August 6, 2013

“Administrative Convenience Taken Too Far: In Re Japikse,” Law360, August 6, 2013

Here is a likely scenario. You have filed a patent application that represents a considerable amount of your time and your client’s money, research and development. About two years later you receive a response from a patent examiner with the U.S. Patent and Trademark Office rejecting the claims in the application. The patent examiner does not cite to any prior art references that disclose the claimed invention, nor does the examiner combine the teachings of multiple prior art references to reach the subject matter of the claims. It’s worse.

In the rejection, the examiner merely cited to the decision of a court, and essentially alleged that the features of the pending claims fit into a category that has been held to be obvious by the court. Therefore, the examiner summarily rejected the claims without providing any further analysis or explanation, and leaving you with seemingly limited options for response.

The role of legal precedent, or per se rules, to support obviousness rejections in patent applications under 35 U.S.C. §103(a) can be misinterpreted, or conveniently overlooked. The Manual of Patent Examining Procedure discusses the use of legal precedent as a source of supporting rationale for obviousness rejections under 35 U.S.C. §103(a). The MPEP states that if the facts in a prior legal decision are sufficiently similar to those in an application under examination, a patent examiner may use the rationale of the court to support an obviousness rejection.

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