An inventor lament that every patent attorney eventually hears is, “I’m the only one selling this, so how can the Examiner think my idea is obvious?”  The argument makes sense from an inventor standpoint.  If an idea is so obvious, why is no one else making it?  Shouldn’t first to market equate to first to invent?  Unfortunately, the U.S. Patent and Trademark Office (USPTO) generally works based on written references, not based on market research.  Those written references may not reflect the current state of your product’s market for a few reasons.

First, the Examiner is not bound only to references describing what is sold in the market.  The Examiner can use just about any reference that pre-dates your earliest filing date.  For example, another inventor may have described a similar idea but may have lacked the funding to manufacture anything.  His lack of funding (or connections, business acumen, etc.) has no bearing on the fact that his idea was previously described.

Second, the USPTO searches references dating back more than a century.  I’ve seen rejections using references showing mechanical devices from the late 1800’s.  Products can come and go.  It’s possible for some technologies that someone may have done something similar before your company (or even you) existed, even in greentech.

Third, the Examiner can look at references from other countries.  Some of those foreign products might have been on store shelves, though you may never have heard of the manufacturer or store selling the product.  For example, references from Europe, Japan, or even the USSR can describe something similar to your idea.  That those products never reached American shores does not change that an explanation of them exists in written form.

However, you may be able to get some credit for being first to market or being the only player in your space.  An Examiner will consider a declaration or affidavit demonstrating that a problem existed in your market for a long period of time without a solution, that experts were skeptical your product would work, showing praise from others in the industry, or showing evidence of commercial success of your claimed invention.  These sorts of arguments are referred to as “secondary considerations” of non-obviousness.  Keep in mind that secondary considerations can only help with an obviousness rejection.  If the Examiner presents a reference that shows your claimed invention in its entirety (i.e., an anticipation rejection), secondary considerations will not help.

Secondary considerations need to be reasonably commensurate in scope with the claims.  If you show a long-felt need or praise for an unclaimed feature or a feature only found in a dependent claim, then the declaration will not help with the rejection of the independent claim.  Also, a nexus must exist between the secondary considerations and the claimed invention, especially with commercial success.  For example, the commercial success must correspond to the product that is claimed.  Commercial success caused by unclaimed features or marketing unrelated to the claimed features can weaken your arguments.

Examiners at the USPTO do not search the marketplace to see if your product has competitors or whether you were first to market.  Examiners are more concerned whether your idea looks similar to references from decades (or even centuries) ago.  That’s not to say being first to market or the market leader does not count for anything with the USPTO.  It’s just that the Examiner will not know all the facts about your market or the history of your product’s development.  An affidavit or declaration can be used to provide facts to help show that creating your idea was not as simple as A plus B.  A previously unsolvable problem, skepticism, praise, or commercial success can all demonstrate that your invention is not as obvious as the Examiner alleges.  So you need to argue more than that your product doesn’t exist on the market today.  Try to establish that your product hasn’t existed in any market and point to all the aimless effort, failed attempts, and heaps of uncertainty related to solving your problem.