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USPTO Examination Guidance: Binding or Not

by Kenneth R. Adamo & Eugene Goryunov1 (Kirkland & Ellis LLP – USA)

USPTO Examination Guidance are not binding on the PTAB or on federal courts. They are useful training materials but do not have the force of law.

The United States Patent & Trademark Office (“USPTO”) issues Examination Guidance “for use by USPTO personnel in evaluating” patent applications during prosecution. 35 U.S.C. § 3(a)(2)(A). Patent examiners, as well as Patent Trial and Appeal Board (“PTAB”) Administrative Patent Judges, are trained on published Examination Guidance and are expected to properly administer their teachings. As such, practitioners may wonder: what is the binding effect, if any, of a Guidance in various scenarios: (1) an appeal to the PTAB from an examiner rejection; (2) an appeal to the PTAB from a reexamination proceeding; (3) a post-grant review proceeding at the PTAB; and (4) a patent case in federal court. A review of existing cases is informative.

Q: Binding in Appeals from an Examiner Rejection? A: No

A patent applicant may appeal an examiner’s final rejection to the PTAB. The PTAB has noted that Guidance do not establish legal requirements and, therefore, the PTAB is not bound by them. See, e.g., Ex parte Rama, 2017 WL 6816891 (Dec. 15, 2017). This does not mean that the PTAB will avoid mentioning a Guidance in its decisions. Instead, the PTAB may refer to a Guidance and, through it, cite and rely upon the underlying case law to inform its decision. See, e.g., Ex parte Tryggvason, 2017 WL 394203 (Jan. 26, 2017).

Q: Binding in Appeals from Reexamination-Type Proceedings (inter partes, ex parte, Interferences)? A: No

Determinations in reexamination-type proceedings may also be appealed to the PTAB. The PTAB’s predecessor, the Board of Patent Appeals and Interferences, like the PTAB, had concluded that a Guidance does not bind its decision on appeal. Decisions on point may refer to a Guidance but the ultimate conclusion is based on the underlying case law. Ex parte Reiffin, 2007 WL 2814119 (Sept. 25, 2007); Ex parte TBKS, 2006 WL 3101728 (Sept. 11, 2006).

Q: Binding in Post-Grant Review Proceedings (IPR, PGR, CBMR, Derivation)? A: No.

The underlying premise that a Guidance is not binding on the PTAB continues into post-grant review proceedings conducted at the PTAB as a first instance. See, e.g., Google Inc. v. Zuili, 2017 WL 2116956 (May 5, 2017). The PTAB has noted, however, that it requires persuasive reasons to depart from a Guidance as the Guidance is the USPTO’s interpretation of controlling case law. TradeStation Grp, Inc. v. Trading Techs. Int’l, Inc., 2017 WL 1215637 (Mar. 31, 2017). The PTAB has also allowed additional briefing for parties to address a newly published Guidance. See, e.g., Inv’rs. Exch. v. Nasdaq, Inc., 2019 WL 258636 (Jan. 17, 2019).

Q: Binding at the Federal Circuit and/or Federal Court? A: No.

The Federal Circuit has held that, just like the PTAB, Guidance are not binding authority. See, e.g., Intellectual Ventures LLC v. Erie Indemnity Co., 711 Fed. Appx. 1012 (Fed. Cir. 2017). A Guidance may be cited but it is the underlying case law that governs the ultimate outcome for a case. Even where cited, a Guidance is merely a “cite-through” to the controlling case law. Indeed, on April 1, 2019, the Federal Circuit confirmed in its non-precedential decision in Cleveland Clinic Found. v. True Health Diagnostics LLC that it is not bound by the USPTO’s Guidances.

Conclusion

USPTO Examination Guidance are not binding on the PTAB or on federal courts. They are useful training materials but do not have the force of law. Practitioners would be well-advised to consider USPTO Guidance in their practice but remember to rely on the controlling case law to support their positions before a tribunal.

1. [This article reflects only the present considerations and views of the authors, which should not be attributed to Kirkland & Ellis LLP, or to any of its or their former or present clients.]