Today I address commercial success of an invention for overcoming obviousness rejections in the United States patent office. A product successfully competing in the marketplace cannot be underestimated, and this effect can win the day even if the invention possesses only a single differentiating feature. But first, a few words of caution about sales of inventions before and after filing of the application. If you sell or offer to sell your invention prior to filing an application in the United States, then the first sale or offer triggers a one year non–extendable period for filing that application in the United States. Thereafter anyone can use, sell or produce your invention, assuming that patent rights of third parties are not infringed.
What about the situation in which you sell or offer to sell your invention after you file your application, but before and until it obtains patent protection? The answer: you trigger another one-year period in which to refile an application for that invention or perhaps a related device of method that may not qualify as a second distinct invention. Consequently if your application is completely defective, based upon for example insufficient technical information, then you cannot refile the application after this deadline has expired. By the way, this deadline is separate and apart from other deadlines that may be running from, for example, publication of your application by the patent office on the internet at uspto.gov.
That being said, in my practice prospective applicants often inform me that they have already commenced selling the product: In fact, this is one of the first questions that the patent practitioner should ask the prospective client. If selling has commenced, then hopefully there is time to file an application before the one year deadline expires. At least one client in my practice has deliberately sold product to determine whether investment in a patent application is a sound financial strategy.
If an application is filed and thereafter the applicant receives an obvious rejection, the stage is set for evidence of commercial success. The patent practitioner may request that the applicant provide sales figures if the sales are financially significant in any manner. This is true even if the market share of the applicant for this product may be small, as that fact in and of itself does not diminish the significant of sales, especially if they increase annually. Select marketing survey firms can also provide a comprehensive analysis to demonstrate how the invention competes with products or methods already on the market. For applicants who wish to preserve the confidentiality of their sales figures, other possibilities include: (i) a statement in a sworn declaration that sales increased by a certain percentage each year; and/or (ii) market share increased by a particular percentage annually.
The government must consider the above described evidence of commercial success along with results of the other tests we have addressed in previously articles. In the end, the applicant must demonstrate that the commercial success is the result of the improved or new features of the invention. However, this requirement is easily fulfilled by a statement in the applicant’s declaration that the commercially successful device is identical to the device disclosed in the pending patent application. It is then the government’s responsibility to provide evidence that the device is commercially successful for reasons such as advertising, marketing or customer service.
© 2011 Adrienne B. Naumann
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