Obvious Confusion Over Properties Discovered After a Patent Application

The Federal Circuit recently has issued inconsistent rulings in three pharmaceutical cases on whether unexpected properties of a compound becoming known after the patent application can support a conclusion of non-obviousness. The Supreme Court has the opportunity to provide additional guidance on the crucial issue of obviousness of pharmaceutical compounds and to require consistency with the timing requirement for determining obviousness in 35 U.S.C. §103 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) This article contributes to the obviousness literature by challenging the incorrect dogma that unexpected properties – even if they were not known until after the patent application - show that an invention is non-obvious. First, the article shows the view that the particular results of a claimed invention must have been predicted is inconsistent with the Supreme Court's 2007 KSR decision that an invention can be obvious if the pathway to that result was obvious to try, even if the particular result was not predicted. Second, the article shows that unexpected properties becoming known after the patent application are not secondary considerations permitted to be considered by the Supreme Court's 1966 decision in Graham v. Deere. Third, this article shows that the Federal Circuit's periodic reference to rebuttal of a prima facie case of obviousness in ex parte patent applications is an outmoded doctrine originating before the Patent Act of 1952 that has no relevance in determining substantive obviousness today in patent infringement litigation. The article concludes that the Supreme Court should confirm the position of Judge Dyk that in determining obviousness courts may not consider knowledge of properties arising after the patent application