WASHINGTON, D.C.- "We are strong supporters of intellectual property rights, which are indispensable to continued innovation and to the health of competitive markets. However, precisely because of our fierce insistence on the importance of intellectual property rights, we are also adamant that the patent system must not overreach by trying to protect too much." So write James DeLong and Solveig Singleton in an amicus curiae filed today with the U.S. Supreme Court on behalf of the petitioner in KSR International v. Teleflex Inc.

DeLong, a Progress & Freedom Foundation senior fellow and director of its Center for the Study of Digital Property (IPcentral.info), and Singleton, a PFF senior adjunct fellow, argue that the patent awarded Teleflex relating to an automobile accelerator pedal should not have passed the "obviousness" test applied to patents. They reject the ruling of the Federal Circuit in the case that a patent application can only be rejected as "obvious" if the examiner finds evidence in prior art "a concrete teaching, suggestion or motivation" for combining elements. That, they argue, leaves out the "application of common sense… The result is a one-way ratchet in favor of granting patents, which only encourages trivial patents that actually retard innovation and competition."

Practitioners understandably fear that a more aggressive application of the obviousness standard could lead to examiners clearing their desks by stamping "obvious" on numerous files and tossing them in an out-tray, write DeLong and Singleton. But the result of a more flexible obviousness standard needn't be that draconian. "Risks of subjectivity can be better controlled by available administrative mechanism, such as revised PTO incentive structures or multi-member review panels, and by district courts bringing to bear additional doctrines…"

"In essence," argue the senior fellows, "where the Federal Circuit has gone wrong is in placing too great a burden on an articulation of the nonobviousness doctrine as the solution to the problem of controlling the exercise of subjective judgment and hindsight bias in the huge organization that is the USPTO. This temptation must be resisted, because giving in to it represents an effort to force a legal test to perform a quality control function that it is ill-suited to perform. It is, in the classic joke, the equivalent of searching under the street light because the light is better there."

DeLong and Singleton earlier had filed with the U.S. Supreme Court in support of a petition for a writ of certiorari in the KSR v. Teleflex case, a petition that was granted June 26th. The case will be argued in the High Court's October term. PFF and IPcentral's work in the KSR case is part of the ongoing study of the role and importance of patents both in the U.S. and in the global economy. The patent debate was central in all-day conferences held this year by PFF and IPcentral in Prague, Buenos Aires and Sao Paulo.

The Progress & Freedom Foundation is a market-oriented think tank that studies the digital revolution and its implications for public policy. It is a 501(c)(3) research & educational organization.