In order for the United States Patent and Trademark Office (USPTO) to grant a patent to an inventor, a Patent Examiner must be satisfied that the invention claimed is 1) new, 2) useful and 3) not “obvious”. The most difficult question to determine is when an invention is “obvious” or “not obvious”. Equally important is what patents should be considered as relevant “prior art” for the purpose of this analysis.

The United States Supreme Court addressed this issue in the case of KSR International Co. vs. Teleflex Inc. decided in 2007. The court indicated that an Examiner must first understand what problem the inventor was trying to solve. If a solution is available in one field of endeavour, variations of it, either in the same field or in a different one, may be considered. There was much discussion in the patent profession as to what effect this case might have.

The previous case law had required some “teaching, suggestion or motivation” that would make “obvious” the combining of the prior art. The United States Patent and Trademark Office rapidly passed guidelines in October 2007, which did not appear to differ to a great degree from the tests that historically been applied. Now that those guidelines have been in effect for a number of months we are beginning to see the effect of KSR.

Examiners from the USPTO are not hesitating to cite patents from other fields, if they are of the opinion that they teach solutions to similar problems. For example, a patent regarding a drywall brace used to hold drywall in place while it is secured in position with fasteners was recently cited against one of my client’s patent applications relating to all terrain vehicles. This new development adds a further degree of uncertainty to the patent process, making it difficult to conduct a comprehensive search and provide an unqualified opinion regarding patentability.