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Patent Office Issues Updates to Guidelines for Determining Obviousness
Joel J. Felber - 8/2/2010


On September 1, 2010, the Patent Office issued Updated KSR Examination Guidelines (“Updated Guidelines) that address the law of obviousness under 35 U.S.C. 103. The Updated Guidelines provide “teaching points” to assist patent examiners to identify obviousness and, to a lesser degree, ways for applicants to counter patent rejections based on obviousness.

The Patent Office issued the Updated Guidelines to account for recent case law and decisions from the Court of Appeals for the Federal Circuit (“CAFC”) that address the obviousness legal standard. These (“CAFC”) decisions follow the U.S. Supreme Court’s 2007 decision in KSR International v. Teleflex (KSR), a case that relaxed legal standards for determining whether a claimed invention is obviousness.

The Director of the Patent Office, David Kappos, stated, “[n]ow that a body of post-KSR case law is available to guide office personnel and practitioners as to the boundaries between obviousness and nonobviousness, this update can be used to compare and contrast situations in which claimed subject matter was found to have been obvious with those cases in which it was determined not to have been obvious.”

Ostrolenk Faber LLP will be providing details of the Updated Guidelines, including the relevant teaching points, in our Fall 2010 Newsletter.

The Updated Guidelines can be found on the Patent Office web site by clicking here.