Combination patents
Problematic is the existence of multiple prior art references bearing on the same inventive concept, known as a combination patent. A combination patent is granted for an invention that unites existing components in a novel way.
|
Under a soft non-obviousness test, as practiced by the US
Federal Court of Appeals since 1982, such a combination would only be
regarded as obvious if the nature of the problem, or the knowledge of a
person having ordinary skill in the art, reveals some motivation or
suggestion to combine the prior art teachings (so-called "teaching, suggestion, or motivation test").
In addition, the burden of proofing obviousness was put on the
examiner. As a result of this soft non-obviousness test, a great number
of weak patents has been granted in the US, a practice, which has been
widely criticised. |
The KSR case
If you as a patent examiner aim at applying a strict non-obviousness standard and thus wish to keep inventions widely in the public domain, you may learn from the new US Supreme Court decision in KSR International Co. v. Teleflex Inc. et al. (.pdf, 277 kB). In this decision from 2007, the court affirmed its own strict standards elaborated in the Graham case
(.pdf, 132 kB) in 1966 and stressed the need for caution in granting a
patent based on the combination of elements found in the prior art.
According to the US Supreme Court, you
as a patent examiner/judge would have to ask yourself whether the
improvement is more than the predictable use of prior art elements
according to their established functions. An invention could still be considered obvious in cases where, despite the lack of any single express and specific prior art reference, the typical level of creativity and insight of a person skilled in the art would suggest the capability and motivation of such person to come up with the solution at issue or to combine multiple prior art references to that end.
Practical example
Obvious and therefore non-inventive would, for example,
be a machine for producing sausages that consists of a known mincing
machine
and a known filling machine disposed side by side.