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Barbed Wire was designed for "preventing cattle from breaking through wire-fences," Glidden writes in his application. (United States Patent and Trademark Office)

Patent Pending

The Supreme Court may soon reinvent the rules for invention

smithsonian.com

This past November the Supreme Court heard arguments in what could become the first landmark patent case in 40 years. The particulars of the case—whether one company has the right to patent an adjustable car pedal—leave room for excitement. But the impending ruling, which is expected sometime soon, has incited debate between the health-care and technology industries, one of which could benefit greatly from the outcome.

At issue: whether to change the standard for considering an invention "obvious"—and therefore ineligible for patent.

"There's been a shadow over the obviousness standard for quite a while," says patent attorney Michael R. Samardzija, who is the director of intellectual property at the University of Texas-M.D. Anderson Cancer Center.

The concept of patents dates back to 15th-century Venice, says Steve van Dulken, a historian and author of American Inventions. Most patent systems simply allowed inventors to register an idea. But the U.S. Constitution granted scientists and artists "the exclusive right to their respective writings and discoveries," and courts began eliminating "obvious" or repetitive inventions.

The Supreme Court last ruled on patent guidelines in the 1966 case Graham v. John Deere Co. Since that time, the Federal Circuit, which is the appellate body for patent cases, has instituted guidelines known as the "suggestion test" that make patenting an invention difficult.

To be deemed patent-worthy, an invention must meet two criteria. It must be novel, and it must be "non-obvious." The first is clear enough. Say, for example, you invent a four-legged swivel chair. The chair is novel if no other patent mentions each of its defining aspects: having four legs and a swivel function. Still, it's possible that two separate patents—a standard chair and a lazy Susan, perhaps—"suggested" at your creation. Such suggestions don't fly under the suggestion test; for your chair to be non-obvious, the creation must have sprung independently from these two previous, separate ideas.

The suggestion test's high threshold makes patent-worthiness difficult to achieve. The health-care sector, represented in the current case by Teleflex, would like to keep it that way, explains Samardzija. Pharmaceuticals take dozens of years and billions of dollars to patent, and a low patent threshold would make it possible for other companies to claim similar products.

On the other hand, the technology industry, represented in the current case by KSR International, would like the standard lowered. Tech companies rely less on patents and more on brand name; if Microsoft and IBM create a similar product, they'll simply cross-license the idea and avoid litigation, Samardzija says. With a looser "obvious" rule, tech companies could invalidate patents held by pesky small companies—such as the Virginia firm that received a $612.5 million settlement from BlackBerry in early 2006.

"The argument is that [the suggestion test] was never explicitly or implicitly formulated by the Supreme Court," Samardzija says. "Having a Supreme Court imprimatur on it would be very beneficial to patent law as a whole."

Some patents that seem "obvious" now but weren't in their day:

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