What Is Your Reasonable Expectation of Success in Obtaining Pharmaceutical or Biotechnology Patents Having Nonobvious Claimed Inventions That the Courts Will Uphold? An Overview of Obviousness Court Decisions

Abstract

<p class="first" id="d5052215e89">This article explores the legal basis for establishing the nonobviousness of patent claims in the life sciences fields of technology drawn from the guidance provided in published decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, federal district courts, the Federal Circuit Court of Appeals, and the U.S. Supreme Court. Our analysis, although equally applicable to all disciplines and technologies, focuses primarily on decisions of greatest import affecting patents in the fields of pharmaceutical chemistry and biotechnology. </p><p class="first" id="d5052215e92">For an invention to be patentable, it must not have been obvious to a person having ordinary skill in the art at the time the invention was made. Several examples illustrate key concepts in establishing nonobviousness. </p>