Solicitor General Urges Supreme Court to Reinstate
“Non-Obvious Subject Matter” Condition for Patentability

Solicitor General Urges Supreme Court to Reinstate “Non-Obvious Subject Matter” Condition for Patentability


By: James W. Dabney, Stephen S. Rabinowitz, John F. Duffy

On June 26, 2006, the Supreme Court of the United States granted certiorari in KSR International Co. v. Teleflex Inc., No. 04-1350. The Petitioner in the case, represented by Fried Frank, urged the Supreme Court to disapprove and overrule 23-year-old Federal Circuit precedent that severely limits courts' authority to deem subject matter "obvious" and thus unpatentable. On August 22, 2006, the Solicitor General of the United States filed a Brief for the United States Supporting the Petitioner, which was co-signed by the United States Patent and Trademark Office (PTO). The Solicitor General's brief characterizes existing Federal Circuit precedent interpreting § 103(a) as "flawed," "problematic," "misguided," and "counter-productive." The Brief increases the already substantial likelihood that the KSR case will limit the patenting of trivial adaptations of existing technology, and will in many cases reduce significantly the risks faced by businesses confronted with claims for alleged patent infringement. 

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