The New USPTO Obviousness Guidelines: Is the US Coming Closer to an Inventive Step Standard?


On September 1, 2010, the US Patent and Trademark Office (USPTO) issued new guidelines with respect to the standard of obviousness in view of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The purpose of these new guidelines is to remind all US Examiners of the principles of obviousness, to specifically confirm that KSR applies to all technologies rather than just the predictable arts, and to provide additional guidance in view of selected post-KSR Federal Circuit decisions.

In the new guidelines, the USPTO has identified four different “topics” of obviousness, namely:

1. Combining Prior Art Elements

2. Substituting One Element for Another

3. Obvious to Try

4. Considerations of Evidence During Prosecution

However, if one looks at each of the topics in this additional guidance and the underlying decisions closely, it seems that the US standard for obviousness is moving closer to an inventive step style analysis, as discussed in more detail below.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Joshua Goldberg, The Nath Law Group | Attorney Advertising

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