USPTO publishes updated guidance for determining obviousness

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Patent Alert

USPTO announces updated guidance for determining obviousness

Tomorrow, the United States Patent and Trademark Office (USPTO) is publishing updated guidance to underscore the flexible approach to determining obviousness that is required by the U.S. Supreme Court’s KSR Int’l Co. v. Teleflex Inc. decision. The updated guidance focuses on post-KSR precedential cases of the Federal Circuit. While highlighting the requirement for a flexible approach to the obviousness determination, the updated guidance also emphasizes the need for a reasoned explanation when reaching a conclusion that a claimed invention would have been obvious.

“In addition to issuing robust and reliable patent rights to innovators, our goal is to give those innovators clarity and certainty by applying the same standards whenever those rights are challenged before the USPTO,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “By providing this guidance, we are injecting greater consistency and transparency not only into our processes, but into the entire innovation ecosystem.”

The updated guidance, together with the direction provided in the Manual of Patent Examining Procedure, serves as operable guidance for USPTO personnel when applying the law of obviousness. The guidance applies to all utility applications being processed or challenged at the USPTO. As to the extent of KSR’s application in the design patent context, we eagerly await the Federal Circuit’s decision in LKQ Corp. v. GM Global Technology Operations LLC, No. 21-2348 (Fed. Cir.).

The USPTO is also working on assessing the impact of the proliferation of artificial intelligence on prior art, the knowledge of a person having ordinary skill in the art, and determinations of patentability made in view of the foregoing including obviousness, and will shortly be seeking public comment on the same.

For more details, please see our Federal Register Notice, which is also available on the Patent Related Notices webpage.

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