12 July 2007

Higher patent standards

By Jim Pinto

The U.S. Supreme Court has made it more difficult to obtain a patent. This development is a boon to technology firms accused of patent infringement with claims that are “too obvious.”

Until now, a challenger seeking to invalidate a patent must have shown that all parts of a claimed invention were known previously. In addition, the challenger must show there is a prior “teaching, suggestion or motivation” to combine these prior technologies to produce the invention. Patent examiners use the same test at the front end of the process when companies are seeking patent protection for their claimed inventions. In the past two decades, patent applications have more than tripled to more than 440,000 a year. The government approves more than half of the patents sought.

Just over two months ago, in a decision with far-reaching implications, the Supreme Court overturned a lower court’s decision, ruling there needs to be a fairly high standard for patentability. In a unanimous ruling, the justices said a federal appeals court has gone too far in embracing a standard that addresses one of the most basic issues in patent law: Whether a claimed invention is obvious and therefore unworthy of patent protection.

The decisions by the court indicate a growing trend in favor of companies targeted for infringing on patents that most people consider obvious. If just any common-sense invention is able to receive a patent, “patents might stifle, rather than promote, the progress of useful arts.”

With this Supreme Court ruling, the U.S. Patent Office will now be applying the higher standard toward patents. Any earlier patents granted with the low previous standard will stand. But, if challenged, they are subject to the new standard.

An interesting series of patent infringement lawsuits have had an impact on the industrial automation business over the past several years. Solaia Technology, a company solely in the business of enforcing patents, partnered with Schneider Automation to pursue patent infringements.

Related links:

• High Court Eases Current Patent Standard:
  http://accounting.smartpros.com/x57497.xml
• Patent reform: Is this the year?
  http://www.eetimes.com/news/latest/showArticle.jhtml?articleID=199400075
• Automation ‘patent trolls’ net millions from end-users:
  http://www.jimpinto.com/enews/nov22-2004.html#3

Behind the byline

Jim Pinto is an industry analyst and founder of Action Instruments. You can e-mail him at jim@jimpinto.com or view his writings at www.JimPinto.com. Read the Table of Contents of his new book, Pinto’s Points, at www.jimpinto.com/writings/points.html.