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ARTICLE · 26 APRIL 2024

USPTO Issues Updated Guidance On Obviousness

Foley & Lardner LLP
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For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued "Updated Guidance for Making a Proper Determination of Obviousness" under the U.S.

United StatesIntellectual Property
Rebecca B. Kimmelfield
Rebecca B. Kimmelfield
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued "Updated Guidance for Making a Proper Determination of Obviousness" under the U.S. Supreme Court's ruling in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The new guidance is said to reflect Federal Circuit decisions since KSR and "serves as a reminder to USPTO personnel of the flexible approach to obviousness that is required under KSR." As with most USPTO guidance, the examples focus on scenarios that would warrant an obviousness rejection, rather than scenarios that would support a finding of nonobviousness.

The Guidance is divided into five sections, under the following headings:

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