A Handbook of Contemporary Research
Research Handbooks in Intellectual Property series
Edited by Toshiko Takenka
Chapter 14: Back to the Graham Factors: Nonobviousness after KSR v. Teleflex
Elizabeth A. Richardson* Introduction To be patentable, an invention must have utility, it must be new, and it must be different enough from what has come before such that it is not merely an obvious advance. Nonobviousness is thus a central part of the bargain between the inventor and society; an invention that is simply obvious over the prior art is not worthy of the limited monopoly a patent provides, because such an invention contributes less to society than an invention that represents a greater (nonobvious) advance. Akin to the ‘inventive step’ in many other jurisdictions, nonobviousness is in some respects the heart and soul of patentability, separating the truly innovative wheat from the chaff of unpatentable minor improvements. In the United States, nonobviousness as a requirement for patentability is codified at 35 U.S.C. § 103(a), which provides in relevant part: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title [novelty], if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.1 This fairly straightforward statutory language belies a far more complex tapestry of case law, from both the United States Supreme Court and the United States Court of Appeals for the Federal Circuit, which provides...
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