PTO Rule Challenge

Some food for thought:

  • GSK made two successful legal arguments against the new rules: (1) that the limitations on continuations are substantively contrary to 35 USC 120 and associated precedent; and (2) that the retroactive nature of applying the new rules to already pending applications exceeds PTO authority.
  • Even if the rule challengers win on those two arguments, the PTO would still be able to implement portions of the new rule that limit the number of claims in newly filed applications. 
  • Furthermore, the retroactive nature of the claim rules is less compelling than for the continuation rules.  The proposal does not truly limit the number of claims. Rather it only requires an “examination support document” be filed if the claim count exceeds the 5/25 limit.  While many have noted these so called ESD’s are onerous, at least one company claims an automated approach (Link).  This would increase applicant’s cost, but arguably would not harm any property rights.  Modestly increasing regulatory cost does not constitute an unlawful retroactive effect.

Notes:

88 thoughts on “PTO Rule Challenge

  1. Malcolm, the USPTO would disagree with this solution since they are trying to get the applicants to search and analyze the references, and this solution would be a step in the other direction.

    Regarding opposition proceedings, I believe there should be a vehicle for such – to think otherwise is to deny the current reality of patent quality. But think about it: if the USPTO is the gate-keeper to the opposition proceedings with no recourse for the requester when an opposition is denied (as I believe is expressly stated in the House bill), then how (with all the politics at the USPTO and the current disdain for accepting additional work from the public) could USPTO-based opposition proceedings possibly work effectively?

    [In case my logic isn't clear, my point is if they have too many cases as the Board of Oppositions, they will simply deny the opposition requests (or promulgate convoluted opposition rules) rather than hiring new ALJs, thereby effectively strangling the relief that Congress allowed, and any duty of fairness will likely go out the window in favor of USPTO convenience. In other words, it's hard to give a broken agency additional responsibility before you fix the agency, and expect it to solve a problem.]

  2. “Perhaps we should get rid of both 1) the duty to disclose and 2) the presumption.”

    So simple and so obviously correct.

    Plus an opposition procedure.

    Why would anyone disagree with this solution?

  3. F1ipping Examiner, two things combine to produce larger citations in the U.S. than in Europe:

    1) our “duty to disclose”, that if not met can kill the patent (you have no such duty in Europe if I understand correctly); and

    2) a presumption our courts make that if a reference is “of record” in a patent, the Examiner considered it (it used to be impossible to contest a patent in certain ways if the reference was already “of record”; so if you cite the closest art, either deluging the Examiner or relying on 80% of Examiner’s propensity not to apply art cited by the applicant, you can make it harder, with the court’s gratuitous presumption, to invalidate your patent).

    Perhaps we should get rid of both 1) the duty to disclose and 2) the presumption.

  4. @real anonymous:

    1 or 3 day: Searching granted patent for invalidation is likely different from the first search.
    Field does play a role too, be it for picture search or others. I almost never do a pure picture search, and 3 drawings on average is not very much.

    But the main difference are in the quality cited document: here in Europe, with usually up to 5 references – mostly less- every one requests more than 2 minutes of my time.
    I concede that when I start to skim the cited documents of some US Patent, every time they have over 20 of it, at least half of it is crap and can be discarded quite fast. No idea if the worst sinner is the applicant or the examiner, maybe I will start to pay attention.
    In any case, I can’t fathom how the sides involved – applicant, examiner, public- can live happy with those long laundry lists of references in US publications. In fact, it seems the USPTO does not take it any more from the applicant.
    Myself, I just read Maxdrei about the difference between Common law and civil law, wonder about the impossibility to find a plain satisfactory situation in the US, and goes on happily in Europe with few references cited by the applicant.

  5. “That said, knee-jerk cross citation of office actions can’t hurt because you know damn well that, going forward, litigators will be checking to see if you did so.”

    The requirement to submit office actions had already been established by prior cases.

  6. The real take home message from McKesson is don’t opine as to materiality if you’re the prosecuting attorney because, if the jury finds your materiality testimony lacks credibility, it will taint your testimony regarding intent. Let an expert opine as to materiality.

    That said, knee-jerk cross citation of office actions can’t hurt because you know damn well that, going forward, litigators will be checking to see if you did so.

  7. “In my opinion, McKesson doesn’t create any new disclosure obligations. Instead the case establishes an unexpectedly low threshold for affirming a finding of intent to deceive.”

    I agree with both of the previous commenters. In my experience, patent prosecutors are some of the most paranoid professionals in the universe, and also (not coincidentally) some of the least clever when it comes to understanding what happens during a trial.

  8. “An alternative interpretation (based on the facts) of the McKesson opinion is that if the testimony of the prosecuting patent attorney lacks credibility in the eyes of the court, a finding of inequitable conduct is highly likely”

    In my opinion, McKesson doesn’t create any new disclosure obligations. Instead the case establishes an unexpectedly low threshold for affirming a finding of intent to deceive.

  9. While I hope to never file an ESD, I don’t think ESDs are as onerous as some people speculate.

    With regards to the Inequitable Conduct issues, the U.S. Courts pay attention to the facts (this is the nature of common law). When the facts change, the law changes. The current law on inequitable conduct is based on a fact situation where ESDs do not exist. If an ESD does exist, the law on inequitable conduct would inevitably change based on the new facts.

    Some attorneys cite “McKesson Information Solutions v. Bridge Medical” as creating major new disclosure obligations to avoid charges of inequitable conduct. An alternative interpretation (based on the facts) of the McKesson opinion is that if the testimony of the prosecuting patent attorney lacks credibility in the eyes of the court, a finding of inequitable conduct is highly likely.

  10. “To allow as you say, applicant would need to perform two searches – one before drafting the claims (to be used in preparation, to write the claims around the art), and one before filing the application (to be used preparing the ESD).”

    I think that a pre-spec-drafting search (with a supplemental search) will be commonplace, especially once the IDS rules package kicks in. Both searches will give the client clarity as to how valuable their invention is, which will deter filings. The most likely process will be (1) prepare initial claim set; (2) search initial claim set; (3) discuss results with client; and (4) if the client believes value still exists, prepare new claims for supplemental search and prepare spec.

  11. “allowing applicants to see the results of the search before filing/preparation of application.”

    To allow as you say, applicant would need to perform two searches – one before drafting the claims (to be used in preparation, to write the claims around the art), and one before filing the application (to be used preparing the ESD).

    Or will you limit your claim features to those features shown in the original documents turned up in the preliminary search? (“Sorry, client, our searcher didn’t find that feature so we can’t claim it!”) The whole fictional process is a farce… and you/they are right, no one will file an ESD.

  12. “Biotech examiner, I agree with you 1000%. This is where turning the search over to the applicants loses all its credibility.”

    The rules aren’t about relying on the search of the applicant. They’re about deterring filing by (1) substantially increasing the cost per application and (2) allowing applicants to see the results of the search before filing/preparation of application.

  13. All (not most) the examiners I know are stressed about production, and none (not a few) have complained about money (except having to work non-paid overtime to meet production goals). And the conscientious examiner I know who got a “letter” that makes him have to be above 95% or 100% each biweek (regardless of dog cases) is concerned ZERO about money, and completely about production to save his job. Get rid of the bad production goals (and the arcane count and incentivizing system) and you solve the problem.

    Production is the primary reason examiners leave, not money. See the GAO report. The USPTO will do anything to take the focus off of management and mismanaging as being the very heart of all the problems the agency faces today… blame it on money, applicants, lawyers, high cost of living, non-harmonization, harmonization, etc.

    ———————————————-

    Thank you Ronald Reagan, for convincing the masses that our civil servants are not worth what they are being paid, and are total goof offs. Like them overpaid and underworked Air Traffic Controllers.

  14. Going way back in this thread, with respect to the cost of an ESD, the costs have been greatly underestimated. We did an estimate from a very reputable search firm on a simple mechanical device with broad limitations. Attempting to follow the USPTO’s ridiculous instructions (“the Webinar”) that dependent claims should be searched for limitations as if they were independent claims, the search produced absurd results that were totally impractical. The estimated costs for the ESD search were in excess of $70,000 including the cost of procuring the references. One dependent claim, alone, produced many more than 20,000 pertinent “hits,” just from the patent literature. And the search firm didn’t want the liability of pre-selecting the “hits” for relevance. What if they rejected a pertinent reference that was later found to be significant? Thus, potentially, we were faced with the mammoth task of wading through each of these references on our own.

    I note that the most revolutionary inventions will generally have much broader claim limitations and that these are exactly the types of limitations that will be highly impacted by an ESD. If implemented in the absurd manner that has been proposed, any broad dependent claim will be strangled by an avalanche of pertinent references. How is it that any federal agency, acting in good faith, could produce such a horrendous scheme?

  15. There’s yet another issue with the ESD. Not only is it impermissibly vague and a violation of 35 USC 111 by adding extra requirements for filing, but the PTO also has no authority to order a search.

    The reform bill adds a proposed 35 USC 123 that gives them that authority, but what sort of search can they require? A search done by a US citizen! Not only does that give no guidelines for the search itself, but it means that the search can’t be done by a legally resident foreign citizen in the PTO search room in Alexandria, VA, who pays US taxes, but it could be done, for example, by an Indian-born US citizen in Bangalore! Surely not what congress really intended!

    The Washington DC area almost makes up for it’s lack of industrial base by it’s proliferation of defence contractors. However, foreign engineers and scientists who are completely legally present in the US cannot work for defence contractors without US citizenship. Hence, one of the very few fields in which we can legally work and use our education in the Washington area is in patents, and even then not for the PTO. I am very glad I have my reg. number, as if I was still doing searches this bill would be threatening my livelihood.

    It does make one think that the PTO may want to delay the litigation not only for 35 USC 120 to be rewritten to enable continuation limits, but also for the introduction of 35 USC 123, so that they have a legal basis to require applicants to perform their own searches, which in turn begs the question as to why they didn’t wait for the reform bill to pass in the first place?

    IMHO, whether this turns out well or badly in the end depends on the outcome of the reform bill and on whether the administration changes before it is resolved. I don’t believe that the CAFC will back the PTO on this (although J. Moore will), but the court case is not the only game in play.

    As for whether the examiner or the professional searcher does a better search, it depends. The latter will spend from half a day to a day on the search, and typically searches both manually and by keyword. The examiner, OTOH, usually spends less time and these days does no manual search, but usually has a few known references in his back pocket for many eventualities, having searched the same art over and over, whereas the outside searcher typically searches a different art every time and doesn’t know of any art in advance. Both do regularly find art that the other does not. You can’t even say that both (or even either of them) will always find the best art.

    There again, if a patent is litigated, the searcher is always given enough budget to spend at least three days searching, or more if the stakes are high, so it’s hard not to find more art if you’re any good.

  16. So what happens if I need to file a continuation between now and any new “effective date” of the rules, if they do take effect? The PTO website says, “USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.” Not August 20, 2007–October 31, 2007, and of course under the rules, the publication date of the rules had an effect (of changing the legal status of subsequently filed applications). So if the PTO does prevail, would they be able to keep the interpretation that any CONs filed after August 20 count under the “one more” provisions of the rules, even though the rules were being challenged? This doesn’t really make sense, but the use of October 31 rather than August 20 is confusing to me. Maybe it’s simpler than that, though–if the PTO wins, they get to do whatever they want, and if GSK (i.e., everybody else) wins, the publication date of the rules will not have had any effect. Okay, never mind (I think).

  17. Jim H made a comment above that deserves consideration in that it is directed to the very most basic of questions. Does the USPTO possess the lawful authority to promulgate rules requiring an EDS where the 5/25 “rule” would apply (or any other similar rule for that matter)? Between Section 2, 41, 111, and 112 I have serious doubts that any such rule would pass legal muster, whether ambiguous, vague or otherwise.

    It never hurts to go back to basics when rulemaking is concerned. Far too often I have witnessed very capable attorneys reacting to agency rules and trying to figure out how best to deal with them, instead of asking the more fundamental question as to their legitimacy. I always ask “What does the statue(s) say?” I never ceased to be amazed at how often rules are completely at odds with controlling statutes. The continuation rules appear to have fallen prey to what the enabling legislation actually says. I view the EDS (or is it ESD…I am poor on acronyms) approach to stand in a similar vein and vunerable to a successful challenge.

    Perhaps one day it will dawn on those at senior levels within the USPTO that it is Congress, and not the agency, that defines the metes and bounds of our patent laws. Perhaps one day it will also dawn on the legal profession in general to take a look at the copyright system itself, and particularly with an eye towards the separation of powers doctrine.

  18. Dear X-Solo:

    What did you mean when you wrote; “3. Is Moatz violating the USPTO’s own ethical standards by threatening adminstrative action?”

  19. Suggestion copied below, in part, by “Patent Leather” makes sense to me.

    “The answer to the backlog problem is simple. Raise filing fees by $400 for a large entity ($200 small entity). The new $1400 large entity filing fee would still amount to less than 10% of the total preparation/prosecution cost of a patent to the applicant. I can’t imagine any of us would complain about such a raise (especially if the money was used wisely).

    Hire more examiners. Pay examiners more. Lower production goals and give examiners bonuses for exceeding production.”

  20. The new rules are dead in their entirety. Winning a prelim virtually guarantees a permanent injunction, especially when there are no questions of fact and the case can be decided on cross-motions for summary judgment. The PTO’s non-Registrant leaders have been smacked down and will not likely figure out a way to get up. Their heads should roll.

  21. Don’t Beat, thanks. I’m thinking medical devices, where I see US corporations (the very opposite of innocent, I grant you) going round Europe shrewdly acquiring nice apps from independent inventors. They are much niftier at that game than the European corporations. All the same, for every one invention from an independent inventor that they own, there are 99 from in house, and the competitor patents they fear are ones naming in house inventors. My clients are not start-ups. In a typical week, I might advise Monday how to sculpt claims in an EPO pending case, to catch the competitor. On Tuesday I might advise a client whether a competitor’s WO can ever be stretched (in Europe) wide enough to catch his product. So, I see both sides. Our viewpoints are indeed quite different.

  22. Max – I’ve spent much of the last 15+ years on the independent inventor/start up side of things, and I work in an industry where EU based companies have little penetration even in their own national markets. This skews my perspective a bit. The EP system applied to US prosecution would increase my cost 20X, minimum, while hugely distracting from actual R&D – not a pleasurable combination.

    I guess I don’t see much cruelty in a company getting burned for commercializing an invention clearly taught in the spec but not in the claims first applied for. The material is there, and the inventor has lived up to his side of the bargain with society which is “to teach”. The idea that corporations are innocent virgins skipping through the woods ignorant of the teachings of the patents, regardless of by spec or claims, is laughable, at least in my field. So is the idea of expecting the companies to approach you in good faith when they realize they are or would like to trespass, or acknowledging such interest generated by direct, face-to-face disclosure to them by the inventor. In my field, fundemental innovation originates in the independent and startup arenas, while the manufacturers are ‘fast followers’ which drives much of this dynamic. “Worthy Competitor”? Don’t hold your breath unless your favorite color is purple.

    As to the future, who knows? If the patent reform act goes through in the US, and EU practices shift enough, I may very well lop off an ear and join you in southern France :)

  23. Biotech examiner: “I have seen cases where the applicant has failed to disclose relevant art that they had to have known about. I wish somebody could do something about that, but not me.”

    I recall that 25 or so years ago, the USPTO had a system for a while where examiners were encouraged to report applicants to (I think) the Solicitor’s office if they suspected inequitable conduct like this. The Solicitor’s office then conducted an inquiry.

    Here’s my experience of that. At the time, I was working for a well-known and reputable UK-based multi-national (not my current employer). I took over some cases from a very competent and conscientious colleague who had moved on.

    In one of these cases, there had just been a first action on the merits. The US Examiner had cited the 18 month publication of an earlier UK patent application, filed by the same UK multi-national, but with a different inventor. In his view, it was a 102 citation that knocked out claim 1. He viewed this as inequitable conduct – in Biotech examiner’s words, we had “failed to disclose relevant art that [we] had to have known about”. He referred the case to the Solicitor’s office.

    So I investigated. Here’s what I found:

    1. The earlier application had been abandoned for lack of commercial interest, at an early stage some years before the present invention had been made. No corresponding applications were filed in other countries. Nevertheless, the UK Patent Office still proceeded to publish it at 18 months; it then died.

    2. Neither the present inventor nor my patent attorney colleague had been aware of this earlier application as such.

    3. However, when preparing the present application, my colleague had asked the present inventor what prior art he was aware of. The inventor knew that other people in the company had done earlier work in the field. My colleague added a paragraph to the “Description of Prior Art” in the current application, describing this earlier work and saying it was a prior public use, but without a documentary reference because neither he nor the inventor knew of one. He deliberately wrote claim 1 to avoid this acknowledged prior use.

    3. You’ve guessed it: the Examiner’s reference was describing the same earlier work.

    4. So why did the Examiner think it was a 102 reference, when the claim had been written to avoid it? Primarily it was a genuine difference of opinion as to the “broadest reasonable interpretation” of the claim language. My colleague felt his language already overcame the reference. The Examiner disagreed.

    5. Furthermore, either the Examiner hadn’t read the paragraph in the Description of Prior Art, or he hadn’t made the connection with the cited reference. When the connection was pointed out to him, he just woffled that it wasn’t clear.

    All of this is pretty ordinary stuff. Most practitioners will recognise that situations like this occur regularly, and it’s not worth either the Patent Office or the applicant getting worked up about it. The sensible answer is to amend the claim, to give the Examiner language that he agrees clearly overcomes the reference.

    From the Examiner’s point of view, he can tell himself that the amendment overcomes his 102 rejection. From the applicant’s point of view, the whole thing is merely about section 112: making the claim clearly read the way it was always intended to read. In the greater scheme of things, it doesn’t really matter which point of view is correct: either way the patent is granted with clear claims of the correct scope.

    But when an allegation is made of inequitable conduct, suddenly this ordinary inconsequential problem becomes hugely serious. I had to defend my colleague, the inventor and our employer. I did so on the basis that (a) the cited reference was no more material than the acknowledgement already made in the specification; and (b) given the circumstances described, there was no intent to deceive. Both these questions are relevant under the case law on inequitable conduct.

    The Solicitor’s office, in my view, simply lacked the tools to judge either of these questions. The best person to judge materiality would have been the Examiner – but he had missed or misunderstood the crucial paragraph in the spec and wasn’t about to admit it. And judging intent requires evidence about people’s states of mind – that can only really be evaluated in a proper judicial proceeding, which this wasn’t.

    In the event the outcome was rather unsatisfactory. The Solicitor’s office gave a half-hearted decision that there was insufficient evidence. A couple of years later, they stopped conducting these kinds of inquiry altogether, presumably because they realised that they were ill-equipped for it.

    It seems to me that the current USPTO management is heading back down a very similar path, with their proposals for ESDs and possible disciplinary action if it’s deemed that a practitioner didn’t get it right.

    Biotech examiner is right to say that he doesn’t want to do his part of such a job. And I see no prospect that OED would do any better a job than the Solicitor’s office did previously.

  24. Mr. Crouch has overlooked the key importance of stopping the USPTO from acting in the current manner. It is about money. The fact is that we pay for examinations. If we are required to alleviate the search and examination burden on the USPTO, this is a defacto fee increase. The USPTO still collects the same amount of money for performing less work. This is intolerable. The Federal Circuit, Mr. Crouch and host of others have the untenable position that federal bureaucrats are infallible have no responsibility to the public users of the system and that those of us in the private sector are merely trying to get away with something.

    This is exemplified in the McKesson decision wherein, once again, the Federal Circuit has refused to provide its core function: saying what the law is. In McKesson, once again, the Federal Circuit failed to clearly articulate the meaning of material for purposes of 1.56 disclosures. In light of this decision and the current situation with the USPTO, it is time to open a dialog concerning impeachment of Federal Circuit judges that draft opinions such as McKesson. For the Federal Circuit is of the mindset that examiners can be sufficiently non-diligent in their duties with which they are charged to justify the invalidation of a patent application, because a practitioner does not bring to the attention of the examiner information which any human of sub-standard intellect would be aware of. I address the ridiculous finding in McKesson of the practitioner not bringing to the attention of the examiner a Notice of Allowance that the examiner issued ten weeks earlier in a different patent application. This too is a defacto cost increase, only this time accepted by the Federal Circuit. By accepting examiner’s failure to keep track of a simple modicum of information and using the situation to invalidate a patent makes suspect whether judges require any activities of an Examiner beyond moving of paper. The qualification of judges to sit on a federal bench, or any bench for that matter that accept these transgressions of examiner is clear suspect.

    I personally demand more of my Federal Government, or any government for that matter. Mr. Crouch and his minions, on the other hand, advance a despotic form of government through their ideology of accepting less and less from the government and its agents while requiring more and more from the private sector. This ideology can and, in my opnion, has led to an un-American anti-democractic autocratic state that destroys people and property at will, and with impunity.

  25. To “Don’t Beat”, I agree that to be held to what you wrote up as your invention, before knowing all the art, can be cruel, but it’s also cruel to worthy competitors to allow an Applicant to rewrite claims, years after filing, to embrace inventions not perceived at the filing date. In the real world, corporations take huge investment decisions soon after the WO publishes. The problem is: how to provide reasonable legal certainty, to enable those investment decisions, important to the future prosperity of the territory (and therefore a devoutly to be wished for thing), to be taken with confidence. Europe’s Statute (EPC Art 69 and the Protocol thereto) expressly commands all infringement judges to strike a balance betwen “fair” scope of protection for the Applicant and “legal certainty” for the worthy competitor. OK, the infringement judge in Europe has plenty of “wiggle room” (more than enough to handle your artists and tree analogy) but how else are we all going to do justice between the worthy inventor and the equally worthy competitor?

    Where do you get the idea that European corporations are contemptuous of patent rights? News to me, that. You blithely suppose that, in Europe, more often than not there is going to be an “easy design around” that is not open to you in USA. Again, you surprise me. Try comparing the claims of a patent family. It is my personal experience that the EP-B has wide conceptual (valid) claims while the US issue has much wordier (narrower?) claims. Careful: check out first with your European patent counsel your suppposed bomb-proof non-infringement position in Europe and brace yourself for a shock. If companies in Europe are more casual about infringing than a US corporation, it’s because the penalties for infringing, imposed by courts in Europe, seldom bankrupt the infringer. One fears the injunction, not the damages. You are right, of course, that a lot has happened, at the national level in Europe over the last 5 years. On claim scope, and claim validity, the law in Europe is shaking down quite nicely, as the regular international meetings of the infringement judges bring more and more mutual understanding, and consistency. And they’re raising the quantum of damages too.

  26. MaxDrei – Thanks for taking the time in the other thread distill he differences between the EPO and US continuation practice down to its essence. I think the following statement by you captures it:

    “And, hey, if you writing the app couldn’t think what you had invented, but only realise later, why should you have a monopoly for that insight, backdated to your original filing date?”

    My response – take 100 artists standing in a circle around a tree and ask them to draw an accurate picture of it. The result is 100 different drawings with a wide range of accuracy, precision, style, and actual resemblance to the tree. The same is true of claim writing. The US system provides the opportunity to capture the 99 aspects of the invention not initially described in the original application, while the EPO provides you with a single chance to capture all 100 upfront. In cases where the application contains, for example, 7 discrete inventions, certain of which in combination represent product of especially profound benefit to consumers, the combinations of that which is unanticipated by prior effort in a field can be accurately represented in hundreds of different claims.

    This, first and foremost, is why European companies have so much contempt for patents. The ideas are in the spec but the one-shot approach to the claims guarantees easy design around the claims which are written at a time when the prior art is not yet known due to national and international publication schedules. In essence, the claim writing is done myopically, if not blindly. Add in the fact that precedents for claim interpretation at the CAFC and SCOTUS levels are subject to change within the life of the patents (hell, even EU practice has changed significantly in the last 10 years at the nation state level) and great attorney work can be brought to dust without the chance to “update” the claims.

    Simply Put:

    EP Patent Value = Attorney Quality + Euros invested
    US Patent Value = Invention Value

    The guy who graduates last in his law school class and lowest on the patent bar (while still passing) is still a patent attorney and inventors are rarely qualified to judge quality of counsel – I’ll stick with the US continuation system, thank you.

  27. Dennis-

    Your post on ESD’s is a bit naive, IMHO. The ESD requirement is one that not only should be struck down as it requires attorneys to do work that is against the interest of their clients and is thus an unethical requirement, it also is stunningly poorly written and vague. I think it was poorly written intentionally so noone would ever file one and thus the office knew (see video at KeelyDrye) that they created a huge issue under the inequitable conduct rules. To act as if they can retroactively impose the ESD and the 5/25 limit shows an extraordinary naive approach. If you had been there, you would know that the Judge attacked the ESD requirement and did not seem to think the PTO response to his direct question on point sufficed to allay his fears.

    Even if re-drafted, the entire idea of an ESD is an illegal one. A hard claim limit is also probably unconstitutional if retroactive, and illegal if proactive, IMHO.

  28. BabelBoy, an afterthought: before the EPO perfected its objective, hindsight-free, blockbuster PSA approach to obviousness, the Germans thought they had one obviousness standard for their 10 year Gebrauchsmuster patent, and a different, higher, obviousness standard needed to vindicate a full 20 year national patent monopoly. Germany’s Supreme Court just came to the painful (goodbye 100 years of jurisprudence) belated realisation that there are no degrees of obviousness, when it’s handled objectively. Instead, it’s a straight yes no issue.

  29. To BabelBoy: your finger on a good point there. Is obviousness as long as a piece of string, or is it binary. You think the former, and I the latter. I think I am in tune with lay people (and we need them on board if the patent system is to hold the respect of the voter)who would struggle just as much to recognise degrees of obviousness as degrees of uniqueness or of pregnancy (even though some things are manifestly obvious and some only obvious when you study the thing carefully. I think that, in the end, it comes down to a binary decision, once you have gone through the preliminary steps of:

    1) establishing the notional PHOSITA reader correctly

    2) establishing correctly the common general knowledge of that reader

    3) construing the claim in suit, through the eyes of that informed reader

    4) asking whether anywhere within the scope of that claim, so construed, and in the light of the entirety of what was available to a member of the public on the effective date of that claim was, on that effective date, there is sitting any subject matter that is (wait for it) OBVIOUS.

    That’s (as far as I am concerned)a pure binary question. That’s how it is in England: objective and binary. Granted, I know of no other jurisdiction, apart from the EPO, where this is so, but nevertheless I think it’s been proved to be do-able.

  30. I have a problem with the treatment of 5/25 and continuation restrictions in the rules being characterized as different or separate issues in this litigation. 5/25 restricts the total number of claims in a family. Thus effectively restricts continuation practice. The retroactive effect is devastating for larger families which cannot retroactively be unwound. What if large number of inventions are disclosed in existing and published applications of a family. 5/25 could limit ability to claim those inventions because of the ridiculous requirement of arguing vaguely delineated patentable distinctness. What if divisional of earlier filed application in family gets examined after an improvement in a subsequently filed CIP all filed under existing rules. Broader claims in earlier filed case are not patentably distinct from improvement. May put you past 5/25. There was still a bargain, giving up trade secret for disclosure and protection under the patent system. The basis for the patent systme…to promote useful arts by encouraging disclosure.

  31. “Patent examination is not a “miserable” job, but junior examiners only make ~$60,000-$70,000 (before taxes) which doesn’t buy you very much in Northern Virginia.”

    The answer to the backlog problem is simple. Raise filing fees by $400 for a large entity ($200 small entity). The new $1400 large entity filing fee would still amount to less than 10% of the total preparation/prosecution cost of a patent to the applicant. I can’t imagine any of us would complain about such a raise (especially if the money was used wisely).

    Hire more examiners. Pay examiners more. Lower production goals and give examiners bonuses for exceeding production. Open satellite offices of the USPTO to attract well qualified candidates that don’t live in the Va area.

    Why is this so difficult for the USPTO to do? Once again, the answer to the backlog problem is simple. Time for the USPTO to forget the new rules and do something constructive.

  32. “And the conscientious examiner I know who got a “letter” that makes him have to be above 95% or 100% each biweek (regardless of dog cases) is concerned ZERO about money, and completely about production to save his job.”

    Whatever – - I don’t know of anyone who’s left the PTO to take a job for LESS money.

  33. “I am not going to leaf through the scanned pages of submitted references to find it.”

    Biotech examiner, if the IDS comes in with scanned references and you need text searching, why doesn’t the USPTO IFW system convert it to a “searchable pdf” or like searchable format (e.g. with Adobe Capture that uses OCR) so that examiners can word search the [scanned] journal articles, etc. that come with the IDSs? Makes scanning references much quicker and more effective.

    On the outside, we convert the U.S. Patent images from the USPTO web site to searchable pdfs if they will need to be analyzed in depth… really nice to see the patent image with highlighted search terms even in the drawings.

    link to adobe.com

  34. “I didn’t say money was the ONLY reason, just one of them”

    I thought you said money was the primary reason examiners leave, not just one of them?

    All (not most) the examiners I know are stressed about production, and none (not a few) have complained about money (except having to work non-paid overtime to meet production goals). And the conscientious examiner I know who got a “letter” that makes him have to be above 95% or 100% each biweek (regardless of dog cases) is concerned ZERO about money, and completely about production to save his job. Get rid of the bad production goals (and the arcane count and incentivizing system) and you solve the problem.

    Production is the primary reason examiners leave, not money. See the GAO report. The USPTO will do anything to take the focus off of management and mismanaging as being the very heart of all the problems the agency faces today… blame it on money, applicants, lawyers, high cost of living, non-harmonization, harmonization, etc.

    “Hi everyone, my name is Dave, and I’m a USPTO manager.”

    “Hi Dave!”

  35. “Patent examiners leave the PTO for primarily the same reason that any other person leaves any other job, i.e. to make more money somewhere else.”

    “That’s *not* what Examiners told the GAO, though I’ve heard management say as much (or give other excuses like the job isn’t a good fit).”

    I didn’t say money was the ONLY reason, just one of them – - of course, production factors in too but this is necessarily tied to an examiner’s salary since working unpaid overtime translates into less $$/hr if you want to look at it that way. That being said, if an examiner is being offered at least 2x (nearly 3x in some cases) what he/she is currently making inside the PTO, you can see that it’s not a very hard decision to make.

  36. “Do Examiners ever review the art submitted in the IDS?

    My feeling is always that they don’t bother which is one reason I think the IDSs should be scrapped.”

    I generally agree with Anonymous 2100 examiner. I don’t consider myself one of the “other examiners”, but I am sure such examiners exist.

    The key word in your question is “ever”. The IDS can be an important part of the search, not only for prior art but to evaluate the state of the art with regard to 112 and 103 issues. It doesn’t happen often, but sometimes an IDS does have a good reference that I would not have easily found otherwise. So I can’t ignore the IDS.

    The attention given to the IDS doesn’t just depend on the examiner. It can depend on the particulars of the case, and on the IDS itself. When I reach a point in a case where I know that I need to look for a specific teaching or suggestion in the prior art, I am not going to leaf through the scanned pages of submitted references to find it. In biotech, most of the relevant art can be found by text-based searching, unless there is a sequence. I do text searching first. Often I will find references and then realize after the fact that they were on the IDS all along. In those cases, it doesn’t seem like the IDS was very useful.

    If I have already narrowed my search to a particular question, it doesn’t take long to decide whether a listed reference is relevant. It might not look like much to a person watching, particularly if the IDS is bloated with marginally relevant references, but the references do get considered.

  37. “Patent examiners leave the PTO for primarily the same reason that any other person leaves any other job, i.e. to make more money somewhere else.”

    That’s *not* what Examiners told the GAO, though I’ve heard management say as much (or give other excuses like the job isn’t a good fit).

    Anyway, the GAO asked Examiners recently what are the top three reasons that would cause you to leave the PTO, and here’s how they answered (with the percentage of examiners that so answered):

    Top three reasons to leave USPTO:

    Production goals: 67%
    Voluntary/uncompensated overtime worked to meet production goals: 59%
    Paid leave used to meet production goals: 37%
    Amount of quality review of work: 26%
    Current total pay: 16%
    Opportunities for career advancement: 15%
    Caliber of your current supervision: 13%
    Extent to which the job fits your work style: 11%

    Seems like Examiners think some problems of the job are a lot worse than pay… the report is here, with page 39 having the question and responses:

    /media/docs/2008/08/d071102.pdf

  38. “Is being a patent examiner such a miserable job that it is impossible for the Patent Office to attract and keep enough good examiners to examine all of the cases which applicants have prepared and paid to have examined?”

    Patent examiners leave the PTO for primarily the same reason that any other person leaves any other job, i.e. to make more money somewhere else.

    Patent examination is not a “miserable” job, but junior examiners only make ~$60,000-$70,000 (before taxes) which doesn’t buy you very much in Northern Virginia.

  39. “Do Examiners ever review the art submitted in the IDS?”

    Any question that starts with “do examiners ever…” can easily be answered with “that depends on the examiner”.

    In regard to references submitted by Applicants, some examiners will read (or at least quickly scan through) the references cited to determine what Applicants generally regard as the particular subject area into which the claimed invention covers and maybe find a good reference. Other examiners will simply initial the IDS without ever looking at the references. Such is the state of examination at the PTO…

  40. MaxDrei

    I have a number of solutions to the obviousness dilemma, basically because my weekends are so dull I don’t have much else to think about.

    One solution is to measure the length of the “inventive step,” i.e., the distance between the PA and the claim. Then issue patents that have lifetimes proportional to the length of the step, say in increments of 5 years. Huge, flying leaps like the diode get 20 years; tiny, pissy increments like most of the craap passing through the PTO get 5 years.

    All findings of novelty result in a 20 year grant.

    All dependents would get the lifetime of their independent. Then — and here’s the real kicker — the lifetime of the whole patent is the lifetime of the shortest claim. Ha, talk about cutting out the trivia . . .

    The problem is the same now as it has always been: obviousness, unlike novelty, is not a binary decision. It’s a spectrum. It’s analog. It needs an analog or pseudo-analog solution.

    I have not prosecuted French or German patents, but I have heard that one or both of these jurisdictions take a similar approach. I’d love to know more about that.

  41. Biotech examiner, a question.

    Do Examiners ever review the art submitted in the IDS?

    My feeling is always that they don’t bother which is one reason I think the IDSs should be scrapped.

  42. I want you to fix it too, JohnG and other readers, because English common law fact-finding is inherently vastly superior to civil law (the world’s default legal system) fact-finding, but only when proportionality is achieved. Come on America, put your brilliant collective mind to it. Everything’s possible, if you want it badly enough. You can do it.

  43. Up to 1978, it was thought in UK that examining obviousness ex Parte, pre issue, was impossible. So, the PTO did novelty pre-issue and didn’t touch obviousness. The court did obviousness for the first time, only if and when there was litigation. Then, in 1978, along came the EPO and the “Problem and Solution Approach” to obviousness, and everything changed. Now, obviousness in Europe is routinely done pre-issue (occasionally also in immediate post-issue opposition) and it takes no more effort than examining novelty or sufficiency of disclosure. But that’s all in civil law Europe, with no Rules of Evidence, and no Binding Precedent. How to reconcile proportionality, in matters of patent validity, with adversarial American-style English common law, in what is by far the world’s most valuable patent jurisdiction, is beyond me. And beyond anybody else, it seems.

  44. “A fundamental idea behind the US Patent Office that many people do not understand is that even if the USPTO was working exactly as it was intended, applicants will not be producing ‘perfect applications’ and examiners will not be producing ‘perfect searches.’”

    Exactly. But how many people in USPTO management understand this? Here’s my post to Patently-O from August 17, 2007 on the same concept:

    “I have always thought that patents undergo a “bifurcated” examination, i.e. in two stages.

    All patents receive a first stage examination at the USPTO. This helps weed out the majority of silly claims. This first stage examination is non-adversarial (i.e. ex parte, though I realize the USPTO represents the public) and it is, economically speaking, relatively inexpensive (and therefore not thorough) so as not to overburden society.

    The second stage examination is much more expensive, but only a small minority of patents ever enter this stage. This examination occurs in an adversarial process (licensing negotiations, litigation, etc.), it is a great deal more thorough, and costs a great deal more than the first stage. However, because it only affects a small n% of the patents, society in not overburdened by the cost of this stage either (yet).

    To do a complete examination on all patents simply doesn’t make economic sense (e.g. because no one except the patentee is interested in the validity of many patents that issue). However, one needs to ask, at what point has the first stage become so ineffective that it should be replaced?”

    link to patentlyo.com

  45. “I agree with you. This is exactly why I don’t want that responsibility. A good searcher with plenty of time and resources can find art that I missed. I have to stop looking as soon as I find art that “works”.”

    And this is precisely why an issued patent only has a “presumption of validity” and can be challenged in court.

    A fundamental idea behind the US Patent Office that many people do not understand is that even if the USPTO was working exactly as it was intended, applicants will not be producing “perfect applications” and examiners will not be producing “perfect searches.” For applicants to produce “perfect” or even “nearly perfect” applications, applications would take several years to produce, would probably include elaborate descriptions, pictures and videos of working models, experiments, etc. and would cost over a million dollars each. Similarly, for Examiner’s to produce “perfect” or “nearly perfect searches”, Examiner’s would need to spend months analyzing all of the applicant’s application including the other material described above, do months of research in the field, possibly including talking with experts in the field, doing tests to validate the accuracy of the applicant’s, material, etc. Such an examination would probably cost $100,000 or more to conduct on average.

    However, long ago, it was decided that we would make the patent prosecution process a compromise. Applicants would submit applications and claims meeting particular standards that were reasonable and not onerous and Examiner’s who were experts in their technical specialty would conduct a reasonably thorough seach in a reasonable amount of time. By keeping expectations lower than a “perfect application” and a “perfect examination” the cost of the process to an applicant can be kept to a few tens of thousands of dollars and sometimes as little as $20,000 or less.

    Most inventors and companies have viewed this a a good deal: they only get a presumption of validity and not incontestable validity, but they don’t have to pay the million dollar or more price of a patent lawsuit every time they want file a patent.

    The fact that the USPTO management is now trying to hold Applicants and Attorneys to a “perfect application” standard with their new rules shows just how little USPTO management understand how the USPTO is supposed to work.

    And as I have stated above, if all of the rules the USPTO management wanted were implemented, what valuable service would the USPTO really provide to a patent applicant? Why would a patent applicant not be better served by a pure registration system such as is used for copyright?

  46. “I still contend, though, that even if my searches are flawed, I am more likely to do a good search than someone who does not know my art.”

    Biotech examiner, I agree with you 1000%. This is where turning the search over to the applicants loses all its credibility. (An applicant who is represented by a patent attorney from a general IP or outside counsel firm will likely *never* get a preexamination search performed by an expert in the art… the searcher will be trying to learn the art and do “pattern recognition” on close references he only half understands at the same time.)

    This is where the USPTO management is clueless about searching. See our page here, where we tried (in vain) to educate the powers that be about searching:

    link to nipra.org

    “…It is in part curious to us that the USPTO management, by these rules, is attempting to turn over the “search” to the applicants, as if they believe that private researchers can inherently do a better job with the search than professional Examiners. We would like think the opposite, that Examiners should (because of their better tools, better training, better technological specialization, and higher level of required scientific/technical education) be able to do a better job than private researchers. Of course, the quality of a search is inextricably linked to the time that is allotted to it. But the USPTO management seems to be oblivious to this fact, not realizing that if Examiners were permitted to put as much time as we into a search, their results would be better than ours, for all the reasons we have mentioned. And if the USPTO management were better in touch with the examining corps and capable of understanding the issues they face, we believe the USPTO would have no trouble filling its Examiner hiring quota. And perhaps even a few ex-Examiner NIPRA members might return to the Office.”

  47. “examiners (who miss references themselves) will be given the responsibility of determining the sufficiency of applicant’s search with regard to whether they (the applicants) have missed any references”.

    I agree with you. This is exactly why I don’t want that responsibility. A good searcher with plenty of time and resources can find art that I missed. I have to stop looking as soon as I find art that “works”. That doesn’t mean that I did not put an honest, good faith effort into searching. Then I am supposed to say that someone else’s search is inadequate, and defend my position when challenged? No thanks! How would arguing over that advance prosecution? How can anyone win that argument? This is but one of the many reasons that the proposed rules would not reduce the backlog.

    I still contend, though, that even if my searches are flawed, I am more likely to do a good search than someone who does not know my art. That is, if I am given the time, which goes back to the point I made before about changing the way my performance is evaluated.

  48. “But consider this: the one person most qualified to judge whether a search is adequate is me. I search the relevant art all the time.”

    Au contraire, Biotech examiner: I check your work! (Not yours personally, but that of U.S. Patent Examiners.)

    In having evaluated 300+ patents (mostly U.S.) which have been asserted in industry over the course of the last 15 years, I know that in much more than half the cases better (i.e. anticipating) art than the Examiner found can be uncovered if a proper search is performed. And more often than not, the Examiners have missed *patents*, not (just) literature. (I have offered to share this data with USPTO management… do you think they’re interested?)

    Biotech Examiner, what if I deemed your FAOMs insufficient for the same reason that USPTO management wants to deem ESDs insufficient? I know you’re doing your best, but searching is not an exact “science”, and you can *never* say you haven’t missed anything! Don’t you see what’s happening here: examiners (who miss references themselves) will be given the responsibility of determining the sufficiency of applicant’s search with regard to whether they (the applicants) have missed any references.

    It’s not that the applicants will necessarily do a worse search than the Examiner. Rather it’s that likely both will do imperfect searches, but only the Examiner will have the regulatory ammunition to cut off the applicant!

    But we all will reap what we sow, eventually.

  49. “Do you understand: the vague standard for knowing whether a search (results) will be “deemed” insufficient as well as the limited redress available in the case it is so “deemed” will always make you unable to know beforehand whether you have satisfied AND whether you even *can* ultimately satisfy the Rule 265 requirements.

    Or do you think the USPTO going to develop an “Aw, shucks, it looks like they tried really hard on this ESD – let’s give it to them even though they missed the closest art” attitude? Where’s the safe harbor in that? The USPTO clearly wants to be able to arbitrarily hold the inventor of a complex invention to whatever “examiner standards” it might “deem” appropriate at the moment – to use as a noose if necessary on those applicants who would file more than 5/25 claims.”

    As an examiner, I do not want the responsibility of making this judgment. I have seen cases where the applicant has failed to disclose relevant art that they had to have known about. I wish somebody could do something about that, but not me. The quote above illustrates why–I could spend a lot of time and effort arguing over this. I don’t have time for it. My time should be spent on THE INVENTION.

    But consider this: the one person most qualified to judge whether a search is adequate is me. I search the relevant art all the time. As an applicant, you certainly would not want some generalist making this decision. I don’t want OIPE or someone else preventing applications from reaching my docket just because someone did not see the right database or key word on a form. If PTO management wants evaluating compliance with the duty to disclose to be part of my job, then there needs to be a major overhaul of how my performance is evaluated.

  50. I don’t know how other practitioners perform searches but I perform searches before drafting claims so that I can avoid the prior art.

    Moreover, I don’t see how a computer can map references to claims that do not yet exist. Also, the best prior art may not be published at the time of the search but may become available before filing.

  51. Dennis,

    I think it would be beneficial to focus on the weaknesses of the USPTO’s case rather than providing possible strategies for them to pursue. Nothing proposed by the USPTO addresses ways to reduce the backlog. As such, these regulations are a sham.

  52. In light of the stated policy of the OED by Harry Moatz that any failure to meet the requirements of the ESD rules is a grounds for a patent attorney to lose his/her license, what real benefit does an applicant gain from the Examiner examining the applicant’s application?

    Sure, the patent would have the fig leaf of a “presumption of validity”, but consider that if the Examiner makes a rejection based on references not cited by the applicant or based on a different interpretation of the references as provided by the ESD, is there any way to overcome this rejection? Wouldn’t the failure to cite the references and/or the failure to provide the “correct” combination show that the attorney/applicant has attempted to commit a fraud on the patent office according to OED?

    Effectively according to OED policy, once an applicant submits an ESD, the only purpose the Examiner serves in the process is to determine if the applicant/attorney should be subject to a charge of inequitable conduct.

    Or let’s say that the USPTO figures out some way that an Examiner’s rejection doesn’t automatically qualify as a grounds for the USPTO causing the patent application to be abandoned and the attorney’s license revoked due to inequitable conduct. Why wouldn’t the Examiner’s Office Actions be a blueprint for an infringer to allege inequitable conduct during litigation?

    If the USPTO gets its way and ESD-type documents must be filed in all cases, how is a patent applicant better off under the proposed USPTO system than the applicant would be under a pure registration system? The tremendous increase in inequitable conduct issues that could be raised at trial would seem to overwhelm any benefit of the presumption of validity that a patent has. Why not just have a registration system and have the two sides fight it out in court as to whether the claims are valid? At least then the infringer wouldn’t be able to club the patentee with the patentee’s statement in the ESD/IDS and the examiner’s statements in the Office Actions.

    I would also be interested to know how, given that (1) one of the purposes of “Patent Reform” is allegedly “greater harmonization” with the rest of the world and (2) ESD and IDS requirements are not part of the patent examination process in any other major patent office, the USPTO can legitimately justify the ESD and IDS requirements as furthering “Patent Reform.”

  53. Any one preparing an ESD without an eye towards the impact on litigation, should have their whole practice run by a machine.

  54. Re: ESD’s: “at least one company claims an automated approach (Link).”
    How can anyone reading the ESD requirements in the new rules seriously think that this can be done by software, or that the PTO would accept that, especially after their recent public announcementts that every reference cited must be personally read by the attorney, plus the other [about to become final] new rule limiting the number of references that can be cited, irrespective of how many are uncovered or cited in searches?

  55. Re: the ESD.

    The PTO can easily rectify the ESD vagueness issue so to survive a future court challenge: publish a new rule incorporating the content of the Faile declaration; Mr. Andrew Faile is Group Director in Technology Center 2600 of the PTO, and it was he who spoke directly to the ESD rule in a declaration submitted by the PTO. He stated how an applicant can comply with the ESD Rule.

    The court expressed “serious” concerns with the ESD rule. First, GSK’s argument was not difficult to win, and it has the PTO to thank. Because the PTO published further “guidance” documents to assist applicants in meeting the requirements of ESD after the Rules were published in August essentially provided GSK with proof that the Rules were vague. Second, the Court noted that the guidance documents were published outside of the notice and comment rulemaking process violating the APA.

    Thus, in order to establish rules to rectify the ESD vagueness issue, the PTO would have to incorporate the statements of Faile’s declaration (which discusses content of the guidance documents) into a new proposed rule, publish it in the Federal Register to comply with the notice and comment rulemaking of the APA, and implement the new rule afterwards.

    In my opinion, these actions would address the Court’s “serious” concerns with the Rule about the ESD.

    —————–

    However, there is another issue not raised concerning the ESD (the vagueness issue was sufficient). 35 USC § 111 defines the application to consist of simply a specification, a drawing, and an oath. If the PTO can reject an application or keep it from examination due to a missing ESD, then the PTO is enlarging the scope of the definition expressly stated by Congress. The PTO shall “facilitate and expedite the processing of patent applications” under USC § 2(b)(2)(C), where said application has already been defined under § 111. If the PTO is to facilitate the process of the patent application, such facilitation must conform to the Congressional definition of the application – not enlarging it. Congress has expressly made that determination.

    If the PTO wishes to include an ESD in the application, in my opinion, it must go to Congress and have the ESD added to § 111. The applicant has a substantive right to file an application as defined by § 111 (i.e., without any ESD) and have it examined without a PTO rejection. This is not procedural, i.e., no Chevron-deference. If not…

    …this issue awaits further litigation. Comments?

  56. If the (or an) argument in support of allowing the ESDs to go forward is that there is an automated approach available, why not instead have the PTO use the software, rather than applicants. Clearly the burden on examiners would be eliminated/substantially reduced by the magic software, which is the main rationale for the new rules. The PTO has already acknowledged the pitfalls of practitioners submitting ESDs in view of inequitable conduct before the courts (e.g., the Walsh video).

  57. from link to forbes.com

    Tech Companies Paid Lobbyist $300,000

    “A group of high-tech companies paid Elmendorf Strategies LLC $300,000 in the first half of 2007 to lobby the federal government in favor of patent reform, according to a recent disclosure form.”

    Well, I’m sure that’s just the tip of the iceberg (looks like this will be a winner for Washington regardless of how it turns out for the country).

  58. “I think ironicslip misses my point, I wasn’t suggesting that one filter is better than the next… But as GSK argued (and won) is that until there comes an objective criteria for how to search then there is an inherent inequity between companies who subscribe to certain databases and the public databases.”

    ip-esq … i am agreeing with you … a database, however, is not a search or search logic, which is what can cause more inequity.

    and i agree with johng we are not filing taxes.

    the whole point is to have civil servants assisting with the birthing of new ideas into inventions – in a manner as objectively aligned with that goal as possible. everyone can google, so patent examiners need to be that much better. politicization should not be taken lightly.

    as with individual rights the rights of inventors need to be treated carefully and clarified in an on-going manner — it is our industrial policy. the american patent system is a microcosm with an underestimated but huge impact the success of the american experiment.

    discouraging this or making it less accessible is truly a slippery slope… then we can see what the proponents of “reform” mean by fair “royal”-ties.

    the pat choate paper presenting objective evidence of why the system works is especially telling.

  59. 1. So, what is the required search fee actually paying for?

    2. Under treaty the search report from either the USPTO or EPO is sufficient, but now its not?

    3. Is Moatz violating the USPTO’s own ethical standards by threatening adminstrative action?

  60. I disagree there should ever be a requirement to provide a search (as long as the PTO examines). While I push to have a search performed before I write an application, it is illogical to think we can “help” the PTO with such a basic search.

    The PTO examiner (and equivalents in other patent offices), at least in theory, has a special ability no one else would pursue. They search a very limited area of prior art over and over again. Believe it or not, after a few years, they become familiar with it.

    How would any outside searcher acquire this speciality and provide “better” art than the examiner? There may be some very good ones, but in the limited time availble for search, the examiner is generally most cost effective. After all, it is the core function of an examiner.

    I think it is a slippery slope we should avoid, unless we are willing to go down the path to registration.

  61. First of all, this is a PI and nothing was finally decided about the merits. There are so many more facts, when further examined by the court, that will support all of GSK’s arguments.

    Lame post.

  62. Dennis, I liked your “just a document” comment about the ESD. :-)

    Below (I believe) is all the guidance we’ve been given about whether the search *results* of an ESD search will be sufficient or not. Notice the quandary you’re placed in if the search results are not sufficient.
    _____________
    FR 46800

    “If the preexamination search is poor, then applicant runs the risk that the preexamination search or the examination support document will be deemed insufficient.”

    FR 46804

    “Simply because the Office knows of a closer prior art reference (that is not applicant’s own work) than the prior art cited by the applicant is generally not enough to hold a preexamination search insufficient.

    An examination support document could be deemed insufficient based on an insufficient search.

    Any applicant who disagrees with a requirement for an examination support document or the holding that an examination support document or preexamination search is insufficient may file a petition under § 1.181. As provided in § 1.181(f), the mere filing of a petition will not stay any period for reply that may be running against the application. The Office will make every effort to decide petitions in a timely manner.”
    _____________

    Do you understand: the vague standard for knowing whether a search (results) will be “deemed” insufficient as well as the limited redress available in the case it is so “deemed” will always make you unable to know beforehand whether you have satisfied AND whether you even *can* ultimately satisfy the Rule 265 requirements.

    Or do you think the USPTO going to develop an “Aw, shucks, it looks like they tried really hard on this ESD – let’s give it to them even though they missed the closest art” attitude? Where’s the safe harbor in that? The USPTO clearly wants to be able to arbitrarily hold the inventor of a complex invention to whatever “examiner standards” it might “deem” appropriate at the moment – to use as a noose if necessary on those applicants who would file more than 5/25 claims.

    Regarding automatic searches, yes, I or PatentCafe could make an automatic algorithm to follow the “search templates” with keyword searching (or AI) and perhaps satisfy the “form” of the ESD search with 98%+ accuracy (e.g. assuming the templates don’t change without notice), but that will never guarantee the search *results* – no automated search can! An examiner with 12 years experience may be aware of 3 better references than the ESD search produced even prior to his search. Then what recourse do you have? Do you think the PTO will tell you the patent numbers of those 3 references when they deem your search insufficient? And what if someone is misconstruing those references or your claims? What redress then? (Note too that searching is perhaps more an “art”, or a mixed art/science, than a science. Expert searchers in any given art are very few and far between.)

  63. Is being a patent examiner such a miserable job that it is impossible for the Patent Office to attract and keep enough good examiners to examine all of the cases which applicants have prepared and paid to have examined?

    If so, how can it be made less “miserable”?

  64. “I’m not certain how you conclude that the 5/25 claim limit won’t be an issue on summary judgment. Cacheris held that GSK demonstrated a “real likelihood” of success on the issue of whether the ESD requirements were impermissibly vague (see page 31 of the opinion).”

    The ESD issue is separate from the claim limitation issue per se. For example, the ESD could be eliminated and the claim limits could simply be hard numbers. That would remove the ESD vagueness issue.

    It would also introduce a helpful note of reality into the proceedings, since the difference between a hard 5/25 limit and a “soft” 5/25 limit where all you have to do to exceed 5/25 is to commit suicide on-record isn’t worth considering.

    The Cacheris opinion speaks to claim limits at the top of page 25, where it is indicated that neither party has shown strong likelihood of success

  65. agent007 writes: “For example, Moatz indicated that OED may be “interested” in cases where a claim is found unpatentable over a _combination_ of references cited in the background section of the spec.”

    Interesting, I guess we shouldn’t mention references in the spec???

  66. Dennis,

    I’m not certain how you conclude that the 5/25 claim limit won’t be an issue on summary judgment. Cacheris held that GSK demonstrated a “real likelihood” of success on the issue of whether the ESD requirements were impermissibly vague (see page 31 of the opinion).

  67. To Kevin Noonan:

    I agree that the search is usually a good idea. However, under current law, the pertinent search results should go on the IDS, the claims should be drafted accordingly, and adding anything else to the record is playing with fire in a coal mine.

    Especially, as you rightly point out, in view of OED’s heavy-handed interference in this matter.

    The following link leads to an interesting chart package by Mr. Moatz (from the NAPP annual meeting 2006), which goes further than “just” being required to read every IDS reference in its entirety.

    link to ip-updates.blogspot.com

    For example, Moatz indicated that OED may be “interested” in cases where a claim is found unpatentable over a _combination_ of references cited in the background section of the spec.

  68. 007:

    I don’t think there is anything wrong with requiring a search – it is the characterization aspect that it problematic. Besides the inequitable conduct risk, there is the possibility that you will simply be wrong; what we do it complicated, and even the best effort can be inadequate (which is why reissue practice exists). A pre-filing search might “clean up” some weak disclosures (insofar as this is a problem; like all anecdotal evidence it isn’t necessarily statistically reliable). But doing a search has got to help quality.

    The caveat is Harry Moatz. In his recent talks, he has asserted an ethical requirement that a pracitioner read (and presumably understand) every paper submitted to the office. Sounds OK, but what if the inventor says” “here are 10 references that I think are relevant” – you don’t have to read the references for your Rule 56 duty to attach. But, according to Mr. Moatz, if you want to fulfill that duty you have to read the reference. And, of course, this increases the likelihood that submitting the references will later in litigation form the basis for an inquitable conduct charge.

  69. There is very high chance of Fed Circuit siding with PTO if it takes this case up on appeal — my two cents.

  70. I think ironicslip misses my point, I wasn’t suggesting that one filter is better than the next… But as GSK argued (and won) is that until there comes an objective criteria for how to search then there is an inherent inequity between companies who subscribe to certain databases and the public databases.

    I agree with agent007 that the whoel thing is flawed and agent007 points out a very good example of how.

    At the end of the day, I think the PTO needs to get a handle on how examiners actually examine and search rather than putting the burden on the applicant. Maybe the PTO would be better served by tightening up the 112 requirements so examiners could better search. Although that has problems too.

  71. IMO, the ESD is a fundamentally flawed concept, because it distorts the roles and responsibilities of the Office and Applicant. The applicant’s primary job on initial filing is to comply with 112. The office’s primary job in examination is to enforce 102, 103, and 112. The applicant should not be required to pre-emptively enforce 102 and 103 against itself on-record, especially in view of the resulting inequitable conduct issues.

    In certain special cases, (e.g., to expedite examination), something like this can be reasonable as a voluntary choice for Applicants, but as “punishment” for exceeding 5/25 it is ridiculous, and to require it across the board, as allowed by the House bill, would be an outrage.

    It would be far better to enact a hard claim limit than to provide an opening for this noxious ESD practice to take root.

    Thus, fixing the vagueness of the ESD requirement seems much like putting lipstick on a pig — it’s still a pig when you’re done.

  72. why would one database, or “ESD-filter”, be *better* than another? as ip-esq argues, and taken a step further … though this blog is apparently more lawyer/examiner focused, imho, the system should actually focus on how individuals and those with less resources are served as a so-called “trial balloon” … if the aim of the alleged reform is to reduce litigation … it is quite easy to game a search system, predictive or not … a patent is a subjective document it is the *objectification* process (the prosecution and the litigation) that is getting more expensive and less accessible …

  73. I think the CON rule is over based on GSKs argument that the PTO has no authority. I have a suspicion Congress will address the issue in the Patent Reform Bill somehow…

    However, I like the vagueness issue relating to the ESDs, I realize the Court only mentioned it, but this is where the practical application really comes to play in terms of equity to parties involved.

    Suppose, the PTO actually changes them to overcome GSKs argument. Is an applicant only required to search public databases? If so, what abou the propietary databases? What if an applicant cannot afford a subscription? Are they not allowed to file? What about litigation. I think the regs relating to an ESD actually pose more questions that they resolve.

    In any event, it will be interesting.

  74. “The PTO needs both rules for the scheme (in both senses of the word) to work, as Curious implies. If I can file unlimited continuations, I can file as many 5/25 applications as I want. Also, the court indicated that GSK was also likely to prevail on the impermissively vague guidelines for ESDs.”

    Actually, if claims in related applications (and maybe even issued patents) can be counted together, it is still possible to enforce substantive claim limits, even if there is no limit on the number of continuations.

    One might be on uncomfortably weak ground arguing that 35 USC 120 and case law stand for the proposition that an arbitrary number of essentially indistinguishable claims can be filed in separate applications.

    On the other hand, using claim limits as a proxy to shut down continuation practice isn’t inspirational either.

  75. “…Even the rule challengers win on those two arguments, the PTO would still be able to implement portions of the new rule that limit the number of claims in newly filed applications…”

    I daresay that Section 41 would pose an informidable hurdle. For example, consider that the portion re costs for more than 20 claims references both dependent and independent claims.

  76. Some level of retro-activity is unavoidable in something like this. I actually thought the PTO did a decent job in the proposal of addressing this concern.

    1) Refunds would have been available for excess claims paid for but canceled prior to examination (e.g., to comply with 5/25). So it was not a simple “taking” of the excess claims fees.

    2) The “one more continuation” provision was a reasonable way of transitioning to limited continuation practice. A strict view of “no retro-activity” would lead inevitably to an unfair situation where an Applicant having a case on file prior to the magic date would be able to file an unlimited number of children of that case, while applicants on file after the magic date would not have this ability.

    For this reason, I thought Plaintiffs’ strongest argument by far was that the PTO lacked the authority to make these rule changes, particularly with respect to limiting the number of continuations.

    Congress has no such limit on its authority, so it will be interesting to see how the reform efforts there play out.

  77. Dennis:

    The PTO needs both rules for the scheme (in both senses of the word) to work, as Curious implies. If I can file unlimited continuations, I can file as many 5/25 applications as I want. Also, the court indicated that GSK was also likely to prevail on the impermissively vague guidelines for ESDs.

    And, if things continue to go GSK’s way, besides delaying any rule change for at least a year (for the time required for the SJ motion hearing, the district court’s decision, the CAFC appeal, notice of new rulemaking and then promulgation and setting a deadline) the PTO will have to make sure the rules are not retroactive, prompting a GATT or AIPA-like flurry of new filings. A lose-lose for the office, and by that time January 20, 2009 will be right around the corner.

    I, for one, would appreciate Patently-O taking a stand on the issue. I can glean some of your leanings on the matter, but my gleanings may be misleading so I leave it to you to enlighten all of us.

  78. so you would file an application with 5/25 and then very soon thereafter file numerous continuation applications, each with 5/25????

  79. If the PTO restricted applications to one claim, then it could still be framed as solely a monetary cost. However, the PTO shouldn’t get to change the cost of examining an application after the examination has already been paid for. Assuming an application meets all of the filing requirements at the time it is filed, applicants should expect that the PTO will uphold its end of the bargain and exam the application. Applicants aren’t required to send in a check every time the PTO raises filing fees, but making this rule retroactive is equivalent to doing just that.

    Prospectively, the ESD requirement presents a choice between paying more to file multiple applications or paying more to have an ESD. However, as applied to currently pending applications, it amounts to breach of contract.

  80. I am not sure I would trust news from the linked site for the “at least one company claims an automated approach (Link).” The linked site has been compromised by Iraqi-Hacker, who targets web sites based in the Mid-East.

  81. Typos above:

    Even –if– the rule challengers win …

    Furthermore, the retroactive nature of the [continuation] –claim limitation– rules

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