Patent Reform Act of 2007 - Update (Part 4)
The doctrine of obviousness has been called the “cornerstone of American patent law.” That could explain why the Supreme Court’s KSR v. Teleflex decision, which arguably tightened the doctrine in a way that could make it increasingly harder for inventors to obtain patents in the U.S., has resonated so loudly over the last several weeks. On the heels of KSR, however, is another possible shake up of the doctrine, this time emanating from the Legislative Branch in the name of Patent Reform. While it may be too early to ascertain whether the Patent Reform Act of 2007 will make the prospects of obtaining patents in the U.S. more uncertain, it is clear that it will affect the way inventions are analyzed under the doctrine of obviousness.
Traditionally, the question of whether an invention was obvious under 35 U.S.C. § 103(a) involved considering the four “Graham factors”: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Graham v. John Deere, 383 U.S. 1 (1966). However, under the proposed new § 103(a), as shown in the table below (juxtaposed with the current version of the law and showing proposed changes), the Graham factors may need to be applied in a different manner in the future.
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A key difference between the existing and proposed § 103(a) is the respective time periods defining eligible prior art. Traditionally, prior art been defined as what was available to those of ordinary skill in the art on or before the date the invention was made, which means the date of “discovery” (see the existing definition of “invention” in § 100(a), which is “invention or discovery”). Under the new law, however, prior art could be defined somewhat broader as what was available to those of ordinary skill before the effective filing date of the claimed invention (see the proposed definition of “claimed invention” in new § 100(i), which could be defined as “the subject matter defined by a claim in a patent or an application for a patent”). Those two dates—the invention/discovery date and the application filing date—could be months, or even years, apart. And during that intervening time period, a considerable amount of new prior art could be developed and used against a patent applicant.
Check back for a subsequent post that will summarize how the new § 103(a) could affect the approach to analyzing the nonobviousness of a new invention using the Graham factors.
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