What is a secondary consideration?

These facts, which include the invention’s commercial success, satisfying a long felt but unsolved need, and the failure of others where the invention succeeds, often are referred to as “secondary considerations.” “Secondary considerations” often come later (or secondary) in time, which is the source of their name.

What are the objective indicia of nonobviousness?

John Deere Co., 383 U.S. 1 (1966), instructs courts to consider: (1) “the scope and content of the prior art”; (2) “differences between the prior art and the claims at issue”; (3) “the level of ordinary skill in the pertinent art”; and (4) “secondary considerations,” which are also known as objective indicia of …

Which is a significant hurdle to proving nonobviousness?

Perhaps the most significant hurdle to proving nonobviousness through secondary considerations is demonstrating a nexus between the proffered evidence and the claimed invention. If shown, then the PTAB will consider the strength of the objective-indicia evidence itself.

What should be considered in the determination of nonobviousness?

After learning of the factors above, it should not be a surprise that the copying of the invention by competitors, rather than designing around the invention, may also be considered in the determination of nonobviousness. Even better is evidence that competitors have tried to design around the applicant’s invention without success.

How are secondary considerations related to obviousness of invention?

In order for the secondary considerations to play a role in the determination of nonobviousness they must relate to the advantages of the applicant’s invention. It is important to note that secondary considerations are by no means secondary in importance, only secondary in sequence after analysis of traditional obviousness considerations.

How are objective indicia of nonobviousness determined at the PTAB?

Proving nonobviousness through secondary considerations (also known as “objective indicia of nonobviousness”) has always been challenging at the PTAB. Last week, the PTAB issued guidance in three designated decisions, one designated as precedential and two designated as informative.