How does licensing evidence factor into commercial success arguments?
Licensing evidence can be used to support arguments of commercial success, but it must be carefully evaluated. The Manual of Patent Examining Procedure (MPEP) 716.03(b) provides guidance on this matter:
“Evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because licensing programs may succeed for reasons unrelated to the unobviousness of the product or process, e.g., license is mutually beneficial or less expensive than defending infringement suits.”
This guidance comes from the case EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985).
When presenting licensing evidence to support commercial success, applicants should:
- Demonstrate that the licensing success is due to the merits of the claimed invention
- Provide context about the licensing agreements and their terms
- Explain how the licensing indicates the invention’s value in the marketplace
- Address any potential alternative reasons for the licensing success
By addressing these points, applicants can strengthen their argument that licensing evidence supports the nonobviousness of their invention.
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