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Rules for Combination Invention Patents

The U.S. Patent and Trademark Office grants patent holders an exclusive set of rights for three types of patents: utility, design, and plant patents. The owner can prohibit others from using, making, or selling the invention for a limited time.

1999 Standard for Combination Patents

An invention may combine the elements of existing patents to create a new invention. Before the ruling by the U.S. Supreme Court in KSR v. Teleflex, 550 U.S. (2007), meeting the obviousness requirement for a combination patent was easy. An invention that was not obvious to a person having ordinary skill in the art was patentable. According to the standard used by lower courts and the U.S. Patent and Trademark Office, an invention was obvious if there was prior teaching, suggestion, or motivation in the art to combine the elements. This is known as the teaching-suggesting-motivating (TSM) test.

Standard for Combination Patents after 2007

Under the prior standard, it was easy to receive a patent on an invention that combined the elements of multiple inventions. After the ruling in KSR v. Teleflex, the standard changed.

Facts: Teleflex was the owner of a combination patent on a gas pedal that could be adjusted according the driver's position in the seat and an electronic sensor that could both sense and transmit the position of the pedal to the vehicle's computer. KSR entered into a contract with General Motors to supply adjustable gas pedals with sensor throttle controls that it had created. Teleflex sued KSR for patent infringement.

Ruling: The court considered the question of whether an adjustable gas pedal with a sensor was an obvious invention. The U.S. Supreme Court ruled that an "ordinary innovation" was not patentable. The court defined this as the combination, alteration, or unity of elements, techniques, items, or devices, where each one performed its intended function. Teleflex's adjustable gas pedal was just such an ordinary innovation, according to the Supreme Court. The pedal, therefore, was not patentable, even if it was able to pass the TSM test.

The decision in Teleflex expanded the definition of obviousness and made it more difficult to obtain a patent. Combinations of different technologies that utilize each technology's original function will most likely not be patentable under the Court's decision. To receive patents after Teleflex, inventions must constitute truly novel developments in their fields.

Next Steps
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