In Global IP Disputes – Don't let your lawyers slavishly apply a legal test

On 30 April 2007, the US Supreme Court handed down its long awaited (and unanimous) decision in KSR v Teleflex.

Lawyers love bullet point tests that they can apply when advising clients about intellectual property. Such tests can readily become ingrained in everyday practice, at the IP Office, and even the decisions of the lower courts.

Teleflex have just been resoundingly reminded that the problem is that this can lead people away from the jurisprudence underlying the issue to be decided.

In KSR v Teleflex, the US Supreme Court rejected the slavish application of the ‘TSM’ test (Teaching, Suggestion, Motivation) used by many practitioners and the Court of Appeals for the Federal Circuit to determine questions of obviousness.

This is not a unique situation, for example, the House of Lords recently criticised the slavish use of the Improver test for claim construction in Amgen v TKT and the Australian High Court criticised the use of tests for obviousness in Aktiebolaget Hassle v Alphapharm (the Omeprazole case).

Here are some further points of interest from the US Supreme Court’s decision:

  1. T,S,M is not overruled, and does capture a useful insight — A patent composed of several elements is not obvious merely because each element was independently known in the art.
  2. Obviousness is not to be determined only by reference to the problem the patentee was trying to solve. (In contrast to the situation in Europe — briefly discussed below.)
  3. It is incorrect to assume that a person skilled in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.
  4. A patent claim can be proven obvious merely by showing that the combination of elements was obvious to try.


Obviousness in Europe

In contrast to the comments by the Supreme Court in KSR v Teleflex, the European ‘problem solution’ approach to obviousness is quite formulaic and relies on identifying the problem to be solved and follows the following well-travelled path:

(a) identifying the closest prior art;

(b) assessing the technical effect achieved by the claimed invention when compared with the closest prior art;

(c) defining the technical problem to be solved as the object of the invention to achieve these results; and

(d) examining whether or not a skilled person, having regard to the state of the art would have suggested the claimed technical features for obtaining the results achieved by the claimed invention.

(For more detail, see the EPO Guidelines, C-IV, 9)

Obvious to try

This can be quite a low threshold for obviousness. Many other countries require some degree of expectation of success as part of the obviousness analysis.

Slavish use of legal tests

I’m all for simplifying things wherever possible. See for example, the 6T’s articles on my website.

However, the trick is in remembering the limitations of the simplified approach — see for example the article “There’s an exception to every simple rule in IP Strategy (Zyprexa)”.


The KSR v Teleflex opinion.

Commentary on Patently’O

Washington Post article.

KSR website.

Teleflex website.

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