An invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived. Determining obviousness – and the validity of your patent – is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time.

If you’re thinking that sounds awfully subjective in the present and highly susceptible to hindsight bias in the future, you’d be right. Beyond being one of the four main drivers for patent application rejection at examination time, obviousness is also one of the primary vectors used by the Patent Trial and Appeal Board for invalidating patents via Inter Partes Review, so it’s essential to get this right so as to limit your patent’s potential invalidation surface area.

** Episode Overview **

Kristen Hansen, Patent Strategy Specialist at Aurora, and Dr. David Jackrel, President of Jackrel Consulting, lead today’s two-part discussion with our all-star panel, dissecting recent court decisions impacting the core patenting issue of obviousness. In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss:

⦿ Inter Partes Review and how some PTAB strategy deviates from conventional patenting wisdom when it comes to obviousness.
⦿ Recent obviousness case law decisions.
⦿ Practice tips related to obviousness including analysis of how previously invalidated claims impact future claims, the dangers of being your own lexicographer, and the strategic importance of drafting backup positions in your specification.

** Mossoff Minute: PREVAIL Advances **

In this month's Mossoff Minute, Professor Adam Mossoff discusses some incredibly exciting news about the PREVAIL Act, which is designed to bring much overdue reform to the Patent Trial and Appeal Board.

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