Well Settled Doubt Favors Applicant?

by Steve Reiss (stevenreiss@scienbizippc.com)


In the first place, it is the settled rule in such proceedings that doubts as to whether or not invention is present are to be resolved in favor of the applicant.7 While the exact degree of doubt necessary to justify the allowance of a claim has not been accurately defined, it is probably greater than the "reasonable doubt" which will prevent a conviction in criminal cases. It is evident, however, that the existence of the rule has a definite tendency to lower whatever standard of invention one may begin with.

7. In re Coykend1all, 58 App. D.C. 280, 29 F. 2d 868 (Ct. App.D.C. 1928); In re Davidson, 56 App. D.C. 279, 12 F. 2d 814 (Ct. App. D.C. 1926); In re Herchenrider, 28 C.C.P.A. (Patents) 876, 117 F. 2d 261, 48 U.S.P.Q. 393 (C.C.P.A. 1941); Ex Parte Bennett, 29 U.S.P.Q. 612 (P.O. Bd. App. 1936); Ex Parte Nord, 68 U.S. P.Q. 335 (P.O. Bd. App. 1945).

DYNAMICS OF THE PATENT SYSTEM , p. 5