Some people think that the Supreme Court’s 2007 KSR decision ruling out patents for “obvious” inventions means “don’t bother” if your invention isn’t a technological wonder.

Nothing could be further from the truth, say Lawrence Green and James Morris, lawyers at Wolf, Greenfield & Sacks, P.C., a Boston law firm specializing in intellectual property protection.

A rare reversal shows that the post-KSR winds all don’t blow one way. The US Court of Appeals for the Federal Circuit, the top patent court, overturned the US Patent and Trademark Office’s (USPTO) rejection of a patent for a rattlesnake antivenom—the only such one on the market—last August. The company strongly disagreed it was “obvious.”

In its ruling* the Federal Circuit said the USPTO overlooked evidence rebutting the purported obviousness and ordered the office to reconsider the patent application. “I’m optimistic the patent will be approved, and the invention of this critical, life-saving medicine will be rewarded,” says Green, who handled the appeal.

New patent strategy is subtler

But post-KSR, patent lawyers must work harder to give the patent examiner more background to head off the obviousness trap. “With certain types of patents, you must be prepared to show the invention has unexpected results or that it is contrary to the prevailing wisdom. However, if there’s unpredictability in the art, it’s not obvious. And commercial value is still a real indicator of non-obviousness,” Morris says. “The law hasn’t changed.”

“Where the advance seems small, showing unexpected results is helpful. But if the advance is more significant, or if it is in an art like biosciences that is unpredictable by nature, you still don’t need to show unexpected results—despite KSR,” Green adds.

Though the KSR decision raised the bar, there’s no reason to be defeatist.

“The Supreme Court tossed out an inflexible application of ‘teaching-suggestion-motivation’ test and opened the way for a more flexible, commonsense way to evaluate whether or not an invention is obvious,” Green says. “If you’re on the fence whether an invention is patentable, talk to an IP lawyer. You might be surprised.”

The US Patent and Trademark Office (USPTO) issues about 2,000 patents a week—and few of them are for the equivalent of the light bulb, the pair point out.

“You won’t see any more patents for peanut butter sandwiches, but if your invention represents a real incremental improvement, you can still patent it,” Green adds.

*August 29, 2007, 2006-1507 (Serial No. 08/405,454) In Re John B. Sullivan and Findlay E. Russell