Obviousness in the US and EPO following The Supreme Court opinion in KSR v Teleflex

In its opinion in KSR v Teleflex given on 30 April 2007, the United States Supreme Court has lowered the barrier for challenging a US patent on the grounds of obviousness, which will inevitably have repercussions in the way US patent applications are drafted. In doing so, the US test for obviousness has been brought much closer to the test employed by the EPO.

The US approach to obviousness

The US test for obviousness is known as the Teaching-Suggestion-Motivation test (TSM). This has been applied relatively strictly in the past, so that it has arguably been more difficult in many cases to obtain a European patent, when compared to the corresponding US one. The application of this test has also led to US drafting practices that differ significantly from European ones. In particular, since arguments on obviousness tended to focus more on arguing whether particular prior art documents can be combined, there has been less focus on explaining the advantages of the invention itself, and US applications have increasingly omitted to explain the advantages and particular merits of the invention.

The Supreme Court, although upholding the principle of the TSM test, criticised the narrow way in which it has been applied, to the exclusion of 'common sense'. In particular, the Supreme Court held that:

1. courts and patent examiners should not be confined to only considering the problem the patentee was trying to solve;

2. the person skilled in the art in attempting to solve a problem should not be constrained to consider only those prior art elements designed to solve the same problem; and

3. the fact that a combination is 'obvious to try' can be a reasonable indicator that it is obvious.

The EPO approach to obviousness

Many of the above elements find similarities in the EPO Problem-Solution approach, which is the European equivalent of the TSM test. In the EPO test:

1. the problem to which the claim is a solution is not necessarily the problem addressed by the patentee, but the objective problem based on the closest prior art;

2. there is no restriction to only considering those prior art elements that are designed to solve the same problem; and

3. the fact that a combination is 'obvious to try' has long been held to be an indicator of obviousness under EPO practice.

The implications of the Supreme Court Opinion for patent drafting

Although it is difficult to predict exactly how the US patent profession will react to this decision, it is likely to cause a shift in focus towards explaining the advantages of the invention in the application, and away from the tendency to rely on arguments during prosecution as to why prior art documents should not be combined. Indeed, we have already seen advice from US attorneys suggesting the adoption of drafting practices that are commonly employed by European attorneys, who have significant experience of the problem-solution approach.

This advice has covered the need to include statements of advantage explaining the benefits of the invention, to include multiple fallback positions having different advantages, as well as drafting the application to 'tell a good story' - in other words, to convincingly explain how the invention arose, based on a pre-existing problem or need in the field. Under European practice, having a background section, which explains how the invention has developed as a solution to an existing problem, has always been an important element in establishing a convincing inventive step argument. Although US practice has moved away from this approach in recent years, the KSR opinion may well have the effect of reversing this trend, so bringing US and European practice back into line.

Jan Walaski 01 Jan 2007

Return to news list