Patent Doctrine · § 103 Obviousness
Secondary Considerations
of Non-Obviousness
Real-world evidence that can save a patent from an obviousness challenge. Graham v. John Deere (1966) made them mandatory — the examiner and court must consider them. Here's what they are and how to build a winning record.
The rule in one sentence
Commercial success, long-felt need, failure of others, and unexpected results are not optional bonus points — Graham v. John Deere says a court or examiner must consider them when ruling on obviousness. Strong evidence here can overcome even a technically strong prima facie case.
Graham v. John Deere (1966)
The four primary objective indicia
In Graham v. John Deere Co. (Supreme Court 1966), the Court established the foundational four-factor test for obviousness under 35 U.S.C. § 103 and held that secondary considerations “may be the most probative and cogent evidence in the record.” Mandatory, not permissive.
Commercial success
Must show nexus to the claimed invention
Significant market sales or market share attributable to the patented features — not just any commercial success of a product that happens to use the patent.
Evidence to gather
Sales data, market share figures, industry awards, licensing revenue. Must show the success is due to the claimed invention, not unclaimed features, marketing, or market position.
Common pitfalls
Nexus is the most common failure point. If the product's success is attributable to an unclaimed feature, brand recognition, or distribution network — not the innovation itself — the evidence carries little weight. Blocking patents held by competitors can also explain success without proving non-obviousness.
Evidentiary weight
High — if nexus is established, courts give this substantial weight. Often the strongest of the four.
Long-felt but unsatisfied need
Need must have existed before the invention and remained unresolved
Evidence that the problem the invention solves was recognized in the field for years or decades before the inventor solved it — and that others tried and failed (or didn't try) in the interim.
Evidence to gather
Prior art references identifying the problem as unresolved, industry articles noting the gap, publications from the inventor's predecessors. Show that the need was known and explicit, not just inferred in hindsight.
Common pitfalls
If the problem was only recently identified (right before the invention), long-felt need won't apply. If the prior art taught away from the solution, that is better framed as 'teaching away.' Must establish both the need and the unresolved gap — a need that was met by an earlier product doesn't count.
Evidentiary weight
Moderate to high — especially compelling when paired with failure of others, because together they directly rebut the 'ordinary creativity' rationale of KSR.
Failure of others
Others tried and failed to solve the same problem using the claimed approach
Evidence that skilled researchers, companies, or inventors in the field attempted to solve the same problem and could not — making it less obvious that the claimed solution was within ordinary skill.
Evidence to gather
Abandoned patent applications, research publications reporting negative results, competitor products that took a different (less effective) approach, expert testimony about failed prior attempts.
Common pitfalls
Must show others tried. Absence of prior attempts is not the same as failure — it may just mean nobody recognized the problem (which is better framed as long-felt need). The failed attempts must be directed at the same problem and must have used approaches different from the claimed solution.
Evidentiary weight
Moderate — strongest when combined with long-felt need. Together they build a narrative: the problem was known, skilled people tried to solve it, none succeeded until the inventor found a non-obvious path.
Unexpected results
Results must be unexpected to one of ordinary skill in the art at the time
The claimed invention produces results that are qualitatively different — not just quantitatively better — from what the prior art would have predicted. A result is unexpected if a POSITA would not have predicted it based on the prior art.
Evidence to gather
Side-by-side comparisons against the closest prior art showing the unexpected property. Declaratory evidence from experts explaining why the POSITA would not have predicted the result. Publications in the field expressing surprise at the discovery.
Common pitfalls
A result that is merely better (faster, cheaper) is often not unexpected — it may just be an obvious improvement. The result must be surprising in kind, not just degree, to a person of ordinary skill. Also, the comparison must be to the closest prior art structure — not to a distant reference chosen to maximize apparent improvement.
Evidentiary weight
High in chemistry and pharma (where results are often genuinely unforeseeable), moderate in mechanical/software contexts (where improvements are often predicted).
Beyond the four
Additional recognized indicia
Copying by competitors
When skilled competitors choose to copy the exact patented invention rather than design around it, that choice implies they found no obvious alternative — otherwise they would have designed around.
Skepticism of experts
Pre-invention expert skepticism that the claimed approach would work supports non-obviousness. Expert declarations, conference presentations, or publications predicting failure are strong evidence.
Industry praise
Awards, technical recognition, or praise from respected publications or organizations in the relevant field — where the praise is specifically tied to the claimed innovation.
Licensing by sophisticated parties
If sophisticated competitors — who had resources to design around or challenge the patent — instead took paid licenses, that suggests they viewed the patent as valid and non-obvious.
Teaching away
Prior art references that discourage or warn against the claimed approach. Teaching away is technically a primary Graham factor, but it often appears alongside secondary considerations as corroborating evidence.
Prosecution strategy
How to submit the evidence
Evidence of secondary considerations must be submitted as declarations under 37 C.F.R. § 1.132 (Rule 132 declarations) during USPTO prosecution. Waiting until trial is late and reduces weight — the examiner should see the evidence and be required to respond to it in an office action.
Identify the strongest indicia
Before drafting the declaration, assess which evidence you actually have. Commercial success requires sales data + nexus analysis. Unexpected results require comparative test data. Weak evidence does more harm than none — a rejected Rule 132 declaration trains the examiner to discount your evidence.
Engage the right declarant
The declarant must have personal knowledge of the facts declared. Inventor for unexpected results (they ran the experiments); company officer for commercial success (they have access to financials); independent expert for long-felt need or failure of others (more credible to the examiner). Rule 132 declarations are signed under penalty of perjury.
Establish nexus explicitly
For commercial success: don't just attach sales figures — explicitly state why those sales are attributable to the claimed features, not unclaimed features, marketing, or market position. Nexus is where declarations most often fail. Comparative data (claimed vs. unclaimed alternatives) strengthens the argument.
File with the response, not after
Submit the declaration in the response to the obviousness rejection. Filing after allowance waiver; filing in an appeal brief deprives the examiner of the opportunity to consider it. Examiners must address Rule 132 declarations in the next office action — this forces a written record of their reasoning for appeal if needed.
Preserve the record for validity challenges
The prosecution file wrapper is permanent. Declarations submitted during prosecution become part of the patent record and can be relied on in any later IPR or district court invalidity proceeding. A strong file-wrapper record is especially valuable because it forces a challenger to affirmatively rebut the evidence, rather than starting from a clean slate.
FAQ
Secondary considerations questions
What are secondary considerations of non-obviousness?
Secondary considerations (also called objective indicia of non-obviousness) are real-world facts about what happened before and after an invention that bear on whether the invention was obvious. Graham v. John Deere Co. (Supreme Court 1966) held that courts must always consider secondary considerations as part of the § 103 obviousness analysis — they cannot be ignored even if a prima facie case of obviousness appears strong. The four primary secondary considerations are: commercial success (significant market uptake attributable to the claimed features, not just the product generally), long-felt but unsatisfied need (a recognized problem in the field that went unsolved for years until the invention), failure of others (skilled researchers tried and could not solve the problem), and unexpected results (the invention produces a result a person of ordinary skill would not have predicted). Additional indicia courts recognize include: copying by competitors, pre-invention expert skepticism, industry praise, and licensing by sophisticated parties who had the ability to design around.
What is the nexus requirement for commercial success?
The nexus requirement means that to use commercial success as a secondary consideration, the patent owner must show that the commercial success of the product is attributable specifically to the claimed invention — not to unclaimed features, marketing, brand recognition, pricing, distribution networks, or other business factors. If a product is commercially successful but the success stems from features not covered by the patent claims, or from the patent owner's marketing power rather than the innovation itself, the commercial success carries little or no weight as an indicator of non-obviousness. The Federal Circuit has held that there is a rebuttable presumption of nexus when the commercial product is the claimed invention (i.e., the product directly embodies the claims). But if the patent covers only some features of the product, the patent owner must provide evidence to establish the nexus. Establishing nexus typically requires expert testimony or market analysis showing that consumers chose the product because of the specific claimed features, not because of other factors.
How do secondary considerations interact with KSR?
KSR International v. Teleflex (Supreme Court 2007) expanded the obviousness standard by recognizing that a person of ordinary skill has 'ordinary creativity' and can combine known elements for known purposes — making it easier to find claims obvious. However, KSR also explicitly reaffirmed Graham v. John Deere's directive that secondary considerations 'must always be considered' and are not optional. The KSR Court stated that objective indicia can rebut a prima facie case of obviousness even when the technical analysis suggests the invention was within ordinary skill. Post-KSR strategy: if you face a strong obviousness rejection based on known combinations or simple substitution rationales, secondary considerations are your primary rebuttal tool. Build the evidentiary record early — during prosecution, not just at trial — so the evidence is part of the file wrapper and authenticated for any later validity challenge. Examiners must consider and give weight to secondary consideration evidence submitted during prosecution under MPEP § 2141.
How do you submit secondary considerations evidence during prosecution?
During prosecution, secondary considerations evidence is submitted in a response to an office action or in a pre-appeal brief. The evidence must be in the form of declarations under 37 C.F.R. § 1.132 (Rule 132 declarations). A Rule 132 declaration is a signed statement under penalty of perjury from someone with personal knowledge of the relevant facts — typically the inventor, company employees, or an independent expert. For commercial success: the declaration should attach sales figures, market share data, and explain the nexus between the claimed features and the commercial performance. For unexpected results: the declaration should provide side-by-side comparisons versus the closest prior art, with the declarant explaining why a POSITA would not have predicted the result. For long-felt need and failure of others: declarations from the inventor explaining the history of the problem, plus documentary evidence from prior art publications identifying the unsolved problem. File the evidence with the response — waiting until appeal loses examination credit and weakens the record.
Can secondary considerations overcome a strong prima facie case of obviousness?
Yes — courts have upheld patents on the basis of secondary considerations alone even when the primary Graham factors pointed toward obviousness. The Federal Circuit has held that secondary considerations 'may often be the most probative and cogent evidence in the record.' Several famous cases: Pfizer Inc. v. Apotex, Inc. (Fed. Cir. 2007) — commercial success and unexpected results upheld amlodipine besylate claims despite a combination of known compounds. In re Cyclobenzaprine (Fed. Cir. 2012) — long-felt need and failure of others upheld a once-daily formulation despite prior art suggesting the combination. The strength of the secondary considerations evidence determines the outcome: weak, conclusory evidence (e.g., just asserting commercial success without market data or nexus analysis) typically fails. Strong, documented evidence tied to the specific claims — with proper nexus established — can and regularly does overcome even strong technical obviousness arguments.