Rules for Combination Invention Patents

The patent system involves preparing and filing patent applications and patent claims with the United States Patent and Trademark Office (USPTO). Patent claims define the scope of an invention.

An invention may combine the elements of existing patents to create a new invention. Patent claims for combination inventions are important for fostering economic growth and innovation. Combinations of patents are significant in biotechnology. Biotechnology patents cover combinations of genetic engineering, therapeutic, and biotechnological processes.

This article is an overview of combination patents and covers how combination laws changed throughout the years.

Intellectual Property Overview

There are four types of intellectual property (IP): copyright, patents, trademarks, and trade secrets. As a small business, startup, or entrepreneur, these property rights let the IP owner control and profit from their new technology, business, or creative work.

To meet qualifications for securing patent rights, the invention must meet specific conditions such as:

• Novelty
• Non-obviousness
• Utility

The USPTO grants patent holders an exclusive set of rights for three types of patents:

• Utility patents
• Design patents
• Plant patents

What Are Combination Patents?

Most patents are for new inventions. The patent office also grants patents to parties whose invention builds on a new application using two or more existing patents. If existing patent A and B can be combined into a new use, then the combination of these patents are patentable. These are "combination patents."

These were once simple to get but now have restrictions through case law. Case law is court interpretations of patent laws. Now, the combination invention must be novel and nonobvious.

• A novel invention means that it has yet to be publicly disclosed or used before. It must be a brand-new invention. It could also be a new and improved alteration of an existing invention.
• The invention must involve an inventive concept. It cannot be obvious to someone skilled in that field.
• A combination patent application must identify and describe the combined patented inventions.
• The subject matter in a combination patent application should focus on the combination. The subject matter should not focus on the other individual patent components.
• Use proper citations of the relevant prior art in your combination patent application. This shows the novelty and non-obviousness of the combination invention.

Combination Patent Legal Standards

The legal standard for patent examiners to apply to combination patents has changed over the years.

1999 TSM Standard for Combination Patents

Meeting the obviousness requirement for a combination patent was easier prior to 2007. An invention that was not obvious to a person having ordinary skill in the art was patentable. According to the standard used by lower courts and the U.S. Patent and Trademark Office, an invention was obvious if there was prior:

• Teaching
• Suggestion
• Motivation in the art to combine the elements

This is the teaching-suggesting-motivating (TSM) test.

Current Standard for Combination Patents after 2007

In 2007, the U.S. Supreme Court changed the combination patent standard to grant a patent in a case called KSR v. Teleflex (2007). After the ruling in KSR v. Teleflex, the standard changed from the TSM test. To better understand the new standard, it's helpful to know the facts that led to the change by the Supreme Court.

Facts

Teleflex owned a combination patent for a gas pedal that a driver could adjust based on where the driver was sitting in the seat. The pedal also had an electronic sensor that could detect and send its positions to the car's computer. KSR made a deal with General Motors to supply adjustable gas pedals with sensor throttle controls that it created. Teleflex sued KSR for patent infringement.

Ruling

The Court considered whether an adjustable gas pedal with a sensor was an obvious invention. The U.S. Supreme Court ruled that an "ordinary innovation" was not patentable. The Court said that a combination patent is the combination, alteration, or unity of elements, techniques, items, or devices where each performed its intended function. The Supreme Court said Teleflex's adjustable gas pedal was an ordinary innovation. So, the pedal was not patentable, even if it could pass the TSM test.

The decision in Teleflex expanded the definition of obviousness and made it more challenging to get a patent. To receive patents after Teleflex, inventions must constitute novel developments in their fields.

Other Patent Considerations

If you are looking to file a combination patent, here are a few tips to help determine if you should go that route.

• Conduct a patent search on the USPTO website. Visit http://www.uspto.gov to check for existing patents and prior art relevant to your combination invention.
• Understand your intellectual property rights and what they grant you. A granted patent gives exclusive rights to the invention for 20 years from the filing date.
• Be aware of and budget for patent maintenance fees. Missing maintenance fees may result in your patent becoming invalid.
• Consider seeking patent protection in foreign countries as well. A patent from the USPTO does not protect you outside of the United States. Foreign patents are obtainable through individual applications with other countries or international treaties.
• Combination patents may face challenges in patent litigation if there are concerns about infringement or the patent's validity. Consider if you wish to endure trials and legal headaches in defending your patent before applying.
• Combination patents may apply to innovative business methods that involve combinations of existing technologies.
• There is no limit on the number of patents a patent owner can hold. Many patents are obtainable for different aspects of an invention.
• Although most patents are sought by commercial entities, nonprofit organizations and academic institutions can also seek patents for combination inventions.

Need Help With a Patent Application? Call a Patent Attorney

If you have questions or need help with patenting activities, think about talking to a patent law attorney today.