Can arguments of patent attorneys replace evidence in patent examination?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
No, the arguments of patent attorneys cannot replace actual evidence in patent examination. This principle is clearly stated in 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 while attorneys can present arguments and interpretations of evidence, their statements alone are not considered evidence. The USPTO requires factual evidence to support patentability arguments. This can include:
- Experimental data
- Test results
- Affidavits or declarations from experts
- Documentation of unexpected results
- Evidence of commercial success
Attorney arguments can be valuable in explaining the relevance of submitted evidence or interpreting prior art, but they cannot substitute for objective evidence. Examiners are instructed to rely on the actual evidence in the record when making patentability determinations, rather than unsupported assertions by attorneys.