Overcoming 103 Rejections for Biotech and Chemical Patents: Leveraging Recent Decisions and USPTO Guidance

Description

Obviousness can be a significant hurdle for patent applicants in securing a patent on biotech and chemical inventions. An obviousness determination can be complicated, and examiners regularly reject patent claims as obvious under Section 103, often combining the prior art.

For clients who receive a 103 rejection, counsel's response should be part of a well thought out strategy that anticipates the possibility of later court and PTAB challenges. For example, counsel should try to craft the response to minimize or eliminate prosecution history estoppel without jeopardizing enablement and/or written description positions.

Further, in light of AIA post-grant proceedings such as post-grant reviews and inter partes reviews, counsel should carefully consider submitting evidence, including comparative data, scientific arguments, and supporting declarations, in reply to the rejection to build the prosecution record. Efforts during prosecution will help to raise the bar a petitioner will face persuading the PTAB to find that the claims are unpatentable more likely than not.

Listen as our authoritative panel of patent attorneys examines how the courts have treated 103 rejections and the USPTO's guidance on 103 rejections. Based on decades of experience, the panel will offer their own war stories on overcoming 103 rejections and arguments. The panel will also discuss the distinct challenges for biotech and chemical inventions and best practices for patent counsel to address 103 rejections in biotech and chemical patent applications.