Ethical Duties to Comply with the New Rules

Harry Moatz is the Director of the PTO’s office of Enrollment and Discipline. At the most recent IPO meeting in New York, Mr. Moatz reviewed several principles regarding compliance with the new PTO rules:

  • Failure to comply with the new rules will subject attorneys and agents to OED discipline. See 35 USC 32.
  • Attorneys and agents have a duty of inquiry to ensure that all assertions made to the office must be “legally warranted” and not made for an “improper purpose.”  37 CFR 10.18(b).
  • Practitioners must read each and every paper submitted to the office in its entirety.
  • Of course, the duty to disclose material information continues until prosecution concludes. This duty applies to anyone involved in prosecution – including the inventors.

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69 thoughts on “Ethical Duties to Comply with the New Rules

  1. I would comment further but the page is telling me something is up with my post so it’s spam.

    Answers though are:

    Yes
    and
    nobody is going to come to your firm. I promise.

  2. “Well here’s what will happen in reality: You will look at the figures, if it’s nowhere near a ref then you will hit page down until you get to the end while looking at the screen ‘reading’ it.”

    If that’s sufficient under Mr. Moatz’s definition of “reading” then I have no problem with requiring such reading.

  3. Dear Examiner #6K

    You write: –The problem here is that you’re advocating submitting a patent under false pretenses, you say that your client believes it to be an invention, when in fact he does not believe it to be an invention because he is (at least pretending to be) completely ignorant of the subject, all he believes is he made something.–

    If the patent applicant has only a very limited knowledge of the prior art but believes his invention is patentable over that prior art and he discloses that prior art, how is he “submitting a patent under false pretenses”?

  4. If that’s what you believe that’s fine, but in point of fact considering means in fact considering. If I see a drawing that that warrents reading the patent then I will read till I find what is required or see it’s not there. Others may rely on pictures alone but not in my art. You guys are having a problem with what will happen in “reality”. Well here’s what will happen in reality: You will look at the figures, if it’s nowhere near a ref then you will hit page down until you get to the end while looking at the screen “reading” it. You know it and I know it. That said, it’s important for you to read the document, get a feel for it at least. You don’t have to be an expert on it. If you see something fishy, jot it down. If you don’t, then don’t. Have 100 ref’s? Have an assistant rule out the rediculously unrelated ones.

    The problem here is that you’re advocating submitting a patent under false pretenses, you say that your client believes it to be an invention, when in fact he does not believe it to be an invention because he is (at least pretending to be) completely ignorant of the subject, all he believes is he made something. Further, you have no reason to trust him at all because you’re ignorant of all other art he’s giving you and have no reason to believe yourself that it’s an invention rather than just something he made. I know the legal problems arrising from doing it any other way, and guess what? Welcome to being a responsible adult. Maybe it’s time to go from being a zealous defender of your app, to a realistic human being for awhile. You get paid to do otherwise? Welcome to ethical responsibility. Be glad you’ve gotten off for this long since the way way back times where your position had a small amount of merit.

    Thanks

  5. “As far as I know, the difference between reading and considering is only in your mind.”

    From what I can tell from the office actions I’ve received, “considering” means looking at the drawings because, if the examiners had read the references, they would not have made most of the rejections they did.

  6. As far as I know, the difference between reading and considering is only in your mind. Now, the difference between understanding and considering might be something a bit different.

    How fast can you push the page down key? I can push it fairly fast, but then again I grew up with vid games.

  7. “Dear filers of dubious patent submissions with long IDS’s”

    “dubious” … really? … Already brainwashed by the USPTO management, eh? We submit long IDS’s only because of overzealous litigators who can (and will) allege inequitable conduct for the failure to cite any reference — even if both you examiners and we attorneys subjectively believe the reference isn’t material.

    Since IDS’s are cheap, we submit everything to reduce future litigation expenses defending against inequitable conduct allegations and to reduce the risk that those allegations will succeed.

    Since examiners don’t read the references (they only “consider” them), why not just require the attorneys to “consider” them?

  8. Dear filers of dubious patent submissions with long IDS’s,

    I’m examiner number 6,000 and I support this man’s statements and consider it just as much a duty of the applicant, as well as anyone claiming to represent him, to read the documents submitted as it is for me to consider them. Now, if you’re claiming a circle and you see a square in the reference then I would suggest you put on your speed reading if you are that busy. And we all know speed reading is a required class for anyone wanting to be in today’s patent system. Please comply.

    Thank you,
    Examiner 6k

    P.S. Good luck :)

  9. Moatz says “Practitioners must read each and every paper submitted to the office in its entirety. ”

    I noticed that Dudas “signs” Certificates of Corrections.
    Does he read them?

    (I know, he is not a practitioner, so he is not bound by the rules of ethics)

  10. Mr. Moatz’s position is tantamount to a Bill of Attainder. By complying with one rule we violate another. This will fail as being constitutional infirm.

  11. You know I have attempted three cogent descriptions showing why Moatz might be overstating his position. Then it dawned on me that this is all hearsay. I simply do not believe that a man who has worked as hard as Mr. Moatz has to get where he is would espouse this rule. It runs against the MPEP, the Code of Federal Regulations and established case law. In short were, this the position of the patent and trademark Office, we would find it on the USPTO website. I doubt it will ever be posted there.

  12. “In a speech at AIPLA yesterday Moatz said that if he can find that every page of every reference cited was not read he could pull the attorney’s license.”

    If the first page of two of a reference present a case for submitting the reference, what would be the rationale for requiring a practitioner to read the entire reference.

    Further, if the reference is in a language the client understands, and the client believes the reference is relevant, why do I want or need a translation?

  13. When trying to understand the new rules or predict additional rules, all you need to know is the USPTO’s primary motivation: prevent (or at least deter) additional filing of applications.

    The proposed IDS rules force applicants to choose between (1) preparing an ESD-like document, if a certain threshold number of references is exceed, and risking inequitable conduct for misrepresenting the references; (2) selecting less than the threshold for submission, thus risking inequitable conduct; or (3) abandoning an application. Make no mistake. The USPTO is rooting for option 3.

    Mr. Moatz’s statement about reading each reference forces applicants to make a similar choice between (1) reading each word of every reference, drastically increasing the costs of prosecution; (2) reading only some of the references, thus risking inequitable conduct in Mr. Moatz’s view (built-in intent: trying to save client money); or (3) abandoning an application. Once again, the USPTO is rooting for option 3.

  14. Simply astounding. The Patent Office is now not even following it own rules, and simply creating hoops to jump through on the fly. So I am supposed to read every ref cited by a foreign patent offcie, which no matter what it says I will be sending in anyway? Kinda strange, particularly if you have an allowance and the references only relate to limitations in different divisional family (in the U.S.).

    I, of course, read every reference thoroughly.

  15. In a speech at AIPLA yesterday Moatz said that if he can find that every page of every reference cited was not read he could pull the attorney’s license.

    He also said there is a duty to get a translation and read it in its entirety for every foreign references cited.

    He does not care if the client will not pay for the time the attorney needs to spend to comply.

  16. Sounds like some saber-rattling by OED in support of the PTO’s overreaching and possibly unconstitutional new rules. But practitioners who practice civil disobedience by deliberate noncompliance are taking a huge risk. Why not simply game the PTO like they do already by complying with the letter and weaseling in spirit?

  17. Exactly Anon – and to make things worse, under the new IDS rules we may be forced to NOT supply the Office with all the information an inventor has provided as relevant. Where does the Office think alot of this stuff comes from? Inventor’s files!!!! So, the OED wants us to overrule an inventor as to what is relevant…what does the Fed Cir think of that? Mr. Moatz…answer please…

  18. It seems to me the best argument that Moatz is wrong is 1.56(d). If someone discloses info to an attorney, thereby completely satisfying his/her duty of disclosure, 1.56(d) suggests that that the rules require (and entrust) the attorney to submit it to the PTO, notwithstanding that attorney’s individual opinion (or non-opinion) with respect to “materiality” or whether the attorney himself read and/or understood it.

  19. I see this as abusive behavior intending to coerse acceptance of the new rules package. The USPTO needs to consider the wisdom of making statements which could be construed as an attempt to chill public comment and mute opposition to the rules package. Hopefully, one of the litigants in KSR or Tafas will provide the US District Court with a copy of OED’s presentation for ethical violations.

  20. Harry is just wrong with respect to saying that 10.18 requires practitioners to read everything they sign. That is not at all what 10.18 says, and in fact 10.18 heavily implies that a practitioner does not have to read everything that is signed.

    For example, 10.18(b)(2) says: ” To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances…”

    I would challenge Harry to show us where in 10.18 there is a duty to read. He can’t, and despite what he says his opinions are not the law.

  21. “Wake up. The patent law will never pass.”

    I’m not convinced. Besides, I believe the PTO already has the authority to require pretty much anything to be submitted with IDS.

  22. I guess that should be alleged racketeering since the District Court is yet to make findings of fact on the allegations in the complaint. However, I still think it is permissible for me to state that I believe Microsoft and Best Buy will be found liable.

  23. Yeah good ‘ol Microsoft about to get its a s s kicked hard for Racketeering. Something about Best Buy and Microsoft conspiring to defraud people. The SCOTUS just refused to hear the appeal from the Ninth. Oh my how the winds of change blow. Soon Hillary will be President and we will be back to tax and spend and beating up big business. What are the middle class to do.

  24. Wake up. The patent law will never pass. That is why the pharma lobby had the last minute amendment attached providing for a legislative veto. If you read their complaint that legislative veto supports the gravaman of one of their causes of action. Big pharma set-up the PTO. It stands to reason. I mean big Pharma has been dealing with the FDA for decades. Talk about being savvy with regulatory agency law. The high tech. companies are babes in the woods compared to big pharma when it comes to regulatory agency law. I just love that letter from GSK “hey Dudas gives us a call if you would like to discuss” Reminds me of Billy Jack where he states “I am going to put this foot on that side of your head and there is nothing you can do about it.” This stuff is better than football.

  25. In short order, you are going to need to file a paper distinguishing your claims over the references just to submit an IDS for consideration. Won’t that make ethical issues surrounding reading them moot. You’re going to have to read them.

  26. The system is ripe for abuse. We had a reexamination proceeding that neared the point when the NIRC (notice of intent to issue reexam certificate) issued. One morning, we received an email from some robot called “PatenTrakker(TM)” that included about 60 references.

    By the time we recieved instructions from our client to submit them (after strongly recommending that we do), the NIRC issued and we tried in vain to get the PTO to consider them. Even filed a petition, which was denied, and a reconsideration of the petition, which again was denied.

    Guess who supports “Patent Trakker?” (see, link to prweb.com)

  27. When I did more prosecution than I do now, I used to think about patent prosecution in 1799. I thought about the patent attorney working on numbering drawings by candle light and how very little had changed in over 200 years. I’m embarrassed at the way our government and courts are tinkering with the patent system, without really understanding the havoc they may be causing. I don’t have a crystal ball, nor do they. But the changes I’ve seen in the last few years are very disturbing. I think we have legislators and judges that think they’re smarter than they are and it may result in a huge economic crisis in the U.S. in the not to distant future. Don’t forget to blow out the candle if you’re the last one out.

  28. Mr. Moats very clearly made the same point at the NAPP conference in DC last year. He very clearly considers it a requirement that you read every reference.

  29. I think we may be misunderstanding what Mr. Moatz meant by “paper.” If one were to construe “paper” as a submission signed by the practitioner, then a reference in an IDS is not a paper and need not be read in its entirety by the practitioner. The practitioner merely needs some reasonable basis for submitting the reference and, as some of you have pointed out, that may stem from events other than a complete reading of the reference.

    I am traveling but I suggest that someone call Mr. Moatz and obtain a clarification on this point.

  30. Abe, when I was an Examiner, my SPE was adamant that I could (and should) examine the claims in an application without reading the specification… so that my production would be above the 117% or 118% (or whatever) he needed from me to get his award.

    It would be the only compliment he ever gave me… when I told him that I couldn’t do that because I wanted to do a good (meaning quality) job, to which he replied with almost a scream, “You don’t have a problem with quality!!” (As if attempting to get through my thick skull… though looking back my quality could have been much better.)

    Do you think most examiners even read the whole specification, let alone the entirety of the references? Seems like we may be perpetuating a double standard that lightens the Office’s workload.

  31. I believe that Moatz and company are attemtping to use the ethical rules to promulgate substantive law and while avoiding Congressional oversight and with the eye to interfere with the attorney client relationship. Perhaps before they stick their necks out any further they should watch and see what GSK does to their bosses. I predict that GSK will effectively end the political careers of upper management of the USPTO.

  32. The examiner is not required to read every single reference submitted in an IDS in its entirety. The examiner is required to “consider” each reference in the same manner the examiner would consider the reference if it came up during a search. See MPEP 609 (page 600-141, second column, second full paragraph of the 8/5/06 version, in particular).

    I agree that it’s time to get rid of Rule 56. Examiners can google the inventor’(s) names just as well as practitioners, and with the EPO and JPO and USPTO having websites that allow searchers to determine every corresponding world wide application, and view the search reports and OA’s on-line, what is the point of the rule?

  33. If the PTO took an official survey, it would find that perhaps 95% of practitioners do not read every document listed in an IDS primarily because the client is not willing to pay the representative for the time it would take and because practitioners do not have the luxury to volunteer their time to read documents submitted to him or her by the more knowledgeable client or a foreign PTO, etc. (the other 4.9% would probably not be telling the truth). The PTO position that a practitioner violates his or her ethical obligations by not reading every paper and every document cited in an IDS must be reconciled with reality. It is bad enough that PTO Examiners must go through the farce of pretending that they considered every document that is initialed in an IDS. The PTO’s answer is to perpetuate the farse by holding virtually all practitioners in violation of their ethical obligation and by asking them to certify something that is just not true. Everyone knows this, the PTO knows it, as do practitioners and the courts. Closing our eyes will not make the problem go away. We must have the courage to acknowledge this reality and get the judiciary and the executive branches to work together to no longer hold that practitioners have an obligation to cite to the PTO every “relevant” or “material” document that comes to their attention. Rather, a new standard must be developed which balances a practitioner’s obligation to disclose relevant material to the PTO with the examiner’s and the practitioner’s ability to absorb the relevance of that document. The PTO alone cannot relax the rules to our liking because even if it mandated a relaxed rule on citations of documents, practitioners would still fear rulings by the Courts that they committed fraud on the PTO. As long as the PTO does its thing, and the courts do their thing, and we (practitioners) do our thing, let the games continue.

  34. At a recent Ohio IP seminar, James Toupin, General Counsel for the USPTO made the same kind of statements.

    He stated it is unethical to submit an IDS without reading all the references.

  35. “Harry I. Moatz is the Director of Enrollment and Discipline. He is a graduate of the Columbus School of Law at Catholic University. In the United State Patent and Trademark Office, he has served as a primary examiner in the patent examining corps, an Assistant Solicitor, and a Patent Attorney in the Office of Enrollment and Discipline. He assisted in drafting of the USPTO current Code of Professional Responsibility. He has reviewed and acted upon numerous complaints and information received from a wide variety of sources.”

    Mr. Moatz is a patent office lifer and thus has never experienced our pressures, I would invnite him to come outside for awhile before before he institutes his newest rules.

  36. Who is Harry Moatz and where did he come from? I tried to Google a biography but to no avail. I cannot find out what he did before becoming director of OED. He attended Catholic U., beyond that I can’t say.

    Anyone? Anyone?

  37. Did anyone ask Mr. Moatz if it is permissible for an attorney to file a petition for an RCE/CON which states, “…could not have been submitted during prosecution of the prior application” without it being in response to a request for information from the USPTO?

    hehe…I doubt he would want to answer this question. If he says “no,” then the PTO can kiss their new rules goodbye. If he says “yes,” then he is saying it is ok to file false statements at the USPTO.

  38. Where does this Moatz guy get off saying that Rule 10(b)(2) requires us to read every paper we submit in its entirety? All the rule says is that we’re certifying that to the best of our knowledge, “formed after a reasonable inquiry under the circumstances,” that the paper is legit. Reading every page of an IDS submission is anything but reasonable under most any circumstance.

    Director of OED notwithstanding, this guy has no authority to add that kind of gloss on “reasonable inquiry under the circumstances.” Anyone disagree?

  39. “The 5/25 rule applies to reisuues if you change the claims. In fact, it can apply to any fmaily members still in prosection (you may have to have 5/25 in all current cases). There is also a risk to reissue now, as the 2+1 rule (CON/RCE) also applies.”

    You are correct – my post above was from just getting off the phone with a senior examiner who (in passing) suggested the approach – that is why I said “apparently” because I had not verified it – I should have waited and I apologize for any confusion.

    However, this means that if I go in for a broadening reissue on a patent, that has 80 claims as issued, I am going to have to cut out 55 of the already-allowed claims in order to broaden out even 1 of them (unless I file an ESD)? Doesn’t quite seem right.

  40. Appeal evrything to the CAFC in important cases…we have no choice as if we don’t the rules could change and we will given away something of the clients that we should not have…

  41. The PTO what the PTO has actually said is a lot of things are not NECESSARILY sufficient. I believe they are trying to avoid putting in print definitive situations where they will automatically grant an RCE or Continuation.

    I believe in many of the situations described here, the PTO would likely allow a continuation or RCE.

    However, I believe it’s a wait and see. If the PTO does irrationally enforce these rules, then we will have to wait for someone willing to appeal the CAFC.

  42. So FR – what to do? Burn your number before Moatz by complying with the requirements of the courts and submitting the art you tell you you have to, or burn your number before Moatz by not complying with the rules and attempting to submit art when you shouldn’t? Fun, fun…

  43. The 5/25 rule applies to reisuues if you change the claims. In fact, it can apply to any fmaily members still in prosection (you may have to have 5/25 in all current cases). There is also a risk to reissue now, as the 2+1 rule (CON/RCE) also applies.

    Isn’t Moatz the same guy who tried to bring the bunches of people up on charges in his last job at the office? This truly is the Patent Office that hates Patents.

  44. “‘If its killer art, you would amend your claims, and then the amendment could possibly (?) be the basis for a petition and showing….’

    The PTO says even this is not sufficient. see p. 46773 of the final rule.”

    Anon q, you are perhaps right – FR 46773 say the Office will “likely not grant” such a petition. So Catch-22. (And the FR notice relies on the proposed IDS rules, too. What a mess.)

  45. GSK update. Senior Judge Clude M. Hilton, who just ended his FISA Court tenure, has been assigined to Beecham v. Dudas 1:07-CV1008. Judge Hilton was appointed by Reagan. Minus one for the Director.

  46. “If its killer art, you would amend your claims, and then the amendment could possibly (?) be the basis for a petition and showing….”

    Or let it issue, file a reissue, and file a 100 claims as the 5/25 rule apparently does not apply to reissue applications…

  47. “I guess you just submit the IDS anyway. It won’t get acknowledged by the examiner, but I think this would still satisfy 1.56.”

    Oh, anything you send in will be placed in the file. But that doesn’t mean the examiner looks at it. If examination is closed, it’s closed, and I’m pretty sure that there is even a CAFC case that a reference can still invalidate the patent, even if it’s in the file, if there’s no indication that the examiner considered it during prosecution.

    No, the new rules actually create situations that PREVENT and applicant from complying with Rule 56 (and also 35 USC 101, but that’s my opinion).

  48. I recommend that all patent attys write to the USPTO asking clarification on various parts of the rules… with specific facts/problems and cc the counsel for GSK… to help give them evidence of being vague and unable to comply…

  49. “If its killer art, you would amend your claims, and then the amendment could possibly (?) be the basis for a petition and showing….”

    The PTO says even this is not sufficient. see p. 46773 of the final rule.

  50. “What if it is killer art. Is reissue the only option to correct this?”

    If its killer art, you would amend your claims, and then the amendment could possibly (?) be the basis for a petition and showing….

  51. “This happens all the time and is one (out of dozens) of reasons I despise the new rules. I guess you just submit the IDS anyway. It won’t get acknowledged by the examiner, but I think this would still satisfy 1.56.”

    What if it is killer art. Is reissue the only option to correct this?

  52. “And how can you meet your duty to dislcose material information if you have a Notice of Allowance, come upon new art, but are out of RCE’s and Continuations, when the PTO has already stated this alone will not meet the ESD requirements?”

    According to the final rule package, I think you are supposed to file an IDS complying with the requirements of the proposed IDS rules package along with a petition under 1.183

  53. “And how can you meet your duty to dislcose material information if you have a Notice of Allowance, come upon new art, but are out of RCE’s and Continuations, when the PTO has already stated this alone will not meet the ESD requirements?”

    This happens all the time and is one (out of dozens) of reasons I despise the new rules. I guess you just submit the IDS anyway. It won’t get acknowledged by the examiner, but I think this would still satisfy 1.56.

  54. “is not unreasonably interfering with the 7th Amendment rights of clients to be represented by counsel.”

    Sorry, should read “is now unreasonably interfering with the 7th Amendment rights of clients to be represented by counsel.”

  55. The supposed ethical obligation to read every reference submitted is just another effort to increase the costs of prosecution to help deter filing and thus reduce the backlog. That’s what all these rules are about: deterring or preventing the filing of applications as a strategy to reduce the backlog. Just wait until the IDS rules kick in. Those will be the ones that really deter filing.

  56. Moreover, this is nothing more than a time tax. It is our duty to provide to the Office material that a reasonable examiner may find pertinent to the claimed subject matter. There are many ways to come to that conclusion. One of my favorites is that between two similar patent applications one examiner has cited a reference. It is perfectly reasonable to rely upon the presence of the reference in one case to cite the same in a similar case. Moreover, these is absolutely no reason to read the reference, because an examiner has already provided an inference of that the same MAY be consdiered relevant. Reading the reference in this instance, in my opinion, would be a waste of time and resources of the client. In short reading the reference, it could be argued, would be unethical. I believe that the USPTO has cross-the-lines and is not unreasonably interfering with the 7th Amendment rights of clients to be represented by counsel. You think they would have cooled their heels on Constitutional usurpations in view of the GSK v. Dudas case. Perhaps there need to be a GSK v. Moatz case.

  57. Mr. Moatz cannot require us to read every paper submitted, because 1.56 applies to people not within the practitioner’s control. Moreover, many of the papers provided are beyong the intellectual grasp of the practitioner so it amounts to nothing more than a useless exercise. I cannot imagine the representatives of Tesla comprehending some of the information brought to them by Tesla. The fact is that we are the translators for people of ordinary skill in the art. We are NOT people of ordinary skill in the art. Therefore, forcing practitioners to read papers before they are submitted to the USPTO to no avail is an unreasonable interference with the attorney client relationship. It should be sufficient that the client read the materal. Moreover, it is easily arguned that complying with this rule can impede zealous representation of the client, because the expertise of the practitioner shoul be directed to the procedural and legal aspect of the law. Mr. Moatz requirement that the practitioner read all papers submitted, including technological references, is tantamount to precluding the use of experts by impeding reasonable reliance upon the expert. This is just plain ridiculous.

  58. And how can you meet your duty to dislcose material information if you have a Notice of Allowance, come upon new art, but are out of RCE’s and Continuations, when the PTO has already stated this alone will not meet the ESD requirements?

  59. That can’t be right. If the patent applicant believes the new rules are invalid, the patent applicant can challenge the rules by noncompliance. The attorney/agent has a duty to zealously advocate his client’s nonfrivolous claim.

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