US Patent Office Issues Updated KSR Guidelines for Obviousness Rejections Under 35 U.S.C. §103
September 2010
David M. Tennant, Bijal V. Vakil, Wendi R. Schepler, Sue F. Xia
DOWNLOAD PDF: US Patent Office Issues Updated KSR Guidelines for Obviousness Rejections Under 35 U.S.C. §103
On September 1, 2010, the United States Patent and Trademark Office ("USPTO") issued updated examination guidelines ("2010 KSR Guidelines") for USPTO patent examiners to use when applying the law of obviousness under 35 U.S.C. §103 in view of the 2007 Supreme Court decision in KSR Int'l Co. v. Teleflex Inc. ("KSR"). The updated guidelines review several Federal Circuit decisions involving the application of the law of obviousness since the KSR decision.
While the 2010 KSR Guidelines do not change the obviousness standard or the procedure in evaluating obviousness during the prosecution of a patent, the updated guidelines do provide an excellent summary of 23 decisions in which the Federal Circuit applied the law of obviousness since the KSR decision. Parties frequently involved in patent litigation should familiarize themselves with these 23 cases since validity challenges based on obviousness is the most common defense asserted in patent litigation.
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