KSR Decision May Impact EU Patent Process But Not Harmonisation

By Dugie Standeford for Intellectual Property Watch
While the direct impact of the recent landmark US Supreme Court decision in Teleflex v. KSR on patent law and practice will be felt only in the United States, the case could indirectly spark changes to European patent processes, experts said. Its focus on the troublesome question of when an invention is “obvious,” however, means it probably will not help global efforts to harmonise national patent systems, they said.

The high court’s late-April ruling overturned a decision by a lower court establishing a strict legal test to prove obviousness (IPW, Subscribers, 9 May 2007). At issue was whether combining various prior art publications, known to disclose aspects of the allegedly infringed patent, rendered it obvious and, therefore, not patentable.

The US’s statutory test for obviousness is not very different from that of the European Patent Convention (EPC), said a spokesman for the UK Intellectual Property Office (UK-IPO). But although the terms differ only slightly – the US rejects inventions that are obvious to a person having an ordinary skill in the art, while the EPC requires a patentee to take an “inventive step” not obvious to a person skilled in the art – there is a huge difference in how EU and US courts have interpreted them, the spokesman said. The difference lies particularly in the methodology applied by patent offices to determine whether that threshold has been met.

The European Patent Office (EPO) applies a “problem solution approach” in which the problem the invention seeks to overcome is defined and, if the solution is obvious to someone skilled in the art, no patent is granted, the spokesman said. The UK uses a different approach, dubbed the “windsurfer test”: Identify the prior art and the invention for which a patent is sought, determine if there is a difference between the two, and then ask if the difference is obvious to someone skilled in the art. Most legal experts find the tests usually come to the same conclusion about obviousness, the spokesman said.

The US obviousness test used to be similar to the windsurfer approach, but over time the US Court of Appeal for the Federal Circuit (CAFC), which hears all patent appeals, narrowed it and added the doctrine of “motivation,” the spokesman said. Before KSR, an invention would have been patentable if it were proved on the basis of prior art that a skilled person would have been motivated to try it as a solution to the problem identified.

By relaxing the so-called teaching-suggestion-motivation test and holding that common sense should be part of the analysis for obviousness, the US high court moved the test closer to the European approach, the spokesman said.

Many in Europe view US patent decisions as “quite irrelevant,” but the Foundation for a Free Information Infrastructure (FFII) does not, said President Pieter Hintjens. KSR is “very significant” for several reasons. It is a “rare solid sign” that the patent industry lied when it argued that the more patents there are, the better. Now there is an “authoritative voice saying, ‘the patent establishment bent the rules to make patents easier to get, and that was bad,'” Hintjens said.

Moreover, the US patent system has served a role model for Europe’s, and the high court scrutiny makes it far more difficult for the patent establishment to “take the European patent system down the same road,” Hintjens said. The ruling is evidence of a major opinion swing from the “near-religious belief” in parts of government and industry that patents “are little gods,” a swing that affects opinion in the EU as well.

The fact that the US Supreme Court has now ruled on a key aspect of patent law at a time when the US Congress is attempting to reform the system as well is also significant, Hintjens said. In Europe, patent law is “pretty much hacked into shape” by industry, with no input from the European Court of Justice or Parliament. With plans underway for the creation of a centralised patent court akin to the CAFC but with no judicial oversight, KSR is “extremely relevant to Europe,” he said.

Patent Harmonisation

Don’t expect KSR to help patent harmonisation efforts ongoing among developed countries, the UK-IPO and EPO said.

Harmonisation is about standardising patent legal frameworks, which are already quite similar between the EU and US, the UK-IPO spokesman said. It is difficult, however, to work around differing judicial interpretations, he said. The more political issue is which inventions should be excluded from protection, and the “obviousness” question is a particularly thorny one to try to harmonise. Because of that, KSR is not likely to have a great effect on the negotiations, he said.

Negotiators have already agreed that inventions must be inventive or non-obvious to be patentable, said an EPO official. European delegations generally oppose the inclusion of any methodological elements – such as how to determine obviousness – in a treaty, because, the official said, there is no way to predict how a court will interpret a given case and what effect it will have on patent practice.

Dugie Standeford may be reached at info@ip-watch.ch.