What are secondary considerations in obviousness analysis?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.