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Don’t fling me in that briar patch

Oral arguments in the Supreme Court patent case of KSR v. Teleflex (Supreme Court 2006, Oral Arguments)yesterday revolved around the test for determining whether an invention is “obvious” and therefore not patentable. The current test for obviousness has developed over a number of cases over the last twenty plus years. The test requires that to show an invention is obviousness, and therefore not patentable, one must point to some teaching, suggestion or motivation (TSM) in the prior art (old patents and publications).

Proponents of the current TSM rule, like all of the major patent bar associations, argue that the current rule has worked well for decades and that any change in the test would place the validity of hundreds of thousands of patents in jeopardy. Opponents of the TSM rule, such as the software industry, argue the current standard allows too many patents to issue.

One surprising comment in yesterday’s oral argument before the Supreme Court came from Chief Justice Roberts. Responding to the comment that every single patent bar in the country sides with maintaining the certainty associated with the current rule, the Chief Justice responded “That just indicates that this is profitable to the patent bar.”

I do not believe amici briefs filed by the major patent bars are motivated by money. In fact, changing the rule will increase fees paid to patent attorneys. Admittedly, a change in the rule may slightly decrease the fees patent attorneys collect for drafting patents, as a change may dissuade a small number of independent inventors from seeking patents.

Overall however, a change in the rule cannot help but significantly increase fees paid to patent attorneys. Fees associated with prolonged obviousness arguments before the United States Patent and Trademark Office and litigation over the formerly unassailable obviousness of a mountain of patents cannot help but provide patent attorneys job security and increased fees for at least the next twenty years. While I cannot quibble with making more money, I would prefer not to do it on the backs of independent inventors.

Brett Trout

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