How does the USPTO evaluate expert skepticism in patent applications?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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. The United States Patent and Trademark Office (USPTO) evaluates expert skepticism in patent applications as part of its assessment of nonobviousness. According to the MPEP: Expressions of disbelief by experts constitute strong evidence of nonobviousness. ( MPEP 716.05 ) When evaluating expert skepticism, patent examiners consider: The credibility and expertise of the skeptical experts The timing of the skepticism (preferably before the invention was made) The specific reasons for the skepticism Evidence of how the invention overcame the skepticism The MPEP also notes that testimony that the invention met with initial incredulity and skepticism of experts was sufficient to rebut the prima facie case of obviousness based on the prior art. This suggests that well-documented expert skepticism can be a powerful tool in overcoming obviousness rejections during patent prosecution. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Incredulity of Experts Can Rebut Obviousness MPEP 716.05 Declaration Can Replace Affidavit in Patent Applications MPEP 716 Evidence of Nonobviousness Timing MPEP 1504.03 Permitted Applicant Must Rebut Prima Facie Case of Obviousness MPEP 1504.03 Rebutting Prima Facie Case With Evidence MPEP 2144.08 Prohibited Patent Examiner Must Establish Prima Facie Case of Obviousness MPEP 2142 Required Publications May Serve as Evidence for Facts at Issue MPEP 716 Recommended Oath or Declaration Required for Traversing Rejections MPEP 716 Required Primary Examiner Must Review Evidence to Overcome Rejection MPEP 716 Affidavits Must Be Made Under Oath MPEP 716 Other Related FAQs 5 FAQs Collapse What is the role of skepticism of experts in patent applications? ...