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One Small Step Towards Patent Harmonization: KSR And The EPO






By Morgan D. Rosenberg and Richard J. Apley

Patent harmonization may be inevitable, even if it is one small step at a time.  The debate rages on, as it has for decades, as to whether the U.S. should lose its pro-small-inventor policy of “first to invent” as opposed to the EPO’s “first to file” rule, and it is unlikely that a resolution will appear anytime soon.  However, piece by piece, harmonization does occur (and may, in fact, be inevitable), from the publishing of U.S. patent applications, which started in 2001, to the Supreme Court’s recent ruling in KSR International Co. v. Teleflex, Inc.1

In the KSR decision of April 30, 2007, the Supreme Court modified the basis for obviousness in U.S. patent practice.  Under the prior Teaching-Suggestion-Motivation (TSM) standard, both the Patent Office and patent practitioners focused largely on whether particular prior art references could be combined (under 35 U.S.C. §103) rather than on the advantages and merits of the invention.  In contrast, pursuant to Article 52(1) (in conjunction with Article 56, first paragraph) of the European Patent Convention (EPC), European patents are granted for inventions which inter alia include an “inventive step”.

Although the inventive step analysis of EPO examination is often compared to the non-obviousness of standard of the U.S., there are subtle dis...

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