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Patent Reexamination After KSR:
Unworkable Standard at Play
or No Standard at All?
TIMOTHY J. LE Duc*
I. INTRODUCTION
The raising of the bar for patentability after KSR International
Co. v. Teleflex Inc.' has had substantial repercussions on U.S. patent
law, as many commentators predicted.2 During prosecution, the
flexible but illusory KSR standard for obviousness has made it more
difficult to obtain patent protection for worthwhile ideas.3 Some
patent applicants have chosen to simply let pending applications go
abandoned rather than incur the increased cost of prosecution under
KSR. Others are filing ever more appeals to the Board of Patent
Appeals and Interferences (the Board) to combat a tremendous
increase in rejections stemming from extreme positions of examiners
applying KSR.4
Until recently, the patenting process was more of a negotiation
between the filing attorney and the examiner.5 But examiners are
exhibiting a growing unwillingness to budge under KSR's
discretionary standard, leading many applicants to appeal
applications of KSR they perceive as unreasonable.6 Not surprisingly,
KSR's higher standard for patentability contributed to the noticeable
* The author, Timothy J. Le Due, is Of Counsel in the IP Group of Akerman Senterfitt,
and a former Navy nuclear submarine officer, serving on both the USS Aspro (SSN 648) and the
USS Tautog (SSN 639). Mr. Le Duc's practice focuses on patent prosecution and litigation in
the electrical and computer arts. The opinions expressed herein are those of the author alone
and not of Akerman Senterfitt. Mr. Le Due is admitted to practice in Illinois.
1. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007) (holding the obviousness
inquiry should be flexible, and rather than a rigid application of the TSM (teaching-suggestion-
motivation) test, common sense should be employed because [i]t is common sense that familiar
items may have obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces of a puzzle).
2. Dan Bromberg, Patent Law After KSR - A Brave New World, SCOTUSBLOG, (May
1, 2007, 8:20 AM), http://www.scotusblog.com/2007/05/patent-law-after-ksr-a-brave-new-world/.
3. See, e.g., Erin Coe, Low Patent Allowance Hurts Innovation: Experts, LAw360, (Oct.
07,2008), http://www.kmob.com/pdf/LowPatentAllowanceHurtslnnovationExperts.pdf.
4. Sheri Qualters, Appeals Over Patents Skyrocket in 2009, NAT'L L. J., (July 06, 2009),
http://www.law.com/jsp/article.jsp?id=1202432011964.
5. Id.
6. Id.
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