Question 1

What types of comparative tests are acceptable for showing non-obviousness?

Accepted Answer

MPEP 716.02(b) provides guidance on acceptable comparative tests for demonstrating non-obviousness:

"Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims."

This means that both direct and indirect comparative tests can be used to show non-obviousness. Direct comparisons involve testing the claimed invention against the closest prior art. Indirect comparisons may involve testing related compounds or properties that can be reasonably linked to the claimed invention. The key is that the comparison must be relevant to the scope of the claims and provide meaningful insights into the unexpected nature of the invention.

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Question 2

What role does skepticism of experts play in establishing long-felt need for patent applications?

Accepted Answer

What role does skepticism of experts play in establishing long-felt need for patent applications?

Skepticism of experts can be a powerful factor in establishing long-felt need for patent applications. The MPEP acknowledges its significance:

Skepticism of experts or disbelief of those in the art may also be used to show nonobviousness.

(MPEP 716.04)

Expert skepticism contributes to establishing long-felt need in several ways:

It demonstrates that the problem was considered difficult or unsolvable by those skilled in the art.
It highlights the unexpected nature of the invention's success.
It reinforces the argument that the solution was not obvious to experts in the field.
It can provide evidence of the persistent nature of the problem over time.

Applicants can use documented expressions of skepticism from industry experts, published articles, or expert testimony to support their claims of long-felt need and non-obviousness in patent applications.

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Question 3

What role does 'long-felt need' play in commercial success arguments for patents?

russ.krajec@blueironip.com · Accepted Answer

What role does 'long-felt need' play in commercial success arguments for patents?

'Long-felt need' is a significant factor in commercial success arguments for patents. It demonstrates that the invention solves a problem that has existed in the industry for an extended period. The MPEP 716.04 states:

Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution.

In the context of commercial success:

It shows that the invention meets a genuine market demand.
It indicates that the solution was not obvious, as others failed to solve the problem.
It strengthens the nexus between the invention and its success.
It can explain rapid market acceptance and growth.

To effectively use 'long-felt need' in commercial success arguments:

Document the history of the problem in the industry.
Provide evidence of previous unsuccessful attempts to solve the issue.
Demonstrate how your invention specifically addresses this need.
Show how meeting this need contributed to commercial success.

When combined with strong sales or market share data, evidence of fulfilling a long-felt need can be a compelling argument for the non-obviousness of a patent claim.

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Question 4

What is the significance of undisclosed advantages in patent applications?

Accepted Answer

Undisclosed advantages in patent applications can play a crucial role in determining the non-obviousness of a claimed invention. According to MPEP 716.02(f), "The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made." This means that even advantages not explicitly stated in the specification should be taken into account.

The Federal Circuit case In re Chu emphasized this point, stating: "We have found no cases supporting the position that a patent applicant's evidence or arguments traversing a § 103 rejection must be contained within the specification." This ruling underscores the importance of considering all evidence and arguments, including those related to undisclosed advantages, when evaluating the non-obviousness of an invention.

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Question 5

What is the significance of long-felt need in patent examination?

Accepted Answer

The significance of long-felt need in patent examination lies in its ability to demonstrate non-obviousness of an invention. According to MPEP 716.04, "Evidence of a long-felt need may be presented for purposes of rebutting a prima facie case of obviousness." Long-felt need is particularly valuable when:

The need has been recognized and persistent
The need has not been satisfied by another before the applicant's invention
The invention actually satisfies the long-felt need

Demonstrating these factors can help establish that an invention is not obvious and thus potentially patentable.

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Question 6

What is the significance of 'failure of others' in patent examinations?

Accepted Answer

What is the significance of 'failure of others' in patent examinations?

The 'failure of others' is a crucial factor in patent examinations, particularly when assessing non-obviousness. It provides strong evidence that the invention was not obvious to those skilled in the art. The MPEP states:

The failure of others to provide a feasible solution to the long-standing problem is evidence of nonobviousness.

(MPEP 716.04)

Demonstrating that others have tried and failed to solve the problem can:

Highlight the inventive nature of the solution
Show that the invention was not obvious to experts in the field
Strengthen the argument for patentability

When combined with evidence of long-felt need, the failure of others can be particularly persuasive in overcoming obviousness rejections during patent examination.

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Question 7

What is the role of skepticism of experts in patent applications?

Accepted Answer

Skepticism of experts can play a significant role in patent applications, particularly in demonstrating non-obviousness. MPEP 716.05 states:

Skepticism expressed by experts in the field of the invention is relevant to the issue of nonobviousness.

To effectively use skepticism of experts as evidence:

Provide documented evidence of skepticism from recognized experts in the field
Show that the skepticism was based on scientific or technical reasons
Demonstrate that the invention overcame the skepticism

Applicants should include expert opinions, published articles, or other contemporaneous evidence showing skepticism. This can be powerful evidence that the invention was not obvious to those skilled in the art, helping to overcome obviousness rejections.

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Question 8

What is the role of skepticism in establishing long-felt need for a patent?

Accepted Answer

Skepticism from experts in the field can play a significant role in establishing long-felt need for a patent. The MPEP 716.04 indirectly addresses this concept when discussing the failure of others:

"The failure of others to provide a feasible solution to the long-standing problem is evidence of the non-obviousness of the claimed invention."

Skepticism is relevant because:

It demonstrates that experts in the field doubted the feasibility of the solution
It suggests that the invention was not obvious to those skilled in the art
Overcoming skepticism highlights the inventive nature of the solution

When presenting evidence of long-felt need, documenting initial skepticism from industry experts, followed by the invention's success, can strongly support the argument for non-obviousness. This skepticism should be well-documented and come from credible sources within the relevant field.

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Question 9

What is the role of 'comparative data' in demonstrating unexpected results for patent applications?

Accepted Answer

What is the role of 'comparative data' in demonstrating unexpected results for patent applications?

Comparative data plays a crucial role in demonstrating unexpected results for patent applications. The MPEP 716.02(b) states:

"Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978)."

To effectively demonstrate unexpected results:

Provide comparative data between the claimed invention and the closest prior art
Ensure the comparison is done under the same conditions
Show that the difference in results is statistically significant
Explain why the results are unexpected or superior to those of the prior art

Comparative data helps establish that the claimed invention produces results that are both different from and superior to what one would expect based on the prior art, strengthening the case for non-obviousness.

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Question 10

What is the relationship between long-felt need and commercial success in patent law?

Accepted Answer

What is the relationship between long-felt need and commercial success in patent law?

Long-felt need and commercial success are both secondary considerations in patent law that can help establish non-obviousness. While they are distinct factors, they often have a close relationship:

Long-felt need demonstrates that there was a persistent problem in the field that others failed to solve.
Commercial success can be evidence that the invention met this long-felt need effectively.

The MPEP states: Evidence of long-felt need may be particularly probative of obviousness when it demonstrates both that a demand existed for the patented invention, and that others tried but failed to satisfy that demand. (MPEP 716.04)

When an invention achieves commercial success shortly after its introduction, it can suggest that the invention satisfied a long-standing demand in the market, further supporting the argument for non-obviousness.

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Question 11

What is the importance of 'nexus' in commercial success arguments for patents?

Accepted Answer

What is the importance of 'nexus' in commercial success arguments for patents?

'Nexus' is crucial in commercial success arguments for patents as it establishes a direct link between the claimed invention and its market success. The MPEP 716.03 states:

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.

Without a proven nexus, commercial success evidence may be deemed irrelevant to patentability. To establish nexus:

The success must be directly attributable to the unique characteristics of the claimed invention.
Applicants must show that the success is not due to other factors like marketing, prior art features, or business acumen.
The commercially successful product must embody the claimed features.

A strong nexus can significantly strengthen an argument for non-obviousness, making it a critical component in overcoming patent rejections based on commercial success.

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Question 12

What is the 'nexus' requirement for commercial success in patent applications?

Accepted Answer

The 'nexus' requirement is crucial when asserting commercial success as evidence of non-obviousness in patent applications. According to MPEP 716.03(a):

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.

To establish a nexus, an applicant must show that:

The commercial success is directly derived from the unique characteristics of the claimed invention
The success is not due to external factors like advertising or business acumen
The successful product embodies the claimed features and is coextensive with them

The nexus must be proven by the applicant, and mere assumptions or conclusory statements are insufficient. Examiners will evaluate the evidence to ensure a proper nexus exists before considering commercial success as support for non-obviousness.

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Question 13

What evidence is required to establish long-felt need in a patent application?

Accepted Answer

To establish long-felt need in a patent application, specific types of evidence are required. The MPEP 716.04 outlines the following key requirements:

Objective evidence: The long-felt need must be supported by evidence, not just assertions.
Persistent need: Show that the need has been recognized and persistent for a significant time.
Unsuccessful attempts: Demonstrate that others have tried and failed to solve the problem.
Satisfaction of the need: Prove that the invention actually satisfies the long-felt need.

The MPEP states: "Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution." This evidence can include industry reports, expert testimonies, or documented failed attempts by others in the field.

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Question 14

What evidence is needed to prove commercial success in patent applications?

Accepted Answer

To prove commercial success as evidence of non-obviousness in patent applications, applicants must provide substantial and credible evidence. According to MPEP 716.03(a), the following types of evidence are typically required:

Sales figures: Actual sales data for the product embodying the claimed invention
Market share: Information on the product's share of the relevant market
Growth in market share: Data showing an increase in market share over time
Licensing: Evidence of licensing by others, especially competitors
Praise from the industry: Recognition or awards for the product
Long-felt need: Evidence that the product fulfilled a long-standing need in the market

The MPEP emphasizes that merely stating that a product was commercially successful is not sufficient. As stated in the manual:

Objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims.

Applicants should provide detailed documentation and analysis to demonstrate how the commercial success is directly related to the claimed invention and not to other factors.

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Question 15

What are the key requirements for patentability according to MPEP 706?

Accepted Answer

MPEP 706 outlines several key requirements for patentability that must be met before a claim can be allowed. These requirements include:

Patent eligibility
Usefulness
Novelty
Non-obviousness
Enablement
Clear description

The MPEP states:

"In every art, whether it be considered 'complex,' 'newly developed,' 'crowded,' or 'competitive,' all of the requirements for patentability (e.g., patent eligible, useful, novel, nonobvious, enabled, and clearly described as provided in 35 U.S.C. 101, 102, 103 and 112) must be met before a claim is allowed."

These requirements ensure that patents are granted only for inventions that truly advance the state of the art and are fully disclosed to the public.

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Question 16

What are 'synergistic effects' in the context of unexpected results for patent applications?

Accepted Answer

What are 'synergistic effects' in the context of unexpected results for patent applications?

'Synergistic effects' refer to a combined effect of multiple components that is greater than the sum of their individual effects. In patent applications, demonstrating synergistic effects can be powerful evidence of unexpected results. The MPEP 716.02(a)(I) states:

"Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating 'synergism')."

Key points about synergistic effects in patent applications:

They can provide strong evidence of non-obviousness
The effect must be unexpected or surprising to a person skilled in the art
Quantitative evidence is typically required to demonstrate synergy
The synergistic effect should be significant and not merely an additive effect
The claimed invention should be compared to the individual components and their predicted combined effect

Demonstrating synergistic effects can be particularly valuable in fields like chemical compositions, pharmaceutical formulations, or combined treatments where the interaction of components may lead to unexpected improvements.

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Question 17

No additional FAQs

Accepted Answer

All relevant information from MPEP 323.01 - Correction of Error in Recorded Cover Sheet has been covered in previous FAQs. No further meaningful questions can be generated without redundancy.

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Question 18

No additional FAQs

Accepted Answer

All relevant information from MPEP 716.05 - Skepticism of Experts has been covered in the previously generated FAQs. No further meaningful questions can be generated without repetition.

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Question 19

How does the time factor affect the assessment of long-felt need in patent applications?

Accepted Answer

How does the time factor affect the assessment of long-felt need in patent applications?

The time factor plays a crucial role in assessing long-felt need for patent applications. The MPEP provides guidance on this aspect:

The long-felt need must not have been satisfied by another before the invention by applicant.

(MPEP 716.04)

Key considerations regarding the time factor include:

Duration of the need: The longer the need has existed, the stronger the case for non-obviousness.
Persistence of the problem: Evidence that the problem remained unsolved over time strengthens the argument.
Timing of the invention: The invention should address the need before others have solved it.
Immediate success: Rapid adoption of the invention after its introduction can indicate it met a long-felt need.

Applicants should provide a clear timeline demonstrating the long-standing nature of the need and how their invention was the first to effectively address it.

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Question 20

How does the MPEP define 'commercial success' in patent examination?

Accepted Answer

The Manual of Patent Examining Procedure (MPEP) does not provide a specific definition for 'commercial success.' However, it outlines the requirements for using commercial success as evidence of non-obviousness. According to MPEP 716.03(a):

An applicant who is asserting commercial success to support its contention of nonobviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of commercial success.

The MPEP emphasizes that commercial success must be directly related to the claimed invention and not to extraneous factors such as business acumen or advertising. The success should be commensurate in scope with the claims and demonstrate that the commercial success flows from the functions and advantages disclosed or inherent in the specification description.

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Question 21

How does the failure of others relate to long-felt need in patent law?

Accepted Answer

The failure of others is closely related to long-felt need in patent law, as it helps strengthen the case for non-obviousness. According to MPEP 716.04:

"Evidence of long-felt need and the failure of others to meet that need is appropriate for consideration in determining obviousness."

This relationship is significant because:

It demonstrates that the problem was recognized and attempts were made to solve it
It shows that despite efforts by skilled individuals, the solution was not obvious
It highlights the inventor's success where others have failed

When presenting evidence of long-felt need, including information about the failure of others can significantly enhance the argument for patentability.

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Question 22

How does the failure of others relate to long-felt need in patent applications?

Accepted Answer

The failure of others to solve a problem is closely related to long-felt need in patent applications. According to MPEP 716.04, this relationship depends on several factors:

Persistence of the problem: The need must have been persistent and recognized by those skilled in the art. The MPEP cites In re Gershon, which states: Since the alleged problem in this case was first recognized by appellants, and others apparently have not yet become aware of its existence, it goes without saying that there could not possibly be any evidence of either a long felt need in the . . . art for a solution to a problem of dubious existence or failure of others skilled in the art who unsuccessfully attempted to solve a problem of which they were not aware.
Prior unsuccessful attempts: There should be evidence of unsuccessful attempts by others to solve the problem. The case of Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc. is mentioned, emphasizing the importance of documenting prior failed attempts.
Relevance to non-obviousness: The failure of others can support an argument for non-obviousness of the claimed invention, especially when combined with evidence of long-felt need.

When presenting evidence of long-felt need and failure of others, applicants should ensure that the problem was widely recognized, that others attempted to solve it, and that these attempts were unsuccessful until the claimed invention.

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Question 23

How does the concept of long-felt need impact the assessment of non-obviousness in patent examination?

Accepted Answer

The concept of long-felt need plays a significant role in assessing non-obviousness during patent examination. According to MPEP 716.04, long-felt need can provide strong evidence against obviousness. Here's how it impacts the assessment:

Indicates non-obvious solution: A long-felt need suggests that the solution was not obvious to those skilled in the art. If the solution were obvious, it likely would have been implemented earlier.
Demonstrates technical challenge: The persistence of the need indicates that the problem was technically challenging, supporting the non-obviousness of the solution.
Counters prima facie obviousness: Evidence of long-felt need can be used to rebut a prima facie case of obviousness established by the examiner.
Supports inventive step: When combined with evidence of the failure of others, long-felt need strongly suggests an inventive step in the claimed invention.
Indicates commercial success: Fulfilling a long-felt need often correlates with commercial success, which is another secondary consideration for non-obviousness.

The MPEP emphasizes that the claimed invention must actually satisfy the long-felt need. As stated in the case In re Cavanagh, cited in the MPEP, the invention must in fact satisfy the long-felt need.

When presenting arguments based on long-felt need, applicants should clearly demonstrate how their invention addresses a persistent, recognized problem that others in the field failed to solve, thereby supporting its non-obviousness.

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Question 24

How does the 'totality of the record' principle apply to patent examinations?

Accepted Answer

The 'totality of the record' principle is a fundamental concept in patent examinations, particularly when assessing non-obviousness. MPEP 716.02(f) states: "The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made."

This principle requires patent examiners to consider all evidence and arguments presented, including those that may not be explicitly disclosed in the original specification. The Federal Circuit in In re Chu emphasized this approach, noting that "obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." This comprehensive evaluation ensures a fair and thorough examination of the claimed invention's patentability.

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Question 25

How does the 'commensurate in scope' requirement affect unexpected results claims in patents?

Accepted Answer

How does the 'commensurate in scope' requirement affect unexpected results claims in patents?

The 'commensurate in scope' requirement is a critical factor in evaluating unexpected results claims in patent applications. According to MPEP 716.02(d):

"Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the 'objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.'"

This requirement means that:

The evidence of unexpected results must apply to the full scope of the claimed invention
If the claims are broad, the evidence should cover a range of conditions or embodiments
Unexpected results for a single species or narrow range may not be sufficient for broader claims
The applicant may need to narrow the claims to align with the scope of the unexpected results evidence

Ensuring that unexpected results are commensurate in scope with the claims helps prevent overbroad patent protection and ensures that the full range of claimed subject matter exhibits the unexpected properties or results.

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Question 26

How does commercial success relate to long-felt need in patent examination?

Accepted Answer

Commercial success can be a significant factor in supporting long-felt need during patent examination. The MPEP 716.04 provides insight into this relationship:

"In considering evidence of commercial success, care should be taken to determine that the commercial success alleged is directly derived from the invention claimed, in a marketplace where the consumer is free to choose on the basis of objective principles, and that such success is not the result of heavy promotion or advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention, etc."

Key points to consider:

Commercial success can indicate that the invention satisfies a long-felt need
The success must be directly attributable to the claimed invention
External factors like marketing or business relationships should not be the primary cause of success

When presenting commercial success as evidence of long-felt need, it's crucial to establish a clear nexus between the invention's features and its market performance.

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Question 27

How does 'long-felt need' relate to non-obviousness in patent law?

Accepted Answer

'Long-felt need' is an important factor in establishing non-obviousness of an invention in patent law. According to MPEP 716.04:

'Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most recent alleged improvement.'

The relationship between long-felt need and non-obviousness is based on the premise that if a need has existed for a long time without being solved, it suggests that the solution was not obvious to those skilled in the art. To effectively use long-felt need as evidence of non-obviousness:

The need must have been a persistent one that was recognized by those in the field.
The need must not have been satisfied by another before the invention under consideration.
The invention must actually satisfy the long-felt need.

Demonstrating these factors can help overcome obviousness rejections by showing that the invention was not an obvious solution to those skilled in the art.

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Question 28

How do licensing activities support commercial success claims in patent cases?

Accepted Answer

How do licensing activities support commercial success claims in patent cases?

Licensing activities can provide strong support for commercial success claims in patent cases. The MPEP 716.03(b)(II) addresses this:

Licensing activities showing acceptance by others may be used to demonstrate commercial success if there was licensing of the invention by others during the period attributable to the applicant's efforts.

Licensing can support commercial success by demonstrating:

Industry recognition of the invention's value.
Willingness of competitors to pay for the technology.
Widespread adoption of the invention.
Financial success attributable to the invention.

To effectively use licensing evidence:

Provide details of licensing agreements, including financial terms if possible.
Show the number and diversity of licensees.
Demonstrate that licensing occurred due to the merits of the invention, not other factors.
Explain how licensing relates to the specific claimed features.
If possible, include testimonials from licensees about the invention's value.

Remember, as stated in the MPEP, The fact that licensing activities have taken place in the industry does not always reflect commercial success of the patented invention. It's crucial to establish that the licensing is due to the invention's merits rather than other factors like avoiding litigation.

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Question 29

How can market share data support a patent's commercial success claim?

russ.krajec@blueironip.com · Accepted Answer

How can market share data support a patent's commercial success claim?

Market share data can be a powerful tool in supporting a patent's commercial success claim. According to MPEP 716.03(b)(IV):

Information regarding market share may be presented in affidavit form. Inclusion of sales data showing that the product has been sold, as well as information regarding the total sales of competing products in the market, would be relevant to determining whether the product has gained a substantial share of the market.

To effectively use market share data:

Provide specific figures showing the product's market penetration.
Compare your product's market share to those of competing products.
Demonstrate growth in market share over time.
Explain how the market share relates to the claimed invention's features.
Consider the size and competitiveness of the market.

A significant market share, especially in a crowded or competitive field, can strongly indicate that the invention has commercial success attributable to its unique features, supporting arguments for non-obviousness.

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Question 30

How are inherent properties considered in patent examinations?

Accepted Answer

Inherent properties play a significant role in patent examinations and can be crucial in establishing non-obviousness. MPEP 716.02(f) cites the case of In re Zenitz, which states that "evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer."

This means that properties or advantages that are inherent to the claimed invention, even if not explicitly disclosed in the original specification, should be considered during examination. These inherent properties can be used as evidence to support non-obviousness arguments. However, it's important to demonstrate that these properties are indeed inherent to the claimed invention and not merely incidental or unexpected results.

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In re Zenitz
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MPEP 300 - Ownership and Assignment (1)

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