In the practice of patent examination in my country, it is not uncommon for patentees to claim that patents have inventiveness on the grounds that the patented technology has achieved commercial success, but so far it is rarely based on commercial success. The reason for the precedent of patent inventiveness is that the standard of proof of commercial success is very high and requires a complete chain of evidence and rigorous argumentation logic to support it. This article intends to make a preliminary discussion on the idea of ??proving commercial success in the sense of patent law, and analyze it based on a real case.

Concept Explanation

The commercial success of an invention is one of the other factors that need to be considered when judging the inventiveness of an invention as stipulated in my country's "Patent Examination Guidelines" (2010). The "Patent Examination Guidelines" further stipulates that commercial success should be directly caused by the technical features of the invention. If the commercial success is caused by other reasons, such as improvements in sales technology or advertising, it cannot be regarded as Basis for judging creativity. Our country has such considerations when judging inventiveness, and the patent examination departments of the United States and the European Union also have similar regulations.

In addition to novelty and practicality, the U.S. Patent Law enacted in 1952 established in Article 103 that inventions that are obvious relative to the prior art should not be patented. rule". In 1966, the U.S. Supreme Court set up a specific analytical framework for determining non-obviousness for the first time in the Graham case: first, to determine the scope and content of the prior art; second, to determine the difference between the prior art and the relevant claims; The third is to limit the level of general technical personnel in the relevant technical fields; the fourth is to consider auxiliary factors such as commercial success, long-standing but unsolved needs, and the failures of others in this context. The U.S. Patent Examination Guidelines stipulate on the basis of summarizing jurisprudence that if one wants to support the claim that an invention is non-obvious on the basis of commercial success, one should prove that there is a connection between commercial success and the claimed invention. Furthermore, the evidence proving commercial success must be consistent with the scope of protection of the claim; commercial success must originate from the claimed invention; commercial success must be the result of the functions and advantages recorded in the specification or inherent.

The Patent Examination Guidelines of the European Patent Office stipulate auxiliary factors for judging inventive step, including the invention overcoming technical bias, the invention producing unexpected technical effects, the invention satisfying a long-standing need and the invention achieving commercial success. success etc. Regarding commercial success, the European Patent Office Patent Examination Guidelines further stipulate that commercial success alone does not constitute a mark of inventive step, but if the examiner is satisfied that commercial success results from the technical features of the invention and not from other influencing factors (such as sales technology or advertising) and the invention satisfies a long-term need, there is a correlation between commercial success and creativity.

According to the provisions of my country's "Patent Examination Guidelines", commercial success in the sense of patent law must meet the following two necessary conditions: first, the invented product is commercially successful; second, this commercial success The success is directly caused by the technical characteristics of the invention. If the applicant/patentee wants to prove the inventiveness of the invention through commercial success during the authorization stage and invalidation stage, he must provide sufficient evidence on the above two conditions.

Commercial success is the result of buyers in the free market comparing a specific product with other similar products on the market. If a specific product is significantly more popular with buyers than other similar products, it can usually be considered This particular product was a commercial success. Direct evidence proving the commercial success of a certain product is the product's sales evidence, including market share, sales volume, sales scope, sales duration, etc., among which market share is usually the stronger evidence. In addition, product imitation, media reports, evaluation reports issued by authoritative organizations, statistical data, certification materials, etc. can also be used as evidence of commercial success. Whether the evidence submitted by the applicant/patentee is sufficient to prove that a certain product is commercially successful requires the examiner to make a judgment based on all the evidence in the individual case and the industry conditions.

On the basis that commercial success has been fully demonstrated, further proof is needed to prove that commercial success is directly caused by the technical features of the invention. The purpose is to eliminate the impact of non-technical factors such as sales technology and advertising on business. The impact of success confirms that there is a direct causal relationship between the technical features of the invention and its commercial success. To explore the reasons for commercial success, it is necessary to compare the commercially successful specific product with other similar products on the market to determine the technical similarities and differences. In the case of similar technologies, if a specific product achieves commercial success relative to other similar products, it can be basically determined that the commercial success of the specific product depends on factors other than technology. In the case of technological differences, comparing the technical similarities and differences between a specific product and other similar products, the similarities are usually not enough to make a specific product commercially successful. For technical differences, it is necessary to further analyze whether the differences are necessary for the commercial success of a specific product, and whether the differences are sufficient for the commercial success of a specific product. If the answer to the above two questions is yes, then it is basically certain that this particular product has indeed achieved commercial success due to its technical characteristics. In order to prove that the commercial success is directly caused by the technical features of the invention, it is necessary to further establish a connection between the specific product that has achieved commercial success and the claimed invention. This requires that the technical elements that make the specific product achieve commercial success should be The manner of technical features is reflected in the claimed claims. If all the above conditions are met, it can usually be concluded that commercial success is directly caused by the technical features of the invention.