Better Ways to Cite Case Law to an Examiner in U.S. Patent Prosecution

Michael Kondoudis
September 25, 2008 — 1,105 views  
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Case law is sometimes required during the prosecution of a patent application in the United States Patent Office. Many patent examiners, however, do not trust case law. Thus, using the United States Patent Office's own Manual of Patent Examining Procedure, which includes case law, is often a better authority that mere case citations.

But why is this so? Legally, court/board decisions should be at least as persuasive as the MPEP, especially when similar fact patterns are present. The reasons for the effectiveness of the MPEP, at least anecdotally, range from the suspicions that Examiners: dislike analyzing case law; believe that almost any decision can be distinguished on the facts; and/or believe that for any decision there is another with a contrary holding.

Without opining on these suspicions, when one stands in the shoes of an Examiner, the reasons for the effectiveness of citing the MPEP become clearer.

First, only a fraction of the PTO's examining corps are attorneys. Few Examiners have the legal training to comfortably and confidently interpret case law; it is probably a foreign process to many of them. Consequently, many Examiners tend to discount court/board decisions and take the default position that if a decision had merit, the Office would have supplied guidance on its application in the MPEP (or another official publication).

Second, and related to the first point, it can be difficult and time consuming for Examiners to look up and to analyze decisions. With the PTO's production quotas, this fact should not be ignored. Also, language issues of some of the examining corps may amplify this difficulty.

Third, I suspect that reliance on case law can be a risky proposition for an Examiner, especially with second reviews of allowances. Imagine having to defend an allowance based on an interpretation of case law, especially without corroboration in the MPEP. Reliance on the MPEP, in contrast, is the safest bet for an Examiner looking toward this review. After all, the MPEP describes itself as providing guidance and instructions to Examiners about the prosecution of patent applications. What could be safer?

In view of these practicalities, when you need authority for a position, it may be a good idea to consider looking first to the MPEP. Citing the Office's own instructions seems to avoid most of the aforementioned complications. That being said, sometimes it may be more appropriate to cite a decision. In these cases, I suggest considering providing the Examiner with an annotated copy of the decision as an attachment to a response.

About the Author

Michael E. Kondoudis is one of the many Washington patent attorneys in Washington, DC. Mike is also the principal of The Law Office of Michael E. Kondoudis, PC, a Washington DC patent law firm. In additionally, Mike is the author of Patentably Defined, a leading U.S. patent prosecution blog.

Michael Kondoudis