As we’ve discussed elsewhere, inventions that use known properties or ideas in predictable ways to obtain a benefit aren’t patentable. You can’t patent obvious improvements.
As stated in an oft-cited patent case, “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected beneficial results are evidence of unobviousness thereof.”
For your invention to be patentable, you need to show that its benefits are non-obvious and unexpected.
Unexpected results may be demonstrated when a device or process demonstrates results that are at odds with existing science. For example, a patent application was submitted a few years ago for a cancer treatment that involved the deactivation of t-cells, a form of white blood cell that typically attack cancer cells. A cancer treatment that involved the deactivation of the very cells that most doctors would seek to preserve was a completely counterintuitive, non-obvious idea. And thus, patentable.
However, simply claiming that the results are unexpected doesn’t mean that the Patent Office will agree with you. Recently, an inventor attempted to patent a brake light system that could be installed beneath vehicles so that they were visible from any angle. In their application, the inventor argued that giving 360 degree visibility for the brake lights so that all surrounding drivers would be alerted to the action of braking was an unexpected advantage. This argument didn’t hold up, because repositioning a brake light so that it is more visible is, well, obvious. It may be a clever idea, but not a non-obvious idea.
Arguments of non-obviousness are particularly common in the pharmaceutical industry, due to the fact that slight alterations to existing chemical compounds can produce truly unexpected results (for instance, Viagra was initially synthesized in a search for a new blood pressure medication—suffice it to say that their first round of clinical trials pleasantly surprised Pfizer). However, demonstrating “unexpected results” is an integral part of any patent application.
This is because, as shown in the example of the brake light system, a simple modification of an existing item or product to produce a predictable improvement does not demonstrate the ingenuity necessary to warrant a patent.
I find that many inventors intuitively know that this is true and they have a value proposition that explains how their invention has done something that is better than everything else out there. When this betterment can be readily quantified it is advantageous to include those experiments in the patent application. However, there is no requirement to do so.
In some cases, the patent examiner may have a completely different idea about what the closest prior art is to the claimed invention. This may require another set of experiments to be run during prosecution.