How Does Inventive Step Compare With Obviousness After KSR?
from Boston Patent Law Association (BPLA)
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Monday, September 8, 2008, 12:00pm - 3:00pm
Our panelists will discuss the obviousness test in the United States and the inventive step requirement for patent procurement around the world.
1. How does the obviousness test for obtaining a patent in the U.S., after KSR International Co. v. Teleflex Inc. ("KSR"), compare with the "inventive step" requirement in Europe and Asia?
2. Can you expect similar patent protection in the U.S., as in Europe and Asia?
3. Should your U.S. patent applications be drafted to more closely align with the European problem-solution approach (PSA)?
4. How do standards abroad compare with the tests for obviousness set forth by the Supreme Court in KSR, the response by the USPTO, and the relationship between the two?
5. What type and level of evidence of non-obviousness, including searching considerations, are needed to overcome an obviousness rejection, and what type of evidence can be used abroad?
SPEAKERS
John F. Duffy Professor at George Washington University Law School and Of Counsel at Fried, Frank, Harris, Shriver & Jacobson LLP. Dr. Duffy received an A.B. in physics from Harvard College in 1985 and a Juris Doctor from the University of Chicago in 1989.
Roy Marsh British and European Patent and Trademark Attorney at Hoffmann Eitle Law Firm in Munich, Germany. Mr. Marsh received a Master's degree in material science from Oxford University in 1973. He practiced patent law in London for 18 years, then joined the German firm Hoffmann Eitle and worked in London for 2 years before moving to their main office in Munich, Germany.
Young-Wook Ha President of Ha & Ha Patent Law Firm, Seoul, Korea. Dr. Ha received a Master of Intellectual Property degree in 1990 and a Juris Doctor in 1992, both from Franklin Pierce Law Center.
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