It’s Obvious (KSR v. Teleflex)

How do you translate a new idea into a profitable innovation? One of the first steps is to get a patent, to make sure that no one else can steal your idea. To receive a patent, you have to show that your idea meets three criteria: it has to be novel; it has to be useful; and it has to be not obvious. It turns out that this notion of “nonobviousness” is very hard to define, and this is a pressing issue among patent lawyers today.

Yesterday and today, I’m a participant in a conference at Lewis and Clark Law School, in Portland, Oregon, where scholars from different backgrounds are trying to work out this complicated notion of nonobviousness. I’m one of 16 scholars; three of us are psychologists who study creativity, and the others are lawyers, economists, and R&D managers at high tech companies (including IBM and Microsoft).

The issue is timely, because in April, 2007, the Supreme Court decided a case about nonobviousness–the first case they’ve taken on this topic since 1966. A company named Teleflex had received a patent for combining two existing patents. The first prior patent was an adjustable gas pedal, so that drivers with short legs could move the pedal forward. The second patent was for an electronic sensor that could detect how far down the driver had pushed the pedal; the sensor would send an electronic message to the carburator, thus getting rid of the wire cable that used to do the job. Teleflex had been granted a patent for an adjustable pedal with an electronic sensor; they had sued another company, KSR, who had later come up with the same combination and was selling the product. KSR argued that the combination was obvious, and therefore that the Teleflex patent should be invalidated.

Every major player in the U.S. economy took sides in the case, because the potential was that the Supreme Court could radically raise the standard for receiving a patent, making life harder for inventors, university technology transfer offices, and small high-tech companies. Larger companies (Microsoft, Cisco), generic drug manufacturers, and open source software advocates hoped that Teleflex’s patent would be overturned, and hoped that the Court would specify a harder-to-meet standard of nonobviousness.

The unanimous, 9-0 decision overturned the patent, on the grounds that the combination was obvious. And this was a hugely important decision, because the Court rejected the standards that the Patent and Trademark Office, and the lower courts, had been using to determine obviousness.

The Court’s decision is complex, and leaves a lot of issues unresolved. But overall, I think the Court made the right decision, because I believe this new decision allows collaborative webs to innovate more smoothly (in the way that I describe in my book, Group Genius). What are your thoughts?

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