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ARTICLE · 04 JANUARY 2018

2017 CAFC Guidance For Patent Prosecutors

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Patent prosecutors navigate complex USPTO rules and seemingly esoteric examinational requirements to procure patent rights.

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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Prosecutor's Tool Box 2017

Patent prosecutors navigate complex USPTO rules and seemingly esoteric examinational requirements to procure patent rights. In doing so, it is easy to lose sight of the fact that the Manual of Patent Examining Procedure (MPEP) does not have the full force and effect of law. Nevertheless, patent examiners (rarely trained lawyers) adhere to their interpretation of the Manual requirements. To budge examiners off of entrenched, legal positions, savvy prosecutors will keep a trained eye on the Federal Circuit for help.

2017 provided several decisions of immediate value to patent prosecutors.

1. Broadest Reasonable Does not Mean Broadest Possible! (In Re Smith International Inc.)

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