How does the burden of proof shift in equivalence determinations?

The burden of proof in equivalence determinations shifts between the examiner and the applicant. The process typically follows these steps:

1. The examiner establishes a prima facie case of equivalence.
2. The burden then shifts to the applicant to show non-equivalence.
3. If the applicant successfully demonstrates non-equivalence, the examiner must consider obviousness.

As stated in MPEP 2183: “The burden then shifts to applicant to show that the element shown in the prior art is not an equivalent of the structure, material or acts disclosed in the application.” If the applicant disagrees with the examiner’s conclusion and provides reasons for non-equivalence, the examiner must then consider whether the claimed limitation would have been obvious under 35 U.S.C. 103.

To learn more:

• burden of proof
• equivalence determination
• patent examination
• obviousness
• prima facie case