NicoElNino / Shutterstock.com
Patent owners and petitioners in the life sciences industry who raise arguments surrounding commercial success during PTAB trials face substantive and procedural roadblocks, argue Christopher Jagoe and James McConnell of Kirkland & Ellis.
The commercial success of a patented life sciences invention generally fails to persuade the Patent Trial and Appeal Board (PTAB) that it is evidence of non-obviousness in inter partes review (IPR) trials.
US law prohibits patents on inventions that, while not exactly disclosed in the prior art, are no more than obvious extensions of the prior art. The inquiry generally focuses on the differences between the prior art and the claimed invention, and whether a hypothetical person of ordinary skill in the art would have considered it obvious at the time of invention.
A complex body of law has developed over the last 50 years on how to conduct that inquiry, including the evaluation of certain “secondary considerations” tending to refute obviousness. An often-cited secondary consideration is whether the invention caused embodying products to be commercially successful. The theory is “an idea would successfully have been brought to market sooner, in response to market forces, had the idea been obvious to persons skilled in the art”.
Start a subscription today to access the LSIPR website.
To access the full archive, digital magazines and special reports you will need to take out a paid subscription.
If you have already subscribed please login.
If you have any technical issues please email tech support.
For access to the complete website, archive, and to receive print publications, choose '12 MONTH SUBSCRIPTION'. For a free, two-week trial with full access, select ‘TWO WEEK FREE TRIAL’.
Christopher Jagoe, James McConnell, Kirkland & Ellis, IPR, PTAB, patent, DNA, US Patent and Trademark Office, America Invents Act,
