Washington – The Supreme Court on Monday made it easier to invalidate patents, scaling back a legal test that has fueled an era of protection for new products.
In a unanimous ruling, the justices said a federal appeals court has gone too far in embracing a standard that addresses one of the most basic issues in patent law: whether a claimed invention is obvious and therefore unworthy of patent protection.
The test underlies 160,000 patents issued every year.
The standard used by the U.S. Court of Appeals for the Federal Circuit provides “useful insights” that must not become “rigid and mandatory formulas,” Justice Anthony Kennedy wrote.
“Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may … deprive prior inventions of their value,” Kennedy added.
In the case of KSR International Co. vs. Teleflex Inc., the Washington-based appeals court supported a patent for adjustable gas pedals. That court handles all appeals in the field of patents.
Until now, a challenger seeking to invalidate a patent had to be able to show that all parts of a claimed invention were known previously. In addition, the challenger had to show that there is an earlier “teaching, suggestion or motivation” to combine these prior technologies to produce the invention.
Patent examiners use the same test at the front end of the process when companies are seeking patent protection for their claimed inventions.
In the past two decades, patent applications have more than tripled to more than 440,000 a year. Last year, the government approved more than half of those.
The legal test at issue in the Teleflex lawsuit has been criticized by the Bush administration as leading to an unwarranted extension of patent protection to claimed inventions that are obvious.
