How should commercial success be demonstrated for inventions with claimed ranges?
For inventions with claimed ranges, it’s not necessary to demonstrate commercial success at every point within the range. Evidence of substantial commercial success at a typical point within the claimed range can be persuasive, especially if operation throughout the range is similar. The MPEP 716.03(a) cites a precedent: “Where, as here, the claims are directed…
Read MoreWho bears the burden of proof for establishing a nexus between commercial success and the claimed invention?
According to the MPEP, the burden of proof for establishing a nexus between commercial success and the claimed invention lies with the applicant. The Federal Circuit has stated: Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success. (MPEP 716.03) This means that applicants asserting commercial success to support nonobviousness…
Read MoreIs commercial success abroad relevant to patent applications in the United States?
Yes, commercial success abroad is relevant to patent applications in the United States. The MPEP clearly states: Commercial success abroad, as well as in the United States, is relevant in resolving the issue of nonobviousness. (MPEP 716.03) This means that applicants can use evidence of commercial success from both domestic and international markets to support…
Read MoreWhat does ‘commensurate in scope’ mean in the context of unexpected results?
‘Commensurate in scope’ refers to the requirement that evidence of unexpected results must cover the entire range of the claimed invention. The MPEP 716.02(d) states: 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…
Read MoreHow does the ‘area of technology’ affect unexpected results in patent applications?
The ‘area of technology’ plays a significant role in determining whether unexpected results are commensurate in scope with the claimed invention. 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…
Read MoreHow does the USPTO consider secondary considerations in patent examinations?
The United States Patent and Trademark Office (USPTO) is required to consider secondary considerations, also known as objective evidence of nonobviousness, when examining patent applications. MPEP 716.01(a) emphasizes this requirement, citing the Court of Appeals for the Federal Circuit in Stratoflex, Inc. v. Aeroquip Corp.: “Evidence rising out of the so-called ‘secondary considerations’ must always…
Read MoreHow does the USPTO evaluate unexpected results for a genus claim?
The USPTO evaluates unexpected results for a genus claim by considering whether the evidence presented is representative of the entire claimed genus. The MPEP 716.02(d) provides guidance: The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the…
Read MoreHow does the USPTO evaluate expert skepticism in patent applications?
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…
Read MoreHow does the USPTO consider objective evidence of nonobviousness?
The USPTO is required to consider objective evidence of nonobviousness when timely presented. According to MPEP 716.01(a): “Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness…
Read MoreHow can expert skepticism be used to support a patent application?
Expert skepticism can be a powerful tool to support a patent application, particularly in demonstrating nonobviousness. The MPEP provides guidance on this: The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of research that preceded the…
Read More