KSR Moves U.S. Toward European Standard for Inventive Step?
According to Morgan D. Rosenberg and Richard J. Apley writing for Intellectual Property Today, the obviouseness standards announced in KSR v. Teleflex now closely match the requirements for “inventive step” in Europe because
- The identified problem and solution of a claim is not necessarily held as the only problem addressed by the inventor(s), but an “objective problem” may be found based on the closest prior art;
- there is no restriction to considering only the prior art elements designed to solve the same problem; and,
- a combination being “obvious to try” as an indicator of obviousness is common under EPO practice.
Prior to this move towards EPO-style analysis, practitioners relied on arguments based around non-analogous art and errors in combining prior art references. With the “obvious to try” and “problem-solution” rationales now in place, on top of the previous Graham inquiries, patent drafting will likely return to listing specific advantages of the invention (which disappeared from applications following the ruling in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.)8 In European patent applications, one typically finds large background art sections, laying out the various problems seen in the prior art and offering often numerous advantages and reasons for the present invention, particularly in light of the prior art. Although Festo removed language such as “It is a particular objective of the present invention …” from U.S. patent applications, much longer lists and descriptions of advantages and
problems solved by the invention will likely be incorporated into post-KSR applications. Though this is not a change to rules, the look and feel of U.S. applications will also slightly shift to those of present European patent applications.. . .