Article: Obvious to try and non-obviousness post KSR: origins and implications Journal: International Journal of Intellectual Property Management (IJIPM) 2015 Vol.8 No.3/4 pp.190 - 206 Abstract: Non-obviousness is often considered 'the ultimate condition of patentability'. It tries to capture 'the technical accomplishment rather than economic implications'. Developments subsequent to Supreme Court's decision in Cuno engineering led to the introduction of non-obviousness as a criterion for patentability under 35 USC § 103 in 1952. In its efforts to bring uniformity, the Federal Circuit adopted the teaching suggestion and motivation test to define the scope of the prior art. In this paper, we proposed to illustrate how a seemingly obvious invention results in a conclusion of non-obviousness and leads to an industrially significant patent by examining the US patent application 11/574781 which deals with the 'process for producing Amlodipine enantiomer in high optical purity' for non-obviousness. We conclude with implications of the 'obvious to try' doctrine in the determination of non-obviousness in pharmaceutical inventions and the steps an applicant could take in establishing non-obviousness of the invention. Inderscience Publishers - linking academia, business and industry through research

Title: Obvious to try and non-obviousness post KSR: origins and implications

Authors: Sivakami Dhulap; Anshu Joshi; M.G. Kulkarni

Addresses: Council of Scientific and Industrial Research-Unit for Research and Development of Information Products, Pune 411 038, Maharashtra, India ' Council of Scientific and Industrial Research-Unit for Research and Development of Information Products, Pune 411 038, Maharashtra, India ' Council of Scientific and Industrial Research-Unit for Research and Development of Information Products, Pune 411 038, Maharashtra, India

Abstract: Non-obviousness is often considered 'the ultimate condition of patentability'. It tries to capture 'the technical accomplishment rather than economic implications'. Developments subsequent to Supreme Court's decision in Cuno engineering led to the introduction of non-obviousness as a criterion for patentability under 35 USC § 103 in 1952. In its efforts to bring uniformity, the Federal Circuit adopted the teaching suggestion and motivation test to define the scope of the prior art. In this paper, we proposed to illustrate how a seemingly obvious invention results in a conclusion of non-obviousness and leads to an industrially significant patent by examining the US patent application 11/574781 which deals with the 'process for producing Amlodipine enantiomer in high optical purity' for non-obviousness. We conclude with implications of the 'obvious to try' doctrine in the determination of non-obviousness in pharmaceutical inventions and the steps an applicant could take in establishing non-obviousness of the invention.

Keywords: non-obviosuness; patentability criteria; pharmaceutical inventions; post KSR; patents; intellectual property; pharmaceuticals.

DOI: 10.1504/IJIPM.2015.076548

International Journal of Intellectual Property Management, 2015 Vol.8 No.3/4, pp.190 - 206

Received: 22 Oct 2014
Accepted: 25 Jul 2015
Published online: 12 May 2016 *

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Title: Obvious to try and non-obviousness post KSR: origins and implications

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