"Blockbuster" Academic Studies on KSR, Obviousness

Professor Joseph Scott Miller of the Lewis & Clark Law School ( and author of the Fire of Genius Blog) has put together a special issue of the law journal that focuses upon the many aspects of the KSR Supreme Court obviousness ruling. Thus publications include:

• Gregory N. Mandel, Another Missed Opportunity: The Supreme Court’s Failure to Define Nonobviousness or Combat Hindsight Bias in KSR v. Teleflex, 12 Lewis & Clark L. Rev. 323 (2008)

- Arguing that the KSR Court never defined what obviousness requires. Also, despite recognizing the problem of hindsight bias in nonobviousness analysis, the Court appeared to misconstrue the problem. As a result, "nonobviousness decisions will continue to be systematically biased with respect to the legal inquiry required by section 103."

• John F. Duffy, A Timing Approach to Patentability, 12 Lewis & Clark L. Rev. 343 (2008).

- Arguing that a “timing approach” to patentability that considers the free and open competition to innovate present before patenting will reliably generate all obvious innovations quickly once the market and technological conditions make the innovation both valuable and obvious.

• Rebecca S. Eisenberg, Pharma’s Nonobvious Problem, 12 Lewis & Clark L. Rev. 375 (2008).

- Recent CAFC cases having obviousness challenges to pharmaceutical patents suggest that the pharmaceutical industry does indeed have a nonobviousness problem, but that problem is not KSR. Rather, the problem is that many of the patents that the industry relies upon are invalid for obviousness under time-honored patent doctrine.

• Rochelle Cooper Dreyfuss, Nonobviousness: A Comment on Three Learned Papers, 12 Lewis & Clark L. Rev. 431 (2008).

- This paper addresses three areas where improvements could be made in the law on nonobviousness. First, the quantum of inventiveness required for patentability should reflect the capabilities of the ordinary artisan. Second, the asymmetry in the error rate of nonobviousness determinations should be taken into account in setting the standard of nonobviousness. Third, the concept of nonobviousness—or, better, inventive step—should be operationalized by considering the opportunities, risks, and nonpatent incentives the inventor faced at the time of the innovation.

Other papers include:

• Vincenzo Denicolò, Economic Theories of the Nonobviousness Requirement for Patentability: A Survey, 12 Lewis & Clark L. Rev. 443 (2008).

• R. Keith Sawyer, Creativity, Innovation, and Obviousness, 12 Lewis & Clark L. Rev. 461 (2008).

• Colleen M. Seifert, Now Why Didn’t I Think of That? The Cognitive Processes that Create the Obvious, 12 Lewis & Clark L. Rev. 489 (2008).

• Steven M. Smith, Invisible Assumptions and the Unintentional Use of Knowledge and Experiences in Creative Cognition, 12 Lewis & Clark L. Rev. 509 (2008).

• Janet Davidson and Nicole Greenberg, Psychologists’ Views on Nonobviousness: Are They Obvious?, 12 Lewis & Clark L. Rev. 527 (2008).

• Michael J. Meurer and Katherine J. Strandburg, Patent Carrots and Sticks: A Model of Nonobviousness, 12 Lewis & Clark L. Rev. 547 (2008).

• Joseph Scott Miller, Level of Skill and Long-Felt Need: Notes on a Forgotten Future, 12 Lewis & Clark L. Rev. 579 (2008).

View the entire listing here (link)

Special thanks to Hal Wegner for forwarding this information.