More on the impact of KSR

This post is from Lawrence Ebert, a New Jersey patent lawyer whose blog IPBiz covers intellectual property news.

Although Jess Bravin of the Wall Street Journal (full story available here, subscription req’d) suggested that the decision by the Supreme Court “swept aside” the test used by the U.S. Court of Appeals for the Federal Circuit (CAFC) to determine whether an invention was “obvious” — and therefore ineligible for a patent, it is perhaps more accurate to say that the Supreme Court made it easier to satisfy the motivation component of the obviousness inquiry. Tony Mauro quoted Chief Judge Paul Michel of the CAFC as saying that under his reading of the opinion, the teaching, suggestion, or motivation test remains part of the calculation of obviousness, “but it gives us forceful instruction on the manner in which the test is to be applied.” With relaxed requirements to combine different references to invalidate claims, the U.S. may reach what is referred to in Europe as mosaicing.

Bravin, and others, have recognized that the change in the obviousness standard will likely increase the amount of patent litigation (Bravin: “With challengers emboldened to resist infringement claims, more disputes could head to court.” The Washington Post, quoting Professor John R. Thomas, said that the court’s ruling makes many existing patents vulnerable to court challenge because they were issued according to a standard the justices have now rejected.) Thus, the near-term impact of the KSR decision will be to enhance uncertainty.

A more interesting angle explored by Bravin involved the impact of the KSR decision on open innovation models (for example, see Henry Chesbrough on “open innovation.”) Bravin quoted David Kappos of IBM: “What they’re starting to put together here is a model for a 21st-century patent system. Closed proprietary innovation remains important, but the court seems to be saying that patent law can also accommodate 21st century models that are more open, more collaborative.”