The Patent Trial and Appeal Board has been reviewing patents through America Invents Act trial proceedings for almost three years, long enough for trends to emerge from the board’s developing jurisprudence. Among those trends, it is now clear that the board has taken a very strict approach to assessing objective indicia of nonobviousness, also known as secondary considerations.
This article provides a survey of board decisions involving secondary considerations. To summarize, patent owners have so far experienced little success arguing secondary considerations in inter partes review and covered business method review proceedings, almost invariably failing to meet the board’s exacting standards for establishing a nexus between the alleged secondary considerations and the claims at issue. Going forward, patent owners might increase their chances of success by focusing their efforts more directly on the nexus requirement, including more extensive development of nexus evidence and fuller, more rigorous arguments linking that evidence to the claimed invention.
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