KSR and Reexamination

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Reexamination requests continue to be filed at a record pace. According to the USPTO’s fiscalyear-end statistics, 643 ex parte and 126 inter partes requests were filed in fiscal 2007. This compares to 511 and 70 last year, respectively.

The Supreme Court’s decision in KSR v. Teleflex promises to make reexamination more popular than ever. In KSR, the Supreme Court upended twenty-five years of the Federal Circuit’s obviousness jurisprudence. It is readily apparent that by expanding the obviousness inquiry beyond

the Federal Circuit’s teaching-suggestion-motivation (TSM) test, the Supreme Court has made it much easier for patent challengers to invalidate patents.

KSR is an extremely important development for reexaminations. Patent practitioners—prosecutors and litigators alike—are familiar with prosecution histories that follow this pattern: the examiner rejects a claim for obviousness, the applicant argues that the examiner did not identify any “teaching, suggestion, or motivation” to modify or combine, and the examiner immediately allows the

claim.

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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.

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