What is the significance 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 crucial role in patent examination, but they are not considered evidence. The MPEP 716.01(c) states: 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). While attorney arguments can provide valuable context and interpretation, they must be supported by objective evidence to be persuasive in overcoming rejections or objections. Examiners are instructed to consider attorney arguments but rely on factual evidence when making patentability determinations. 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 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 Blocking Patent Consideration for Nonobviousness Evaluation MPEP 716.01(c) Prohibited Oath or Declaration Required for Traversing Rejections MPEP 716 Required Other Related FAQs 5 FAQs Collapse What types of objective evidence are considered probative in patent examination? What is the role of publications and printed matter as evidence in patent examination? What is the significance of affidavits or declarations in patent examination? What is the significance of opinion evidence in patent examinat...