MPEP § 716.03 — Commercial Success (Annotated Rules)
§716.03 Commercial Success
This page consolidates and annotates all enforceable requirements under MPEP § 716.03, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Commercial Success
This section addresses Commercial Success.
Key Rules
Commercial Success
In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). See also In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the 35 U.S.C. 103 rejection was not probative of nonobviousness).
The term “nexus” designates a factually and legally sufficient connection between the evidence of commercial success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988). See MPEP §§ 716.01(b) and 2145 for guidance on determining if the nexus requirement is met.
Nexus Requirement
The term “nexus” designates a factually and legally sufficient connection between the evidence of commercial success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988). See MPEP §§ 716.01(b) and 2145 for guidance on determining if the nexus requirement is met.
Citations
| Primary topic | Citation |
|---|---|
| Commercial Success | 35 U.S.C. § 103 |
| Commercial Success Nexus Requirement | MPEP § 716.01(b) |
| – | Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990) |
| Commercial Success | In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) |
| Commercial Success | In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 716.03 — Commercial Success
Source: USPTO716.03 Commercial Success [R-01.2024]
I. BURDEN OF PRODUCTION FOR EVIDENCE OF COMMERCIAL SUCCESS AND NEXUSAn applicant who is asserting commercial success to support its contention of nonobviousness bears the burden of proof in establishing commercial success.
The Federal Circuit has acknowledged that applicant bears the burden of production for evidence of commercial success, stating:
In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sale constitute commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990)(evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.
In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). See also In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the 35 U.S.C. 103 rejection was not probative of nonobviousness).
The term “nexus” designates a factually and legally sufficient connection between the evidence of commercial success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988). See MPEP §§ 716.01(b) and 2145 for guidance on determining if the nexus requirement is met.
II. COMMERCIAL SUCCESS ABROAD IS RELEVANTCommercial success abroad, as well as in the United States, is relevant in resolving the issue of nonobviousness. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984).