What is the significance of legal precedent 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.

Legal precedent serves as a crucial source of supporting rationale in patent examination. According to MPEP 2144.04, “an examiner may utilize legal precedent as a source of supporting rationale when warranted and appropriately supported.” However, it’s important to note that “the examiner must take care to ensure that the rationale is explained and shown to apply to the facts at hand.”

When using legal precedent, examiners should consider:

• The specific facts of the case
• The applicability of the precedent to the current application
• The need for additional supporting evidence

It’s worth noting that “if the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection.“