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

Intellectual Property and Patents

Article Snapshot


R. Polk Wagner


Texas Law Review, Vol. 85, 2007


This paper looks at whether the courts make it too easy to get a patent.

Policy Relevance

Some argue that the Federal Circuit Court of Appeals makes it too easy to get patents, and this hinders innovation. Evidence fails to support this argument.

Main Points

  •  Patents are only for non-obvious inventions; the FCA rule is that an invention is obvious if earlier technologies give the inventor a strong hint (the “teaching-suggestion-motivation” or TSM test).
  • When an inventor challenges a patent examiner’s or court's ruling that an invention is obvious, the FCA upholds the rulings 64-65% of the time. In cases about obviousness, the FCA finds the idea obvious 58% of the time, and this rate has been increasing. A low affirmance rate makes sense because obviousness is a difficult factual question.
  • The TSM test is only used 45% of the time in FCA obviousness cases; in those cases 52.4% find the invention obvious. Both rates are increasing.
  • Many inventions can look “obvious” in hindsight; the Supreme Court has warned that hindsight is not a good basis for rejecting a patent.
  • The TSM test encourages each patent claimant to explain their invention more fully, because this can hinder copycats with a new spin on the idea from getting patents.
  • The concern that too many patents hinder innovation is based in theory, but has not been proven with empirical evidence.

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