Supreme court rules for innovative innovation


Yesterday was a joyous day for all related to patents and technology! The Supreme Court of the United States has ruled that patents require actual innovation, lest they be considered obvious. This does not completely remove all existing ridiculously obvious patents, but it does raise the bar for obviousness to the more sane application previously made by the Supreme Court in Graham v. John Deere Co of Kansas City.

To my mind, the most important section is this:"The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, sugges- tion, and motivation, or by overemphasizing the importance of pub- lished articles and the explicit content of issued patents. In many fields there may be little discussion of obvious techniques or combina- tions, and market demand, rather than scientific literature, may of- ten drive design trends. Granting 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. Since the TSM test was devised, the Federal Circuit doubtless has applied it in accord with these principles in many cases. There is no necessary inconsis- tency between the test and the Graham analysis. But a court errs where, as here, it transforms general principle into a rigid rule limiting the obviousness inquiry."

The "TSM test" referred to above is what has become the standard for obviousness in many courts. It's a short-cut and it is broad if applied the way it has been applied recently. Specifically, TSM referrs to "Teaching, suggestion, or motivation" which the Court describes as "a patent claim is only 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 further descriptions that admonish the Patent and Trademark Officeto look beyond the problem the patentee is trying to solve and see that "any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed"

Also of interest is the reasoning that a patent that is nothing more than an obvious extension of an existing patent actually deprives the original patent holder of value.

Another excellent comment by the Supreme Court is "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solu- tions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.nd there are a finite number of identified, predictable solu- tions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp."

This is going to make a number of things more difficult to patent (and may well make some patents that have been granted already turn into the useless rubbish they should have been in the first place).

All-in-all, a very good day for true innovation.