What is the examiner’s burden in rejecting a patent application for lack of utility?
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states:
“When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion.”
Furthermore, the MPEP clarifies:
“The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility.”
This means that the examiner must provide substantial evidence or scientific reasoning to show why a person skilled in the art would doubt the utility of the invention. Once this burden is met, the applicant then has the opportunity to provide evidence supporting the asserted utility.
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