Fenwick IP lawyer Kevin Kabler talked to Law360 about how the Patent Trial and Appeal Board stated it is not bound by guidance memos issued to examiners who also work at the U.S. Patent and Trademark Office.
Kabler explained that guidance can, however, still help litigants support their cases when arguing before the PTAB.
He said the USPTO's guidance mainly summarized the legal precedent the PTAB needs to base its decisions on, and litigants at the board can still use this guidance to support their arguments as to why the case law should lead to a favorable result.
"It would behoove you to use the guidance to the extent it makes sense to advocate your client's position even with the board's view that it's not binding,” Kabler said.
Kabler told Law360 the most effective argument would be primarily based on case law—with the guidance cited to show how the court's rulings have been interpreted, especially in areas such as patent eligibility, where it can be difficult to predict the outcome.
"It would probably be better to start with, this is the Federal Circuit case law that's relevant here, and by the way, this is the guidance from the patent office that supports the argument," he said.