Non-obviousness in Patent Law: Impact of New Scientific Discoveries on In Re Kubin

Ryan C. Smith, Illumina

Abstract

The Federal Circuit made a recent controversial decision in In Re Kubin in applying the KSR v. Teleflex obviousness criteria to the field of biotechnology. As the legal world contemplated the implications of KSR on the field of biotechnology, a new scientific discovery was made which addresses the fundamental logic of an element of Kubin. The impact of the new scientific discovery on In Re Kubin suggests (a) Kubin should be limited to its facts, and (b) the scope of subject matter in the non-obvious “obvious to try” category should be significantly expanded, enabling greater patentability on new biotechnology inventions which incorporate this new scientific discovery.