KSR and Standards of Inventive Step: A European View, 8 J. Marshall Rev. Intell. Prop. L. 14 (2008)

The United States Supreme Court decision in KSR International Co. v. Teleflex Inc. raises many questions, most importantly, how the test for obviousness applied in the United States (“U.S.”) now compares with that applied in the United Kingdom (“U.K.”) and by the European Patent Office (“EPO”). In seeking to answer those questions, this article explores the history of obviousness and the tests for inventive step in the United States, the U.K. and the European Patent Office. A comparison of the United States Patent and Trademark Office and EPO examination guidelines, suggests that it would have been a good idea to inform the U.S. patent examiners that if an applicant can demonstrate a new and unexpected result, this is strong prima facie evidence of inventive step, a fact supported by several opinions of the U.S. Supreme Court. Experience in the EPO is that where an applicant can demonstrate a credible technical problem that he has solved, he will almost always be granted a patent. This article asserts that instructions to examiners are of general importance because they are the main tool used during examination and the important event for most applicants is grant or refusal by the patent office. Thus, quality patent examination is not just a matter of ensuring that applications lacking merit are reliably refused, but also of ensuring that meritorious applications are reliably granted