Non-Obviousness of Biotech Inventions in the Light of KSR Case

Abstract

Determination of non-obviousness is very complicated because of ambiguities inherent in the steps for making the assessment. The TSM test for ascertaining the mode of combination of prior art for assessing non-obviousness makes the determination objective and certain to some extent. However, the US Supreme Court in the KSR case expanded the test for combining prior art for assessing non-obviousness beyond the TSM test, thus broadening the test for non-obviousness and increasing the ambiguity in its determination. The decision in the case has a huge impact on non obviousness determination for inventions in the field of biotechnology due to ambiguities inherent in the field. This article traces the evolution of non-obviousness jurisprudence, elaborates the application of the TSM test, explains the decision in the KSR case and analyzes the impact of the KSR case on biotechnology inventions.

Keywords: Non-obviousness, Teaching Suggestion or Motivation Test, TSM Test, Biotechnology Inventions, KSR v. Teleflex