What is the role of attorney arguments in patent examination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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. 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. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Unexpected Results Must Be Supported by Experimental Data MPEP 716.01(c) Primary Examiner Must Review Evidence to Overcome Rejection MPEP 716 Declaration Can Replace Affidavit in Patent Applications MPEP 716 Requirement to Indicate Overcome Rejection with Statutory Grounds MPEP 716 Objective Evidence Must Be Factually Supported MPEP 716.01(c) Required Affidavit Required for Objective Evidence MPEP 716.01(c) Required Requirement for Objective Evidence of Long-Persisted Problem MPEP 716.04 Applicant Arguments Cannot Substitute for Evidence MPEP 716.01(c) Prohibited Publications May Serve as Evidence for Facts at Issue MPEP 716 Recommended Affidavit of Applicant Cannot Be Disregarded Solely Due to Persuasiveness MPEP 716.01(c) Prohibited Other Related FAQs 5 FAQs Collapse Can the absence of an expected property support non...