What is the “rule of reason” in patent examination regarding inoperative subject matter?
The “rule of reason” in patent examination regarding inoperative subject matter refers to the approach examiners should take when evaluating claims that may include inoperative embodiments. According to MPEP 2164.08(b):
“[T]he examiner must evaluate the assertion according to a rule of reason. ‘The rule of reason is applicable to the evaluation of the scope of the claim, and requires the examiner to apply logic and common sense in interpreting the scope of the claims.'”
This means that examiners should use logical reasoning and common sense when interpreting claims, rather than applying an overly strict or literal interpretation that might unfairly reject claims containing a small number of inoperative embodiments.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2164.08(B) - Inoperative Subject Matter,
Patent Law,
Patent Procedure