A comparative US/European view on the law of non-obviousness (Patent Experts Conference, Naples, Florida (US))

Aktivitet: Tale eller præsentation - typerForedrag og mundtlige bidrag

Timo Minssen - Oplægsholder

Any patent system must find answers to a crucial question that is far more complicated and ambiguous than meets the eye: Which specific features or facts distinguish a patentable invention from a simple improvement or a self-evident combination of state-of-the art technology? Besides being novel, sufficiently disclosed, and useful, any invention must thus be “non-obvious,” as required in the United States, or be based on an “inventive step”, as required in Europe.
Like several seminal decisions that marked the return of the CAFC’s non-custodial parent to patent law, the 2007 U.S. Supreme Court's “non-obviousness”-decision in KSR introduced important changes to U.S. patent law. Meanwhile, the USPTO and the CAFC, have tried to come to grips with some of the rather unclear statements in KSR, by delivering vividly debated judgments or developing guidelines. On the whole, the “non-obviousness” threshold appears to have become increasingly demanding for patentees in rapidly evolving high tech areas, such as in the biotechnological and pharmaceutical sciences. The related debates typically focus on topics that are particularly relevant to this industry, such as the doctrine of structural similarity, the purported capabilities of the PHOSITA, predictability, common knowledge, secondary considerations and the inherent danger of hindsight in “obvious to try” situations.
While the debate over these questions continues after the enactment of the AIA, special attention has been drawn to recent developments in Europe. The European situation is very interesting indeed, since several biotech-related decisions of the EPO’s Technical Board of Appeals, as well as recent high profile judgments of national courts, not only provided new general guidelines on the European determination of “inventive step” but also addressed specific questions similar to those raised in KSR and in subsequent biotech-related decision by the CAFC.
This presentation will provide an introductory overview of the relevant legal frameworks and various doctrinal concepts related to the European and U.S. non-obviousness assessment. It will also discuss recent case-law developments that are of particular practical relevance.
9 feb. 201411 feb. 2014

Begivenhed (Konference)

Titel2nd Annual Naples Midwinter Patent Experts Conference
AfholdelsesstedHilton Hotel, Naples
ByNaples, Pelican Bay, Florida

ID: 96284371