By Sherri Oslick —

Last Tuesday, May 8th, a session entitled "Developments from the JPO, EPO, SIPO, & USPTO" was offered at the BIO 2007 conference.  The speaker from the USPTO was John LeGuyader, a Director for TC 1600.  He addressed the KSR decision, and here’s what he had to say:

On the day of the KSR decision, walking down the hallway, he could hear examiners excitedly remarking that they could now do whatever they wanted with obviousness.  He stressed that this is incorrect, and that examiners were being told that things were more or less status quo.  Examiners, according to Mr. LeGuyader, have always been trained to use the Graham factors in assessing obviousness, that their best case scenario was where the motivation to combine was within the references themselves, but that the motivation could also be founded in sound scientific reasoning, which they would need to present.  That, he added, is still the case, so in his view nothing has changed in terms of examination relative to obviousness.

Mr. LeGuyader shared some other interesting tidbits:  he noted that the USPTO is going to be re-training the examining corps on restriction practice, particularly in the chemical/pharmaceutical arts, as the examiners appear to be struggling with it.

Mr. LeGuyader also addressed USPTO restriction practice as it pertains to nucleotide and/or amino acid sequences.  As reported previously by Patent Docs, with the repeal of the old O.G. notice stating that the PTO would search up to 10 sequences, it is now the official position of the PTO that they will only search a single sequence unless it would not be an undue burden to search more.  According to Mr. LeGuyader, sequences sharing a common core, or significant overlap, generally fall into the category of "not an undue burden to search."  Mr. LeGuyader encouraged practitioners to petition when an examiner maintains a restriction requirement to a single sequence where there is such a common core or overlap – he said he’s seen quite a few such petitions and in most instances the examiner is overturned.