The US Patent and Trademark Office (USPTO) recently updated its guidance for patent examiners and applicants in determining obviousness under 35 USC § 103, based on the US Supreme Court’s ruling in KSR Int’l Co. v. Teleflex Inc., 550 US 398 (2007). The new guidance emphasizes the importance of adopting a flexible approach and providing a reasoned explanation when reaching a conclusion regarding the obviousness of a claimed invention.
The USPTO’s updated guidance on obviousness (the Guidance), effective February 27, 2024, aims to add clarity for patent decisionmakers around the non-obviousness standard under 35 USC §103 by promoting increased flexibility and emphasizing the importance of articulated reasoning, consideration of all relevant evidence, and a legal conclusion grounded in factual underpinnings as mandated by KSR.
The Guidance also addresses the impact of the America Invents Act (AIA) on the time focus of the inquiry, provides a flexible approach to the motivation for combining prior art, and leaves patent applicants with strategic considerations in navigating the evolving patent-examination landscape.
In 1966, with the landmark case Graham v. John Deere Co.,[1] the Supreme Court established the framework for determining obviousness in patent law, outlining the essential factors of evaluating prior art, ascertaining differences between prior art and the claimed invention, and considering the level of ordinary skill in the relevant art. The decision emphasized the objective nature of the obviousness inquiry.
Then, in 2007, the Supreme Court issued, in KSR, another monumental decision in the world of patent law that required a flexible, common-sense approach to determining obviousness of a claimed invention. The ruling emphasized that obviousness should not be confined to a rigid test and underscored the importance, when evaluating patent claims, of considering the knowledge and creativity of a person of ordinary skill in the art at the time the invention was made.
The AIA, introduced in 2011, significantly influenced the time focus of the obviousness inquiry as outlined in KSR, shifting from the “time the invention was made” to “before the effective filing date of the claimed invention.” This alteration requires patent examiners to interpret references in line with the AIA’s filing-date focus and its first-to-file system when determining obviousness.
In the past, the USPTO, in its examiner guidance and training, put considerable emphasis on searching for and identifying the best prior art during examination. This new Guidance shifts away from that focus and instead instructs examiners on how to gather and present evidence effectively to establish a prima facie case of obviousness. There are references to a multitude of patent cases that consider patent obviousness throughout the Guidance, including, of course, the pivotal Supreme Court cases KSR and Graham.
Further, the Guidance examines Federal Circuit jurisprudence addressing aspects like combining elements from different references, defining analogous art and the broad interpretation of analogous art, and the acceptance of broad reasons for modifying prior art. These Supreme Court and Federal Circuit cases collectively shape the evolving landscape of patent examination, providing insight into considerations related to obviousness, motivation to combine, and the role of secondary considerations.
The Guidance marks a notable change in patent-examination practices by introducing shifts in examination protocol that promise to shape the landscape of patent prosecution moving forward.
The Principles Established in Graham are Still Relevant
The Guidance reaffirms the central role of Graham in determining obviousness, emphasizing the continued relevance of a factual inquiry in patent examination. The Guidance clarifies that, despite the flexibility introduced by subsequent cases such as KSR, an objective analysis of prior art, ascertaining differences, and considering the level of ordinary skill in the art remain fundamental to the determination of obviousness.
By reiterating the enduring influence of Graham, the Guidance seeks to provide a cohesive framework for decision-makers, ensuring a consistent and principled application of the obviousness standard in patent law.
An Emphasis on Flexibility
The Guidance, mandating a flexible approach to understanding prior art, reflects a nuanced perspective influenced by the KSR decision by promoting a flexible approach to understanding the scope of the prior art, providing a reason to modify the prior art, and underscoring the need for articulated reasoning and evidentiary support. It encourages a broader understanding of prior art, considering the common knowledge and creativity of a person of ordinary skill in the art.
The Guidance also highlights the Federal Circuit’s stance that the reason for modifying prior art in an obviousness analysis should not be confined to a rigid understanding but should consider various sources and motivations. And it recognizes that, despite the flexible approach, a need for clear, articulated reasoning with evidentiary support in obviousness determinations is essential.
Articulated Reasoning and Consideration of All Evidence
The Guidance underscores the necessity for examiners to present clear, reasoned explanations and articulated reasoning in determining obviousness, signaling a commitment to thorough and well-supported decision-making. It also highlights the importance of comprehensive consideration of all relevant evidence, including commercial success, long-felt need, and failure of others to enter the market.
Explicit Endorsement of Flexibility in Motivation-to-Combine Analysis
The Guidance explicitly endorses a flexible approach to articulating motivations for combining prior-art teachings, acknowledging that the term “motivation” should no longer to be interpreted in a rigid or formal way. This allows for a broader interpretation of permissible motivations. Further, this flexibility allows for considerations such as market forces, design incentives, and the interrelated teachings of multiple patents.
Focus on Consideration of Analogous Arts Test
The Guidance places emphasis on the analogous arts test, underscoring its significance in determining whether a reference is within the scope of prior art. It further acknowledges potential flexibility in interpreting the analogous arts test, considering relevant evidence cited by the parties to demonstrate the knowledge and perspective of a person of ordinary skill in the art.
While the Guidance does not substantively change the USPTO’s examination approach to determining obviousness, the Guidance aims to consolidate and synthesize Federal Circuit precedent from the past 15 years, providing examiners and applicants with tools to navigate the evolving landscape of patent examination.
Under the Guidance, there will be an increased emphasis on adopting a flexible and common-sense approach to establishing a prima facie case of obviousness, encouraging patent examiners to consider a broader range of factors and acknowledging the creativity of a person of ordinary skill in the art.
Additionally, the Guidance has reaffirmed the enduring relevance of the principles laid out in Graham, emphasizing the ongoing importance of evaluating prior art, differences between prior art and the claimed invention, the level of skill of a person having ordinary skill in the art, and secondary considerations in establishing obviousness. There is also a continued emphasis on the importance of clear, reasoned explanations and articulated reasoning in determining obviousness.
In the dynamic realm of patent examination, it is imperative for both examiners and patent applicants to stay abreast of the Guidance’s outlined topics. This information is pivotal for examiners to consistently apply flexible approaches while assessing obviousness, thereby ensuring compliance with evolving legal principles.
At the same time, patent applicants must navigate this landscape fully informed, communicating articulated reasoning and flexibility throughout examination of the patent application. By leveraging the tools presented in the Guidance, the USPTO aims to foster clearer communication between examiners and applicants, ultimately elevating the quality of patent examinations and enriching the patent system as a whole.
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[1] 383 US 1 (1966).