Citing Case Law Decisions


Citing Case Law Decisions

Every now and then, it is unavoidable: you want to cite a piece of Case Law to strengthen your position against the Examining Division, Opposition Division or Board of Appeal.

It is most convenient to rely on Case Law decisions cited in the Guidelines or in the officially published Case Law of the Boards of Appeal book. Look up the relevant chapter and pick one or more of the Case Law decisions mentioned there. Experienced attorneys will realize that this might not be the best the approach.

If you are stuck on a legal interpretation, you can assume that the Examiner already studied this go-to passage of the Guidelines and Case Law book and is basing their position on that paragraph itself. Or in case of an Opposition, the Opposition Member maybe already have rejected such interpretation of that cited decision in the past?

Let us look at the data instead.

If you face the topic of, for example, computer-implemented inventions before the Board of Appeal or an Examiner, we can drill-down to understand if our responsible Board Member has cited certain Case Law decisions in the past. Not only that, we can very efficiently understand the sentiment.

Why cite any Case Law, when you can rely on Case Law decisions that your responsible Board Member or Examiner has relied on in the past?

If you just cite any case law decision, you run the risk of receiving counterarguments from the Board that look like this:

That is, you receive a counterargument that it was a different composition of the Board that issued that decision you cited. Clearly, this is avoidable when you specify the exact Board composition in the ipQuants CLI solution.

What about the Primary Examiner?

Certain Examiners clearly state what case law they rely on for certain legal topics.

In the below example, the Examiner (name not shown) stated in a previous Official Communication that the Examiner adheres to IPC G06Q case law  as issued by the Board of Appeal 3.5.01.

If that is what determines your Examiner's approach, make sure you are aware and act accordingly.

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