Perspective: Kirton McConkie Law Blog


The USPTO recently released materials for training patent Examiners on how to rebut legal arguments during prosecution. Titled “Responding to Legal Arguments (RLA),” these materials train patent Examiners about (i) the basics of the U.S. legal system and (ii) how to respond to legal arguments made during prosecution. While a start, these training materials are likely to be inadequate to truly help patent Examiners understand the complexities of legal arguments made against their rejections. But the RLA helps clarify the following practice tips.

  1. The RLA confirms that Examiners are not required to perform legal research beyond the Manual of Patent Examining Procedure (MPEP), as well as the Office’s internal guidelines (collectively, “PTO Rules”). So while Examiners will listen to case law, they will likely only be convinced by citations to the PTO Rules. Accordingly, while practitioners can cite cae law, they will get better results by citing the PTO Rules.
  1. The RLA notes while the MPEP does not have the force of law, Examiners are still expected to follow it. So the best arguments will still be to cite the PTO Rules instead of case law, if possible. Where a recent judicial decision appears to conflict with the PTO Rules, consider involving the Examiner’s supervisor or other legally-trained USPTO personnel to explain the significance of the decision. If needed, delay examination until the PTO Rules can be updated to reflect the recent decision.
  1. The RLA suggests that Examiners make substantive factual findings and cite applicable case law where appropriate. The RLS helps Examiners understand that their decisions—rejections or allowances—are more likely to withstand challenge on appeal if they are factually supported. The RLA instructs Examiners that case law can be cited where the law or facts in a case are relevant to an application being examined (i.e., when it supports their decision). Unfortunately, this reinforces the notion that when the case law does not support their decision, Examiners are free to ignore it.
  1. Despite the RLA, it is unlikely that most Examiners will ever truly understand and correctly cite case law to support their rejections or allowances. There will always be a small minority of Examiners that will be an exception to this rule: those who have attended—or are attending—law school.

So I leave you with two tips I try to follow during prosecution.

  1. Use technical arguments whenever possible. They are almost always more persuasive to a patent Examiner than legal arguments.
  2. If you must use legal arguments, MPEP § 2100 is your BIBLE! Do not cite case law to the Examiner since they typically only believe what they have been taught in the Examiner Academy (and supplemented by the RLA). And what they learn is very limited. But the Examiner cannot ignore the MPEP. And MPEP § 2100 contains great ammunition for attacking the Examiner’s position.