More On Case Law Not In the MPEP

In a previous post discussing whether case law not in the MPEP should be considered by examiners at the USPTO, Jessica Harrison commented that this trend is due to USPTO examiner training available here. She also pointed to her article discussing the examiner training and how many of the take-aways are that the examiner does not need to respond to the Applicant’s arguments.

After a brief review of the various training materials, there does not appear to be a direct and clear instruction to examiners to ignore precedential decisions of the PTAB. Rather, as always, it seems that several statements are provided that when taken out of context could lead bureaucratic thinkers at the USPTO to reach this conclusion. However, it simply cannot be that examiners can ignore arguments based on binding precedent merely because the cited case is not the MPEP. Even the PTAB cites cases which are not in the MPEP and an applicant certainly cannot ignore those. It would be suprising to hear USPTO officials overtly instructing examiners to ignore binding precedential case law, but nothing should surprise us.

First, it should be noted that most of the training materials date to 2017. While there is a PPT file dated January 2019, much of the material is similar to that of the earlier training documents.

Second, there is one particular statement that is somewhat troubling. The relevant statement is as follows:

Rely on the MPEP if an applicant’s traversal is inconsistent with the MPEP or applicable guidance memoranda. If the cited case law is not mentioned in the MPEP (See Appendix II), review the section of the MPEP that addresses the topic and formulate a response to the traversal based on the MPEP.

This is not necessarily bad advice for the examiner, except it never says that the examiner can ignore the arguments because the case law is not in the MPEP. Often, the basic rule is recited in the MPEP with a relevant citation, but since almost every rule has grey areas, later cases can clarify certain points that might be very relevant to the facts of a given case. While it makes sense for examiner to formulate their response based on what is in the MPEP, the idea that they should ignore the applicant’s argument is unfounded. If anything, examiners who ignore strong arguments just because the applicant cites a case not in the MPEP are likely to end up with high reversal rates at the PTAB.

Further, the training materials make clear that the relevant question is whether the applicant is citing case law that is not precedential. The materials focus on this many times by training examiners to consider the following:

Does the attorney cite any cases that the examiner is not obligated to follow because they are not precedential decisions

The question does not consider whether the case law is in the MPEP. That is why the materials also note that the examiner should consult their SPE if they have questions about case law.

Consult your SPE or other TC practice specialist if you have question about case law or current Office policy.

On the other hand, there is a lot of concerning language in this training and as Jessica points out, it is good for those having an active prosecution docket to review the materials in detail.