What is the significance of opinion evidence in patent examinations?
What is the significance of opinion evidence in patent examinations?
Opinion evidence can play a significant role in patent examinations, but its weight is carefully considered by USPTO examiners. According to MPEP 716.01(c), “Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue.”
The significance of opinion evidence in patent examinations includes:
- Expert insights: It can provide valuable insights from experts in the field.
- Contextual information: Opinions can offer context for technical information or market conditions.
- Support for non-obviousness: Expert opinions may support arguments for non-obviousness of an invention.
- Clarification of prior art: Opinions can help interpret or clarify the teachings of prior art references.
However, it’s important to note that opinion evidence is generally given less weight than factual evidence. The MPEP states, “The use of opinion testimony is not to be considered as probative of the facts upon which the opinion is based.” Examiners are instructed to consider opinion evidence but to rely more heavily on objective, factual evidence when making patentability determinations.
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