When Is a Combination Invention Patentable?

When inventions that are combinations of existing inventions can be patented.

Many new inventions are combinations of existing inventions. For example, imagine that you wanted an all-purpose home warning system, so you combined a smoke detector with a severe weather warning device. Would the combination be patentable?

Prior to 2007, patents for combination inventions were relatively easy to get. But, depending on how a ruling from the U.S. Supreme Court is interpreted by the U.S. Patent and Trademark Office (USPTO), that could change.

The 1999 Standard

The 1999 ruling. Patent law prohibits granting patents for inventions that are obvious to "one skilled in the art." Because this subjective standard led to unpredictable results, in 1999, the federal court that specializes in technology matters established a formula to be used by the Patent Office and the lower courts in deciding whether something is obvious. If the invention was obvious, it was not worthy of a patent. Under this 1999 standard, an invention was considered patentable (nonobvious) unless there was some prior teaching, suggestion, or motivation to make the combination.

The effect of the 1999 ruling. In the opinion of many people, this overly rigid test lowered the patent bar to the point you could practically step over it. A lot of companies soon earned patents for combinations that seemed obvious -- for example, a patent combining a scanner with USB technology.

Prepare and file a provisional patent application online, with Nolo’s easy-to-use Online Provisional Patent Application.

The Case That Changed the Standard

The rules for combination inventions changed in 2007 when the U.S. Supreme Court decided KSR v. Teleflex, 550 U.S. (2007).

The facts. Teleflex, of Limerick, Pennsylvania, owns a patent that includes the combination of two well-known components:

  • a gas pedal that can be adjusted relative to the driver's seating position, and
  • an electronic (as opposed to a mechanical) sensor which senses and transmits the position of the pedal to the vehicle's throttle computer.

Teleflex sued its competitor, KSR International, of Canada, for supplying General Motors with essentially the same thing -- adjustable gas pedals with sensors that transmitted to electronic throttle controls.

The industry. Adjustable gas pedals designed to accommodate drivers of different sizes were well-known at the time the patent application for the "adjustable pedal assembly with electronic throttle control" was filed. So too were sensors for computer-controlled throttles, and even sensors located on the pedal assembly rather than in the engine compartment.

The question. Was the combination of an adjustable gas pedal with a sensor on the pedal obvious?

The New Standard: Ordinary Innovation Not Patentable

The Supreme Court ruled that a mechanical engineer familiar with pedal control systems for vehicles would have seen the benefit of an adjustable gas pedal with its own sensor.

The Supreme Court decided that when elements, techniques, items, or devices are combined, united or arranged, and when, in combination, each item performs the function it was designed to perform, the resulting combination -- something the court called "ordinary innovation" -- is not patentable. This can be true even if there is no teaching, suggestion, or motivation to make the combination.

Engineers possess common sense, said the court, and they know that changing one component in a system often requires others to be modified as well, and that familiar items may have obvious uses beyond their primary purposes. Such may be the stuff of improvement and "ordinary innovation", but not patents.

The bottom line. Ordinary engineering which engineers perform in the course of their usual day-to-day activities may no longer be patentable.

How high is the patent bar? The Supreme Court has raised the patent bar. The question is: How high? We won't know until the Supreme Court rules again and sets an upper limit to the obviousness bar to patents. In the meantime, some measure may be reflected in the number of patent awards. Will they decrease or will there be a downward trend in patent filings?

For More Information

To learn more about the ins and outs of combination patents, as well as everything else you need to know about protecting your company's products and processes, get Nolo's Patent Savvy for Managers: Spot and Protect Valuable Innovations in Your Company, by Kirk Teska.

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