Anticipat Education Part 5: How to find legal authority relevant for overturning specific rejections

Having the most relevant and current legal authority to advance a particular argument is a time-consuming task. But it is also a very important part of persuasive advocacy in patent prosecution. With Anticipat, we channel PTAB decisions to do much of this work. Anticipat Analytics shows you relevant legal authority (e.g., case law, Guidelines, and MPEP support) that the Board relies on in overturning specific rejections.

The legal authority that the Board relies on to overturn a particular rejection in a given tech center can relevant for responding to a pending Office Action. If it worked on appeal in a related case, that authority might be good to look at in your case. And it isn’t only relevant for a case that you are appealing–it can be persuasive when working with your Examiner.

To understand how to use legal authority on Anticipat Analytics, a little bit of background first. Legal authority goes hand in hand with the corresponding argument. We previously explained how Anticipat Analytics breaks down the most common arguments used by the Board in overturning a particular rejection. The legal authority goes a step further by showing the legal authority relied on in making this particular reversal.

Let’s take as an example an application that has an abstract idea rejection under Section 101 – Patent-ineligible subject matter. Looking up this application in the input field, the abstract idea tags listed are “Step 1”, followed by “Step 2,” then followed by “prima facie case.”

The most common tag for abstract idea is “Abstract Idea – Step 1.” This means that when the Board is reversing abstract idea rejections, most often it does so in step 1 of the Mayo/Alice framework. Within step 1, which legal authority does the Board cite to support its reversal? This is where the legal icon to the immediate right of the tag comes into play.

The Examiner column shown above has the most relevant tags and authority to an application (e.g., they represent Board decisions that have overturned this specific Examiner). But they also have the smallest sample size. The next column, art unit, has more decisions. It provides all the decisions (and legal authority) for this art unit.

The next column, tech center, has even more decisions and legal authority.

Finally, the right-most column displays all the tags for this specific tag. This will provide all the legal authority Board decisions.

This legal authority icon immediately to the right of the abstract idea text is clickable, which reveals the full list of legal authority for step 1 in this tech center. When the legal authority icon is clicked, here is an image of the popup that shows.

Having the relevant legal authority for specific arguments used by judges can help guide strategy in what is persuasive.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments.

Anticipat Team

One response

  1. Pingback: PTAB finds encryption software claims not directed to abstract idea–Practice tips | Anticipat Blog

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