What happens if there’s a lack of objective evidence of nonobviousness in a patent application?
The absence of objective evidence of nonobviousness in a patent application does not automatically result in a finding of obviousness. According to MPEP 716.01(a):
“The lack of objective evidence of nonobviousness does not weigh in favor of obviousness.”
This statement, citing Miles Labs. Inc. v. Shandon Inc., indicates that the absence of such evidence is neutral in the determination of obviousness. In other words, patent examiners should not use the lack of objective evidence as a reason to reject a patent application on the grounds of obviousness.
However, the MPEP also notes an important exception:
“Where a prima facie case of obviousness is established, the failure to provide rebuttal evidence is dispositive.”
This means that if the patent examiner has made a strong initial case for obviousness (a prima facie case), and the applicant fails to provide any rebuttal evidence (which could include objective evidence of nonobviousness), the examiner’s finding of obviousness will likely stand. Therefore, while not required, providing objective evidence of nonobviousness can be crucial in overcoming obviousness rejections in patent applications.
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