What are the consequences of failing to compare with the closest prior art in a patent application?

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.

Failing to compare with the closest prior art in a patent application can have significant consequences. The MPEP 716.02(e) states:

‘An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness.’

The consequences of not doing so may include:

• The evidence of unexpected results may be considered insufficient or ineffective.
• The examiner may maintain or issue a rejection based on obviousness.
• The applicant may need to submit additional evidence or arguments, potentially prolonging the examination process.
• In the worst case, it could lead to a denial of the patent application if the applicant cannot effectively demonstrate non-obviousness.

Therefore, it’s crucial to identify and compare with the closest prior art to strengthen the case for patentability.