About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Authors of Genome Medicine Article Form Genetic Testing Company | Main | U.S. IP Coordinator Steps Down »

August 13, 2013


Thanks for reporting this refreshing injection of rationality into the CAFC's obviousness jurisprudence and its deft handling of KSR in a way that shows fealty to that decision while effectively shunting it aside. While it's not surprising to see Judge Rader deciding in favor of the applicant in this case, seeing that two of the newer members of the court joined him makes me cautiously optimistic for the future.

Interesting case, on obviousness. Here is a link to the EPO patent file:


I'm not a chemist so the following might not make much sense, but reply comments would be appreciated.

Commercial success as proof of non-obviousness always troubles me. Rarely is there a Nexus. But here, where the issue was storage stability Y/N, the incontrovertible fact that the stuff was a solid commercial success surely is evidence enough that it is storage-stable enough?

The case reminds me of that old case claiming a paper cup for beverages and amended during prosecution to a disposable water-resistant paper cup for hot beverages. Does a switch to it by McDonalds, away from plastic cups, make it non-obvious? Or was it patentable because all earlier paper beverage cups were not "disposable". It is debatable.

Back to the present case. The EPO noted that the tests in the patent application were of one solvent only, but concluded that Applicant had succeeded by evidence in making it "plausible" that all claimed solvents worked to deliver storage stability.

It is a lively EPO file. Plenty of third party observations from members of the public prior to issue, three post-issue oppositions pending and two divisionals in the pipeline.

Thanks for this, Max. I agree that the issue is often a nexus with commercial success, and somewhat less so for long-felt need and failure of others. I think the court was convinced that the patentees had solved an unappreciated problem with real-world advantages to patients and that the examiner had merely cherry-picked the prior art to reconstruct the invention using hindsight.

What struck me about the case was the explicit use of the amount of time between the prior art references themselves and the invention date to support non-obviousness. I don't remember a case where the court (or the CCPA) used this reasoning so directly.

Thanks for the comment.

I agree Dr. Noonan, as I too was struck with the front and center presentation of "Well, if it was so obvious, it would have been done before" type of reasoning.

Indeed Dr Noonan. When have we ever seen evidence of such persuasive force that i)the objective technical problem was old and had defied solution for many years and ii) the Inventor had solved it? The evidence was not only that the Invention delivered to the market a viable medicament and commercially attractive product but also that the prior teachings over many years did not.

Not sure about your "unappreciated" though. Which did the pharma industry not appreciate: Patient compliance, storage stability, or both?

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29