The Federal Circuit and Patentability: An Empirical Assessment of the Law of Obviousness

61 Pages Posted: 10 Aug 2006

See all articles by Lee Petherbridge

Lee Petherbridge

Loyola Law School Los Angeles

R. Polk Wagner

University of Pennsylvania Law School


It is by now a cliché to suggest that the United States Court of Appeals for the Federal Circuit has weakened the standards for obtaining patents. In this article, we empirically assess that Court's performance on the ultimate question of patentability - the requirement that a patentable invention must be nonobvious. Our findings suggest that the conventional wisdom may not be well-grounded, at least on this measure.

Nowhere is the Federal Circuit's controversial role as the locus of judicial power in the U.S. Patent system more evident than in the context of the doctrine of obviousness under 35 U.S.C. Section 103. The determination of whether an invention was obvious to a person having ordinary skill in the art at the time the invention was made is the foundation of patentability - and thus at the very core of the patent bargain. And the issue's status as a question of law, as well as the spare statutory language, means that the law of obviousness is entirely a creation of the courts.

In the study reported here, we systematically examine the Federal Circuit's doctrine of obviousness. Using empirical data collected from a novel dataset spanning over fifteen years of jurisprudential pronouncements, we suggest that the Federal Circuit has developed a doctrine in this area that is relatively stable and appears reasonably predictable. Indeed, contrary to much recent commentary, these results suggest that the Federal Circuit's doctrinal toolkit - especially the much-discussed (and oft-maligned) teaching, suggestion, or motivation test for combinations of references - has not had a significant observable effect on the results of obviousness cases at that Court.

Although this study falls short of painting a complete picture of the Federal Circuit's performance with respect to patentability, the view that emerges is of a modern jurisprudence of obviousness that is more stable, more consistent, and more flexible than has been heretofore understood. These results, then, should give pause to those who argue for a radical reshaping of the Federal Circuit's doctrine under 35 U.S.C. Section 103.

Keywords: patents, obviousness, nonobviousness, patent law, innovation, Federal Circuit, content analysis

JEL Classification: K29

Suggested Citation

Petherbridge, Lee and Wagner, R. Polk, The Federal Circuit and Patentability: An Empirical Assessment of the Law of Obviousness. Texas Law Review, Vol. 85, 2007, University of Pennsylvania, Institute for Law & Economics Research Paper No. 06-21, University of Pennsylvania Law School, Public Law Working Paper No. 06-30, Loyola-LA Legal Studies Paper No. 2006-21, Available at SSRN:

Lee Petherbridge

Loyola Law School Los Angeles ( email )

919 Albany Street
Los Angeles, CA 90015-1211
United States
213-736-8194 (Phone)
213-380-3769 (Fax)

R. Polk Wagner (Contact Author)

University of Pennsylvania Law School ( email )

3501 Sansom Street
Philadelphia, PA 19104
United States
267-433-4431 (Phone)

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