Pharmaceutical research often entails making small modifications to candidate drug molecules--modifications that might be deemed “obvious to try”--and then studying the largely unpredictable, yet critical, resulting biological effects. Recognizing this characteristic unpredictability, the U.S. Court of Appeals for the Federal Circuit has traditionally upheld the patentability of obvious-to-try pharmaceutical inventions. This approach has been challenged, however, by the U.S. Supreme Court's 2007 decision in KSR International Co. v. Teleflex Inc. This Note reviews the history of the obvious-to-try test and considers the Federal Circuit's post-KSR inconsistency regarding obviousness in the pharmaceutical arts. This Note argues that KSR does not permit courts to deny the patentability of a pharmaceutical invention simply because it would have been obvious to try.
Andrew V. Trask,
"Obvious To Try": A Proper Patentability Standard in the Pharmaceutical Arts?,
76 Fordham L. Rev. 2625
Available at: https://ir.lawnet.fordham.edu/flr/vol76/iss5/9