How 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 the skepticism (preferably before the invention was made)
- The specific reasons for the skepticism
- Evidence of how the invention overcame the skepticism
The MPEP also notes that testimony that the invention met with initial incredulity and skepticism of experts was sufficient to rebut the prima facie case of obviousness based on the prior art.
This suggests that well-documented expert skepticism can be a powerful tool in overcoming obviousness rejections during patent prosecution.
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