Legal Arguments

Legal Arguments

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Patent Examiners often do not have any legal training. Thus, when preparing a response, remember that this is not a document submitted to a court of law (where legal analysis is typically submitted). In view of that, use case law judiciously in your response where a particular emphasis would be helpful.

Additionally, keep in mind that for patent examiners, the MPEP is the guidebook (their set of laws) of how to respond. Your response therefore should use case law that is also supported by and taught by the MPEP or TPEP, as appropriate.

Further, the following are instructions^[1]Some of the material for this section is taken from the USPTO, “Legal Analysis and Writing,” available at https://www.uspto.gov/sites/default/files/documents/partii_legalworkshop_slides01.pdf. No … Continue reading  given to Examiners on how to analyze applicant’s response that relies at least in part on case law analysis or support.

• Evaluate applicant’s response in light of current law and policy as stated in the MPEP (or guidance memorandum for recent developments)
  • When determining whether the arguments are persuasive, note the MPEP sections identified as relevant to applicant’s arguments
• Link the relevant legal concepts discussed in the MPEP to the facts of the application under examination
• Evaluate, analyze, and acknowledge all arguments and/or evidence of record, including arguments based on case law, when deciding whether to maintain or withdraw a rejection. See MPEP 2145.
• Be sure to “answer the substance” of any argument made by the applicant in traversal of the rejection. See MPEP 707.07(f).
• Refer to the MPEP (or guidance memorandum for recent developments) for information about how to understand and apply case law. You are not expected to do legal research beyond the MPEP and guidance memoranda.
  • Rely on the MPEP if an applicant’s traversal is inconsistent with the MPEP or applicable guidance memoranda. If the cited case law is not mentioned in the MPEP (See Appendix II), review the section of the MPEP that addresses the topic and formulate a response to the traversal based on the MPEP.
  • Confirm that any MPEP citation in the traversal is current and accurate before deciding to withdraw the rejection.
• Consult your SPE or other TC practice specialist if you have questions about case law or current Office policy.