The decisions of the Federal Circuit discussed in the 2010 KSR Guidelines Update provide additional examples of the law of obviousness. The purpose of the 2007 KSR Guidelines was to help Office personnel to determine when a claimed invention is not obvious, and to provide an appropriate supporting rationale when an obviousness rejection is appropriate. […]

The United States Patent and Trademark Office (USPTO) issued an update to its obviousness guidelines to be used when applying the law of obviousness under 35 U.S.C. 103. This 2010 KSR Guidelines Update highlights case law developments on obviousness under 35 U.S.C. 103 since the 2007 decision by the United States Supreme Court (Supreme Court) […]

Eli Lilly lost an appeal from a final judgment of the U.S. District Court for the Eastern District of Michigan, finding claims 2, 6, and 7 of U.S. Patent No. 5,464,826 invalid for obviousness-type double patenting over its earlier U.S. Patent No. 4,808,614.  See, Sun Pharmaceutical Industries v. Eli Lilly and Co., United States Court […]

Those of you who regularly prosecute patents in Australia will be aware that Australia has a unique approach to inventive step/non-obviousness. Specifically, Australian law differs from international norms in two fairly notable ways: Firstly, not all prior art references are citable. Rather, in order to be citable, a prior art reference must firstly be shown […]

Take it for Pain. Take it for Life. ~ Bayer aspirin slogan Drospirenone is a progestin that inhibits ovulation. While known in the art, Bayer patented formulations of drospirenone, one of the active ingredients in Yasmin® a daily oral contraceptive. Now, the U.S. Court of Appeals for the Federal Circuit has ruled that the patent […]

After McNeil appealed obviousness rejections to the US Patent and Trademark Office Board of Patent Appeals and Interferences, the Board dismissed the whole business as filed in an untimely manner. McNeil took the case to the US Court of Appeals for the Federal Circuit who sided with them that the appeal was timely and the […]

In a combined proceeding in which a third person sought re-examination of an issued patent (Re-examination No. 90/005,892) and the patentee sought re-issue of the patent to broaden the claims, the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences held the patent claims invalid on multiple grounds, including that they would […]

After a final judgment upholding the validity of the Procter & Gamble Company U.S. Patent 5,583,122, Teva Pharmaceuticals appealed to the US United States Court of Appeals for the Federal Circuit claiming invalidity defenses of obviousness and obviousness-type double patenting.  It fell on deaf ears as the Federal Circuit affirmed the validity. P&G v. Teva […]