Will you need to argue to get your utility patent application allowed?
Nine out of ten utility patent applications will get rejected at least once. Many will get rejected multiple times. So, yes, arguments will be required in the vast majority of utility patent applications. Moreover, the strength of your argument will have a direct bearing on whether or not your patent will be granted.
How claim amendments lead to stronger patent arguments
Before delving into patent arguments, we cannot ignore a key strategy that can make your arguments more persuasive. I’m now in my third decade of practicing patent law, and one reality has remained constant throughout my patent prosecution career. Examiners are human . . . at least for now. Therefore, the psychological aspect of convincing human beings that they are wrong cannot be overlooked. You are not dealing with a robot. Do not expect that an input of information will automatically result in a desired output as if they were a machine.
So how does this psychological stuff relate to claim amendments? Well, it’s a matter of saving face. When you amend the claims in conjunction with making arguments, you are making a concession. In essence, you are giving up some ground and seeking a compromise. An experienced patent attorney can carefully craft claim amendments that look like concessions, but really do not limit the scope significantly.
An Office Action response that consists entirely of arguments without claim amendments is like yelling “You’re wrong!” to the other side without acknowledging any of their points. How well does that kind of argument work in real life?
How to win the novel patent argument (Section 102)
An invention must be novel in order to be patentable. Under 35 USC 102, a lack of novelty means that all elements recited in a claim are shown in a single prior art reference. For example, suppose you have a claim that recites features A, B and C. If that claim is rejected for lacking novelty, it means that the patent examiner allegedly found a single prior art reference that shows A, B and C. You would receive an Office Action containing claims rejections under a Section 102 heading.
To counter a Section 102 claim rejection, you need to prove to the examiner that the claim contains at least one feature not shown in the cited prior art reference. As discussed above, one effective way to accomplish this is by adding at least one feature to the claim and arguing that the amended claim is novel.
How to win the nonobvious patent argument (Section 103)
Not only must an invention be novel, but it must also be nonobvious in order to be patented. Generally, an obviousness rejection under Section 103 is more difficult to overcome than a lack of novelty rejection. To illustrate, let’s go back to our claim that recites ABC.
Suppose the examiner finds a first prior art reference that shows A and B, and a second reference that shows C. To reject your claim as being obvious, the examiner will combine the first and second prior art references to arrive at your claimed invention of ABC.
You can counter an obviousness rejection with multiple strategies concurrently. Again, I would explore the possibility of amending the claims and arguing the nonobviousness of the amended claims. The amendment-plus-argument approach can make a gray area more black-and-white. For example, if you amend your claim to add D so that the scope is now ABCD, it is more of a black-and-white argument that the cited prior art combination fails to show feature D.
Do not ignore dependent claims. If the examiner still thinks your independent claim is obvious, there may be some wiggle room to show that your dependent claims are nonobvious. Point out how certain dependent claims include significant features.
How to win the eligible subject matter argument (Section 101)
This is a tricky patent rejection. Ongoing developments in case law and examination rules continue to shape this fuzzy area of patent law known as subject matter eligibility. A more compelling response to a Section 101 rejection may require awareness of the latest legal developments. Perhaps, the Federal Circuit will issue a new opinion on what is or isn’t an abstract idea, or what qualifies as something more than an abstract idea.
An effective response to a Section 101 rejection will be highly fact specific. You cannot take a one-size-fits-all approach in arguing eligible subject matter. For example, it might make sense to craft eligibility arguments that take novelty into account.
Should patent arguments be more legal or technical?
Trademark examiners are lawyers, and patent examiners are not. So a response filled with a bunch of legal arguments will probably have little persuasive effect. Patent examiners are focused on the technological aspect of inventions, not on legal standards.
It might make sense to add some case law if, for example, it helps to shift the burden back to the examiner. For example, if the examiner is taking judicial notice of a certain feature, then it might be worthwhile to insert some legal precedent to argue that the examiner has not met their burden.
Need to win your patent argument?
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