Tech Transfer Central
Industry-Sponsored Research Management

Understanding Obviousness in a Post-KSR World

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: January 25, 2011

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Practical Applications for Compliance with the Recent USPTO Guidelines

Though the Supreme Court’s ruling in the landmark KSR decision on the obviousness standard immediately altered the patent landscape, that decision was not the end of the story. The Federal Circuit and the USPTO continue to interpret the ruling, and the PTO provided an update to its examination guidelines concerning obviousness in September of 2010. This complex and evolving area of patent law, and how it applies to your IP portfolio, remains a sticky wicket to even the most adept patent attorneys and technology transfer professionals. To sort out the complexities and minimize confusion or mistaken assumptions, Technology Transfer Tactics’ Distance Learning Division has recruited top IP attorneys Charles Macedo and Charles Kwalwasser to break down the the obviousness standard – including the many developments after the initial KSR ruling — and educate you on how to best prepare your patent applications to defend against validity concerns and challenges.

Here’s a quick look at the agenda:

Overview of the obviousness standard

  • KSR v. Teleflex
  • Application of Graham v. John Deere factors
  • The Federal Circuit’s directive in Ball Aerosol
  • Example 4.18, which discusses Sanofi-Synthelabo v. Apotex, Inc.
  • Updated USPTO examiner guidelines

Best practices for managing post-KSR:

  • In the University TTO
  • In the courts
  • In the USPTO

Post-KSR patent prosecution issues:

  • Steps that patent applicants can take to stand up to obviousness rejections
  • Responding to attacks on validity
  • Best practices for patent application preparation to avoid obviousness rejections
  • When the “obvious-to-try” standard supports obviousness — and when has it worked to squash such a finding

Your Expert Presenters:

Charles R. Macedo is a partner with the intellectual property law firm Amster, Rothstein and Ebenstein, LLP of New York. Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. Mr. Macedo is the author of The Corporate Insider’s Guide to U.S. Patent Practice, being published by Oxford University Press, and has been the recipient of the prestigious AIPLA Robert C. Watson Award.

Charles Kwalwasser is Intellectual Property Counsel for Barclays Capital. Charlie has received a degree in civil engineering from the University of Virginia and a law degree from Cornell Law School, and is a member of the New York and New Jersey State Bars, admitted to practice before the USPTO, a CFA Charterholder and a Registered Securities Representative. Before joining Barclays Capital, Charlie worked as Intellectual Property Counsel at Lehman Brothers and in the Intellectual Property Group at the New York office of Clifford Chance.

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