KSR and Medical Patents – Explaining Obviousness

February 17, 2009 at 11:24 pm 1 comment

Hi, this is Rabbi, Dr. Yosef Freedland, Surgeon, and Patent Attorney on Medical Devices at Appelfeld Zer Fisher.

KSR v. Teleflex, one of the Supreme Court patent decisions, has implications which are fairly far-reaching, affecting the “obviousness” of many patents.

A patent is granted to something we will call “a device” that is both novel and is not obvious.

A novel device means that the device has never been seen before in the world, nor described before anywhere in the world, and that it has industrial application. A device that is not obvious means that it does not combine two or more previously existing inventions.

I give an example of a novel device that is obvious and hence will not be granted a patent. Let’s say you take a hand pump to pump the tires on bicycles and or cars. And what you do is you attach an orange juice squeezer to the handle of the pump. Of course, this can be very useful because if in the middle of pumping up a tire, you get thirsty you can take a break and squeeze some orange juice and have a refreshing drink.

This combination of a pump and orange juice squeezer may be very useful in third world countries where pressurized pumps are not readily available. Someone who pumps tires all day, for example looking for air leaks, applying patches, and then pumping the tire to the normal pressure may have tremendous benefit from your combination pump and orange juice squeezer.

Your pump and orange juice squeezer is actually quite novel because you look throughout all the magazines and patents throughout the world and you see that nothing exists that allows a manual tire pumper to receive organic and fresh orange juice throughout the day.

So if a patent could be granted to just on the basis of describing a “novel” invention, your pump and orange juice squeezer would be granted a patent, at least in the US.

The problem is that there is an issue of obviousness, which means that it would be obvious to someone who knows about tire pumps tires and orange juice squeezers to combine a manual air pump with a manual orange juice squeezer. In fact, the way you have combined the two objects is by taping the orange juice squeezer to the handle of the air pump. So there is nothing novel in the way that you have combined these two objects.

Since your orange juice squeezer and air pump represent an obvious combination, unfortunately you will not be granted patent.

In terms of legal implications of KSR versus Teleflex, the Supreme Court decided that when you combine invention A with invention B, to make invention C, the level of obviousness that will now exist is much stricter.

For example, if you have a distance sensor associated with an airplane and you modify it to work with an automobile, even if you make a few specific changes in the way the sensor attaches to the automobile over the way it attaches to the airplane; it may be an obvious invention.

OK, so this is Rabbi, Dr. Yosef Freedland, Surgeon, and Patent Attorney signing on how “Obviously” bad obviousness can be for invention. Stay Tuned.

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Entry filed under: Medical Device Patents. Tags: , , , .

Patent of Selection – What’s That? What is Obviousness?

1 Comment Add your own

  • 1. Paul Cole  |  September 12, 2009 at 9:35 am

    The combination of bicycle pump and orange juice container is on your hypothesis and probably also in fact novel and non-obvious.

    But it is not a true combination of features because no new or unexpected result flows form the combination. Therefore the features stand to be considered individually and both are known.

    This formulation was put forward in UK bu Lord Hoffmann in the Sabaf case, and is arguably the best solution of the paradox that some alleged combinations are not obvious, but are not inventive either.

    Reply

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