Sometimes an inventor might try to combine two existing devices to form a new device, and then they might seek patent protection for the new device. A major obstacle that they may need to overcome is the non-obviousness requirement for patent protection. Combination inventions often seem obvious because the amount of creativity needed to combine two devices may be minimal. Historically, this has posed few problems, but a recent decision by the U.S. Supreme Court may create some challenges for inventors seeking patents for combination inventions.
The non-obviousness requirement has perplexed many inventors and USPTO examiners. Determining whether an invention would be obvious to someone with ordinary skill in the relevant field can be subjective, and this led to inconsistent results until the Federal Circuit addressed the issue in 1999. The Federal Circuit determined that a combination invention was non-obvious unless the combination was based on prior teaching, suggestion, or motivation. This was an extremely low standard to meet, and the decision was criticized by many patent scholars. An avalanche of new patents soon followed for companies that made somewhat straightforward combinations of existing inventions.
The patent infringement case of KSR v. Teleflex led the U.S. Supreme Court to address the issue of combination inventions in 2007. The Supreme Court considered the question of whether combining an adjustable gas pedal with a sensor on the pedal was obvious. Gas pedals that can be adjusted according to the height and seating position of a driver were already in widespread use, as were sensors on the pedal assembly. Therefore, the defendant argued that the plaintiff’s patent for a combination invention that consisted of an adjustable gas pedal and a sensor on the pedal was invalid because the combination was obvious. The Supreme Court agreed, deciding that an ordinary engineer in the auto industry would recognize the benefit of combining these components and would find their combination obvious.
The result of this decision was a new standard for combination inventions, best known as the ordinary innovation standard. It provides that a combination invention cannot receive patent protection if each component of the combination does what it was designed to do separately. The Supreme Court referred to this type of combination as an ordinary innovation. While it acknowledged that ordinary innovations can improve a product, the Court felt that this type of improvement does not warrant patent protection.
The standard of prior teaching, suggestion, or motivation thus has been discarded in favor of an approach more reliant on common sense. However, the extent to which the threshold has been raised for combination inventions remains unclear until the Supreme Court revisits the matter. While this case offers a useful example of a combination invention that does not meet the non-obviousness requirement, the Court has not yet provided an example of a combination invention that does. In the meantime, a downward trend in patent grants for combination inventions seems likely, as well as a downward trend in patent applications for combination inventions.
