Posted by Michael Shimokaji | Jun 03, 2019 | 0 Comments

QUESTION: Patent Prior Art Question? If I have an invention for which the examiner has cited examples of prior art that could be combined to form my invention, but such prior art has all been around for 20 years and yet no one has combined them to form my invention, can a successful argument be made that it is not obvious due to the fact that if it had been obvious from the cited prior art, that it would have been done at some point in that 20 year time frame?

ANSWER: Your proposed response would not be legally persuasive. Also, you may not be able to provide evidence that your invention has never been done in the 20 year time frame. Generally, if the examiner can find all of your claimed invention features in prior patents, you will probably not be successful in convincing the examiner that your invention is not obvious.

About the Author

Michael Shimokaji

Mr. Shimokaji specializes in the health care industry, including medical devices, medtech, and life sciences. Over the last 30 years, he has also supported clients in industries as diverse as aerospace, apparel, chemicals, computer software, and telecommunications. His expertise includes infringement litigation, patent and trademark portfolio development, and intellectual property transactions.


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