Patent Prosecution

Secondary Considerations of Obviousness

Commercial success, long-felt need, and failure of others are required Graham factors — not optional extras. Post-KSR, they've become the most powerful tool for overcoming strong obviousness rejections.

What are secondary considerations and why do they matter for obviousness?

Secondary considerations (or 'objective indicia of non-obviousness') are real-world marketplace facts that help establish whether an invention was truly non-obvious at the time it was made: GRAHAM v. JOHN DEERE CO. (S.Ct. 1966): established the four-factor test for obviousness: (1) scope and content of the prior art; (2) differences between the prior art and the claims; (3) level of ordinary skill in the art (POSITA); (4) secondary considerations; Graham explicitly held that secondary considerations 'might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented' and are always relevant;.

Not Optional

Secondary considerations are not merely supplemental — they are part of the required obviousness analysis
An examiner or court that ignores secondary considerations commits legal error

But not Dispositive

Strong prior art evidence of obviousness is not automatically overcome by secondary considerations
Courts balance all four Graham factors

Why They Matter in Practice

KSR International v. Teleflex (S.Ct. 2007) made it easier for courts to find obviousness using a flexible, expansive view of prior art combinations
In response, secondary considerations have become MORE important as a counterweight
Strong secondary consideration evidence can overcome a facially strong obviousness rejection

Types of Secondary Considerations

(a) commercial success
(b) long-felt but unsolved need
(c) failure of others
(d) copying by competitors
(e) unexpected results
(f) industry recognition and praise
(g) skepticism of experts
(h) licenses under the patent (others pay for it)
All share the common thread: if the invention was obvious, why didn't the market produce it earlier?

What is commercial success and what is the nexus requirement?

Commercial success is the most commonly cited secondary consideration — and the nexus requirement is its most frequently litigated element.

Commercial Success

A product embodying the claimed invention achieved substantial sales or market penetration
The commercial success of the product is evidence that the invention solved a real problem the market valued

Logic

If the invention were obvious, competitors would have made it earlier
The fact that it sold well suggests it wasn't obvious (otherwise someone would have already done it)

Nexus Requirement

The commercial success must be attributable to the patented invention itself — not to other factors
Tokai Corp. v. Easton Enterprises (Fed. Cir. 2011): the patentee must show a nexus — a legally and factually sufficient connection between the evidence of commercial success and the claimed invention

Factors Destroying Nexus

(a) MARKETING POWER: if the commercial success is due to the patentee's brand, marketing budget, or distribution channels rather than the invention's merits
(b) DESIGN-AROUNDS EXCLUDED: if competitors exist who design around the claims and sell competing products, the patentee's sales may reflect market advantage, not inventive merit
(c) INDUSTRY CONDITIONS: if the market grew for unrelated reasons (rising commodity prices, regulatory change)
(d) BLOCKING PATENTS: if the patentee's commercial success is partly due to using the patent to exclude competitors, the success may reflect exclusion rather than inventive merit

Presumption of Nexus

When the patent owner's commercially successful product embodies the claimed invention and is covered by the claims at issue, a rebuttable presumption of nexus arises
The burden then shifts to the opponent to show the success is attributable to other factors

Quantification. Commercial success evidence should include market share data, revenue figures, growth rates, and comparison to pre-invention sales of competing products.

What are long-felt need, failure of others, and skepticism of experts?

Three of the most powerful secondary considerations when clearly established.

Long-felt but Unsolved Need. The problem that the claimed invention solves was known and recognized in the industry for a long period before the invention

Logic

If the problem was known and the solution was obvious, someone would have solved it sooner
A 20-year unsolved problem suggests the solution was not obvious

Requirements

(a) the need must be long-felt — recognized in the art for years or decades
(b) the need must be real — not a hypothetical problem but one that practitioners were actively trying to solve
(c) the invention must actually solve the need — if the patented claims don't address the identified problem, this factor is inapplicable
(d) NEXUS: the claimed features must be what solves the need, not unclaimed features

Failure of Others. Skilled researchers in the field tried and failed to solve the same problem

Evidence

Prior art references showing failed attempts
Expert testimony from researchers who worked on the problem
Publications documenting the state of the art before the invention

Logic. If others with ordinary skill tried and failed, the solution was not obvious to a POSITA

Skepticism of Experts. At the time of the invention, established experts in the field expressed doubt that the problem could be solved or predicted the approach would not work

Evidence

Expert publications
Conference proceedings
Laboratory notes from skeptical researchers

Logic. Experts believed the approach was unlikely to succeed → the invention's success demonstrates it wasn't obvious

Combination Effect. Long-felt need + failure of others + expert skepticism together are extremely compelling — all three indicate the art considered the solution non-obvious.

What are unexpected results and how are they proven?

Unexpected results are evidence that the patented invention achieves a result that was not predicted by — and is superior to what was expected from — the prior art.

What Counts as 'Unexpected'

A result of a different kind from what was expected (not just a different degree)
A result that contradicts what the prior art would have predicted
Superiority in a particular parameter that was not predicted by prior art combinations

But not

A result that is merely better than what prior art explicitly taught (if the prior art predicted improvement, the better improvement is expected)
The unexpected result must be attributable to the claimed invention, not unclaimed features

How to Establish Unexpected Results

Comparative testing: test the claimed invention side-by-side against the closest prior art compound/method
Document that the claimed invention achieves significantly better results than the prior art
Measure results using objective metrics

Declaration Under 37 C.f.r. § 1.132

File a declaration from the inventor or a technical expert presenting comparative test data
The declaration must show: (a) the tests were run under comparable conditions
(b) the closest prior art was used as the comparator (not a straw man)
(c) the unexpected result is attributable to the claimed invention

Pharmaceutical Context

Unexpected results are very common in pharmaceutical patent prosecution
Claiming a specific enantiomer of a known racemic mixture may be patentable if the specific enantiomer shows dramatically better efficacy or fewer side effects (unexpected relative to the racemate or the other enantiomer)

Timing. Unexpected results can be presented even if not known at the time of filing (post-filing data is acceptable under MPEP 716.01)

Caution. The testing methodology must be scientifically sound — a declaration using flawed testing or cherry-picked comparators will be rejected by the examiner.

How do you effectively present secondary considerations in patent prosecution and litigation?

Effective presentation of secondary considerations requires evidence, nexus, and timing.

In Prosecution

When to Submit

After receiving a § 103 rejection (typically with the response to a first or second office action)
Can also be submitted during an appeal brief

What to Submit

(a) § 1.132 DECLARATION: sworn statement from the inventor or expert presenting evidence
Must identify the specific claimed features responsible for the secondary consideration
(b) MARKET DATA: sales figures, market share, third-party industry reports
(c) INDUSTRY STATEMENTS: press coverage, industry awards, expert testimonials
(d) COMPETITOR COPYING EVIDENCE: sales of competing products, competitor's patent filings disclosing the same invention

Nexus Argument

Explicitly tie every piece of evidence to specific claim limitations
'Our commercial success in [market] is due to the claim's [specific limitation] because [mechanism]'

Failure Mode. Presenting commercial success evidence without explaining why the specific claimed features (not unclaimed features or brand) drove the success

In Litigation

Expert Testimony

Technical expert explains why the secondary considerations are relevant
Damages expert quantifies commercial success relative to the patent's contribution

Jury Presentation

Secondary considerations are particularly persuasive to juries
Show the timeline — problem was known for X years
Others failed
Invention solved it → jury can understand this narrative

Timing Before Markman. Secondary considerations may be relevant to claim construction if the specification's discussion of prior art context informs claim scope

Opponent's Response

The opponent will argue: (a) lack of nexus (commercial success is due to advertising, not the invention)
(b) 'long-felt need' wasn't actually that long
(c) unexpected results are just a different degree, not a different kind
(d) the 'failure of others' researchers weren't actually trying to solve the same problem.