Empirical Study on Post-KSR Nonobviousness Requirements in CAFC Decisions

• Main Authors: Peng, Hsiang-Hung, 彭翔鴻
• Other Authors: Liu, Shang-Jyh
• Format: Others
• Language: zh-TW
• Published: 2010
• Online Access: http://ndltd.ncl.edu.tw/handle/28189661322088182985

碩士 === 國立交通大學 === 管理學院碩士在職專班科技法律組 === 98 === Nonobviousness requirement plays a critical role in the US patent system and is the most frequently cited patentability requirement not only in application prosecutions but in infringement negotiations and litigations. Before KSR decision, commentators usually subjectively criticize it is TSM test that should be mainly blamed for bad patents for lowering nonobviousness requirement. Two different empirical researches, however, show that CAFC did not lower its nonobviousness requirement actually. Nevertheless, in KSR decision, Supreme Court rejected rigid approach of CAFC in applying TSM test. Therefore, in this thesis, I empirically examine whether CAFC changes nonobviousness requirement after KSR decision and how CAFC applies KSR decision. The empirical analysis shows CAFC much highers nonobviousness requirement after KSR decision. CAFC mainly focuses on “predictability” of claimed invention as compared to prior arts in its decisions. Therefore, CAFC’s nonobviousness decision highly differs between medical chemical technology field, which is more unpredictable, and other fields. Specifically, none of claims in other fields is regarded as nonobvious by CAFC. Considering this much higher nonobviousness requirement after KSR, this thesis provides some suggestions about patent management strategies.