Speech at US Patent Experts Conference in Naples Florida

The University of Akron School of Law will host the 2nd Annual Midwinter Patent Experts Conference in Naples, Florida February 10-11, 2014. The conference will be held at the Naples Hilton Hotel.

The faculty for the program includes, from the judiciary, the Hon. Kathleen O’Malley and the Hon. Richard Linn, of the Federal Circuit, as well the Hon. Roger T. Hughes, of the Federal Court of Canada. From the executive branch, the current acting director of the PTO, the Hon. Teresa Stanek Rea, will participate, as will the current Chairman of the Patent Trial and Appeal Board, James S. Smith, and former Administrative Patent Judge William F. Smith. Former PTO Deputy Director Sharon Barner and former Commissioner for Patents Robert Stoll will also participate. Robert A. Armitage, the father of the Leahy-Smith America Invents Act, will also be a featured participant.

A number of law professors who specialize in patent law are also included in the program. They include Dean Timothy Holbrook and Assoc. Professor Timo Minssen, Christal Sheppard, Dennis Crouch, Jason Rantanen, W. Keith Robinson, William Hubbard and Dr. Heinz Goddar. Senior corporate lawyers include Sharon R. Barner, Vice-President of Cummins Inc., and Richard Rainey, in charge of worldwide IP litigation for GE.

I have been invited to participate in a panel debate on “non-obviousness” and to give a speech on “A comparative US/European view on the law of non-obviousness” . My presentation will provide an introductory overview over relevant legal frameworks and various doctrinal concepts of the European and U.S. non-obviousness assessment. I will also discuss recent case-law developments that are of particular practical relevance. Special emphasis will be laid on chemical and biotech case law. I intend to argue that the KSR-induced, more flexible US-approach to obviousness has moved closer to the European approach and that I welcome this development. Yet, I also underline that specific statements in KSR and subsequent case law rightfully attracted criticism in both Europe and the US. Moreover, I plan to point out that by carefully aligning national case law with EPO precedent, recent U.K. decisions have applied a more “patent-friendly” approach with respect to, inter alia, the “obvious to try” issue and selection inventions. These decisions provide valuable insights and arguments to those who fear that KSR inevitably tipped the pendulum towards an overly strict non-obviousness standard, which disregards hindsight problems, the dynamics of the research environment, and the importance of patents in pharmaceutical R&D.

View the slides from this presentation here.

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About Timo Minssen

Timo Minssen is Professor of Law specializing in legal aspects of biomedical innovation at the University of Copenhagen (UCPH). He is the Managing Director and Founder of UCPH's new Center for Advanced Studies and Collaborative Research Programme in Biomedical Innovation Law (CeBIL). Previously, Timo had been Professor of Biotechnology Law at UCPH's Centre for Information & Innovation Law (CIIR), Visiting Research Fellow at the Universities of Cambridge and Oxford (UK), Harvard Law School and at the Chicago-Kent College of Law (US), as well as Max Planck stipendiate at the Max Planck Institute for Innovation & Competition in Munich (Germany). Moreover, he was trained in the German Court system (Referendariat) and worked for shorter periods at the European Patent Office (EPO), leading law firms, tech start-ups and and for an interdisciplinary epigenetics project as a fellow of the Swedish Pufendorf Institute for Advanced Studies.. Timo holds a German law degree (Staatsexamen) from Georg-August-University in Göttingen, as well as Swedish biotech & IPR related LL.M., LL.Lic., and LL.D. degrees from Lund University and Uppsala University. His PhD thesis delivered a comprehensive study on the patentability of biopharmaceutical technology in the US & Europe, which received the Swedish King Oscar award. He has also received the Awapatent and Jorcks Foundation Research Prizes and was a finalist of the Swedish Wallenberg Academy Fellows program.