Friday, May 18, 2007

Biotech/pharma reaction to KSR decision on obviousness

As can be seen from the BIO amicus brief, the biotech/pharma industry did not support changes to the obviousness standard for patentability, and as can be seen by later statements, bio folks were NOT thrilled with the decision in KSR v. Teleflex. BIO on KSR: "We're not totally thrilled."

Although one blog entry on scotusblog suggested KSR will not harm bio/pharma interests, it is more likely that the net effect of KSR v. Teleflex will be adverse to biotech/pharma interests.

Of the TSM test, patentbaristas wrote: Granted, while the Supreme Court knocked the Federal Circuit’s teaching, suggestion, or motivation (TSM) test down a notch, it didn’t reject it outright. So, the same factors will come into play — albeit in a smaller role. Therefore, many of the arguments of patentability that would come into play under the TSM test will still be necessary in terms of the new, higher standard for combinations of known elements. Of the impact of KSR on biotech: I don’t believe that we will know the net effect for some time. However, one immediate result from this decision could be a push to increase settlements.

Ludwig of Venable writes "the TSM test will likely be used in some instances to determine obviousness" and that "claims covering improvements on known inventions will be rejected more often." Ludwig notes that the biotech/pharma approach of Patent Life Cycle Management will be impacted. Ludwig suggests that a key way to overcome obviousness issues will be a persuasive, well-supported showing of unexpected results.

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