This CLE webinar will provide patent counsel with guidance on the evolving obviousness standard in light of Federal Circuit treatment and analysis, the America Invents Act (AIA), and recent USPTO guidelines. The panel will outline best practices to avoid obviousness rejections and defend patent validity.
Convergence of the AIA, the Supreme Court’s KSR v. Teleflex decision, the USPTO’s post-KSR guidelines, and recent Federal Circuit rulings have created a rapidly evolving obviousness standard that is more confusing than ever.
The impact of Federal Circuit decisions from 2012 and 2013 has been significant. The “lead compound” analysis of Otsuka Pharm. v. Sandoz, the importance of secondary considerations in In re Cyclobenzaprine litigation, the need to show “substantial evidence” to overcome an adverse Board decision as in In re Droge or In re Chevalier, and the problem of hindsight illumination in Leo Pharm. v. Rea, will be explored. Cases such as Plantronics v. Aliph and SynQor v. Artesyn Tech. are also instructive.
Practitioners need to understand the PTO guidelines, the effect of the AIA, and how the PTO Board of Appeals and courts apply the obviousness standard since KSR in order to successfully prepare, prosecute, and defend patents.
Listen as our authoritative panel of patent attorneys examines the obviousness standard and the many recent changes that impact it, outlines steps that companies and counsel should take to withstand obviousness rejections, and offers best practices for prosecuting and defending against obviousness attacks in litigation.
- Obviousness standard for patents
- America Invents Act
- KSR v. Teleflex
- Application of Graham v. John Deere factors
- Updated USPTO examiner guidelines
- Treatment post-KSR
- In the courts
- In the USPTO
- Patent prosecution post-KSR
- Responding to rejections
- Responding to attacks on validity
The panel will review these and other key questions:
- How has patent reform and the AIA impacted the application of the obviousness standard?
- Under what circumstances has the obvious-to-try standard supported a finding of obviousness—and when has it worked to nullify such a finding?
- What are the steps that patent applicants can take to stand up to obviousness rejections?
Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.
Barry J. Herman, Partner
Womble Carlyle Sandridge & Rice, Baltimore
Mr. Herman litigates matters across a wide array of technologies in the chemical, mechanical and electrical arts. He represents both domestic and foreign clients in patent, trademark and other intellectual property disputes before the U.S. Federal District Courts, the International Trade Commission, and the United States Patent & Trademark Office. Mr. Herman also has significant appellate experience at the Court of Appeals for the Federal Circuit.
Jon Schuchardt, Partner
Dilworth IP, Trumbull, Conn.
Mr. Schuchardt is a client-focused IP professional, fluent in organic chemistry, catalysis, and polymer chemistry, with 22 years of experience in IP law. He is an expert in devising patent strategies, growing patent portfolios, counseling business leaders, drafting applications, and improving IP processes. He has prepared, filed and prosecuted more than 270 patent applications. Mr. Schuchardt is also an inventor on 15 issued U.S. patents.
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.
Continuing Legal Education
Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.