The title of this post is the title of my paper which I had authored as an undergraduate law student and which was selected as the best essay in the international essay competition organized in the year 2008 by the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP). Although dated, I am sharing the essay for the benefit of those of our readers who may wish to read it. For those interested, a modified and much more refined version of the paper was subsequently published in 2010 in the International Review of Intellectual Property Law and Competition Law (41 IIC 410 (2010)).
The central exercise attempted in the essay was to understand and compare the standards of obviousness adopted by the US Supreme Court in KSR v. Teleflex and the UK House of Lords in Angiotech Pharmaceuticals Inc v. ConorMed Systems Inc. Extracted below are a few excerpts from it:
“Restatements sometimes, rather most of the time, help us understand concepts better and may even lead to new theories. This is particularly true of the concept of obviousness; though obviousness has been the subject-matter of quite a number of decisions and disquisitions, every subsequent judicial pronouncement brings out a feature of its mien which hasn’t been dealt with before or which when restated brings out a new perspective. This is not because the concept is nebulous, but because it is inherently fluid and subjective. As more and more hitherto unknown or unfathomable situations present themselves, obviousness too adapts itself accordingly without giving up what is characteristic of it- Change and the ability to map change....
This criterion necessarily has to remain dynamic in its application for it reflects the rate of change of technology or to give it a negative definition, it mirrors the changing standards of evaluation of obscurity or obsolescence of knowledge. In fact, such semantic agility suitably equips it to keep pace with technology, which is an ideal quality expected of every branch and precept of law- to mirror life.
The Supreme Court of the United States in KSR v. Teleflex (2007) lent a touch of dynamism to the concept of obviousness by advocating a more flexible approach without altogether replacing the three step Teaching-Suggestion-Motivation (TSM) test.
More recently, the House of Lords of the United Kingdom, in Angiotech Pharmaceuticals Inc v. Conor Medsystems Inc (2008) uncovered, though not with complete success, another facet of obviousness in the process of adjudicating the issues involved. Though both these judgments in general discuss obviousness, there exists an important distinction between the two; where KSR elaborates on the pros and cons of an “obvious to try” standard vis-à-vis a rigorous standard of obviousness, Angiotech deals with the principle of sound prediction of the technological success of an invention revealed in the patent. It must be understood that the principle of sound prediction has a close connection to an “obvious to try” line of argument.”....
....“4.5.1 The Metaphorical Pyramid of Logic
Let us assume that the logical structure is in the form of a pyramid with the focus becoming sharper as one moves towards the polygon vertex, generally referred to as the apex of the pyramid. The apex represents the specific inventive step of the patented invention while the building blocks leading to the apex allude to the path taken to reach the apex, and the very foundation of the pyramid refers to prior art...
It must be understood that obviousness is mixed issue of fact and law and therefore turns on the nature and standard of evidence submitted. The corollary to this proposition is that an “obvious to try” standard is subsumed in the standard of obviousness. Where it suffices to show that to venture in a particular direction is itself obvious with no possibility of new results than the ones already known, then no matter what one calls it, one is going by the “obvious to try” standard. It follows that if the so-called “invention” is so manifest that its banality can be proved by the very act of trial, then it should not be much of a fight for a challenger to go one step forward and establish the obviousness of the invention itself rather than limiting himself to proving that it was too obvious to try.
If KSR could be accused of blurring the concept of obviousness in its attempt to be progressive, Angiotech is a step backward; consequently, the locus of obviousness as it stands today can be compared to Salsa. The tragedy in both cases is that while the rest of the world looks up to the US and UK Courts for clarity on patent law, the Apex Courts of both these countries have not risen to the occasion.
Interestingly, the Federal Circuit in the US and the Court of Appeals in the UK seem to have better track records for being consistent in their approach with the oft-quoted critique being that their consistency over a period of time is a sign of lack of imagination. It would do us a world of good to realise that in our efforts to define certain fundamental concepts of patent law such as obviousness, we should not go to the extreme extent of verbalizing the law beyond a reasonable point. Both form and content should be given their due if patent law is to achieve its objective- better innovation and not necessarily greater number of patents."