How to Develop a Good Defense Against Challenges to a Patent for Nonobviousness


Any company that has developed a valuable patent should prepare in advance for the possibility that the patent could be challenged. The best offense in this case is a soundly considered defense. The company should focus attention on shoring up the patent by gathering evidence along the way that clearly demonstrate its importance and uniqueness. In patent law, such evidence is often referred to as evidence of secondary considerations.

What might constitute such evidence?

  • Data proving that the invention has been a commercial success and has been widely adopted in the industry.
  • Evidence that the invention solved a longstanding problem in the industry and/or that competitors have tried to copy it.
  • Evidence that others tried and failed to solve the problem that has been resolved by the invention.
  • Evidence that competitors were skeptical that the problem could be solved or that the invention could solve it, or that they even promoted not adopting the invention.
  • Praise of this invention or its unique features for successfully addressing a need in the industry. 
  • Some of the necessary evidence of secondary considerations could be compiled even before the patent application is filed or during prosecution of the patent application. Alternatively, evidence can be compiled after the patent is issued.

    Documenting the necessary evidence would certainly include keeping meticulous track of any awards given to a particular product or invention. Press releases announcing the award, the award itself and accompanying documentation, and any announcement of the award in industry publications or other media, should all be carefully preserved.

    If a customer writes to praise the performance of the product or invention, that praise should be archived and preserved. If asked, the customer might even be willing to have his or her letter or email used in marketing materials

    The company should also be careful to ensure that sales and marketing materials are actually pitching the key features of the invention that are cited in the patent application, in case a challenger might argue that, judging by sales information, the success of the product was not based on the key elements claimed in the patent.

    For example, let’s suppose that the patent in question relates to a new type of handlebar on a bicycle. A challenger might claim that, if the bicycle was a commercial success, it was because of technical innovations involving the wheels, which are not part of the particular patent being challenged. The challenger might buttress his claim by pointing out that marketing materials on the new bicycle emphasize the advances in wheel technology and hardly even mention the handlebars.

    Thus it is extremely important to align marketing materials with the claims in the patent. If multiple patents are involved in a new product, then intellectual property divisions and business divisions within the company need to work together to make sure that all the major innovations protected by patents receive their due in sales and marketing programs.

    These are all important means of preserving and solidifying evidence to rebut an attack based on obviousness that might be attacked down the road and could cause a valuable patent to be lost even years after it is issued.