Another bit of information related to the KSR v. Teleflex case, now being briefed, concerning the "obviousness" standard for patents.

The Federal Circuit and Patentability: An Empirical Assessment of the Law of Obviousness, Lee Petherbridge, Loyola Law School (Los Angeles), R. Polk Wagner, University of Pennsylvania.

The study is still a work in progress and one if forbidden to cite it. So far, it says:

It is by now a cliché to suggest that the United States Court of Appeals for the Federal Circuit has weakened the standards for obtaining patents. In this article, we empirically assess that Court's performance on the ultimate question of patentability - the requirement that a patentable invention must be "nonobvious." Our findings suggest that the conventional wisdom may not be well-grounded, at least on this measure.

This is tremendously interesting. The study goes on to report findings: That Federal Circuit cases that examine prior art for a "teaching, suggestion, or motivation" test show no great propensity to favor the patent claimant and return a finding of nonobviousness. If anything, the opposite is true.

I am concerned, however, about the assumptions behind this. Do we have reason to believe that cases that reach the Federal Circuit are typical? My sense is that rather one would find they are atypical. Highly atypical, since the vast majority of patents sit in a drawer somewhere and never litigated, much less appealed. Perhaps the TSM test, for example, is so much in favor of patentability that any borderline cases are given up as hopeless from the start, and the cases that are pursued are those where the anti-patent case is airtight. Or it might be that the Federal Circuit is often ruling that the inventions are obvious because only they are applying the test “correctly” whereas the patent examiners just do not have the sophistication to do it. Or perhaps the Federal Circuit is being flatly result oriented, and their search for a TSM gives them enough leeway to do as they please.

So I think the findings are interesting, but I am skeptical. And we continue to work on our KSR brief.