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Richardson, Elizabeth A. --- "Back to the Graham Factors: Nonobviousness after KSR v. Teleflex" [2009] ELECD 249; in Takenka, Toshiko (ed), "Patent Law and Theory" (Edward Elgar Publishing, 2009)

Book Title: Patent Law and Theory

Editor(s): Takenka, Toshiko

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845424138

Section: Chapter 14

Section Title: Back to the Graham Factors: Nonobviousness after KSR v. Teleflex

Author(s): Richardson, Elizabeth A.

Number of pages: 27

Extract:

14 Back to the Graham factors:
nonobviousness after KSR v. Teleflex
Elizabeth A. Richardson*




Introduction
To be patentable, an invention must have utility, it must be new, and it must
be different enough from what has come before such that it is not merely an
obvious advance. Nonobviousness is thus a central part of the bargain between
the inventor and society; an invention that is simply obvious over the prior art
is not worthy of the limited monopoly a patent provides, because such an
invention contributes less to society than an invention that represents a greater
(nonobvious) advance. Akin to the `inventive step' in many other jurisdic-
tions, nonobviousness is in some respects the heart and soul of patentability,
separating the truly innovative wheat from the chaff of unpatentable minor
improvements. In the United States, nonobviousness as a requirement for
patentability is codified at 35 U.S.C. § 103(a), which provides in relevant part:

A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section 102 of this title [novelty], if the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject matter pertains.1

This fairly straightforward statutory language belies a far more complex
tapestry of case law, from both the United States ...