U.S. Patent And Trademark Office Issues Examiner Guidelines On Obviousness

Guidelines Implement Supreme Court Ruling, May Make Patents More Difficult to Obtain

On October 10, 2007, the United States Patent and Trademark Office (PTO) issued examiner guidelines for determining obviousness under the U.S. Supreme Court’s ruling of April 30, 2007, in KSR International Co. v. Teleflex, Inc. 72 Fed. Reg. 57526. Both the ruling and the guidelines clarify the standards for findings of obviousness and require patent examiners to document and make explicit their rationale for an obviousness rejection of a patent application.

While these guidelines impose increased obligations on examiners, they also suggest that patents may be more difficult to obtain in the future. Likewise, when patent disputes arise, patentholders may face a higher burden in demonstrating the validity of patents granted for combinations of elements found in the prior art.