How are secondary considerations applied in design patent nonobviousness analysis?

How are secondary considerations applied in design patent nonobviousness analysis?

Secondary considerations, also known as objective indicia of nonobviousness, play an important role in the analysis of design patent nonobviousness. According to MPEP 1504.03:

“Secondary considerations, such as commercial success, long-felt but unsolved needs, failure of others, and unexpected results, may be utilized to rebut a prima facie case of obviousness.”

Key aspects of secondary considerations in design patent cases include:

  • Commercial success: Evidence that the design has achieved significant market success can indicate nonobviousness.
  • Long-felt need: If the design solves a problem that others have long tried to solve, it may be nonobvious.
  • Copying by others: Widespread copying of the design by competitors can suggest nonobviousness.
  • Professional recognition: Awards or praise from industry experts can support nonobviousness.
  • Unexpected results: If the design produces unexpected aesthetic effects, it may be considered nonobvious.

The MPEP emphasizes: “Evidence of secondary considerations must be evaluated, along with the primary Graham factors, before a conclusion on obviousness is reached.”

When presenting secondary considerations, applicants should establish a nexus between the evidence and the claimed design. Examiners must consider all properly presented secondary considerations in their nonobviousness analysis, even if they have already made a prima facie case of obviousness based on prior art.

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Tags: design patents, mpep 1504.03, nonobviousness, secondary considerations