2017 March Patent Prosecution Lunch

2. Docket Items
• Request for Examination Deadline in the United
Kingdom (UK)
– Previously- 33 months from the earliest priority date.
– Now- 6 months from publication date (like EPO)
 When priority based on a PCT application, the earlier
PCT publication counts for this 6 month deadline, so
you need to request examination upon filing the UK
application.

3. Inter Partes Review (IPR) Appeal Standing
• Federal Circuit held that a petitioner (Phigenix
in this case) lacked standing to appeal an
adverse final written decision in an IPR.
– The petitioner/appellant was "not engaged in any
activity that would give rise to a possible
infringement suit."
– Phigenix, Inc. v. ImmunoGen, Inc. 2016-1544
(Fed. Cir. 2017)
• Is an IPR worth the risk now?

4. Obviousness- Motivation to Combine
• In re van Os
– Examiner PTAB- combination of references
would have been “intuitive” (or common sense).
– “the flexibility afforded by KSR did not extinguish
the factfinder’s obligation to provide reasoned
analysis. Instead, KSR specifically instructs that
when determining whether there would have
been a motivation to combine, the ‘analysis
should be made explicit.'” (page 4, 2015-1975,
Fed. Cir. 2017)
 http://www.cafc.uscourts.gov/sites/default/files/opini
ons-orders/15-1975.Opinion.12-28-2016.1.PDF

5. Obviousness- Motivation to Combine
• In re van Os
Absent some articulated rationale, a finding that a
combination of prior art would have been “common
sense” or “intuitive” is no different than merely
stating the combination “would have been
obvious.” Such a conclusory assertion with no
explanation is inadequate to support a finding that
there would have been a motivation to combine.
This type of finding, without more, tracks the ex
post reasoning KSR warned of and fails to identify
any actual reason why a skilled artisan would have
combined the elements in the manner claimed.
See 550 U.S. at 418, 421. (Page 5)