How are secondary considerations evaluated in design patent applications?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
Secondary considerations, also known as objective evidence of nonobviousness, play an important role in evaluating design patent applications. The MPEP states:
“Secondary considerations, such as commercial success and copying of the design by others, are relevant to the evaluation of obviousness of a design claim. Evidence of nonobviousness may be present at the time a prima facie case of obviousness is evaluated or it may be presented in rebuttal of a prior obviousness rejection.”
The MPEP cites two relevant cases:
- MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014)
- Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 1310, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010)
These cases emphasize the importance of considering secondary factors when evaluating the nonobviousness of a design. Factors such as commercial success, copying by others, and unexpected results can provide objective evidence that a design is not obvious, even if a prima facie case of obviousness has been established based on the prior art.