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ABC’s of Patent Drafting After KSR v. Teleflex

In its biggest patent decision since eBay v. Mercexchange (limiting the use of injunctions by patentees), the United States Supreme Court refused to end the patent obviousness inquiry at the Federal Circuit’s teaching-suggestion-motivation (TSM) test. Before KSR, the Federal Circuit held that even if all of the elements of a claimed invention were known in the prior art, the invention was not obvious unless there was some teaching, suggestion or motivation in the prior art to combine the elements in the claimed manner. In KSR, the Supreme Court stated that even if a claimed invention passes the TSM test, the United States Patent and Trademark Office (USPTO) may still reject a patent claim using things such as “common sense.”

The Board of Patents Appeals and Interferences is now wielding KSR like a broadsword, affirming Examiners 64% of the time. What can you do to be in the other 36%, or better yet, not have to appeal at all, even in the face of KSR? Following these ABC’s is a good place to start.

Anticipate– Do not get caught off guard by KSR. Read the KSR opinion, spend more time discussing inventions and prior art with inventors. Draft patents proactively.

Be more selective in filing patents – Is the invention really mind-blowing? If the invention is not is not a quantum advance over the prior art, you may want to have a frank discussion with your inventor about the USPTO’s new stance on obviousness.

Common Sense- The new touchstone overshadowing the old teaching, suggestion motivation (TSM) standard. If the new combination your client created is within the purview of common sense, you may wish to forgo a patent.

Disclose disclose disclose – Do not wait for the USPTO to find prior art for you. Find it. Discuss why it would not be obvious to modify into your claimed invention. Repeat.

Expand your disclosure – What might have been “window dressing” in the past, can now be the difference between getting and not getting a KSR-backed 103 rejection. Write more about the problem, what others have tried and why they have failed at what your client is doing. Point out exactly why the invention is such a boon and addresses such a long felt, yet unfulfilled, need in the industry.

Functionality – add a little functionality in the linking of your claim elements. Nothing differentiates a set of claim elements from the prior art more than a few functional relationships.

Grahamalyze your application – In KSR, the Supreme Court ruled that the factors outlined in Graham v. John Deere Co., 383 U.S. 1 (1966) “continue to define the inquiry that controls [the determination of obviousness].” The Graham factors include: 1) the scope and content of the prior art; 2) the skill level of a person of ordinary skill in the art; 3) the differences between the claimed invention and the prior art’s teachings; and 4) any objective indications of nonobviousness (such as commercial success, long felt, but unresolved needs and the failure of others). Commit these considerations into not only your application, but into all phases of your prosecution.

Good Luck and let me know if you have any tips of your own.

Brett Trout

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