Prepare for the new IDS rules.

For the past two years, the PTO has been discussing its trio of rules — Continuation Rules; Claim Rules; and Disclosure Rules. The first two sets are in final form and are set to be implemented November 1, 2007. The third set — disclosure rules — are in “secret final form” and are waiting for White House (OMB) approval before being implemented.

Under patent office rules, everyone involved with the prosecution of a patent application has a duty to disclose any information to the PTO that may be material to patentability. This information is typically prior art known to the inventor or attorney and or evidence of prior use or sale. Failure to comply with the duty of disclosure can result in the patent being held unenforceable (after a showing of intent & materiality).

In some cases, extensive pre-filing prior art searches reveal dozens (if not hundreds) of prior art references that are all then submitted to the PTO for review. Understandably, patent examiners do not have time to review all those references in any detail — and my own empirical evidence suggests that examiners do not examine more than twenty references. [LINK]

The PTO’s disclosure proposal would set a breaking point of twenty references that may be submitted to the Office ‘without explanation.’ Applicants who submit more than twenty references (or “very long” documents) will be required to personally review the submissions and provide information regarding their materiality as well as an explanation as to why the particular application is not preempted by the prior art reference.

Although the Final Version of the rules is not yet available (it is being kept secret by the PTO), their one-paragraph statement is as follows:

The U.S. Patent and Trademark Office (Office) amends its regulations on information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. These changes would enable the examiner to focus in on the relevant portions of submitted prior art at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps. This action would make the following changes relating to submissions of IDSs by applicants: Impose a requirement for the personal review of, and to provide information about, certain citations; eliminate the fees for, but permit only timely, IDS submissions; and only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted. The Office would also: permit third parties to submit prior art up until the mailing of a notice of allowance after application publication; no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE); permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties. 

These rules are likely to become effective in early 2008. In the meantime, applicants may be advised to submit their prior art ASAP.

86 thoughts on “Prepare for the new IDS rules.

  1. Dear attornys considering inequitably conducting themselves,

    I notice that there is a lot of hubbub about the IDS’s when considering inequitable conduct. I propose a simple solution. Read the documents you’re planning to cite, if you see something that smacks some part of your art down, jot down why and submit it. If you do not, then do not submit it.

    Simple, effective, safe.

    Thank you,
    Examiner #6k

  2. It seems to me that the IDS proposed rules will be harder to attack for administrative reasons, since they are more clearly directed at procedure. Also the underlying reason appears more acceptable and the solution more proportionate. However, note the double (if not triple) edged sword of risking inequitable conduct if not citing some references, not having the IDS accepted if filing over 25 references and risking severe file wrapper estoppels and potential litigation pitfalls if complying with “explanation” requirements. Balancing these fine lines, I predict, will be near impossible.
    This difficulty might be the best reason under which the proposed rules can be overruled –the proposed rule might be deemed to contradict the “duty to disclose” doctrine as further developed by the courts. Also, surely it would be unfair (if not arbitrary and capricious) to force applicants to harm their own cause by submitting “explanations and non-cumulative descriptions”.
    We need to put our thinking caps on and come up with a more reasonable solution to the clear problem examiners face with oversized IDS submissions.

  3. Could it be argued that any of the specific logic of the decision in the GSK preliminary injunction is likewise applicable to the proposed IDS rules? E.g., whether there is any inconsistency of the proposed new IDS rules with the Patent Act; whether the IDS rules are procedural or substantive; whether the USPTO exceeded its rule-making authority; whether the new rules retroactively upset the quid pro quo bargain of giving trade secrets for reliable patent protection (e.g., by requiring abandonment of some applications that would have otherwise issued, or by saddling the applicant with undue costs); vagueness and failure to satisfy due process requirements such that a reasonably prudent person would not know how to comply with the new IDS rules; etc., etc.

    Does anyone have any ideas along these lines in view of the GSK preliminary injunction decision?

  4. In response to Just Visiting’s post above:

    “Quite frankly, I think the RCE fee more than covers the examiner’s time for looking at a reference or two.” I fully agree.

    “The problem might really be that the PTO doesn’t like the idea of an examiner getting a count for something other than looking at a new patent application.” I think that the issue is that the PTO is afraid that applicants will use this procedure to have another continuation examined — God forbid!

  5. “Almost certainly, you won’t even be able to present such evidence or make any argument implying that the examiner didn’t look at the references.”

    “Looking at” or even “considering” is different from reading each line on each page. I’m sure the offended examiner above read every line of every page of every reference submitted. But everyone knows that doesn’t happen in the vast majority of cases in which more than 20 references are submitted.

    In any event, I was talking about what could be persuasive, not what could be permitted as an argument.

  6. “I don’t see any option under the proposed IDS rules but to abandon the application.”

    I agree. I focused too much on the foreign office action stuff.

    But yeah, the margin of error is extremely small particularly when the “facts and circumstances” may suggest that an unappreciated and unsubmitted material reference has instead by withheld from the PTO because of intent.

    Quite frankly, I think the RCE fee more than covers the examiner’s time for looking at a reference or two. The problem might really be that the PTO doesn’t like the idea of an examiner getting a count for something other than looking at a new patent application.

  7. Isn’t it against the rules of ethics to advocate or instruct an attorney to violate ethical rules? If this is the case, then could it not be said that any attorney working for the USPTO that is found to have promulgated ethics rules and or procedures under the same that violate established case law has violated their own ethical rules? Moreover, could it be that a party who penalizes an attorney for not following rules that violate established case law violates ethical rules, i.e., the Model Rules or the Model Code?
    Remember both Presidents Nixon and Clinton were disbarred for acts done while in public office.

  8. “Isn’t this silliness fairly easily worked around in many/most cases?”
    My point was that, under the existing rules, if your client points you to a reference late in the game, or if there was some paperwork error such that a reference didn’t get disclosed, or if there was a reference that you only now realized the materiality of, you could deal with it by just filing an RCE and paying the fee. You didn’t have to make the “no knowledge” certification. Under the proposed IDS rules, you can’t submit that art in the later time periods unless you make the “no knowledge” certification. Since in the paperwork error hypo, and in the “only later realized the materiality” hypo, you can’t really say you didn’t “know” about the reference. I don’t see any option under the proposed IDS rules but to abandon the application.

  9. I have an idea Take the Fifth Amendment when having to submit an 18 USC 1001 declaration. You see 18 USC 1001 works well for Ex Parte matters. However, a good argument could be made that the USPTO has clearly become adverse to the practitioner.

  10. “It’s the certifications you’d need to make under the new IDS rules that SHOULD be giving everyone heartburn. I.e., certifying under penalty of law that no-one under 1.56 duty had any *knowledge* of the reference for more than three months.”

    Isn’t this silliness fairly easily worked around in many/most cases? Assuming that the reference hadn’t appeared in the current foreign application, isn’t the new information of which you and your client can surely claim you did not previously possess not simply the reference, but the fact that the reference was cited in an office action. Doesn’t McKesson suggests we should be reporting rejections and not just references?

    Surely the rejection itself is brand spanking new information, and reporting the rejection and providing the reference as ought to be enough to address an inequitable conduct issue even if the rules forbid listing the thing on PTO Form 08A/B (or 1449). If the rules prohibit this practice, then the rules are certainly not in accordance with current law.

  11. these …. people, these PTO people. What bug crawled up their you know whats and died? The big blue meanies is what they are.

  12. It’s the certifications you’d need to make under the new IDS rules that SHOULD be giving everyone heartburn. I.e., certifying under penalty of law that no-one under 1.56 duty had any *knowledge* of the reference for more than three months.
    So you’ll risk your personal freedom and reg. number from now on whenever you submit a late IDS (because your files will be scoured later in litigation to find a reference deep in an e-mail related to another application, that lists the patent that you swore under 18 USC 1001 that you didn’t “know” about).

  13. Also, in the interim period, it matters whether the action is final, an allowance or a quayle, all of which close prosecution, so the $180 fee ids will still be possible?

  14. thanks patent leather. I did not see your post before submitting mine above (I was on the phone for a while as I wrote it).

  15. Followingthisclosely: The reason to submit all prior art before Nov. 1 is that in case an office action is issued thereafter and you happen to have some references not yet submitted, this could be a problem. In the old days, you just pay the $180 fee to submit the references after a first action, and if you get a final rejection based on the new art you simply file an RCE. This was never a problem, and it happens all the time. These days, of course you don’t want to burn your precious RCE up. And if you’ve already used your RCE, then that is even more reason to make sure all art is submitted now.

  16. FR 46773-46774 discusses whether it would be possible to file an rce with an IDS to consider late discovered references after prosecution is closed.

    The pto says no because the proposed ids rules will cover these situations, but that prior to ids rules implementation, an ids can be submitted after close of prosecution including allowance as long as it is filed with a petition under 1.183 and follows the **proposed** rules under 1.97 and 1.98).

    Unless there is nothing else regarding ids’s in the FR, I guess prior to closing of prosecution (final, allowance, quayle ect.) there is no big hurry, EXCEPT:

    a quayle or an allowance can happen at any time (well, at first action or after you file a response, when the ball’s not in your court).

    Thanks for the cite.

  17. Followingthisclosely: The reason to submit all prior art before Nov. 1 is that in case an office action is issued thereafter and you happen to have some references not yet submitted, this could be a problem. In the old days, you just pay the $180 fee to submit the references after a first action, and if you get a final rejection based on the new art you simply file an RCE. This was never a problem, and it happens all the time. These days, of course you don’t want to burn your precious RCE up. And if you’ve already used your RCE, then that is even more reason to make sure all art is submitted now.

  18. If you REALLY wanted to make this interesting, let examiner’s ignore submitted references, unless the applicant argues the patentability of the claimed subject matter in view of the cited reference. In this manner, practitioners can comport with their duty of disclosure, the burden is lifted from the examiner having to consider every reference submitted and the litigators have a pre-arranged list of references from which to contend invalidity exists, the references filed by the applicanat and not considered by the examiner. Its a win, win, win situation. But nOOOOOO that would be too simple wouldn’t it?

  19. Examiners look at every reference submitted in IDSs?

    BWahhhh!hhha!

    Whoop! Whoop!

    Sure sure. And a dog examines every kibble and bit before eating.

  20. “The problem is that your conclusion is completely unrelated to the method used for initialing off the list of references.”

    That’s not a problem with my conclusion. Sorry.

  21. followingthisclosely, you’re right. My answer had nothing to do with Nov. 1 that I can think of currently, just that the IDS rules will apparently be sprung on us any day, and the day they are sprung might be the day the landscape changes (like Aug. 21 was significant for the claims and continuation rules). Thanks for the correction/clarification.

  22. realanonymous, what about the Nov. 1 deadline? I understand about retroactivity, but if these rules do not go into effect until Feb. or March, why the hurry now?

  23. “Is there some rational in doing so in light of the new rules?”

    Yes, if you want to be sure that you can submit documents e.g. without comment or analysis, as you should if you are an attorney….

    Of course, we don’t know how “retroactive” the new rules might be… they may still catch you in their net.

  24. Does anyone know if Moatz is a member of a state bar. I note that he removed himself from the ethical rules of the USPTO in 2004.

  25. I am being told that try to submit any IDS prior to Nov 1, 2007, before the new rules fully come into play, but cannot determine why this would be? Is there some rational in doing so in light of the new rules?

  26. Okay, so getting back from the AIPLA meeting, I took another look at MPEP section 2004, which was mentioned several times as a guide to what should be submitted in an IDS. Apparently this section will have to be deleted under the new IDS rules, because among other things, it contains this gem of wisdom, which is why I usually err on the side of caution (perhaps submitting 30 references, rather than the 15 I personally think are of interest):

    “* * * 10. When in doubt, it is desirable and safest to submit information. Even though the attorney, agent, or applicant doesn’t consider it necessarily material, someone else may see it differently and embarrassing questions can be avoided. The court in U.S. Industries v. Norton Co., 210 USPQ 94, 107 (N.D. N.Y. 1980) stated “In short, the question of relevancy in close cases, should be left to the examiner and not the applicant.” See also LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).”

    In my (relatively short) experience, I am often astonished by what an Examiner considers relevant. The new IDS rules, among other things, require a practitioner to substitute their judgment for the Examiner’s, creating yet another fertile field for charges of inequitable conduct and patent invalidity. What happens to the cases above, under the new rules? Is the PTO overruling these cases, thus taking itself into the judiciary branch for a little trip, or are they just trying to find a way to get the current patent bar dis-barred?

  27. “The argument would be that the Examiner MISSED/IGNORED the fact that one of those references PLAINLY TEACHES material facts that, had they been recognized by the Examiner, would have prevented the patent from issuing.”

    The problem is that your conclusion is completely unrelated to the method used for initialing off the list of references.

  28. “I would think that, if 300 references were cited (as the hypo suggests), you could point to the one set of initials per page. The Examiners typically do not initial each reference. They initial the one at the top of the page and then draw an arrow. I would think it is at least somewhat persuasive that, if the examiner was unwilling to take the time to initial a reference, the examiner was unwilling to the the substantial more time of sifting through the hundreds, if not thousands, of pages in those documents to find the pertinent text.”

    As an examiner who just spent three full working days reviewing every single reference listed in an IDS one by one on a case I’m working on, I take offense to the above statement. Initialing the first reference and drawing an arrow is an indication of nothing except the examiner used the arrow to save time initialing the IDS. Despite what some people may think, some examiners do take the time to review the references listed in an IDS. I’d hate to be the guy who allowed something that could have been rejected based on a reference that was supplied by the applicant.

  29. “Almost certainly, you won’t even be able to present such evidence or make any argument implying that the examiner didn’t look at the references.”

    And rightfully so. The argument would not be that the Examiner “didn’t look at the references.” The argument would be that the Examiner MISSED/IGNORED the fact that one of those references PLAINLY TEACHES material facts that, had they been recognized by the Examiner, would have prevented the patent from issuing.

    Or the argument would be that the Examiner CLEARLY MISCHARACTERIZED what the actual reference actual teaches, perhaps because the Examiner lazily bought into the swill that the applicant was flooding his/her desk with.

    Again: read Pharmastem. It’s all laid out for you.

  30. SF – “The Examiners typically do not initial each reference. They initial the one at the top of the page and then draw an arrow. I would think it is at least somewhat persuasive that, if the examiner was unwilling to take the time to initial a reference, the examiner was unwilling to the the substantial more time of sifting through the hundreds, if not thousands, of pages in those documents to find the pertinent text.”

    The next time you are faced with writing or typing your initials 300+ times, let us know if your client pays the bill. The arrow down does not mean that the reference was not considered. It is merely a time saving device for overworked examimers who have already spent an extraordinary amount of time considering the 300+ references. Get real!

  31. Ya know what the issue is. The darn people at the USPTO are jealous. We all know that only creative people can thrive in the patent biz. Those darn bureaucrats lie awake at night dreaming about something novel . . . and this is the best they can do. These rule changes. They can’t even pass rules following their own rules. It is really sad, but I think that is the gist of their issues. They are jealous that they can’t be as creative as the rest of us. So, they take out their frustrations on the people that they envy. Should we just get them all in group therapy or something?

  32. “I would think that, if 300 references were cited (as the hypo suggests), you could point to the one set of initials per page.”

    Almost certainly, you won’t even be able to present such evidence or make any argument implying that the examiner didn’t look at the references.

    With regards to one initial per page, there is nothing wrong with an examiner considering the references by pulling them all up at one time (perhaps even by pulling them up using their search tool) along with a bunch of other references from a search, considering them individually to whatever degree the examiner deems, and then later dealing with the mechanics of signing off the form. In other words, short cutting the mechanics of signing off 300 or even 20 references is going to happen regardless of how thoroughly the examiner looks at the references.

  33. “We are expert buggy whip manufacturers when no one rides a buggy anymore.”

    This is the sort of environment where a modestly clever caveman might excel …

  34. “You can throw up all the evidence in the world that suggests the examiners are incompetent but you cannot come out and say it.”

    Huh? Meanwhile, back on planet earth, try reading the Fed. Cir.’s recent Pharmastem case where the patent went through TWO re-exams and was nevertheless invalidated. According to your logic, such a patent would be bulletproof. But of course mistakes were made. Smelly, glaring mistakes.

    Imagine that.

  35. I would think that, if 300 references were cited (as the hypo suggests), you could point to the one set of initials per page. The Examiners typically do not initial each reference. They initial the one at the top of the page and then draw an arrow. I would think it is at least somewhat persuasive that, if the examiner was unwilling to take the time to initial a reference, the examiner was unwilling to the the substantial more time of sifting through the hundreds, if not thousands, of pages in those documents to find the pertinent text.

  36. “I guess that’s what happens if you hire a crappy lawyer. How in the world would a jury get it into its collective head that if an Examiner initials a reference, then the patent MUST BE VALID over that reference?”

    Clearly you are not a litigator then. Judges will not tolerate you attacking patent examiners. Patent examiners are held to some mythical standard of excellence. To a jury with a highschool education, and that is being optimistic, it is extremely persuasive to see an examiner’s initials next to a reference. Especially since most of these cases come down to personalities and have little to do with the merits of the case.

    You can throw up all the evidence in the world that suggests the examiners are incompetent but you cannot come out and say it. While the plaintiff can shout the competence of the system to the roof tops. So get off your high-horse. Only an incompetent defense attorney would permit you to make that “compelling” argument you seemed to dream up.

  37. “You have very little shot of winning invalidity if the reference is a cited reference – even if there are 300 hundred references cited. A plaintiff just stands up and points to the examiner’s initials and the jury will not consider the reference.”

    I guess that’s what happens if you hire a crappy lawyer. How in the world would a jury get it into its collective head that if an Examiner initials a reference, then the patent MUST BE VALID over that reference?

    The answer is if the defendant has a crappy lawyer.

    You get what you pay for.

    Recent CAFC cases have outlined how trivial it is to take the presumption of validity and flush it down the toilet. Just find the errors in the examination where the examiner clearly messed up and keep hammering them home so the jury gets the idea that the examiner and PTO are a collective bunch of incompetent phonies. Remind them of the one-click patent, the swing patent, and other travesties.

    What’s that? There are no errors? Then maybe the patent is valid and you would be better off settling.

  38. If Joe Rolla really is the culprit, his role in “Labor Management” may have something to do with it. This adds to the theory that although the ones hurt by the new rules are actually applicants and ourselves as practitioners, the real target is POPA.

  39. From a patent defense litigator’s perspective, I am thrilled with the proposed changes. I cannot tell you how often a plaintiff will dump 300 hundred references into a pending continuation during a litigation which “blesses” the continuation. You have very little shot of winning invalidity if the reference is a cited reference – even if there are 300 hundred references cited. A plaintiff just stands up and points to the examiner’s initials and the jury will not consider the reference.

    Better yet though, I wish they would just remove the presumption of validity altogether.

  40. There’s no chance that these new IDS rules will be sprung immediately on us, is there? I’ll need some time to make sure every reference is filed.

  41. “I humbly suggest that the answer depends on how important the patent is to you. Assess the risk accordingly.

    It’s pretty simple actually.”

    You are correct – that’s why “I’ve succumbed to reminding the Office to do *just that*… use PALM!… in my Comments… how much of a waste of resources is that?”

  42. “Once I disclose an application pursuant to Rule 56, isn’t the Examiner then put on inquiry notice?”

    I humbly suggest that the answer depends on how important the patent is to you. Assess the risk accordingly.

    It’s pretty simple actually.

  43. Well there was KSR and then the continuation rules. Boys this is where I cash in my chips. I am quittin this clam bake. It is my professional opinion that this regulatory agency has nothing but ill will for the public and the practitioners. I don’t know who these people are beholding to, but I really don’t care any more. I did this stuff because it was easy money and a great deal of fun. I mean I was actaully getting paid to learn new subject matter. I enjoyed my clients immensely. I actually thought I was assisting in the prosperity of the U.S. economy. Well I can see when we are not desired any more and I know not to go where I am not wanted. Moatz imagine a big-a$$ middle finger in your face. That is from me. The rest of you people that brought about these rules . . . same to ya. It was a fun ride while it lasted. I am just sick to death of this crap. I am outta here.

  44. I thought the purpose of the patent office was to secure for a limited time a exclusive right to one’s invention in order to promote the useful arts. It would seem to me that these new rules will be placing the exclusive right to one’s invention beyond the means of most ordinary people because of the time it will take us to comply with all of the new rules. God forbid an ESD becomes necessary in an application (family).

  45. “McKesson does not stand for the proposition that you must disclose cumulative art.”

    Malcolm, what does McKesson stand for, that after you tell the USPTO (under Rule 56) about a related application that is pending before the Office, you have to update the Office on the status of the related application before the Office? Isn’t that a little like sending coal to West Virginia?

    [begin rant]

    What on earth do we pay examiners for? Really?? (I honestly want to know… or is it just too “extensive” a “burden” on the Office for me to expect Examiners to know how to use PALM, and to use it for its intended use? I’ve succumbed to reminding the Office to do *just that*… use PALM!… in my Comments… how much of a waste of resources is that? Has the Office no “personal” responsibility to carry out any part of the examination process on its own? Should examiners not be required to learn to think on their own without being led by the hand by attorneys? The good ones can, but the Office seems to be catering to and retaining the bad ones. And by so doing, breeding bad ones who can’t walk on their own. Once I disclose an application pursuant to Rule 56, isn’t the Examiner then put on inquiry notice?)

    [end of rant]

    (Sorry for the rant, it’s not directed at you personally.)

  46. “I’d like to know if you propose citing only the “most relevant” references. If you think that citing the “most relevant” references will discharge an applicant’s duty under 1.56, then I ask how you reconcile that practice with McKesson.”

    Perhaps you are confused as to what McKesson is about. See my comment on McKesson upthread.

    McKesson does not stand for the proposition that you must disclose cumulative art.

  47. I’m not convinced that the PTO can create a “safe harbor” that courts are bound to recognize. Decisions that applicants make regarding submission of a reference are always subject to second guessing. The current standard of what constitutes a material reference for inequitable conduct is already broader than what rule 1.56 promulgates. Why would it shrink simply because the PTO promulgates a new rule?

  48. Jim H, if you don’t do a search, and you work in an art area where disclosures are short, you won’t have to worry about the new IDS rules, and thus an IDS and ESD will be different. Mind you, you’re dumb not to do the first, and you have no control over the second. Otherwise, you’re right: the USPTO is shifting the burden to the applicant.

    I’m wondering what happens when I get a 500-page app cited in the PCT search report, of which maybe according to the ISR 10 pages are relevant. If I only cite the 10 relevant pages (risking inequitable conduct if the ISR or I accidentally overlooked an 11th page with disclosure that’s material to patentability), do I have provide an explanation about the relevance of those 10 pages since the original document was over 500 pages?

  49. What is the difference between the content required of an EDS and the content required of a proposed IDS? Five fewer claims from the 20 seem to spark the requirement for explanation, not hinged on the number of claims, and required.
    Please correct me if I’m wrong, but it seems to me that the examiner’s tradional and long-standing role of searching will be completely shifted to the applicant even with 25 or less claims (which will become effective 11/01).

  50. “Sorry, Malcolm, not necessarily correct. The answer could be “yes” or “no” depending on a) the disclosure of the reference and b) the scope of your claims”

    I was answering a specific question directed to claiming a NEW catheter. The question was whether every prior art reference reciting “An apparatus comprising a catheter with a proximal and distal end” needed to be cited.

    The answer is not. At most, only one such reference would need to be cited and probably not even that one. All of the closer and more relevant art renders art with general, well-known, obvious teachings redundant.

    Read the MPEP.

    Someone else upthread mentioned McKesson. McKesson stands for the proposition that when you are prosecuting closely related cases and you intend to go around bashing people over the head with the patents that are issued, you better make damn sure the Examiners of both those cases are aware of the art being cited and the arguments you are making about that art. If you fail to do that and you make a poor witness and your behavior was arguably smelly, you risk watching the patent(s) go up in flames.

  51. “translation: Inequitable conduct is not OUR problem.”

    Better translation: “We created the problem of inequitable conduct for you, and we really don’t care if it becomes your problem.”

  52. “only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted”

    translation: Inequitable conduct is not OUR problem.

  53. “When I was an examiner Rolla was my group director. I had some contact with the guy. He had a reputation as being a “by the book” sort, very smart and pretty knowledgeable. So, I’d have to disagree with those disparaging him.”

    The issue is not his intellect, the issue is having people implement these rules with only limited experience. These folks are patent office lifers, and thus only have a deep understanding of one portion of the patenting process. They need folks (who are not biased) who have experience in prosecution before them, and enforcement and litigation of patent rights. You can’t change one portion of the system, without huge mplications for the other parts of the system. They also don’t seem to care what the entire rules pacakge will do to pharma research – and that is huge, Pfizer alone spends about 100 million a week – and without patent rights that is whole bunch of high paying high tech jobs we will lose. Who is going to develop the antibiotic to kill the new super Staph bug sweeping the country if they can’t protect it? Cancer survival is way up – due to the ability to protect and extract value from innovation – but what will happen to that innovation if it can’t be protected? These folks are doing things that are very dangeropus for the country, and doing it without a full understanding of they are really doing. Smart he may be, but clearly he lacks the experience to think through the implications of what he has proposed.

  54. I don’t know J. Rolla or John Doll personally…but suffice it to say that actions speak louder than words. These rules are all unworkable and will not do what they think it will do. We will be filing MORE with smaller inventions.

  55. A reply to an earlier post of mine wrote:

    “Rules regarding the ‘form’ of an IDS are unenforceable, which is to say, meaningless.”

    Well, if that’s true, then I suppose we can all start ignoring rules regarding the form of application papers (e.g., line spacing), amendments (e.g., the manner in which claim amendments are presented), etc. Good luck with that approach. If these rules go into effect, it would be exceedingly foolhardy for anyone to decide that they don’t really have to comply with them.”

    My reply: If the “form” of an IDS is not according to the Rules, it is still within the “duty to disclose” and, at worst, it seems that the examination proceeds without consideration of a reference made well known to the Examiner. The responsive post, quoted above, illogically extends my earlier post to somehow suggesting that “we can all start ignoring all rules,” such as the form of application papers, etc. NO ONE SAID THAT! In the alternative, my suggestion is to comply with the absolute letter of the IDS rules and stop complaining!!!

  56. George, I gave Rolla his due, and I agree he was a smart guy. However, if following is true:

    “the one that has come up with a lot of the rules & pushed for them is a guy named J. Rolla; both as a PTO management employee (2 stints) with a contracting position in between. Much of this is his great idea to reshape the PTO.”

    … as was posted above, he has some explaining to do.

  57. When I was an examiner Rolla was my group director. I had some contact with the guy. He had a reputation as being a “by the book” sort, very smart and pretty knowledgeable. So, I’d have to disagree with those disparaging him.

  58. Malcolm – I’d like to know if you propose citing only the “most relevant” references. If you think that citing the “most relevant” references will discharge an applicant’s duty under 1.56, then I ask how you reconcile that practice with McKesson. Also, if you think that the not “most relevant” references are cumulative, then I also ask how you’d proceed in view of McKesson.

  59. “Rules regarding the “form” of an IDS are unenforceable, which is to say, meaningless.”

    Well, if that’s true, then I suppose we can all start ignoring rules regarding the form of application papers (e.g., line spacing), amendments (e.g., the manner in which claim amendments are presented), etc. Good luck with that approach. If these rules go into effect, it would be exceedingly foolhardy for anyone to decide that they don’t really have to comply with them.

  60. “Rules regarding the “form” of an IDS are”, like all other administrative rules of form, rigidly enforced during the administrative process, “which is to say,” expensive and unproductive to challenge.

    While one of us might find a client willing to support several years of windmill-tilting in order to establish facts sufficient to bring a complaint before the CAFC or the D.C. Circuit regarding the new rules, and while others already are pursuing speculative p/i’s, the fact is that all PTO rules of form are enforced on a daily basis by the simple expedient of examiners’ refusal to enter submissions that do not comply with the rules. Each violation of a rule of form, regardless its legal enforceability, results in additional delay and expense in approaching the goals of our clients, and may even forestall our efforts to get there at all.

  61. “No.

    This has been another edition of …”

    Sorry, Malcolm, not necessarily correct. The answer could be “yes” or “no” depending on a) the disclosure of the reference and b) the scope of your claims (…and if you’ve per chance written claims like the reference, you had better cite it for reasons beyond just what it discloses). Of course, this requires reading and understanding the reference which can take an hour or more for a “close” reference.

    P.S. A ridiculously broad claim can increase the scope of “material” prior art which you have a duty to disclose, and it can also put you in violation of 37 CFR 10.18. [I just dealt with a patent where the attorney wrote a claim as broad as the subclass definition, cited 102b art (perhaps without reading it or thinking about its relevance) and the examiner allowed the claim (perhaps without reading it or thinking about its relevance). So the patent issued. As assistant examiners in the old days, when a ridiculously broad claim came in, we would always ask our primaries if we could just allow it, close prosecution, cite the prior art, and "stick [the attorney] with the claims”, knowing the attorney would have to abandon the case and refile to get a more proper claim. Well, the primaries always said “no”, in the old days….]

    P.P.S. That said, there is no duty for the attorney to familiarize himself with the art prior to filing, though prudence dictates that he should…. hence, the cause of some of the ridiculously broad claims. The examiner’s job in such an instance (which he is paid for), is to be the “gate keeper” and not let those claims issue, otherwise we would call him a “registrar”.

  62. Mr. T, I am also a former primary examiner and I could not agree with you more. Granted, computer related invention do require that you spend some time with each reference (i.e., you can’t just look at the drawings and dispense with it in a few seconds if not relevant) but even so, the alleged burden of excessive IDSs is a red herring — not the problem facing Examiners. The problem facing Examiners is (1) incompetent supervisors who have no experience in the art being examined by their own underlings, (2) increasingly complex technology and increasingly large prior art collections with inadequate attention to the classification system, requiring longer searches, (3) increasing reliance on unreliable electronic word searches to overcome difficulties with number 2 above, (4) increasingly complex claim construction and obviousness rules promulgated by the Federal Circuit, and (5) production quotas that are over 30 years out of date. I am waiting to see what the PTO intends to do about any of these. I understand they have plans to overhaul the production requirements, but I can’t see how that can be good for Examiners…

  63. “J. Rolla has clearly never practiced….”

    what a surprise…unaccountable govt. bureaucrats with below average IQs making technologically and economically harmful rules to the detriment of the innovators and entrepreneurs…welcome to the USSA…more to come in the near future from Queen Hillary…

  64. For any given invention, there are never more than a dozen references that are “most relevant”. Everything else is redundant, at least with respect to the point of novelty of the invention.

    Giant lists of references are cited for two reasons: (1) to bury a reference and (2) to ensure that a material reference was not “missed.”

    As to the latter practice, it evolved in response to the inequitable conduct decisions in the courts, and is partly due to the time-honored practice of filing applications on “inventions” that are unknown to the applicant at the time of filing but are ultimately revealed to be “whatever wasn’t disclosed in the art.” In light of such strategies, it’s difficult to determine what is “material” and what isn’t.

  65. “With clearance/patentability searches of art having large numbers of applications versus issued patents (medical, organic semi-conductors, business methods, any hot technology) we find scores of references with claims along these lines: 1) An apparatus comprising: a catheter with a proximal end and a distal end. While they have very little bearing on the patentability, will prosecution need to submit them in the IDS”

    No.

    This has been another edition of …

  66. I will add that they do **not** want to hire anyone with true experience. Mr. T himself, a former primary examiner and bronze medal recipient, offered the PTO his services as a trainer/quality guy, and he even offered to examine cases. Their counter offer: we have a job as a junior examiner for you. I sht you not!!!

  67. “Do they even realize that these rules ask practictioners to do the opposite of what the courts require? Do they care? We go before Moatz b/c we add to much art to the IDS, but we also go before Moatz if add too little and the case is litigated. This entire thing is nonsensical.

    J. Rolla has clearly never practiced….”

    You’re right me. Joe Rolla was actually somewhat of a quality guy at the PTO. He was my director for a while in 2800 (interesting that this group is not mentioned above) and ruffled some feathers with his initiatives, which were not bad, but instead generally directed in the right direction. If he was really behind these new rules, he fundamentally misunderstood the ethical quandries a practitioner would be subjected to with the implementation of these rules.

    It is maddening that so many people at the PTO are clueless and/or have no empathy whatsoever regarding the quicksand these rules create.

    As a former examiner, I never bought into the “problem” of ids’s citing too many references. The vast majority of applications (probably more than 99%)cite less than 100 references. Considering 100 references, or even 200 references, is not a big deal. A search typically will include well more than 1000 references. The alleged “burden” is bogus!

  68. I guess the other question is – how could Doll read these rules packages proposed by a computer examiner (Rolla) and think they would be applicable to bio and chem (his old art unit -1600)? It seems they either don’t care, or don’t even know the basics of what it is to prosecute before them.

  69. Here is a pic of the gang that brings these nonsensical rules to you:

    link to ipmenu.com

    Rolla’s background – an attorney who seems to have never practiced and seems to be a government lifer:

    “Mr. Rolla joined the USPTO in 1972 as a Patent Examiner, and was promoted to Primary Examiner in 1978 and to Supervisory Patent Examiner in 1982. He was selected as a Group Director in 1990 and has served in Groups 2100, 2300, 2500, the Electrical Cluster (2300, 2400, and 2600), Technology Center 2700, and Technology Center 2600. He served a detail in the Office of the Deputy Assistant Commissioner for Patents at the Petitions Office, where he decided petitions and performed special projects. Mr. Rolla has also been an instructor for the Patent Examiner Initial Training course, a recruiter for USPTO, and a resource person for the Supervisory Patent Examiner Management Program.”

    Further details here:
    link to uspto.gov

  70. Do they even realize that these rules ask practictioners to do the opposite of what the courts require? Do they care? We go before Moatz b/c we add to much art to the IDS, but we also go before Moatz if add too little and the case is litigated. This entire thing is nonsensical.

    J. Rolla has clearly never practiced….

  71. Do they really understand the incentives this rule creates? Rule 56 requires that I submit “any” information material to patentability. I know if I perform a search, or contract a search, I’ll likely get more than 20 references, or at least information pointing to more than 20 references (such as a listing of documents returned by a search). Accordingly, practitioners who want to comply with the future rules now have a real incentive to perform no search at all. And yes, before the usual agitators jump on this thread, I’d say that references are cited by the applicant in 95% of all the applications filed at my firm.

  72. Rules regarding the “form” of an IDS are unenforceable, which is to say, meaningless. An attorney’s or applicant’s “duty to disclose” is satisified by bringing prior art to the attention of the PTO, whether it be in the Specification, in the Remarks in response to an Office Action or IDS, as long as such prior art is not presented in a manner whereby it is intentionally “buried.” If the PTO deliberately chooses to ignore prior art squarely presented to it, then it fails to perform its statutorily mandated function.

    Highly material prior art, regardless of the PTO’s acknowledged “consideration,” would, in all likelihood, be revisited in any litigation concerning the eventual patent, and can be dealt with at such time.

    Disclose prior art material to the examination of an applicant’s claims in a manner that places an Examiner on reasonable notice of such reference(s), and tune out the rest of the bureaucratic noise being transmitted by the PTO. If the PTO seriously expects a patent attorney to file known prior art – and then render a rejection of his client’s own claims over such art – “it ain’t happening!”

    The PTO’s IDS rules for the “manner” of disclosure are unenforceable, while its proposed Rules for continuations, claims and RCEs – which are only “proposed” and will not become effective on November 1st – will be invalidated. The PTO loses here, loses there . . . loses everywhere!

  73. While Doll, Dudas, etc. get all the blame for the various rules packages, the one that has come up with a lot of the rules & pushed for them is a guy named J. Rolla; both as a PTO management employee (2 stints) with a contracting position in between. Much of this is his great idea to reshape the PTO.

  74. Looks like the PTO actually considered the problem with duty of disclosure that I raised above …

    [proposed] Section 1.56: Section 1.56 is proposed to be amended by the
    addition of paragraph (f) that would provide a “safe harbor” for a Sec. 1.56(c) individual who, in good faith and to the best of the person’s knowledge, information and belief, formed after a reasonable inquiry under the circumstances, took reasonable steps to comply with the additional disclosure requirements of Sec. 1.98(a)(3). While the proposed amendment to Sec. 1.56 may not act as a

    [[Page 38812]]

    complete defense in all situations, particularly as the court is not bound by any one duty of disclosure standard established by the Office, the Office is hopeful that a court in deciding a duty of disclosure issue will take the proposed safe harbor into account.

  75. Some applicants receive large amounts of unsolicited information from third parties, sometimes accompanied by an allegation that the information is relevant to particular technologies or applications.
    Currently, many applicants simply submit such information to the Office via an IDS. The Office is proposing to avoid the burdens to both the Office and applicants occasioned by this practice by clarifying that applicant may opt to provide written consent to the filing of a protest by the third party based on such information, thus shifting the
    explanation burden back to the third party.

  76. With clearance/patentability searches of art having large numbers of applications versus issued patents (medical, organic semi-conductors, business methods, any hot technology) we find scores of references with claims along these lines: 1) An apparatus comprising: a catheter with a proximal end and a distal end. While they have very little bearing on the patentability, will prosecution need to submit them in the IDS and have them count against the 20 reference limit since they are known? Perhaps we can submit them in an auxiliary IDS as allowed in the pre-examination statements for accelerated examinations and the more clarified ESD guidelines. That way we can avoid the requirement of spelling out their relevance and getting in trouble when the litigation starts.

  77. “They’ll probably make them retroactive…”

    That’s exactly what I was thinking.

    Note that such “retroactivity” always creates a PERMANENT PREJUDICE for prior-filed applications. That is, after the “final” secret rule is published, any case that has a large IDS will of course not be picked up for FAOM by the examiner prior to the effective date of the rule, in order for that prior-filed case to be caught in the rule’s wide net. Or perhaps Ms. Focarino will make such conduct mandatory (at least temporarily?).

    Either way, the USPTO will simply increase its own “administrative delay” in prior-filed applications with large IDS’s to suit its own purposes prior to the effective date of the rule, just like it has done and like it continues to do (be it mandatory or at the unbalanced discretion of the examiners) with the claims and continuations rules.

    P.S. The problem isn’t the examiners’ whims, but rather the retroactivity which puts the applicants at the mercies of such.

  78. link to frwebgate4.access.gpo.gov

    will get you html of the pre-comment Notice for this proposed rules change, too late (and pointless) to provide comments at this point … hard to guess whether or how the public comment process might have modified these.

    my favorite part? the rationale …

    Current IDS requirements are ineffective: Current Sec. Sec. 1.97 and 1.98 do not encourage applicants to bring the most relevant information to the attention of the examiner early in the examination process, at least, in part, because applicants and practitioners mistakenly believe that people associated with a patent application
    must submit questionably or marginally relevant documents in order to ensure compliance with the Sec. 1.56 duty of disclosure. A limited amount of time is available for an examiner’s initial examination of the application, which includes at least a mandatory cursory review of each document cited. Thus, when large IDSs are submitted without any identification of relevant portions of documents, some of the examiner’s limited time is diverted to consider the cited documents, and efforts to perform a quality examination may be adversely affected.
    This is especially true when the submission includes irrelevant or marginally relevant documents, and the situation is worsened when a large number of the documents are irrelevant, marginally relevant, or cumulative. >>>It appears that applicants sometimes file large collections
    of information for the examiner’s review without having first reviewed the information themselves for relevance in the mistaken belief that such action is permitted under the current rules.<<< If irrelevant information is filtered out before an IDS is filed, the examiner will be able to focus upon the more relevant information, and perform a more
    efficient, effective examination.

    * * * Or maybe the problem is that practitioners who do receive a data-dump of search results feel that they must submit everything wihout filtering to avert accusations of inequitable conduct at the licensing / enforcement stage … after all, the Office can take the registration numbers of those shown by a preponderance of evidence to have “knowingly” held back information material to patentability. “Knowledge” is a dangerously vague concept. And if it’s my registration number, or the Examiner’s ulcer … let the PTO buy some antibiotics for the examiner.

    But now there will be a catch-22, d**ned if we do, d**ned if we don’t.

  79. Why bother submitting prior art now? They’ll probably make them retroactive for any pending application that has not received an office action by the effective date of the rule.

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