USPTO Issues Update to KSR Examination Guidelines

The United States Patent and Trademark Office (“USPTO”) has issued an update to its examination guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of recent precedential decisions of the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc.

The updated guidelines were published in the September 1, 2010 edition of Federal Register, and in response to stakeholder requests, include additional examples on this ever-evolving issue of law, according to the USPTO.

“Now 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,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “This update will be helpful to USPTO patent examiners, inventors and the patent bar because it reviews several cases from the Federal Circuit that have involved the application of the law of obviousness since the KSR case was decided by the Supreme Court.”

Members of the public are invited to provide comments on the updated guidelines.  The USPTO is especially interested in receiving additional suggestions in the field of obviousness that would have particular value as teaching tools.

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