What information can examiners request about the invention’s commercial success?

What information can examiners request about the invention’s commercial success? Patent examiners can request various types of information related to an invention’s commercial success. According to MPEP 704.11, this may include: ‘Information concerning the success of the invention, including licenses, sales, and advertising.’ Specifically, examiners might ask for: Sales figures for products embodying the claimed…

Read More

How does the USPTO weigh evidence of secondary considerations in patent applications?

The USPTO weighs evidence of secondary considerations in patent applications according to the guidance provided in MPEP 716.01(d). The key points are: Evidence of secondary considerations must be evaluated along with all other types of evidence. Secondary considerations alone cannot overcome a strong prima facie case of obviousness. The strength of each piece of evidence…

Read More

How 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 More

How 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 More

How does the USPTO balance prima facie obviousness and secondary considerations?

The USPTO balances prima facie obviousness and secondary considerations by following the guidance in MPEP 716.01(d). The key aspects of this balancing act are: Prima facie obviousness and secondary considerations are both part of the overall obviousness analysis. Examiners must consider all evidence before making a final determination. The strength of the prima facie case…

Read More

Can strong evidence of secondary considerations overcome obviousness?

While strong evidence of secondary considerations (indicia of nonobviousness) is important, it may not always be sufficient to overcome a strong case of obviousness. The MPEP 716.01(d) states: “Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the…

Read More

What is objective evidence of nonobviousness in patent law?

Objective evidence of nonobviousness refers to specific types of evidence that can be presented to support the patentability of an invention under 35 U.S.C. 103. According to MPEP 716.01(a), this evidence includes: Criticality or unexpected results Commercial success Long-felt but unsolved needs Failure of others Skepticism of experts The MPEP states: “Affidavits or declarations, when…

Read More