Supreme Court Issues Groundbreaking Ruling Making It Easier to Invalidate Patents as Obvious


Longstanding Federal Circuit “Teaching-Suggestion-Motivation” Test No Longer the Exclusive Way to Show Obviousness

The Supreme Court issued a major new decision on patent law today, creating uncertainty about whether existing patents might be invalidated as too similar to previous

inventions. Under the patent statute, an inventor cannot obtain a patent if the invention is “obvious” in light of prior work in the field. The Supreme Court decision rejected a longstanding Federal Circuit test for demonstrating that a patent is obvious under that statute. In a decision issued on April 30, 2007, the Supreme Court held that the Federal Circuit’s “teaching-suggestion-motivation” test conflicted with the patent statute and the Supreme Court’s precedents. As a result, businesses

facing a patent infringement suit will have an easier time demonstrating that the Patent and Trademark Office (“PTO”) mistakenly issued a patent for an obvious invention. In addition, examiners in the PTO will likely reject more applications as mere obvious variations on prior

technology. KSR International v. Teleflex Inc., U.S. Supreme Court No. 04-1350 (April 30, 2007).

LOADING PDF: If there are any problems, click here to download the file.

Written by:


Morrison & Foerster LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.