United States: Examiner Guidelines For Responding To Legal Arguments

Patent examiners have applied law to facts for as long as there has been patent examination. Written description, enablement, anticipation, obviousness, and patent-eligibility are just some of the issues that arise during examination and have legal requirements. Because examiners apply the law, practitioners often find the need to cite the law, in the form of judicial decisions, to establish patentability. Case law is particularly important for issues where statutes or rules do not fully dictate an outcome. A prime example is the issue of obviousness, where the statute is broadly written and judicial decisions have provided the more nuanced guidance that examiners apply. A timely example is patent-eligibility under 35 U.S.C. § 101, which took on added significance following Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). Being a judicial exception to a statute, the "abstract idea" inquiry in particular is largely driven by case law.

Perhaps detecting an uptick in case law citations, the Patent Office released new guidance for examiners on January 3, 2017 entitled "Responding to Legal Arguments (Computer Based Training)" (the "Legal Argument Guidance"). The Legal Argument Guidance is part of a two-segment examiner training course, where the first segment provides an introduction to the U.S. legal system and the second part is an interactive workshop for addressing legal arguments during examination. For practitioners involved in patent prosecution, the Legal Argument Guidance presents several interesting takeaways.

Recognizing that examiners are not attorneys (nor are all practitioners), the Legal Argument Guidance confirms that examiners are not required to perform legal research beyond the Manual of Patent Examining Procedure (MPEP) and the Office's internal instructional material. This can be important for practitioners citing case law to examiners. While examiners may be open to hearing legal arguments based on proper citations to case law, they are likely most familiar with cases specifically addressed in the MPEP and other instructional materials published by the Office. Because there necessarily is some lag time between the issuance of judicial decisions and updates to the Office's examination publications, this may also mean that examiners are not as familiar with recent judicial decisions, even if they are highly relevant. Accordingly, while practitioners clearly should follow recent judicial developments and cite them when applicable, practitioners may get the most traction by citing the MPEP and Office examination guidance.

The Legal Argument Guidance also addresses the prospect of practitioners asserting that the MPEP is incorrect or contrary to law. It notes that, while the MPEP does not have the force of law, examiners are still expected to follow the MPEP. In situations where an attorney cites a case that appears to conflict with the MPEP, examiners are encouraged to confer with their supervisor or practice specialists in their technology center. Although it is not common for judicial decisions to directly conflict with the MPEP's requirements of Office guidance, the Legal Argument Guidance underscores the difficulties that can arise when that happens. If a judicial decision is contrary to Office examination policy, practitioners should consider involving the examiner's supervisor or other Office personnel in an interview to explain the significance of the decision. In some cases, it may be helpful to delay examination (e.g., through extensions of time or requests for continued examination) if important new legal precedent arises that the Office has not had a chance to fully review and address.

A further suggestion to examiners in the Legal Argument Guidance is to make substantive factual findings and cite applicable case law where appropriate. Factual findings (e.g., regarding the teachings of prior art references) are important not only for original examination, but also for appeals within and beyond the Office. The Legal Argument Guidance explains that examiners' decisions—rejections or allowances—are more likely to withstand challenge on appeal if they are factually well-supported. Similarly, while examiners are instructed that citing case law in every rejection is unnecessary, they are told that citing case law is appropriate where the law or facts in a case are relevant to an application being examined. Practitioners should bear these suggestions in mind when framing responses to rejections. If the examiner's rejection is detailed in its fact-finding and support in the case law, it may well be appropriate for the practitioner to reciprocate. While practitioners do not make factual findings, they can identify and explain the pertinent facts and marshal the most applicable legal authority to support their arguments for patentability.

Although examination and prosecution are quite different from litigation in court, there are important similarities—particularly in the areas of fact-finding and the application of patent law to facts concerning an invention. As the importance of legal decisions to issues such as written description, enablement, anticipation, obviousness, and patent-eligibility increases, examiners can be expected to become more adept at citing case law to support rejections or allowances. Practitioners should recognize the increasing importance of case law in their practice before the Office. As practitioners attempt to bolster their arguments with judicial decisions, they should also be mindful of their audience and the practical limitations of arguments grounded in such decisions.

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.

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