Obviousness Standard: Leveraging Latest PTO and Court Guidance
Overcoming Challenges of Obviousness and Attacks on Patent Validity
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide patent counsel with guidance on the evolving obviousness standard. In a post-KSR v. Teleflex world in which obviousness is at times confused with patent eligibility under Section 101, how is the Federal Circuit's treatment of obviousness issues changing? How does the Patent Trial and Appeal Board (PTAB) handle obviousness in inter partes review (IPR) proceedings? Which forum more favors patentees, the PTAB, or the district courts? Our panel with answer these and other essential questions.
Outline
- Background for the obviousness standard
- Federal Circuit treatment of PTAB decisions in appeals of final rejections in ex parte and inter partes reexaminations
- Federal Circuit treatment of district court decisions
- IPR decisions and results on Federal Circuit review
- Practice tips
Benefits
The panel will review these and other high profile issues:
- How have recent Federal Circuit decisions impacted the application of the obviousness standard?
- What level of "unexpected results" is needed to demonstrate patentability?
- How can practitioners leverage recent decisions in which the Federal Circuit has insisted upon more thorough, reasoned explanations of the PTO's obviousness conclusion?
- What strategies should patentees and petitioners employ to prevail on obviousness assertions in an IPR proceeding, and how will those strategies fare at the Federal Circuit?
Faculty
Dr. Daniel J. Pereira, Ph.D.
Partner; Co-Head of the Chemical Practice Group
Oblon McClelland Maier & Neustadt
Dr. Pereira’s practice focuses on client counseling, portfolio management, patent prosecution, litigation and... | Read More
Dr. Pereira’s practice focuses on client counseling, portfolio management, patent prosecution, litigation and interferences involving a wide range of technologies including battery materials, recombinant DNA technology, genetics, immunology, enzymology, medical diagnostics, bioinformatics, microarrays, statistical data analysis, genomics, proteomics, nanotechnology, polymer chemistry, metallurgy, solar technology, imaging, medical devices, optical films, coatings, cosmetics, catalysts, ceramics, alloys, chemical engineering, optical and electronic devices. Dr. Pereira has particular expertise in the medical, biotechnology, and pharmaceutical fields. Dr. Pereira has served as co-counsel on interferences cases, advising on issues ranging from strategies for avoiding interferences to strategies for provoking them. Dr. Pereira handles appeals before the BPAI, district court patent litigations, and Federal Circuit appeals, and has extensive experience providing pre-litigation and litigation avoidance counseling to clients.
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Matthew D. Zapadka
Partner
Arnall Golden Gregory
Mr. Zapadka counsels clients on the protection and enforcement of their intellectual property assets, with a focus on... | Read More
Mr. Zapadka counsels clients on the protection and enforcement of their intellectual property assets, with a focus on patent litigation. In this role, he advises on various intellectual property disputes in federal district court and state court, as well as trials at the USPTO Patent Trial and Appeal Board (PTAB). Mr. Zapadka also advises clients on patent prosecution matters, assisting companies ranging in size from start-ups to Fortune 500 companies. Additionally, he has experience litigating commercial disputes. Mr. Zapadka has worked with companies across a variety of sectors, including genetic technologies; biomolecular engineering, such as therapeutic and diagnostic molecules; prosthetics; pharmaceuticals; dietary supplements; cannabis/CBD; nuclear reactors; software; ultracapacitors; consumer products; genetic data visualization systems; and blockchain applications.
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