How does the KSR decision impact obviousness determinations in patent examination?
How does the KSR decision impact obviousness determinations in patent examination?
The KSR v. Teleflex decision by the Supreme Court in 2007 significantly impacted obviousness determinations in patent examination. According to MPEP 2141:
“In KSR, the Supreme Court particularly emphasized ‘the need for caution in granting a patent based on the combination of elements found in the prior art.'”
Key impacts of the KSR decision include:
- Rejection of the rigid application of the “teaching, suggestion, or motivation” (TSM) test
- Recognition that a person of ordinary skill in the art is not an automaton, but possesses ordinary creativity
- Emphasis on the importance of identifying a reason that would have prompted a person of ordinary skill to combine the elements in the way the claimed invention does
- Acknowledgment that common sense and ordinary creativity play a role in the obviousness analysis
Examiners must now consider a broader range of rationales when determining obviousness, moving beyond the TSM test to include factors such as market demands, design incentives, and other market forces.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2141 - Examination Guidelines For Determining Obviousness Under 35 U.S.C. 103,
Patent Law,
Patent Procedure