06-Patent Non-Obviousness 35 USC §103
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This document discusses the legal standard of non-obviousness for patents under 35 U.S.C. § 103. It outlines key Supreme Court cases that have interpreted and refined the standard over time, moving away from a rigid "teaching, suggestion, or motivation" test established by the Federal Circuit court. The KSR v. Teleflex case in particular reaffirmed that common sense and obvious-to-try modifications can support a finding of obviousness. Secondary considerations like commercial success must also be considered in determining obviousness.
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Preissuance submissions
1) Third party preissuance submissions allow third parties to submit prior art for consideration during patent examination.
2) They provide advantages such as avoiding litigation, commenting on prior art with a lower burden of proof than litigation, and anonymity. However, they also carry risks such as strengthening the patent if unsuccessful.
3) To make a submission, the third party identifies relevant prior art like patents, publications, and other printed works, and provides a concise description of relevance on Form PTO/SB/429 before certain deadlines during examination. The submission is limited without active participation in prosecution.
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- 15. Questions? Please ask! Thank you to Ms. Jenna Cogswell at MST who helped prepare these slides! Contact us at [email_address] or 419.255.5900 for permission to use these slides, or to ask questions. We are happy to let others use these slides, but we would like to know who they helped.