In the Merck case this last week, we saw the Federal Circuit pretty much ignore evidence of commercial success in invalidating the Fosamax Patent. However, when all else fails, secondary considerations (or objective evidence) can often be used to overcome an obviousness rejection or challenge under § 103. Some examples of secondary considerations are:
(1) The invention's commercial success
(2) Long felt but unresolved needs
(3) The failure of others
(4) Skepticism by experts
(5) Praise by others
(6) Teaching away by others
(7) Recognition of a problem
(8) Copying of the invention by competitors
To the courts, all of the above can help establish that an invention is not obvious. Why? Logically it makes sense. If you look at all of the above factors, establishing any one of those things can help infer that the invention is not obvious. After all, for example, if an invention will bring commercial success, or if there is a need for it, or if there is praise by others, then it stands to reason that others may have tried to develop the invention, but failed. The same goes for copying by competitors – why wouldn’t they just design around it if it were that obvious? Hence, the inference of nonobviousness. However, as we saw in the Merck case, proving one of these factors is sometimes not dispositive, especially when proving commercial success of the invention.
Note that secondary considerations cannot be used to overcome a § 102 rejection or challenge.
(1) The invention's commercial success
(2) Long felt but unresolved needs
(3) The failure of others
(4) Skepticism by experts
(5) Praise by others
(6) Teaching away by others
(7) Recognition of a problem
(8) Copying of the invention by competitors
To the courts, all of the above can help establish that an invention is not obvious. Why? Logically it makes sense. If you look at all of the above factors, establishing any one of those things can help infer that the invention is not obvious. After all, for example, if an invention will bring commercial success, or if there is a need for it, or if there is praise by others, then it stands to reason that others may have tried to develop the invention, but failed. The same goes for copying by competitors – why wouldn’t they just design around it if it were that obvious? Hence, the inference of nonobviousness. However, as we saw in the Merck case, proving one of these factors is sometimes not dispositive, especially when proving commercial success of the invention.
Note that secondary considerations cannot be used to overcome a § 102 rejection or challenge.
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