You file a patent application at the Patent & Trademark Office. Are you entitled to receive the patent unless the PTO can show you’re not entitled to it? Put another way, who gets the benefit of the doubt on patentability or not … you, or the PTO? Structural rules like this play a large role in driving outcomes, as any lawyer will tell you.

The case law says that, at least so far as novelty (sec 102) and nonobviousness (sec 103) are concerned, the applicant is entitled to the claim unless the PTO proves the contrary. The current approach is stated in, e.g., In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). But the current disregard for any textual difference between sections 102 and 103 traces to In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967). Warner makes no effort to root in the text of section 103 the burden it places on the PTO to show obviousness (rather than placing on the applicant the burden to show nonobviousness).

Is the case law right? The issue comes to the fore now because, as PFF’s IPcentral has noted, petitioner KSR has filed its Reply Brief at the Supreme Court. (You can pull the brief at IPcentral.) Oral argument is Tuesday, November 28.

There’s a strong argument from statutory text that the case law is wrong. Here it is:

Section 102 begins, “A person shall be entitled to a patent unless … ,” and continues with a variety of scenarios that, if proved, would negate the applicant’s entitlement. This mandate, “shall be entitled … unless,” is quite clear.

How does section 103(a), the core nonobviousness requirement, compare? Well, it’s phrased quite differently: “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if … .” Unlike section 102, which expressly mandates the applicant’s entitlement unless a negating condition is proved, section 103 commands that a patent can’t be obtained if a particular condition – obviousness – exists. Given that Congress knows how to put the burden on the PTO to show lack of entitlement (as in section 102), the fair reading of section 103’s quite different text is that it puts the burden on the applicant to show nonobviousness.

Petitioner KSR points out that this structural question plays an important role in its case. In doing so, it urges a rejection of the common, undefended (and indefensible?) (mis)reading of the statute. According to KSR, which calls the common reading “an upside down view of sec 103(a),”

[t]he key to understanding [Teleflex's] argument is the radical, unstated premise on which it is based: that sec 103 purportedly does not state a “condition for patentability” that a patent applicant must satisfy before a patent can properly be granted, but rather purportedly states a condition for challenges to patentability that the PTO or an accused infringer must satisfy before a claim to patent protection can properly be denied.”

KSR Reply Brief at 10 (emphases in original). Strong stuff.

So, we have another issue to watch for in the KSR case … will the Supreme Court state that an applicant has the burden to show nonobviousness, or that the PTO has the burden to show obviousness?