When Is a Combination Invention Patentable?

A new combination of existing inventions must be more than an "ordinary innovation" to be patentable.

By , Attorney Benjamin N. Cardozo School of Law

Patent law gives inventors the ability to maintain exclusive control over their inventions for a certain period, typically 20 years, if they successfully obtain a patent from the U.S. Patent and Trademark Office (USPTO). As an inventor, you likely know that not all inventions are "stand-alone" products. Many are combinations of multiple existing inventions, all used to create something new.

For example, imagine that you wanted an all-purpose home warning system, so you combined a smoke detector with a severe weather warning device. But before you invest in product development, you'd want to know: Would the combination be patentable, separate and apart from the patents on the two constituent inventions?

Prior to 2007, patents for combination inventions were relatively easy to obtain. But a ruling from the U.S. Supreme Court altered that practice, making it slightly more difficult to obtain such a "combination patent." What standards govern when the USPTO will permit protection for this sort of invention?

The 1999 Patent Law Standard

To understand the current law, you must first have an understanding of the trajectory of patent law in this area. 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 specializing in patent-related matters (the U.S. Court of Appeals for the Federal Circuit) established a formula for use by the USPTO 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.

In the opinion of many people, this overly rigid test lowered the patent bar to the point you could practically ignore it. Many companies soon earned patents for combinations that seemed obvious, such as patenting a scanner with USB technology. For about a decade, it was relatively easy to obtain these sorts of "combination" patents.

Shifting the Permissive Patent Standard

The rules for combination inventions shifted in 2007 when the U.S. Supreme Court decided the case of KSR v. Teleflex, 550 U.S. (2007). The facts of that case were fairly straightforward. Teleflex, of Limerick, Pennsylvania, held a patent that included 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 that 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 product: adjustable gas pedals with sensors that transmitted to electronic throttle controls. Adjustable gas pedals designed to accommodate drivers of different sizes were well-known at the time Teleflex filed a patent application for the "adjustable pedal assembly with electronic throttle control." So too were sensors for computer-controlled throttles, and even sensors located on the pedal assembly rather than in the engine compartment.

The only unique aspect of Teleflex's "invention" was combining those two obvious features into a single patented invention. The Supreme Court was called upon to answer the question of whether the combination of an adjustable gas pedal with a sensor on the pedal was obvious within the meaning of the Patent Act.

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 combinationsomething 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 is that, following the 2007 decision in Teleflex, ordinary engineering that engineers perform in the course of their usual day-to-day activities may no longer be patented.

How high is the bar against so-called "combination" patents? The Supreme Court has raised it, but it remains a case-by-case determination. The basic question remains whether an innovation is sufficiently novel and nonobvious to qualify for a patent, or is merely a combination of two existing patented inventions. These sorts of inventions must now at least bring something "new" to the table to qualify.

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