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During the past 25 years, the Court of Appeal for the Federal Circuit has issued rulings that offer more and more protection to patent holders. Now a series of Supreme Court rulings are leaving attorneys wondering how far in the opposite direction the pendulum will swing, and if the extra work will mean some clients will no longer be able to afford their services.

Bob Tucker, who leads the Baton Rouge intellectual property practice team at Jones Walker, got into patent law after finishing law school in 1983. He entered the field during a time when inventors weren’t being done any favors by the legal system. “When I started doing patent law, patents were being invalidated by courts almost routinely,” he says.

During that time, Congress and the judicial system wanted to make a shift toward protecting inventors. The Court of Appeals for the Federal Circuit (CAFC) was created in 1982 with the intention of creating consistency in patent law and was given jurisdiction over all appeals concerning patents.

While the court certainly served its purpose, Tucker says, its rulings over the years resulted in an environment where the court was basically micromanaging patent law. Applicants enjoyed an easier time getting patents and getting injunctions when they believed their patents were being infringed.

A major case in the proliferation of patents (the current national backlog sits at 700,000 applications) was the 1998 State Street Bank & Trust Company v. Signature Financial Group Inc. ruling that allowed patents on business and computer methods, which were previously unpatentable. Almost any decent technology had a shot at being patented, Tucker says. “The patent office is just beaten down. They’re allowing everything.”

But in the last year, the Supreme Court has issued a series of rulings reigning in patents. Tucker calls them the greatest changes to patent law since he began his practice.

In order of occurrence, they are:

eBay v. MercExchange (May 15, 2006)

Under prior CAFC rulings, plaintiffs in cases involving patent infringement did not have to show irreparable harm in order to gain an injunction. Showing irreparable harm—damage that cannot be compensated for monetarily—is a requirement for an injunction in other types of cases.

A common misconception with patents is the belief that owning a patent implies the right of the patent owner to produce or sell a product. Rather, it is the right of the patent owner to exclude others from making, selling or importing the invention without a license from the owner for the life of the patent, typically 20 years.

Because that language closely mirrors that of an injunction, a court order to do or not do certain things, the irreparable harm aspects were generally presumed in patent injunctions. In eBay, however, the Supreme Court ruled that patent cases were no different than others when it comes to gaining an injunction.

MedImmune v. Genentech (Jan. 9, 2007)

Article III of the U.S. Constitution prohibits going to court for an advisory opinion; there must be an actual controversy between parties with adverse legal interests.

In the MedImmune case, the company was attempting to challenge the validity of a patent it was licensing from Genentech. CAFC ruled that since MedImmune was paying for the license and Genentech had not challenged MedImmune’s use of the patent, there was no controversy to be tried in court.

The Supreme Court overturned the ruling, saying that a licensee paying for a license to avoid legal punishments was effectively coerced and maintained the ability to challenge the validity of the patent in court.

KSR International v. Teleflex (May 1, 2007)

The KSR International case could prove to be the most significant Supreme Court ruling of the three. “When I read about that case, I thought it was time for me to switch jobs,” says Russel Primeaux, IP practice leader for Kean Miller.

The case makes it easier for the patent office to reject an application for being obvious. A patent, in order to be valid, must be novel, useful and nonobvious. Prior to KSR International, the patent office used a TSM test—teaching, suggestion, motivation—to determine if a patent should be rejected for being obvious. The patent officer had to prove through other patents or published material that the patent is obvious.

While the Supreme Court did not completely discard the test, it did offer other avenues for finding a patent application obvious. One such is “demands of the design community,” which Primeaux believes can be used in almost any case beyond purely accidental discovery. If an inventor has something to patent, he says, it will almost always mean there was a demand for it. “If the patent office wants to now, they will always be able to reject,” Primeaux says.

The immediate effects of the cases are clear. It will be more difficult to get injunctions for patents, patents will be easier to challenge and it becomes more likely a patent will be rejected.

There are more far-reaching results. The new patent standards (coupled with possible rule and law changes) will mean more work for attorneys. “It’s going to be harder to prosecute, and that equates to more expensive,” Tucker says. Inventors with smaller budgets might find themselves doing more of the background work, since the extra hours involved could price them out of being able to handle an attorney.

Primeaux sees changes such as tougher injunction requirements as going against core rights associated with owning a patent. The decisions could be backlash against the many bad patents granted in recent years, he says, but re-examining the State Street decision and what it meant to patent law would better solve the problem.

“It’s the classic reaction to how bureaucracies deal with things,” Primeaux says. “Instead of going at the problem, you go at it kind of sideways.”