USPTO Proposed to Revise Rule 56

by David Hricik [Originally published on Nov 1]

The announcement is here.  I will be submitting comments before the 12/27 deadline, and so if you have any ideas or thoughts, please post away.  The proposed amendment include responses to comments made back in 2011 when the USPTO was initially pondering this, and the proposed rule now reads:

(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability under the but-for materiality standard as defined in paragraph (b) of this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b) through (d) and 1.98. However, no patent will be granted on an application in connection with which affirmative egregious misconduct was engaged in, fraud on the Office was practiced or attempted, or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:

(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and

(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.

(b) Information is but-for material to patentability if the Office would not allow a claim if the Office were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction consistent with the specification.

* * * * *
■ 3. Section 1.555 is amended by revising paragraphs (a) and (b) to read as follows:

§ 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.

(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective reexamination occurs when, at the time a reexamination proceeding is being conducted, the Office is aware of and evaluates the teachings of all information material to patentability in a reexamination proceeding. Each individual associated with the patent owner in a reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding under the but-for materiality standard as defined in paragraph (b) of this section. The individuals who have a duty to disclose to the Office all information known to them to be material to patentability in a reexamination proceeding are the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding. The duty to disclose the information exists with respect to each claim pending in the reexamination proceeding until the claim is cancelled. Information material to the patentability of a cancelled claim need not be submitted if the information is not material to patentability of any claim remaining under consideration in the reexamination proceeding. The duty to disclose all information known to be material to patentability in a reexamination proceeding is deemed to be satisfied if all information known to be material to patentability of any claim in the patent after issuance of the reexamination certificate was cited by the Office or submitted to the Office in an information disclosure statement. However, the duties of candor, good faith, and disclosure have not been complied with if affirmative egregious misconduct was engaged in, any fraud on the Office was practiced or attempted, or the duty of disclosure was violated through bad faith or intentional misconduct by, or on behalf of, the patent owner in the reexamination proceeding. Any information disclosure statement must be filed with the items listed in § 1.98(a) as applied to individuals associated with the patent owner in a reexamination proceeding and should be filed within two months of the date of the order for reexamination or as soon thereafter as possible.

(b) Information is but-for material to patentability if, for any matter proper for consideration in reexamination, the Office would not find a claim patentable if the Office were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction consistent with the specification.

98 thoughts on “USPTO Proposed to Revise Rule 56

  1. Soon to be revived: the fraud squad. Hindsight is twenty twenty vision. We as patent attorneys have a duty to do our best, be honest and forthright. But the net is much broader. Back in the day, your client was doomed if you filed for reissue. Now what? We strive to issue patents that will withstand scrutiny and are valid, but all I see is lawsuits. First, kill all the lawyers. Without rational thinking registered patent lawyers, who you going to call?

    1. “Back in the day, your client was doomed if you filed for reissue.”

      How does supplemental reexam affect this general concern? Also, I believe there’s caselaw saying that IC can essentially be “cured” so long as the problem doesn’t still exist at the time the patent is before the court (e.g. fixed via disclosure and/or amendment via prosecution, reissue, or presumably even regular reexam or IPR?). The only exception to that is for affirmative conduct – not lack of disclosure. And with “but-for,” tweaking a claim could make a big difference.

            1. “Congress only provided patentees with the right to ask.”

              But see 35 USC 257, especially subsection (c)(1):

              “IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282.”

              Per subsection (a), once the patentee has made such a request for supplemental examination, the Director is requied to conduct the supplemental examination and conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability, and per subsection (b), if the certificate issued under subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent.

              Thus, it seems that, as long the “material fraud” provision in subsection (e) doesn’t apply, nor the exceptions in subsection (c)(2), Congress has already provided in plain words for more than just the right to ask, but a real fix in many of these cases.

  2. I said it below and say it again now b/c it got no responses: just cancel rule 56, leave rules 97 and 98 in place so applicants can file IDSes, and let applicants and their attorneys worry about what they need to submit with an eye to downstream litigation. Get the PTO out of the business of policing whether or not IDS disclosures are sufficient or not.

    1. I actually like Les’s paraphrase down below: give the Office NPL and items that they more than likely won’t capture as readily and remove any requirement for prior art related to patents and applications (foreign and domestic).

    2. Have you looked at the new IDS forms? For published applications it wants column and line? They are published with bracketed paragraphs. Another “guaranteed to fail” form. Litigators are looking for that “gotcha.” Patent law is doomed.

  3. “Also, I think the fact that the new rule removes the exception for duplicative references is a mistake. ”

    But quite arguably, the “but-for” standard *inherently* does not require duplicative/cumulative references. (After all, one could hardly assert that a patent wouldn’t have been granted “but for” a cite to a reference essentially redundant with something already in front of the examiner.)

    1. Actually the opposite Ken, given that the standard of “but for” is applied to any reference – there is no “any reference not already accounted for in a better reference” caveat, is there?

      1. But anon – how could any reference possibly be “but for” if the same info was already before the examiner? In other words, how could it ever be argued that “the patent wouldn’t have issued but for not disclosing X” when in fact disclosing X couldn’t have possibly changed the examiner’s decision (because he already knew the content of X)?

          1. Ah, so you’re saying one would still need to assess whether such a “wrinkle” rises to the but-for level…I see, but I suppose if the “wrinkle” were that significant then the reference likely wouldn’t have struck anyone as duplicative/cumulative in the first place (even under the previous standard).

            1. As I mentioned, no two references are alike. It is (painfully) easy to mistake a reference as duplicative (looking at major features for example) and missing a wrinkle. Far more simple / and far more efficient to simply bulk list (in some neutral manner) and be done with it.

              1. “Bulk list” is what got us in this situation today. Some patents have hundreds of listings. No patent attorney is going to read them all. Honesty and professionalism are doomed.

                1. “Bulk list” is what got us in this situation today.

                  How do you figure that?

                  It was only if that bulk list was organized in some non-neutral manner that the accusation of “hiding the needle in the haystack” could stick.

                  Organize the bulk list in a neutral manner and that accusation goes away. What else did you have Richard?

  4. Since the duty of candor is broader than the duty to “disclose”, should practitioners and applicants submit paragraph and line citations if their own search results (from a 3rd party service) included such citations? Seems like the answer might be “yes”. Yet, people don’t appear to be doing this.

    Does anyone on this blog recall the case where the applicant took photographs of the inside of a prior art car, and then only submitted an IDS that identified the car, but did not include the photographs? I believe that patent was found to be unenforceable as a result…

  5. What information should be considered “material” to patentability after KSR’s standard for obviousness?… Echoing the issues raised in comment 5.0.

    1. Indeed, even before KSR a review of just a few 103 rejections from just a few prosecution histories would make it clear that examiners would consider Neil Diamond relevant to claims regarding a diamond tipped drill.

      Reference A shows a drill bit. Reference B is a photograph of Neil Diamond tipping a door man. Accordingly, it would have been obvious to one of ordinary skill in the art to modify the drill bit of reference A with a diamond tip in order to make doorman happy (see the smile on the doorman of reference B).

        1. Did you ever read about a frog who dreamed of bein’ a king
          And then became one
          Well except for the names and a few other changes, If ya talk about him….

      1. “examiners would consider Neil Diamond relevant to claims regarding a diamond tipped drill.”

        Used in combination with Lou Diamond Phillips and the fact that any 5 year old phosita knows you can drill a pretty danged good hole in Momma’s cabinet door using a Phillips head screwdriver.

        (Editorial aside, I think there was once a drinking game about this called Six Degrees of Neil Diamond)

  6. Noob question. Are you required to disclose case law? The rule doesn’t seem to limit what kinds of “information” needs to be disclosed, or for what kinds of rejections e.g., only for 102 and 103 and not 101. My guess is that case law would need to be cited if it would render a claim unpatentable. Thoughts?

    1. The duty of candor is broader than the duty to disclose “prior art”. So, broadly speaking, if you are aware of a case that is on-point and cannot be distinguished away, then the duty of candor may require some form of disclosure or claim amendment.

      1. I’ve never seen a submission of law. I’d have to read the rule closely but unless it’s a case involving (e.g.) a parent or child’s invalidity, I’m thinking it’s not within the rule. It may, however, be adverse legal authority which you have an obligation to disclose but under the ethical rules, not 1.56.

  7. After puzzling over the following sentence, I am wondering if you all think it is readily comprehensible, or, should be used as a flaming teaching example of bad writing in college English classes?

    “(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines,..”
    ————-
    Also, as a reminder, “affirmative misrepresentations” most typically equates to submitting false declarations to obtain allowances, so careful declaration preparation, not just taking an inventors word for everything in the art, is still very important. That particularly includes understanding what 102(g) and the case law requires for valid Rule 131 “swearing behind” declarations in pre-AIA applications.

    1. I find it confusing because it seems to say we only need to send the closest information, which implies we don’t need to send in the second closest information.

      Also, I am at a loss as to what they think they have changed?

      And, if they want me to read everything cited in the ISR and by the EPO and then risk my license by deciding not to send something in….

      1. It would be helpful to compare the proposed language against the existing rule. The portion you are puzzling over is very similar to the present language, which states:

        “The Office encourages applicants to carefully examine:
        (1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
        (2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
        (b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and …”

        The existing PTO rule asks that one carefully examine the closest information and already excludes cumulative information from its duty of disclosure regulation. However, most practitioners are ultra-careful due to the serious consequences of non-compliance and the wish to avoid potential issues being raised during litigation over any given n0ncitation of a reference, even if cumulative; hence, the prevailing rule is really: “If in doubt, cite!”.

          1. The new stuff is a proposal to adopt a “but-for” materiality standard to be consistent with the Therasense decision. “Information is but-for material to patentability if the Office would not allow a claim if the Office were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction consistent with the specification.”

            The existing rule used since 1992 is a “prima facie case of unpatentability” materiality standard, which supposedly encompasses more prior art documents:

            “Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
            (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
            (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.
            A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.”

            That existing rule replaced an even earlier and rather vague “reasonable examiner” materiality standard from 1977, in which information was material “where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application ot issue as a patent.”

            One other note: the USPTO did try once before back in 1989 to adopt some kind of “but-for” materiality test, requiring the applicant to disclose only information that the applicant “knows or should have known would render unpatentable any pending claim”, but that proposal was dropped in 1991.

            1. The (1) aspect pretty much includes anything given how KSR may be taken.

              However, as long as the Office tries to tie this back to what an examiner would “believe,” the test becomes unworkable and it is simply easier to put items on an IDS to CYA.

              I will also note that the caveat I mention below is of critical importance, lest complying with any of these versions become an actual admission against interests.

            2. Thanks Mark.

              I now appreciate the theoretical difference. After millions are spent in litigation, in some cases on the margin, a few fewer attorneys might be found guilty of inequitable conduct.

              However, from a day to day do I really have to cite the the USPTO, what was just cited by the EPO in a corresponding case, nothing has changed.

              The rule should be more like: Look, were the Patent Office. We know how to search patents. Don’t cite patents to us and don’t tell us what our counterparts elsewhere are citing. We know how to keep tabs on them.
              You need to tell us of any other information you are or become aware of that we might reasonably consider relevant to your application and which we are not likely to come across on our own.

              1. I often find that the PTO cites irrelevant publications and misses much more relevant publications that were cited elsewhere…even when those more relevant publications were listed in a (not-so-long) IDS. So although I disagree with the assertion that the PTO knows how search, I’m not sure IDSing patent publications cited elsewhere would remedy that, so I like Les’ proposal.

        1. I always believed that if you were citing more than twenty references, you were obfuscating. Back in the day, we would cite and give a one or two sentence explanation of what was believed relevant. Citing a hundred references does no one any benefit.

  8. Thanks, all. This is very helpful, and I’ve got to pull something together because I share some of these thoughts and concerns.

    FWIW, in doing my talks with firms and just interacting with you patent geeks, Therasense didn’t reduce the amount of disclosure that most folks make (if they were “dumping” stuff out of an abundance of caution, they continued to do so). I don’t think this will, either. But having one standard would eliminate some administrative costs at the margins…

    But I want to read and think more about what you wrote!

  9. This post is important and warrants moving to the main board to promote greater awareness.

  10. I’m puzzled. The courts impose a duty of candor. Why does the PTO need to muck around with this too, and create a separate obligation that isn’t necessarily of the same scope as that imposed by the courts? Just cancel Rule 56, but maintain Rules 97 and 98. Applicants will still disclose publications because they’re concerned about the implications of not doing so in downstream litigation.

  11. OK, like many others, I am struck with the circular/conflicting requirements. First, I think it is commonly understood that under at least Rule 11.18, we are required to reasonably believe our claims are patentable when we file, amend, and argue for them. Then, under at least Rule 11.303, we are required to “inform the tribunal of all material facts known to the practitioner that will enable the tribunal to make an informed decision, whether or not the facts are adverse.” Now, this proposed “but-for material” test seems to ignore these other existing requirements. It seems to me that if you are citing a document because it meets the but-for material test, then you cannot really argue that you satisfied your Rule 11.18 obligations in regards to the claims. But then if you do not cite something because it doesn’t meet the but-for material test, you might be in jeopardy of not satisfying your Rule 11.303 obligations. I have to be missing something, right?

  12. David,

    The constant ethical conundrum facing US applications is whether to risk bankruptcy by not sighting a possibly “but-for” prior art reference know to the applicant and “burying the Examiner,” as it has been called. I will illustrate with a realistic hypothetical which is a bit simpler than the back and forth at 1 below. First, from the PTO’s seven step search strategy:

    “[Step] 4. Retrieve U.S. patent documents with the CPC classification you selected in the PatFT (Patents Full-Text and Image) database (http://patft.uspto.gov). Review and narrow down the most relevant patent publications by initially focusing on the front page information of abstract and representative drawings.

    [Step] 5. Using this selected set of most relevant patent publications, review each one in-depth for similarity to your own invention, paying close attention to the additional drawings pages, the specification and especially the claims. References cited by the applicant and/or patent examiner may lead you to additional relevant patents.”

    Suppose, before contacting a patent agent, an inventor takes this advice. What you need to know is that the CPC scheme is easier to follow than the now not used U.S. Patent Classes, but a lot less granular. Thus, instead of 20 or 30 patents per subclass, one can find 200 – 300. So, the inventor finds a promising CPC class and looks at the title page of 300 easily eliminating 150. In-depth review is tedious online, so they down load 150 for further review. After that, they find 30 that are more relevant than others, but none anticipate the invention and they happily call a patent agent.

    When it comes time to file an IDS, what to do? Cite only the 30. This runs the risk that the inventor was wrong about any one of the 120 left out. Cite the 30 in an A-list and the remaining 120 in a B-list. Again, too risky, because one can be accused of misleading the Examiner. Cite all 150 in patent number order without comment. The risk here is that some (not all) Examiners might be irritated. Is there a risk of burying the Examiner? Not on these facts. From what I have seen, 500 is a safe upper limit.

    I vaguely recall a case where a patent arose in litigation and it was submitted in a IDS with 100 more largely irrelevant patents, but that is an outlier among the roughly 300,000 patent applications submitted every year for which some answer would be useful. One answer is to hire a third party searcher to do the screening, but one does not learn as much about the state of the art.

    1. List all of them and do so in a standard format (alpha, chrono, or some other NON-content manner). In that way, there can be no charge of “burying.”

      This ties into the “caveat” I mention below at post 2.

    2. And consider not doing the search in the first place. The patent office is the search expert. If they can’t find the relevant prior art, the process is pointless.

      1. Will disagree with you there Les.

        While I fully recognize that there is zero requirement to search, it is best practice to do as rigorous a search as the client is willing to pay in order to write a better application.

    3. You could also cite the subclass and state that you thought that it seemed most relevant and that from what you could see those were the 30 most relevant ones there.

      This isn’t rocket science.

      1. 6,

        It is rocket science or, at least, technology is involved. I think you work in a different environment. As I understand it, you have very fast pipes so pages appear instantaneously. You don’t download anything so there is nothing to discover on your hard drive. (Correct me if I am wrong. Note: I am not saying winnowing 2-3k is easy.) My hypothetical suggests that someone on the outside should only download essential patents, no matter how tedious it is to carefully review on line.

        Although, in litigation, defendants try to show Examiners are too trusting and easily mislead, stating the subclass is not too risky because Examiner’s probably know the subclasses better than an applicant.

        “from what you could see those were the 30 most relevant ones there” sounds reasonable to you because most (maybe all) of the applicants don’t appear to be crooks. I have some more thoughts if you care to comment on this one.

        1. “You don’t download anything so there is nothing to discover on your hard drive.”

          Actually I think we do now. Even if we didn’t back in the day. It takes forever to load searches that are large so I presume that is what is happening, and my browser history seems to have a log of stuff looked at by East.

          “Note: I am not saying winnowing 2-3k is easy.”

          There is generally no “winnowing” done. If I “winnow” then I’m practically assured to not get the right art.

          ‘My hypothetical suggests that someone on the outside should only download essential patents, no matter how tedious it is to carefully review on line.”

          That’s fine by me.

          “Although, in litigation, defendants try to show Examiners are too trusting and easily mislead, ”

          The mislead part is technically true due usually to evasive language used by attorneys that the examiner’s literally don’t even understand. But many of them err over much on the side of caution as a result in my experience. But even so in my experience it generally works out fine in my art anyway.

          “stating the subclass is not too risky because Examiner’s probably know the subclasses better than an applicant.”

          Examiners better by the end of the examination unless they’re skipping out on their search.

          “sounds reasonable to you because most (maybe all) of the applicants don’t appear to be crooks.”

          Indeed, but even if I was over in biz methods I’d still presume that literally what they said was true. That’s just their perusal and their take on the subclass’s art. I have my own take on the subclass if I see fit to look at it, I don’t mind them having their take, and I don’t rely on them to plan my search for me.

          “I have some more thoughts if you care to comment on this one.”

          I don’t know what else you’d like me to say.

          1. 6,

            You seem to be pretty reasonable, so what is your reaction to an IDS with 150 patents, all at least tangentially related to the claimed invention? I guess this could range from ignoring it completely (relying on your own search only) to looking through them with as much care as you have time for.

            1. “You seem to be pretty reasonable, so what is your reaction to an IDS with 150 patents, all at least tangentially related to the claimed invention?”

              I’m not a huge fan of that. If they’re only tangentially related (and you know that they are only tangentially related) I don’t recommend submission. It’s a waste of everyone’s time, which most likely everyone involved has a duty to prevent (certainly the examiners and office personnel do, though I’d say officers of the court likely do as well).

              “I guess this could range from ignoring it completely (relying on your own search only) to looking through them with as much care as you have time for.”

              I have to glance through them. Which is a waste of time generally. Just a a for instance I had someone submit 70 some NPL references/foreign references in addition to a bunch of patent refs. Only two of the NPL were generally on point for the little sub-thing they were doing and the other 68 were just about the generic type of device he was making. All the patents were just related to the general type of device. Those two references had to be found and we did end up using one in a 103.

              But I suppose for some cases you really might need to have submitted all the art. In yet another case recently done I had like 100 or so patent npl foreign submitted and nearly all were by the assignee’s corp. about similar devices. None of the references actually talked about the stuff that they were doing in their specific device (or rather what was popping out of that specific device). So literally all of the references were pretty much worthless and could have been summed up by saying “yeah this kind of device with parts x y z is known and is old in the art but we think this stuff abc popping out is new and we don’t see it anywhere in the prior art so we put it in the claim for the device xyz with abc popping out”.

  13. Following up somewhat on Ned’s comment about BRI uncertainty at 3 below, but with an entirely original contribution, from the FR PDF page 3, middle of the right hand column, “Similarly, the Office expects that adopting the but-for materiality standard would reduce the incentive to submit marginally relevant information in information disclosure statements (IDSs).”

    This expectation is impossible to fulfill. Most of the listings in an IDS are patents or publications submitted soon after the initial application. Applicants usually submit claims that they think are patentable in view of the know prior art. As far as they know, there are no, repeat, no “but-for” references. But, but-for materiality is determined after the application is submitted and not by the applicant. Seeing an Examiner’s BRI and having to file an IDS with previously know references is not good form.

    It’s worse after KSR, since references don’t have to be analogous. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one,” at 127 S. Ct. 1727, 1741.

    Although everyone would like to, it’s too risky trying to save work for PTO Examiners with no discernible reward for the applicant?

    1. Agreed, BRI is the wildcard. There is no good definition of it. We know how to construe claims in court. We have Morris on what BRI means — and that cases describes an iterative process between the examiner and the applicant. So what the BRI of a claim is undeterminable prior to an actual office action, and perhaps, even after that until the iterative process results in a “construction.”

      1. Ned: “and that cases describes an iterative process ”

        Do the cases explain how there can be an iterative process when a second office action is made final?

        This is relevant.

        No it isnt because b, d and e.

        Yes it is because c, d’ and f! No more talking….I’m noooot liiiiistenning.

        Is not an iterative process.

    2. would reduce the incentive to submit marginally relevant information in information disclosure statements

      As discussed below – the effect will be the exact opposite.

  14. What do you all think of the “associated with” language? The standard in litigation is that the person has to be “substantively involved” in prosecution, I think (I’ve had a beer and the Cubs are on).

  15. We need a definition of “broadest reasonable interpretation.” Otherwise the standard is completely indefinite.

    My view has always been that broadest reasonable interpretation must be viewed only as an examination expedient – an initial claim construction used before any response by the applicant. It is typically takes the meaning of the terms of a claim the way one of ordinary skill would understand them to mean without any limitation to specific uses of the terms in the specification or definitions in the spec.

    Thereafter, the meaning of the term has to be made more consistent with the specification and comply with any definitions or else the construction is unreasonable.

    1. Your past attempts to disregard the specification for a “first pass” is quite analogous to the CRP keyword searches we already get.

      This appears to be an even odder than normal Windmill Chase of yours, Ned.

      One simply does not need – nor is it helpful – to inject that go-around.

      1. anon, BRI as described by In re Morris is an iterative process of back and forth between the examiner and the attorney.

        1. You really shouldn’t refer to the Morris case, Ned.

          I don’t think that you have ever gotten over that loss, nor truly understood why you lost.

  16. Will the (rather huge) caveat of 37 CFR 1.97(h) still be present?

    (h) The filing of an information disclosure statement shall NOT be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).

    1. If that caveat remains, and TJM’s comments are taken into acount, you are likely to see more massive dumps of any and all possible related art provided to the Office (just remember to provide that list in a neutral manner – say like an alphabetical or pure date driven manner in order to avoid accusations of “hiding”)

      1. Thinking about this further, one wonders if the difference in opinion between what a patent attorney and what an examiner would consider “Broadest Reasonable Construction” given the plethora of what many attorneys feel are examiners employing a “Broadest Unreasonable Construction” will drive many contested results.

  17. I find the standard to be somewhat circular. “Information is but-for material to patentability if the Office would not allow a claim if the Office were aware of the information . . .” That sounds a lot like saying the reference is “but-for material” if the PTO would deem it to be material. The only way for a practitioner to determine (prospectively) whether a reference should be cited is to actually cite the reference to the PTO. It seems like this will not simplify anything, but will simply allow for more argument during litigation about whether the PTO would or wouldn’t allow a claim in view of a reference.

    Also, I think the fact that the new rule removes the exception for duplicative references is a mistake. I think that a practitioner could reasonably determine that a number of references are duplicative of one another and not cite them, but now the rule suggests that they should be cited.

    1. TJM, in the real world practitioners don’t read references to determine they’re duplicative. Clients won’t pay for that. They simply cite everything given to them and let the examiner sort it out. I don’t think that rule change will have any real impact on current practice.

      1. Well, I disagree with that, at least partly because I am a practitioner and I like to think I operate in “the real world.”

        I rely on the non-need to cite duplicative references on occasion. Consider this scenario: you receive a notice of allowance in the U.S. Subsequently, you receive an Office action from a foreign patent office regarding a corresponding application. The foreign examiner cites several references in his rejections. Many of the references are the same as those considered by the US examiner, but some are not. You reasonably determine that the newly cited art is duplicative of the art that has already been considered by the examiner. Do you always cite the reference in an IDS and pay the fee, or do you decide that it does not need to be cited and save your client the money?

        This has typically come up for me when the examiners are making a five-way obviousness/inventive step rejection, and the fifth reference is cited for some minor aspect cited in a dependent claim (e.g., the fifth reference teaches a screw).

        These fees can really add up in some cases, depending on the number of foreign counterparts. There have been times when I have received 3 or 4 Office actions in corresponding cases before paying the issue fee (i.e., while waiting for the client’s instructions). You can’t always wait until the date of the issue fee payment to cite all of the references, because the three month time frame may expire before that.

        1. Always cite and pay.

          It’s not my job to examine the references and decide that they are cumulative (when in fact they may – or may not – be cumulative).

          I do not recommend your practice.

          1. “It’s not my job to examine the references and decide that they are cumulative. . .”

            Assuming you are a practitioner, it is very much your job to examine the references! Determining if a reference is cumulative is really not that hard or time-consuming, particularly in cases like I mention above where references are cited only for very minor aspects: you already need to examine the references, and you are likely to compare how the rejections are the same/different from the U.S. case. I have a hard time believing, based on current law, that someone would get hit for inequitable conduct for that judgment call, especially if there is a paper trail (e.g., in a docketing system).

            Just out of curiosity, do you always cite foreign office actions, even if it raises the exact same arguments based on the exact same prior art that was argued in a related U.S. Office action?

            1. NOT to examine the references as would an examiner.

              Yes, examine the references as the patentee’s representative.

              I do hope that you are aware of the difference.

              1. I’m not moving the goal posts, it’s just a modified question. I’m talking about citing the Office action itself from the patent office, not the references. If you receive an Office action (say, from SIPO) with arguments based on the same references and applying them in the same way as you have already seen in the US, would you cite the Office action itself?

                1. Regardless of whether it is or it isn’t, for some reason you are afraid to answer the question. Honestly, I’m just curious how the “always cite and pay” rationale squares with this scenario, which is not uncommon.

                2. There is no fear in answering a question concerning a moved goalpost.

                  I do not answer because it is not germane to the point at hand.

                  Maybe you should focus FIRST on the point at hand instead of deviating from that point, then launching into a bogus “you are afraid” double-down.

                  CLEARLY my “always cite” addresses the particular point that YOU are avoiding, and not some other argument off-point that was not the focal point of the discussion.

                  Your curiosity is immaterial. Stay focused son.

                3. Fair enough. Then, I understand from your comments that your “always cite and pay” philosophy would require you to cite at least the Office action in the scenario above. Presumably, this also includes the references, even though they were previously considered in the US. That seems like a waste of client’s money to me, but I suppose as long as you are consistent it works for you.

                4. Again, you are moving the goalposts and trying to extend my direct answer to a situation that THAT answer was not directed to.

                  Saying “fair enough” is not enough to cover what you are trying to do.

                5. Don’t go at it with anon. He accuses you of moving the goal posts, then moves them himself. You know, doing that which anon accuses others of doing.

                  I agree with the TJM approach. I’ve worked with large patent families where a related foreign or US application has an Office Action issued about every week. At some point you need to get patents issued. It is very much worth it to the client to have their representative spend 20 minutes determining why the reference was cited in the counterpart application and whether it is relevant and/or cumulative of references already cited.

                6. Utter nonsense of “He accuses you of moving the goal posts, then moves them himself. You know, doing that which anon accuses others of doing.

            2. TJM: I cite the foreign office actions. The rule says the PTO wants references cited in foreign office actions, which a normal person would take to mean they don’t want the office action itself, but I see many others citing office actions. There must be a reported case where someone got stung.

              1. I agree (and do acknowledge the good point) of submitting the Office Actions. References of course speak for themselves, but the Office Action is often an application of the references that can include “synergistic” combinations.

              2. The case is the Therasense case. What was not cited was arguments made to the EPO in a related case. The reference was before the Examiner, but the court found a duty to cite arguments interpreting the reference

        2. TJM: I prefer your approach in the occasional case were OUS office actions come in after allowance, or after you pay the issue fee. I make sure that I document my review contemporaneously.

    2. I think the safety net can be found in the following line of 1.56(a) that indicates the one has a “duty to disclose to the Office all information ‘known to that individual to be material’ to patentability.” So if you don’t know that certain information is material, then it doesn’t matter if the examiner would have found it to be material.

      I reiterate the points others made above, if you think a reference is material, then you must believe that the claim is unpatentable. Accordingly, if you think claim is unpatentable then you have a duty not to pursue that claim.

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