One of the major knocks against the requirement of nonobviousness for a patent to be approved is the lack of tangible ways for one to prove nonobviousness. However, there are concrete ways to prove this. One such method is referred to as the TSM test, or Teaching-Suggestion-Motivation test. This test is widely applied to cases that involve nonobviousness, and is useful for eliminating the inevitable hindsight bias, especially in an increasingly innovative technology landscape.
In the case Winner International Royalty Corporation vs. Wang, it was stated that there must be a suggestion or teaching in the prior art to combine elements shown in the prior are in order to find a patent obvious. Nowadays, this concept has evolved to be known as the TSM test. It is helpful for judges so that they don't have to speculate on whether someone "skilled" in the art would have easily thought of this. Although it doesn't completely eliminate gray areas, it definitely narrows them.
However, the test has also been criticized as not concrete enough, as it has been applied slightly different across patent litigation cases. The people that are against TSM have said that the nature of the test should require explicit evidence that there was a teaching or suggestion to combine the elements. But, when it has actually been applied to cases, the federal government has made it clear that an implicit connection is enough. I see both sides of the argument. On one hand, if an implicit connection is enough, then does it really narrow the gray areas in these cases? But on the other hand, there are not many suggestions that are going to be found as explicit.
It is clear that there is no foolproof way of handling nonobviousness, but the TSM test is a step in the right direction.
In the case Winner International Royalty Corporation vs. Wang, it was stated that there must be a suggestion or teaching in the prior art to combine elements shown in the prior are in order to find a patent obvious. Nowadays, this concept has evolved to be known as the TSM test. It is helpful for judges so that they don't have to speculate on whether someone "skilled" in the art would have easily thought of this. Although it doesn't completely eliminate gray areas, it definitely narrows them.
However, the test has also been criticized as not concrete enough, as it has been applied slightly different across patent litigation cases. The people that are against TSM have said that the nature of the test should require explicit evidence that there was a teaching or suggestion to combine the elements. But, when it has actually been applied to cases, the federal government has made it clear that an implicit connection is enough. I see both sides of the argument. On one hand, if an implicit connection is enough, then does it really narrow the gray areas in these cases? But on the other hand, there are not many suggestions that are going to be found as explicit.
It is clear that there is no foolproof way of handling nonobviousness, but the TSM test is a step in the right direction.
There are definitely many cases without explicit suggestions, otherwise the researchers would have just go ahead researching on the suggestions themselves (if they have the time), which could be why they consider an implicit connection as enough. I would think that by saying an implicit connection is enough, it mainly turns away the references which suggested against the invention in the test for obviousness. At the very least, the TSM sets a guideline, which may or may not be followed exactly, but it makes everyone understand the criteria. Thus, it can still speed up the obviousness test assessment aplenty.
ReplyDeleteTSM is one way, but it definitely isn't an all-inclusive answer. There is considerable lagtime before a technology is picked up by an industry. By the time something is being taught, the most likely has been out for a long time. Therefore, while TSM can be a clear-cut easy way for someone to prove an idea has prior art issues, it becomes difficult when someone is trying to use TSM as a way to prove their idea came first if there is a big lag time between when the invention came out and when teaching began.
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