The United States Patent and Trademark Office (USPTO) often issues guidance memos to patent examiners, addressing issues such as patent eligibility and how to apply important decisions from the Supreme Court and the Federal Circuit. However, the Patent Trial and Appeal Board (PTAB) recently indicated that it is not bound by guidance memos issued to USPTO examiners. Many attorneys disagree with that approach and feel that guidance can help litigants form their case when arguing before the PTAB. Law360 contacted Finnegan attorney Erika Arner for her thoughts.
Erika said, “I think the mistake a lot of people make is holding up the guidance as the official position of the patent office and trying to pin it on the board: ‘You said this, so you’re stuck with it.’” She noted that while the guidance can be very helpful in identifying relevant case law that can support the litigant’s argument, she wouldn’t advise citing the guidance explicitly to the board. Given that patent eligibility has many uncertainties, she understands where parties are coming from in seeking clarity from the patent office, however, she said, “That’s not what the guidance is. There’s no magic bullet.”