What is the role of attorney arguments in patent examination?
What is the role of attorney arguments in patent examination?
Attorney arguments play a significant role in patent examination, but they are not considered evidence. According to MPEP 716.01(C)(II), “The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).” This means that:
- Attorney arguments can help explain the applicant’s position and interpretation of evidence.
- Arguments can point out flaws in the examiner’s reasoning or highlight overlooked aspects of the invention.
- However, arguments alone cannot establish facts or overcome rejections without supporting evidence.
While attorney arguments are valuable for framing issues and directing attention to key points, they must be supported by objective evidence to be persuasive in overcoming rejections or establishing patentability.
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