• Understand the art related to your invention and present thoughtfully narrowed claims based on your understanding of the closest art
• Avoid tunnel vision; harmonize strategies across a patent family            

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.