Thomas Wilhelm on Obvious Inventions

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"When is an Invention Obvious?"

Printed in the November, 2007 edition of "capital times" from the New Capital Fund, Appleton, WI. By Thomas Wilhelm of Wilhelm Law Service.

Patent statutes say "obvious" inventions cannot be patented. But "obvious" is a subjective word, always open to interpretation. Virtually every patent case which is litigated includes an assertion that the invention was obvious. In recent years, the meaning of "obvious" was relatively consistent. The standard was that inventions were obvious only if published documents provided Teaching, Suggestion, or Motivation pointing to the invention (the TSM test).

But other definitions have been used as well. For example, in defining obviousness, courts have recited the following characteristics:

"simple substitutions of one known element for another"
"mere engineering selection"
"obvious choice within the skill in the art"
"no more than ordinary creativity"
"mere combination uniting old elements with no change in their respective functions to obtain predictable results"
"no more than predictable use of prior art elements according to their known functions"

The owner of the invention could sometimes overcome obvious characteristics by showing unexpected or unpredictable results, or by showing rapid adoption by the consuming public, or by the industry, or profession, or by showing long-felt need and many unsuccessful efforts to satisfy the need.

Outside the US, courts use the phrase "inventive step". But they, too, often deal at some point with the word "obvious," and have the same difficulties.

In May, 2007, the US Supreme Court in KSR v Teleflex, rejected the TSM test. The court said assessing obviousness asks whether the invention is more than predictable use of prior elements according to known functions. If each element functions in its known capacity, the invention is obvious, and not patentable. But the court was addressing only a few elements of a mechanical structure. What would the court's analysis have been if a larger number of elements had been involved? What if one of the elements had been slightly modified? What if the result had been only somewhat predictable?

Even highly-experienced patent attorneys and litigators disagree on what a court will decide in hotly-contested cases. Such uncertainty continues to drive parties to the courts for answers.

In July, the US Patent Office rejected three of WARF's granted patents as obvious. Also in July, a federal appeals court, citing KSR, ruled that two others of WARF's granted patents were obvious. All of these cases are subject to further appeal. How will they be resolved? Will politics play a part? Only time will tell.

Some courts have stated that KSR is a dramatic departure from our recent past. Others say it makes only a minor adjustment.

What do I think? The TSM test, when introduced, was an inventor-friendly departure from prior definitions of obvious. Now that the TSM test is dead, I believe we have taken a step back in time to where we used to look at the "totality of the circumstances" surrounding the invention and ask ourselves "was it inevitable that someone was going to make exactly this invention at about this point in time?" If yes, the invention is obvious. If not, it is not obvious, and is patentable.

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