commercial success

[esplanande]

What is the name of your state? WI

In reading 'Patent It Yourself' I came across the passage, "If your invention has attained commercial success by the time the crucial patentability decision is made, this militates strongly in the favor of patentability..."

My product is already for sale on a small scale basis-online from home. I do have 5 stores waiting to buy wholesale from me as soon as I get more manufactured. They are both small boutiques and small online stores.

Right now a have a provisional patent and am working on my utility application which is due soon.

My questions are:
1) What defines 'commercial success'?
2) Is it best to send a product to the patent office with my application? Or can this somehow negatively affect the application?
3) Do I send in documents with sales figures?

My products have only been for sale for a few months, so profit is minimal at this point.

Also, I am swimming in a very crowded art, so any little bit of advantage would help.

Thanks!What is the name of your state?

 

[divgradcurl]

1) What defines 'commercial success'?

Commercial success is one of the "secondary indicia of nonobviousness." This has nothing to do with the novelty of your invention. Even if your invention is novel (meaning that is hasn't been patented or created by someone else, at least that's a very general description of novelty), it can still be "obvious" -- that is, even though nobody had invented your particular invention before, given what was known in the world at the time you invented your product, it would have been "obvious" to one of ordinary skill in the art to have invented your invention.

One of the ways to chow that your invention was not obvious is "success in the marketplace," the idea being that if the you are selling a lot of your invention, the market must have really wanted it, and if it was really obvious, someone would have come up with it sooner, because the market demand was there. Other indicia of nonobviousness include "long felt need" and "failure of others" to try and invent something to meet said need. See Graham v. John Deere Co., 383 U.S. 1 (1966). These secondary indicia generally do not exist in a vaccuum, but together are used to create an argument that a particular invention is not legally obvious.

That said, to answer your question -- there really isn't any specific rule that specifies when there is enough "commercial success" to rebut an obviousness argument. It will depend, in part, on how strong the obviousness argument is, etc. Further, these secondary indicia are rarely seen at the prosecution stage (where you are) -- these secondary indicia are much more commonly used in an infringement action (or a reexamination of an existing patent), where there is already in place a sufficiently-sized market to make these sorts of determinations.

2) Is it best to send a product to the patent office with my application? Or can this somehow negatively affect the application?

The patent office will not accept samples, except in very limited cases. See MPEP 608.03, http://www.uspto.gov/web/offices/pac/mpep/documents/0600_608_03.htm#sect608.03 You will use drawings to show your invention in your patent applications.

3) Do I send in documents with sales figures?

No.

You will send in your application. If you receive an office action rejecting your application (or part of your application) on obviousness grounds (35 U.S.C. 103), you can attempt to argue around their rejection by making legal arguments against why your invention should not be found to be obvious. The secondary indicia may be relevant, depending on your specific situation -- and then you may be asked to support your arguments with proof, if the examiner otherwise finds your arguments compelling.