On Burden-Shifting

During our US Prosecution Study Group, Session 20, we discussed shifting the burden back to the Examiner.  On the other hand, we privately considered problems that might arise from extensive reliance on burden-shifting arguments.  How do we find a balance on a topic that is necessarily fact-sensitive?

First, let’s clarify that burden-shifting arguments are procedural, not substantive.  That is, these arguments relate to the Applicant’s inability to argue the substance of the Examiner’s rejection meaningfully.  This inability to argue is a somewhat distinctive feature of burden-shifting arguments.

For example, during Session 20, the Examiner requested the Applicant prove the primary reference could not be subjected to the Examiner’s proposed modification.  Such proof is clearly beyond the Applicant’s ability.  It fundamentally is unfair to ask an Applicant to make such proof, when the Examiner has not proved the modification would have been obvious (i.e., when the Examiner has not yet established a prima facie case).

On the other hand, Examiners seldom make a rejection that is perfectly clear and entirely correct.  (Alas, they are but human.)  Yet, the USPTO still expects Applicants to address the substance of the Examiners’ rejections.  So, it is quite easy for the Examiner (or, at considerably more delay and cost, the PTAB) to reject an inappropriate burden-shifting argument. 

An Applicant might attempt to lower the risk of burden-shifting arguments by supplementing those arguments with substantive arguments.  In this situation, the mere presence of the substantive arguments undermines the strength of the procedural, burden-shifting arguments.  The reason is that, if the Applicant meaningfully can address the substance of the Examiner’s rejection, then it is unlikely a procedural issue exists.

Accordingly, at a conceptual level, it is better to present substantive arguments when they are available.  And, generally, these arguments are available.  However, when it is impossible to meaningfully argue the rejection, then these burden-shifting arguments become powerful.  (Consider that the alternative, in such a situation, is a weak substantive argument.)

If there are questions about whether a burden-shifting argument might be appropriate in a particular situation, please contact us.

PS: we know some of our readers like estimates of how often we present certain arguments.  Burden-shifting arguments are fairly uncommon: maybe once every 3-4 months.

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