By Donald Zuhn —

Yesterday, we counted down stories #10 to #6 of the top stories covered at Patent Docs in 2007, and on Sunday, we listed stories #11 to #15.  Today, we conclude the series by counting down the top five stories.  In case you missed the articles the first time around or wish to go back and review them at your convenience, links to our coverage of these stories (as well as a few links to articles on related topics) have been provided.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with our ranking, please let us know.

#5 – USPTO Issues Obviousness Guidelines

It took the U.S. Patent and Trademark Office only three days following the Supreme Court’s decision in KSR International Co. v. Teleflex Inc. to issue a “statement” regarding the decision (in the form of a memo from Margaret Focarino, Deputy Commissioner for Patent Operations, to PTO Technology Center Directors) and less than six months for the Office to issue full guidelines for making obviousness determinations.  As with the utility examination guidelines promulgated in January 2001, however, it will take some time for patent practitioners to discover the extent to which the new obviousness guidelines will impact patent prosecution.  For information regarding this topic, please see:

• “DNA Non-obviousness under Ex parte Kubin (It Gets Worse),” October 18, 2007
• “Patent Office Issues Examination Guidelines Regarding Obviousness after KSR,” October 10, 2007
• “Patent Office Sends KSR Training Guidelines to OMB,” July 25, 2007
• “Tidbits from the USPTO: KSR and More,” May 14, 2007
• “The Patent Office Reacts to KSR: A First Look,” May 3, 2007

#4 – Supreme Court Issues Decision in KSR Case

If the Patent Office’s issuance of new obviousness guidelines takes the fifth spot on our list of top stories, it makes sense that the Supreme Court decision prompting the new guidelines would grab one of the top four spots.  The Supreme Court’s decision in KSR International Co. v. Teleflex Inc. on April 30, 2007 was easily one of the most eagerly awaited patent law-related decisions in recent memory.  In reversing the Federal Circuit’s determination of validity, the Supreme Court dealt a blow to the CAFC’s “teaching, suggestion, or motivation” (TSM) test for analyzing obviousness by rejecting a “rigid” application of the TSM test.  Not unexpectedly, the Supreme Court pointed to its 1966 decision in Graham v. John Deere Co. as providing the proper analytical framework.  For information regarding this and other related topics, please see:

• “IPLAC Panel Discussion of KSR v. Teleflex,” May 18, 2007
• “Trying to Understand What’s Not Obvious about What’s ‘Obvious to Try,’” May 16, 2007
• “Like a Penny Saved for a Rainy Day (Albeit, Unintentionally): The Renewed Relevance of 35 U.S.C. § 103(b),” May 13, 2007
• “BIO’s Reaction to KSR v. Teleflex,” May 8, 2007
• “Implications of the Supreme Court’s KSR v. Teleflex Decision for Biotechnology,” May 4, 2007
• “KSR Int’l Co. v. Teleflex Inc. (2007),” April 30, 2007
• “The Federal Circuit Backpedals on Obviousness,” March 27, 2007

#3 – USPTO Promulgates New Continuation and Claims Rules

What could knock an important patent law-related Supreme Court decision out of our top three?  How about the most substantial revision to the patent rules that patent practitioners have seen in quite some time?  By now, patent practitioners are certainly well acquainted with the new continuation and claims rules and the impact these rules could have (if allowed to go into force by the Court or Congress) on the number of continuation applications, RCEs, and claims an applicant could file.  However, it is yet to be determined whether any (and if so, which) of the new rules will survive a recent court challenge.  For information regarding this and other related topics, please see:

• “A Call to Arms,” October 22, 2007
• “Will Compliance with the New Rules Be Enforced by the Patent Office through the Office of Enrollment and Discipline?” October 17, 2007
• “USPTO News Briefs,” October 18, 2007
• “PTO ‘Flagging’ Pending Applications that Exceed 5/25 Claim Limits,” October 17, 2007
• “‘Impact’ of New Continuation and Claims Rules,” October 8, 2007
• “Is the Patent Office Starting to Blink,” October 5, 2007
• “Breaking A Very Long Silence,” October 1, 2007
• “It Ain’t Necessarily So,” September 28, 2007
• “Commissioner Doll Addresses ACI Biotech Patents Conference,” September 26, 2007
• “NAPP Opposes New Continuation and Claims Rules,” September 7, 2007
• “Patent Office Provides Recorded Web-Based Discussion of New Rules,” August 30, 2007
• “New PTO Continuation Rules: Unfair to Biotech?” August 29, 2007
• “Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting,” August 24, 2007
• “The ‘Word’ on the New Continuation Rules (from the USPTO Webcast) – Part II,” August 24, 2007
• “The ‘Word’ on the New Continuation Rules (from the USPTO Webcast) – Part I,” August 23, 2007
• “New Continuation and Claims Rules Published,” August 22, 2007
• “More on M.P.E.P. § 710.06,” August 20, 2007
• “Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007,” August 20, 2007
• “Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow,” August 20, 2007
• “Procuring Patent Protection from the Present USPTO,” August 15, 2007
• “New Continuation and Claims Rules to Be Published in Late Summer,” July 25, 2007
• “Lies, Damn Lies, and Statistics,” July 10, 2007
• “They Just Don’t Get It – ‘Patent Reform’ at the USPTO,” April 11, 2007

#2 – USPTO “Clarifies” New Continuation and Claims Rules

We placed this story ahead of the publication of the new continuation and claims rules because it suggests that the Patent Office perhaps did not gauge the impact of the new rules as carefully as it would have liked us to believe.  No “clarification” provides a better example of this than the one that finally laid to rest the “divisional dilemma” we discussed here.  When a simple question about the impact of filing a Demand in an International application stumps the Commissioner of Patents, that should be a hint that the new continuation and claims rules require a little more work.  For information regarding this topic, please see:

• “Changes to New Rules to Be Published in Early November,” October 11, 2007
• “USPTO Issues Notice to “Clarify” Certain Provisions of the New Rules,” October 10, 2007

#1 – District Court Enjoins New Continuation and Claims Rules

Topping our list of top stories for 2007 is the court challenge to the new continuation and claims rules brought initially by Dr. Triantafyllos Tafas, which was then consolidated with the action filed by GlaxoSmithKline.  On Halloween, the Eastern District of Virginia granted a preliminary injunction in the consolidated actions, preventing the USPTO from implementing the new rules.  This case is likely to crack the top five again in 2008, however, since the Court will be determining whether to permanently enjoin the new rules in February.  For information regarding this and other related topics, please see:

• “New Briefing Deadline Set In PTO Rules Case,” December 18, 2007
• “Court Sets Summary Judgment Schedule in New Rules Case,” December 3, 2007
• “No Discovery in New Rules Case,” November 27, 2007
• “Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas (E.D. Va. 2007),” October 31, 2007
• “USPTO Late to Its Own Party,” October 31, 2007
• “GSK Secures Injunction,” October 31, 2007 (includes links to Court’s Order and Opinion)
• “Senator Schumer Sends a Signal,” October 30, 2007
• “GSK TRO/Preliminary Injunction Hearing,” October 29, 2007
• “AIPLA Supports GSK’s Lawsuit Against the Patent Office’s New Rules,” October 25, 2007
• “GSK Brings Out the Big Guns Opposing the New Continuation and Claims Rules,” October 24, 2007
• “Hooray! – (Finally) the Big Dogs Have Joined the Hunt,” October 11, 2007
• “Rules Challenger Amends Complaint and Withdraws PI Motion,” September 11, 2007
• “Inventor Sues PTO to Prevent New Continuation and Claims Rules from Taking Effect,” August 30, 2007