- Projected CLE: 6.0 hours
- Price: $995
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Instructors:
Paul Gardner
- Course Times: AUG. 2010: 8:30-11:30; 12:45-4:15 (Tues). OCT: 2010: 8:30-11:30; 1:30-5:00 (Mon)
"Presentation of materials was excellent, captivating; never lost my attention." -- Wendy Lamson, Iogen Corporation, Obviousness in the Wake of KSR -- What Has & Hasn't Changed October 2009 attendee
Please note that the faculty member listed for this course is subject to change prior to the actual course date.
While the Supreme Court’s decision in KSR v. Teleflex changed the framework for evaluating obviousness issues in several important respects, most notably application of the teaching-suggestion-motivation test, it left several areas open for further development by the Federal Circuit and the Patent Office. "The extent to which [the Federal Circuit''s jurisprudence] describe[s] an analysis more consistent with our earlier precedents and our decision here is a matter for the Court of Appeals to consider in its future cases," said the Supreme Court. 127 S.Ct. 1727 at 1743; emphasis added.
In the two years since KSR, the Federal Circuit and the USPTO Board of Appeals have applied the law of KSR in many cases. Those cases, carefully analyzed and compared with one another, offer insights as to what had best be done and what had best be avoided during patent preparation and prosecution to successfully withstand obviousness rejections and attacks on validity in litigation. PRG’s faculty has made that analysis and encapsulated it in a compact, one-day presentation designed to alert the busy practitioner to those obviousness principles that have changed, those left unchanged, and those left in limbo by the post-KSR case law. Among the topics covered are:
- application of the Graham v. John Deere factors post-KSR
- the extent to which the teaching-suggestion-motivation test has been more "flexibly" applied
- "reasonable expectation of success" as a prerequisite to finding prima facie obviousness, unexpected results as indicia of nonobviousness, and the relationship between the two
- circumstances where "obvious to try" has been used to support a finding of obviousness, and those where it has been negated
- the extent to which prior awareness of the problem solved by the invention will support a finding of obviousness
- the extent to which prior ignorance of the problem solved by the invention will support a finding of nonobviousness
- nonobviousness findings based on the prior art's "teaching away" from the claimed invention
- secondary indicia of nonobviousness.
Prudent prosecutors will want to make sure they understand the Federal Circuit’s and Board’s current case law on these aspects of obviousness as they prepare and prosecute their clients’ applications, as will litigators and other patent attorneys as they evaluate potential infringement disputes. No patent attorney or agent can practice comfortably without knowing the current state of the rapidly changing case law on obviousness. If you have not had the time to keep up with the current cases, this is your opportunity to bring yourself up to date in a single, intense day of analysis.