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Additional thoughts about patent prosecution strategy and tactics January 4, 2012

Posted by Brian Schar in Patent prosecution, USPTO.

As patent attorneys, we are first and foremost attorneys, regardless of our chosen specialty.  As such, we have training and experience in arguing the law as well as the facts.  Patent examiners, as well-trained as they may be in the MPEP and in the mechanics of patent examination, are rarely attorneys.  Consequently, in a matchup between a patent attorney and an examiner, the advantage goes to the patent attorney in the legal aspects of patent prosecution.  Strategically, a patent attorney wants to be in that position of arguing the law and playing to his or her advantage in that subject.

Tactically, a patent attorney gets to that position on appeal.  On appeal, cite cases, argue the law, and treat the appeal brief just like any brief you would file in the course of patent litigation.   If you simply engage the examiner on his or her own terms in the appeal brief, you have conceded your most valuable advantage.  I smile when I receive an Examiner’s Answer that simply reiterates the final action and ignores the legal arguments in the appeal brief, because the reply brief is then short and sweet – a quick reiteration of the most important legal points, followed by an argument under Zurko that the examiner has ignored the law and thus acted arbitrarily and capriciously by definition, with the addition of any other highlights that improve my odds of winning.


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