Oral Arguments for Obviousness

The issue of what improvements to existing technologies are "non-obvious" and therefore deserve awarding of patents is critical for those of us involved in biotechnology.

Oral arguments for the first Supreme Court Case in more than 30 years examining this issue, KSR v Teleflex, were heard yesterday.

The main issue at hand is whether the criteria for patentability is what is known as the Graham test, basically, "was it obvious to one skilled in the art at the time of invention" or the more recent test which was never upheld by the Supreme Court which asks whether there is a "teaching, suggestion, or motivation" in the art at the time of invention to combine references.

Essentially, it appears that the Graham test has a higher requirements for patentability and that the teaching suggestion motivation test allows more patents to be issued that really are not "non-obvious"

During oral arguments the various justices apparently critized the teaching suggestion motivation test. Most colorfully was Justice Antonin Scalia who called the test
"Three imponderable nouns".

Various industry experts have expressed strong opinions to StemCellPatents.com that the Teaching Suggestion Motivation test will be discarded. This may be unfortunate since it is most difficult, especially in biotechnology to really understand who is the "person of ordinary skill in the art".

The background to this important case may be found in the article, Obviousness and Biotechnology .

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