My friend Bob Fish is a very creative patent lawyer. At my request, he prepared a summary of the U.S. Supreme Court’s landmark KSR Int’l v. Teleflex decision. This is an important case, because it encourages the U.S. Patent & Trademark office to reject more applications on the grounds that the invention is “obvious”. Here is what Bob had to say (Bob’s contact info is at the end):

U.S. Supreme Court Re-Introduces Common Sense Into Patent Law

Patents for “inventions” such as the 1-click placement of Internet orders (6149255), peanut butter and jelly sandwiches without crusts (6004596), providing reservations for restroom use (6329919), and printers that print lines at different line spacings (4953995) tend to raise eyebrows, if not anger on the part of the public. But can anything be done? The U.S. Supreme Court certainly thinks so, and has made a significant step forward in its recent opinion, KSR Int’l v. Teleflex, Inc., 550 U.S. ___ (2007).

For many years the courts interpreted obviousness from the standpoint of a Person of Ordinary Skill In The Art (POSITA), a hypothetical person who didn’t have a creative bone in his body. Since a POSITA would only make combinations that were taught, suggested, or expressly motivated by the prior art, the patent office was forced to grant claims whenever they were unable to specifically identify prior art that provided such teaching, suggestion or motivation.

Under KSR the patent office still determines obviousness from the standpoint of the POSITA, but that person is now deemed to have an ordinary level of creativity. Ordinary creativity converts minimal differences from patentable inventions to being mere “design choices,” and should go a long way towards eliminating patents for trivial “inventions.” Interestingly, this commentator has long argued for these very changes as a means for reigning in the excesses of overzealous patent attorneys. See Fish, R., Strategic Patenting, Trafford Press, p 397 (2007).

Robert D. Fish
Fish & Associates, PC
2603 Main Street, Suite 1050
Irvine, CA 92614-6232
tel: 949-253-0944
fax: 949-253-9069
web: www.fishIPlaw.com