Patent prosecution involves one side arguing for, and another
side arguing against, the validity of claims in a patent
application. This takes the form of a written discourse, in
which an Examiner for the USPTO (United States Patent and Trademark
Office) generally argues (in an Office action) the claims are not
valid, and a patent practitioner acting on behalf of an applicant
generally argues (in a reply) that the claims are valid. To
be effective at this, generally each side tries to set forth facts,
premises and arguments that it believes valid, and tries to find
fallacies in the supposedly valid facts, premises and arguments
that the opposition has presented. Each argument is fit to
the particulars of the situation at hand, and choices of what to
pursue, and possible pitfalls, are manyfold.
As a patent agent, I draw argument styles and techniques from many
sources in philosophy, mathematics, and sciences. Curious
about what else is out there, and desirous of a brief refresher
course, I spent some time wandering through various interconnected
subjects in Wikipedia ", and can recommend a few for your own
self-study. Formal logic, informal logic, argumentation
theory, fallacy, deductive reasoning, epistemology, validity, are a
few that should get you started. I enjoy applying logical
constructs, establishment of facts and factual findings, spotting
and enunciating fallacies in alleged facts, premises and
conclusions, pointing out contradictions, and applying rational
thinking to the entire process of patent prosecution.
Missing premises and hidden assumptions are especially vital to
find. Finding one of these in an argument made by an opponent
may offer a path to disproving an assertion or conclusion.
Finding one of these in one's own argument may offer a
path to improving the argument, by making explicit the premise or
assumption and backing it up with a factual finding, or may suggest
a weakness in the argument and reevaluation of whether the argument
is worth making or whether there is another argument to be
made.
Psychology plays a role, often, in this. As a patent
practitioner and somewhat of a reformed idealist, I often wish this
were not so, and we could proceed solely on the basis of
objectivity, rationality, reasonability, and an agreed-upon set of
rules. This is, I think, an ideal. Yet, I often find it
helpful to understand the mindset of an Examiner, to grasp why a
rejection is being made and why the Examiner has (apparently) a set
of beliefs about the claim interpretations and the interpretations
of the cited references that differs (often substantially) from my
own. Doing so then affords insights as to how to frame, focus
and carry out a discussion and argument, because then I know what
to address in terms of what part of the understanding that I have
is lacking in my opponent. Combining these insights, gleaned
from psychology, with argument styles and techniques drawn from
these many sources and experiences, can produce successful
arguments in patent prosecution. All part of the art of
patenting.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.