Morgan Lewis Seminars

2016 Technology May-rathon: Presenting Technical Data to the USPTO

Friday, May 13, 2016
04:30 PM - 05:30 PM Eastern Daylight Time

When the US Patent and Trademark Office (USPTO) evaluates the obviousness of an invention, evidence referred to as ‘‘secondary considerations’’ must be considered.

Such evidence of nonobviousness includes unexpected and advantageous technical properties or results of an invention, evidence of commercial success long-felt but unsolved, needs in the relevant field, others’ failures, and industry copying. Presenting such evidence with nexus to an invention may not be easy when an invention involves complex technology but can be persuasive in establishing nonobviousness.

Please join us to discuss best practices in presenting evidence of secondary considerations to the USPTO. We will also discuss the factual determinations and analysis used to resolve questions of obviousness under both US and Japanese law.

Topics will include:

  • Review and comparison of US and Japanese legal standards for obviousness and secondary consideration
  • Recent cases regarding secondary consideration
  • Practical tips for how to present and argue secondary consideration to the USPTO

Please email Shonna Holmes or call +1.202.739.5739.