(354a) Strategies and Current Trends for Protecting Intellectual Assets in the Face of Recent Developments; Is the “Patent Office” Becoming the “Rejection Office”?

The rules of the game of obtaining patent protection are changing! In April, 2007, the U.S. Supreme Court reprimanded courts below, reminding them to avoid rigidly requiring that references teach or suggest a particular combination in order to render inventions obvious, thereby essentially making it easier for patent examiners to reject patent applications. In August, 2007, the U.S. Patent and Trademark Office (PTO) announced rules that would have significantly limited the ability of patent applicants to claim inventions and extend the process of getting patents approved. Over the past year, Congress has been considering legislation that would allow third parties to oppose the grant of U.S. patents, possibly during two different time periods. Finally, the PTO has become emboldened in rejecting patent applications in an effort to minimize improper allowances. What does all of this mean for those seeking patent protection of inventions in the chemical and biotechnology fields? The speaker will explain how the evolving rules should be dealt with in these fields, from selecting which inventions to attempt to patent, to preparing patent applications, and finally to dealing with the PTO during the application process, with particular emphasis on how courts have approached obviousness in the pharmaceutical field since the recent Supreme Court decision.