Change your technology development processes to ensure the creation of non-obviousness inventions to take advantage of the new Supreme Court rulings on what will be allowed for patent protection.

The changes in interpretations of what constitutes obviousness, as evidenced by the rulings in the now landmark Supreme Court case, KSR Vs. Teleflex, have created a lot of discussion and debate about what constitutes a patentable invention. This case could have major implications on the value of technologies, product platforms, and company valuations and for some companies, their ability to compete, if they were relying on obtaining patent protection for their inventions. We believe a change in the Intellectual Assets Management (IAM) process is needed for developing inventions to “ensure” the creation of non-obvious invention development.

We at ipCapital Group have found that during the “routine” IAM invention development process, executives get little advice about what they can do to enhance their invention processes to generate inventions based upon these changes in the patent system.

In order to capitalize on the KSR vs. Teleflex rulings, organizations need to modify IAM processes to ensure the generation of truly non-obvious inventions. This will require changes to the “business as usual” invention processes in:

1. patent literature analysis,
2. brainstorming,
3. extraction and defining inventions,
4. documenting inventions and,
5. the development of IP strategies.

The central finding of KSR vs. Teleflex is that to obtain a patent one needs to ensure that the invention is truly novel and non-obvious. This means the invention must be different from the prior art, that the invention was not a simple combination of what is known, and that it is really based upon using a skill that is very far from what would be considered “ordinary skill” in the discipline of the invention. After having trained thousands of inventors and reviewed and mapped tens of thousands of patents with our firm’s clients over the years, we have gained some unique insights.

It’s important to leverage the new Supreme Court rulings, rather than being fearful or confused by them. If your company does not have a robust starting IAM process, the KSR vs. Teleflex ruling should provide the impetus to create an IAM process that attorneys and management embrace. KSR vs. Teleflex “raises the bar” making mediocre IAM processes much less effective. Once these enhanced IAM processes become more standard in practice, this will help the patent office to allow more non-obvious inventions, which should reduce litigation and enforcement activities and rekindle the constitutional right of patent holders to give the “real” inventor their due and promulgate the arts.

To obtain more information or discuss your unique challenges please contact us.