Secondary considerations can be a powerful tool for a patent owner with a patent that is challenged as invalid. Particularly, evidence of secondary considerations is useful for rebutting a challenger's argument that a patented invention is an obvious advancement over the technical art that came before it.

Some examples of second consideration evidence include the following:

• Commercial success – evidence that the invention experienced high sales or other forms of commercial success;
• Long felt but unresolved needs – evidence that the invention solved a problem that went unsolved for a relatively long time;
• Failure of others – evidence that others in the field tried and failed to develop a similar invention or other solution to the problem solved by the invention;
• Skepticism – evidence that persons in the field were skeptical that the invention would perform well or solve the problem at hand;
• Praise by others – evidence that others in the field praised the performance of the invention or features of the invention;
• Teaching away by others – evidence that others taught not to use the invention; and
• Copying and commercial acquiescence – evidence that competitors copied the invention, or that the invention was widely adopted in the industry.

There are steps that patent owners can take to document and solidify evidence of secondary considerations that will be useful if a patent is challenged down the road. These steps may be taken before a patent application is filed, during prosecution of the patent application, or after the patent application is issued as a granted patent.

Documenting and Keeping Evidence of Secondary Considerations

One important step that patent owners can take is to make efforts to document, record, and keep any evidence of secondary considerations. For example, if a patent owner was to receive an award for a particular product or invention, the patent owner should take steps to track the award and document it. One way would be to keep the award itself. Another way would be to draft a press release that details the award and the product or invention to which it is related. As another example, if customers are praising the performance of a particular product, a patent owner could ask the customers if they are interested in contributing to—or being quoted in—a marketing document that details the performance of the product.

Patents can be challenged several years after secondary consideration evidence arises. Having a solid record of secondary consideration evidence can corroborate a witness's memory that an award was received, or that customers were actually praising the performance of a particular design.

Aligning Intellectual Property with Marketing Materials

Another step that patent owners can take to solidify evidence of secondary considerations is to align their patents with their marketing materials. Patent law requires that evidence of secondary considerations must have a nexus to the invention claimed in the patent for it to be entitled to substantial weight in the obviousness analysis. See, e.g., Cole Kepro Int'l, LLC v. VSR Indus., 695 Fed. Appx. 566, 572 (Fed. Cir. 2017) (“When presenting licensing evidence to demonstrate commercial success, our cases require affirmative evidence of nexus because it is often cheaper to take licenses than to defend infringement suits.”) (internal quotations omitted).

Hence, challengers of a patent might argue that evidence of secondary considerations arose because of factors unrelated to the subject matter of the patent at issue, negating a nexus to the claimed invention. Specifically, a challenger might argue that the commercial success of a particular product was due to features of the product that are not claimed by the particular patent at issue.

As an example, consider a patent that claims the features of a handlebar on a bicycle. A challenger might dispute any evidence of commercial success of the overall bicycle if all of the patent owner's marketing materials advertise and emphasize the design of the bicycle's wheels, which is not claimed by the patent at issue. It could have been that the handlebar design was just as important as, if not more important than, the wheel design. However, the challenger could present an argument that the bicycle's real technical innovation was due to the wheel design while the handlebar design was an obvious technical advancement over prior bicycle handlebars.

Hence, it can be important to align marketing materials with patents. One way is to emphasize the multiple features of a product when the product is covered by multiple patents. After a patent is issued, the patent owner could look to the issued patent and incorporate asserted benefits from the issued patent into marketing materials. Before a patent application is filed, a patent owner can encourage collaboration between intellectual property units and business units. The collaboration can make efforts to ensure that the benefits which are important from a commercial standpoint are included in the patent application. Not only can this provide evidence of a nexus between the benefits and the claimed invention, but it can corroborate evidence related to the benefits a decade down the road during a dispute relating to the patent.

Patent owner should take steps that preserve and solidify evidence related to secondary considerations of nonobviousness. For some patent owners, taking these steps could be the difference between keeping and losing a patent years later.

Josh Monaghan is an associate practicing patent law in the Houston office of intellectual property law firm Patterson + Sheridan LLP.