This practice note teaches patent prosecutors how to rebut a patent examiner's prima facie case of obviousness. For a discussion of how to attack the examiner's prima facie case, thus possibly eliminating the need for rebuttal, see Overcoming Obviousness Rejections by Attacking the Prima Facie Case.
In this practice note, we discuss the rebuttal of a prima facie case of obviousness in the context of the examination of patent application claims by a patent examiner. Note that the same principles apply in the context of inter partes patentability challenges before the USPTO's Patent Trial and Appeal Board (PTAB), because the claims do not have a presumption of validity before the PTAB. However, in PTAB proceedings, the initial burden of persuasion is on the petitioner, the rebuttal burden is on the patent owner, and PTAB operates as an adjudicator of the parties' arguments.
Read the full article here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
