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2017 March Patent Prosecution Lunch


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2017 March Patent Prosecution Lunch

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2017 March Patent Prosecution Lunch

  1. 1. Docket Items • Request for Examination Deadline in the United Kingdom (UK) – Previously- 33 months from the earliest priority date. – Now- 6 months from publication date (like EPO)  When priority based on a PCT application, the earlier PCT publication counts for this 6 month deadline, so you need to request examination upon filing the UK application.
  2. 2. Inter Partes Review (IPR) Appeal Standing • Federal Circuit held that a petitioner (Phigenix in this case) lacked standing to appeal an adverse final written decision in an IPR. – The petitioner/appellant was "not engaged in any activity that would give rise to a possible infringement suit." – Phigenix, Inc. v. ImmunoGen, Inc. 2016-1544 (Fed. Cir. 2017) • Is an IPR worth the risk now?
  3. 3. Obviousness- Motivation to Combine • In re van Os – Examiner PTAB- combination of references would have been “intuitive” (or common sense). – “the flexibility afforded by KSR did not extinguish the factfinder’s obligation to provide reasoned analysis. Instead, KSR specifically instructs that when determining whether there would have been a motivation to combine, the ‘analysis should be made explicit.'” (page 4, 2015-1975, Fed. Cir. 2017)  ons-orders/15-1975.Opinion.12-28-2016.1.PDF
  4. 4. Obviousness- Motivation to Combine • In re van Os Absent some articulated rationale, a finding that a combination of prior art would have been “common sense” or “intuitive” is no different than merely stating the combination “would have been obvious.” Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine. This type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan would have combined the elements in the manner claimed. See 550 U.S. at 418, 421. (Page 5)