IP: Patent Update May 2007

One of the most frequent reasons that the U.S. Patent Office rejects a patent application and the most frequent basis upon which challengers seek to invalidate issued patents is “obviousness”. Until April 30, 2007, the standard for judging patent obviousness had been a long-standing one set by the Federal Circuit Court of Appeals more than twenty years ago: teaching-suggestion-motivation.
Under this test, there had to be either an explicit or an implicit “teaching, suggestion or motivation” which would cause someone “of ordinary skill in the art” to combine prior art patents or literature before the claims of an invention would be deemed to be “obvious” and, consequently, non-allowable (in the case of a patent application) or invalid (in the case of an issued patent). The reason that this test had been adopted was ostensibly to prevent courts and the USPTO from engaging in 20-20 hindsight after an invention had been presented.