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CCCA62_045.qxd:CCCA_V1No2_Col-IntelProp-V1.qxd 09/14/2007 04:06 PM Page 45 Intellectual Property How obvious is “obvious”? A U.S. Supreme Court ruling shakes the patent world. or many Canadian companies, patent of the Federal Circuit,which applied what creativity, not an automaton.” Fprotection in the United States is an is commonly referred to as the “teaching- The Supreme Court did not entirely important issue. So a recent decision by suggestion-motivation” (TSM) test for reject the “teaching-suggestion-motiva- the U.S. Supreme Court, which could obviousness. That test requires that there tion” standard. It did indicate, however, have a significant effect on the scope of be some evidence of a suggestion or moti- that the test should not be applied in an patent protection that can be obtained in vation to combine known elements to unduly rigid manner. “The obviousness the United States, is of direct interest to form a patentable invention. analysis cannot be confined by a formalis- Canadian corporations. This case attracted a great deal of atten- tic conception of the words ‘teaching, sug- For an invention to be patentable, it tion from various industry sectors. More gestion, and motivation,’or by overempha- must meet three criteria: novelty, non- than a dozen consumer product, pharma- sis on the importance of published articles obviousness and utility.While the criteria ceutical, software, hardware and other and the explicit content of issued patents,” of novelty and utility are relatively easy to groups filed amicus curiae briefs to influ- Justice Kennedy wrote.The court suggest- assess, it has generally proven more diffi- ence the Supreme Court’s decision. For ed that a more flexible and “common cult to determine whether an invention is example,a group including Cisco Systems, sense” approach be used. obvious. This issue was addressed by the Microsoft, Hallmark,V.F. Corporation and As might be expected,industry respons- Supreme Court in KSR International Co.v. Fortune Brands filed a brief in support of es to the decision are diverse. The Teleflex Inc. (http://www.supremecourtus.gov/ KSR. They argued that the Federal Computer and Communications Industry opinions/06pdf/04-1350.pdf). Circuit’s test for obviousness hurts innova- Association (CCIA) said it was “encour- KSR is a Canadian company that mar- tion by allowing restrictive patents based aged by the Court’s efforts to clamp down kets automobile parts,including gas pedals, on obvious extensions of existing tech- on obvious patents.” Pharmaceutical and to Ford and General Motors. Teleflex, a nologies to be granted and upheld. biotech companies, on the other hand, U.S. competitor, sued KSR, alleging that On the other hand, the Biotechnology were less thrilled. two of KSR’s adjustable pedals,connected Industry Organization (BIO), which in- Whether this decision will result in an to an electronic throttle control, infringe cludes more than 1,100 members, sub- increase in patent litigation remains to be their U.S. Patent 6,237,565. KSR argued mitted a brief in support of the respon- seen.The majority of patents currently in that merely combining the two known dent, Teleflex. BIO argued that biotech- force were issued prior to this ruling.Will elements was obvious and that the patent nology research and development is a those accused of infringement be embold- claim was invalid. long and costly process and that patents ened to attack the validity of patent claims? are an incentive for investment. On the other hand, will patent holders be “ invention are not the subject marketable biotechnology prod- ly a lot of uncertainty as to how this rul- It also argued that significant reluctant to enforce some claims? The results of ordinary What is certain is that there is current- ucts are achieved by previously unimagined improvements. ing will be applied.We will have to wait of exclusive KSR prevailed at the district court, ” the Supreme Court reversed the and see how both the USPTO and the In a unanimous May decision, rights under patent laws. lower courts apply this decision. decision of the Federal Circuit. “results of ordinary invention are not the gowlings.com) is a registered Canadian and which granted its motion for summary Justice Anthony Kennedy wrote that the Ursula McGuinness, (ursula.mcguinness@ judgement and concluded that the patent subject of exclusive rights under patent U.S. patent agent. She practises in the claim was obvious.That opinion was over- laws.”The ruling also states that “a person Hamilton, Ontario, office of Gowling Lafleur turned, however, by the Court of Appeals of ordinary skill is also a person of ordinary Henderson LLP. AUTOMNE 2007 CCCA Canadian Corporate Counsel Association 45