Objective indicia often applies in Civil Law to circumstantial evidence. In other words, circumstances that indicate the probability of something. These indicia are not inferences, but rather facts that result in inferences. For example, indicia of partnership could be letters or certificates that would not exist unless there was a partnership.

Objective Indicia of Patentability

One of the common factors determining whether an invention is patentable is if it was obvious at the time of invention. The trouble with trying to judge this is things are often obvious in hindsight that may not have been obvious at the time.

If a patent examiner objects that your invention was obvious when you created it, you can submit “objective indicia of patentability.” These indicia demonstrate that your invention was, in fact, not obvious at the time of invention.

While you can submit any evidence with regard to obviousness, these are the most common categories of evidence submitted by inventors in order of merit:

  • Skepticism by experts.
  • Long-felt but unresolved needs.
  • Failure by others.
  • Unexpected results.
  • Commercial success.

Skepticism

The strongest evidence that your invention was not obvious is the fact that experts initially doubted your invention would solve the problem. Any evidence you can produce to show this kind of disbelief from experts will greatly help your case.

Long-Felt Needs

To establish long-felt need, you need to provide objective evidence that:

  • Others familiar with the field that gave rise to your invention, especially those of regular ability, had recognized for a long time this persistent problem existed.
  • Up to this point, no one had solved the problem and had, therefore, failed to satisfy the need.
  • Your invention actually solves the problem.

“Long-felt” means from the earliest point in time that the problem was identified and recorded. It does not mean from the date of the most relevant prior attempt to solve the problem. However, you do need to demonstrate that others unsuccessfully attempted to solve for the need.

Failure by Others

The fact that someone tried and failed to create something similar to your invention is relevant evidence that your invention is not obvious. This is especially true if at least one other inventor ended up simply copying your invention.

Unexpected Results

You can demonstrate an invention is not obvious by showing that certain properties of the invention were not anticipated. This could include:

  • A property of the invention was not in prior attempts to solve the problem.
  • An expected property, based on prior attempts, is not in the invention.
  • A certain property of the invention is surprisingly better among a range of common properties.

These unexpected results produced by your invention must be within the entire range that you claim. You need to evaluate your invention's unexpected results make sure they are unexpected within the scope of your claim. If the results are only unexpected in certain circumstances within the full scope of your claim, it is likely the examiner will reject your patent application.

To be sure the unexpected results occur over a specific scope, you should consider making comparisons both within the claimed scope and outside of it. This will demonstrate the scope's importance.

Commercial Success

You do not have to demonstrate commercial success along the totality of the range you claim for your invention. It is enough for you to make a claim for a combination of ranges where commercial success occurs at a common point within those ranges. The invention needs to function at the claimed ranges in a way that compares at least approximately to particular points in the commercial operation.

Bear in mind that you do not have to compare your invention against the same previous attempt used by the examiner. If you prefer, you can compare your invention against a previous attempt more closely related to your invention.

Also, if you do not present any evidence to support the fact that your invention is not obvious, the examiner cannot use this fact in favor of a conclusion that it was obvious. Neither can the examiner ignore any evidence or arguments in terms of advantages that you did not bring up in your invention's documentation.

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