米国特許実務に関わっていると米国判例を読む機会がたびたびあると思いますが判例を読む時の注意点はなんなのでしょう？少なくとも、部門の中で伝承はなかったし良い参考書も見つかりませんでした。ないのなら作ってしまえ！
ということでUSPTOの新人審査官教育資料からエッセンスを抜き出しました。私のような素人には結構参考になる情報でしたがいかがでしょうか。
Structure of a Decision
Why Is the Structure of a Decision Relevant to Examiners?
Helps examiners navigate a decision to more quickly and easily identify examination tips
The Dirty Little Secret It may not be necessary to read the entire case to decide whether it is relevant.
Go to specifically the cited text and read it in context first
If relevant, then read the other parts of the case that are pertinent to examination.
Parts Relevant to Examiners Introduction
Facts
Procedural History
Discussion of Issues
Issue #1
Law
Application of law to facts, etc.
Issue #2
Law
Application of law to facts, etc.
Parts Not Relevant to Examiners Jurisdictional Statement
One sentence statement explaining the basis for the court’s authority to decide the case
Standard of Review
Test used by court in deciding whether to interfere with a decision of Board/lower court
Conclusion
Statement addressing relief sought by plaintiff/appellant
(e.g., affirm, reverse, affirm-in-part and reverse-in-part, or remand)
Introduction One sentence summary of who is seeking review and on what issue
One sentence summary of outcome with short reason
Facts
Technology in dispute
Claims
Prosecution history — pertinent parts
Prior art
Procedural History Description of action in lower tribunal
Decision of lower tribunal
Reasoning of lower tribunal
Be careful not to confuse reasoning of lower tribunal with that of Court issuing the decisionDiscussion Issue
Sometimes, court will present the parties’ arguments before identifying the legal issue.
Be careful not to confuse parties’ arguments with the Court’s decision and reasoning Relevant law
Application of law to facts with decision on issue and explanation of reasons for decision
Relevant legal principles, analysis, and phraseology will be found hereHolding
Court’s ultimate legal conclusion on an issue
Under this law, with these facts, this result
“We hold”
Use extreme caution in classifying a statement by a court as a holding
Courts use the “hold” sparingly; do the same
MPEP usually captures holding for most cases
Rationale(a.k.a., reasoning)
Reasons for the ultimate conclusion
No magic words
E.g., “We conclude,” “We determine,” “We think”
Dicta—It’s Dangerous Dictum (singular): Dicta (plural)
Statement or observation made by a judge that
does not form a necessary part of the court’s
decision,
but is
included in the body of the court’s
opinion Court said it, but not needed to reach decision
Attorneys may cite dicta in arguing against a rejection
DICTA IS NOT A HOLDINGHolding v. Dicta(Example)
In eBay v. MercExchange, 547 U.S. 388 (2006), the Supreme Court
addressed issue of whether patentee MercExchange was entitled to a permanent injunction.
Supreme Court
observed that the district court denied a permanent injunction because patentee MercExchange expressed a willingness to license its patents, showing it would not suffer irreparable harm if an injunction did not issue.
Sources of Confusion
Syllabus — summary of decision
Don’t cite or quote because not authored by the Court
Prepared by publisher
Headnotes — summary of decision
Don’t cite or quote because not authored by Court
Prepared by publisher
Remember the Dirty Little Secret
It may not be necessary to read the entire opinion to decide whether a case is relevant
Go to specifically cited text and read it in context first
If relevant, then read the parts of the case pertinent to examiners
PrecedentOpinion Type
Majority
Forms the opinion for the court
Presents the holding and rationale for the court
Concurrence
Agrees with ultimate outcome, but for different reasons
Written by one or more judges
Judge in the majority may also be in concurrence
Dissent
Disagrees with ultimate outcome
Written by one or more judges
Dissenting judge is not part of majority
Plurality
No majority; fractured opinion with multiple judges going different ways for different reasons
Happens with appellate court sitting en banc or Supreme Court
Importance of Opinion Type Decision of the court is found in the majority opinion
Any statements in the concurrence or dissent are for a single judge only; such statements are not the opinion of the court and are not binding on the court
If concurrence or dissent is cited, the authoring judge should be mentioned to indicate that the cited statement is from that judge and does not represent the view of the court
Binding v. Non-Binding Decisions Binding
Precedential (Court and BPAI)
Decision will add to body of law
All lower tribunals must follow
Not Binding
Non-precedential (Court and BPAI)
Decision will not add to body of law
Binds only the parties
Informative (BPAI only)
Helps clarify the law
Binds only the parties
Other (BPAI only)
Binds only the parties
What Decisions Are Binding on Examiners?
Technically, all binding decisions issued by the BPAI and courts
However, examiners are to follow the cases cited in the MPEP or those endorsed by Patent Policy
If a decision is new or not discussed in the MPEP, consult SPE before citing
Why? The Office has to interpret a decision before applying it to examination, e.g., KSR v. Teleflex
Why Is Precedent Important?
Examiners should only rely on decisions sanctioned for use by the Office to support a rejection.
If an applicant cites a
non-binding decision to argue against a rejection, the examiner
need not follow it because it is not binding.
Trick: If the facts of an application under examination are similar to those in a non-binding decision, the examiner may want to carefully review the reasoning applied by the tribunal that issued the non-binding decision.
If the non-binding decision helps the rejection, then the examiner may use the reasoning, but not cite the decision.
If the case hurts the rejection, then the examiner may want to withdraw the rejection or attempt to distinguish away the non-binding decision without citing or discussing it.
Laboratory Exercises
Protocol (cont.)
When case law is cited by Applicant, how should an Examiner address it?
MPEP is always the starting point.
2 Step process:
(1) MPEP;
(2) Case itself, if necessary, using USPQ database
Sample strategies:
Step 1: MPEP
Find specific case in MPEP using MPEP Insight (narrow approach)
Do a “concept search” to find topic for which case is cited using MPEP Insight; should lead to specific case along with others (broad approach)
Step 2: Retrieve and read case, if necessary, using USPQ database
Exercise #3
(Claim & Specification)
Claim 1: A method of treating a bacterial infection comprising administering to a patient antibiotic X.
Specification teaches antibiotic X is useful to treat a wide variety of infections, but not methicillin-resistant S. aureus infection.
Exercise #3
(Rejection)
Rejection under 35 U.S.C. § 102 over prior art reference that teaches treating a S. pyogenes infection with antibiotic X
Exercise #3
(Applicant Response)
Amend claim, adding a negative limitation to exclude S. pyogenes infection
Amended Claim 1: A method of treating a bacterial infection comprising administering to a patient antibiotic X, wherein the infection is not caused by S. pyogenes
Add claim with a negative limitation to exclude S. aureus infection
Added Claim 2: A method of treating a bacterial infection comprising administering to a patient antibiotic X, wherein the infection is not caused by a methicillin resistant S. aureus.
Exercise #3
(Final Rejection)
Rejection of claim 1 under 35 U.S.C. § 112, 1 on grounds that the original application provided no support for excluding the treatment of a S. pyogenes infection
No rejection of claim 2 because the specification expressly teaches that antibiotic X may not treat methicillin-resistant S. aureas infection
Exercise #3
(Applicant Response)
Written description rejection is proper only when specification contains no support for negative limitation. In re Johnson, 194 USPQ 187, 196 (CCPA 1977).
Negative limitation here is inherently supported by specification’s teaching that antibiotic X may not treat methicillin-resistant S. aureus infection
Skilled artisan knows that S. pyogenes and S. aureus are both gram positive bacteria
Exercise #3
(Examiner’s Analysis)
Step 1: Consult the MPEP to see how/if Johnson is used
Step 2: If necessary, read and understand the actual decision
Exercise #3
(MPEP)
MPEP discusses Johnson in the following sections:
MPEP § 2164.08
MPEP § 2173.05(i)
MPEP alone is probably not enough.
It suggests that Applicant’s characterization of Johnson is correct.
It is necessary to read and understand the decision to figure out how to respond.
Exercise #3
(In re Johnson Decision)
Johnson claimed a genus, but later amended the claim to exclude two species to overcome prior art.
CCPA found amended claim was supported by specification:
Specification is directed to claimed polymers
26 example polymers described in specification; only 23 of them within scope of claims
Applicant is entitled to claim less than full disclosure
Exercise #3
(Examiner’s After Final Response)
Applicant correctly characterizes Johnson; that case stands for proposition that a negative limitation may be added to claim so long as adequate written description support for it exists in the specification
Problem here is that specification does not provide inherent support for excluding a S. pyogenes infection from treatment with antibiotic X
Specification excludes only methicillin-resistant S. aureus infection
Exercise #3 (cont.)
(Examiner’s After Final Response)
Nothing in specification about relationship between S. pyogenes infection and methicillin-resistant S. aureus infection
Skilled artisan therefore would not inherently understand that antibiotic X could not be used to treat S. pyogenes infection
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