Meanwhile on the Other Side of the Pond: Why Biopharmaceutical Inventions that Were 'Obvious to Try' Still Might Be Non-Obvious – Part I
Chicago-Kent Journal of Intellectual Property, Vol. 9, Spring 2010
72 Pages Posted: 27 Sep 2009 Last revised: 2 Sep 2015
Date Written: September 27, 2009
Following the seminal US Supreme Court decision in KSR v. Teleflex, the law of (non)-obviousness has once more become a major topic in US patent law. Of crucial importance to the biopharmaceutical industry is in particular the following question: Under what circumstances should an invention that was "obvious to try" be considered to be obvious in fact under current US patent law? In that regard, a comparative study of the present "inventive step" assessments in Europe is very interesting indeed, as several biotech- and pharma-related decisions of the Technical Board of Appeals at the European Patent Office, as well as recent high profile judgments of national courts, not only provided new general guidelines on the European determination of “inventive step” but also addressed specific questions similar to those raised in KSR and In re Kubin. Considering recent European case law, the main goal of this bi-partite article is not to provide yet another detailed analysis of the post- KSR developments in the US. Instead the focus is placed on an examination of recent EPO (part I) and UK case law (part II) in order to finally discuss the findings in the light of the CAFC’s decision in In re Kubin. More specifically, this article aims to scrutinize specific aspects that are crucial for the biopharmaceutical industry. Special emphasis is placed on DNA-related technology and the “obvious to try with a reasonable expectation of success” issue.
Keywords: DNA-related inventions, patentability, inventive step, non-obviousness, obvious to try, biopharmaceutical industry, US, Europe
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