USPTO’s Updated Obviousness Guidelines

12 / 4 / 2024

The US Patent and Trademark Office (USPTO) has updated its guidelines for patent examiners and applicants regarding obviousness under 35 USC § 103. Effective February 27, 2024, the new Guidelines stress the need for flexibility and reasoned explanations when assessing the obviousness of claimed inventions.

The updated Guidelines move away from a sole focus on identifying the best prior art during examination and instead emphasize the effective gathering and presentation of evidence to establish obviousness. The new Guidelines incorporates references to key patent cases and review Federal Circuit cases related to combining elements from different references and defining analogous art.

With the updated Guidelines, objective analysis, considering prior art, and ordinary skill levels are still crucial. However, the new Guidelines encourage a flexible approach to understanding prior art, promoting broader interpretations and articulated reasoning. Clear explanations and comprehensive evaluation of relevant evidence are essential. Further, the Guidelines endorse a flexible approach to articulating motivations for combining prior art teachings and emphasize the significance of the analogous arts test in determining prior art scope.

While the updated Guidelines don’t drastically alter examination practice, they consolidate precedent cases and encourage a more flexible approach to establishing obviousness. Examiners at the USPTO are urged to consider a broader range of factors and acknowledge the creativity of individuals skilled in the relevant art.

Undoubtedly, patent practitioners can benefit from considering the above updates while evaluating the inventive step of claimed solutions when filing them in Europe.

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