Checklist to Avoid Inequitable Conduct

Debra Anderson recently published her checklist for ensuring that the PTO is notified of all relevant prior art and public uses of an invention. What is on your checklist?

  1. Remind your client of the duty to disclose relevant prior art, including related copending applications (and make sure to file this prior art with the United States Patent and Trademark Office).
  2. Make sure that the examiner at the patent office is aware of activity in related cases, if handled by other examiners.
  3. Ask [inventors and in-house attorneys] about attendance at conferences [including notes taken], posters, and abstracts submitted to journals.
  4. Remember to file prior art uncovered in foreign searches.
  5. Ask about offers for sale or other public disclosures through use or publication.
  6. If you are filing a declaration, make certain that it is clear to the PTO where the interests of the declarant lie. Do not conceal from the PTO facts known to you that are adverse to your client’s position (such as negative data), in order to advance your client’s case.
  7. Discuss the date of invention and related evidence with your client.

Notes:

  • Bracketed portions are my edits.
  • Read the whole article in IP Today.

 

48 thoughts on “Checklist to Avoid Inequitable Conduct

  1. Fair enough Lowly. But, the EPO has to have, always, a team of 3 Exrs to sign off on every single app. The EPO thinks it delivers more predictability for the users, and less subjectivity. All that extra cost, and all that delay, in having 3 Exrs instead of just one. Is it really worth it, I wonder. And we all know what people say about decisions by committees.

  2. “Lowly, let me quote you “Their advice what will work and what won’t work is usually spot on”. You mean that your European counsel can predict the outcome of obviousness examination at the EPO? How about that? I wonder how they do that. Have they a crystal ball, or is it I wonder something to do with the inherent predictability of PSA at the EPO?”

    An experienced US practitioner can usually make an educated guess as to whether a response will overcome a rejection by the USPTO, so I’m not going to say that PSA is better based upon this.

  3. Lowly, let me quote you “Their advice what will work and what won’t work is usually spot on”. You mean that your European counsel can predict the outcome of obviousness examination at the EPO? How about that? I wonder how they do that. Have they a crystal ball, or is it I wonder something to do with the inherent predictability of PSA at the EPO?

  4. Thanks Lowly. I’m delighted that you are getting such good service out of Europe. It is very hard to qualify by examination, as a UK Chartered Patent Attorney, so the F+P service you get from that quarter is relatively expensive, but then again it ought to be top class, and so well worth the money. I believe that JAOI(TM) thinks as you do (at least on that point). Sometimes there are differences though, post issue, between common law UK and the civil law European mainland, and not all the litigation involving EPO patents is English. But then, how much patent litigation is there anyway, in old Europe?

  5. Max,

    The Examiner always calls on the applicant to put the claims into CIT form. I always refuse. Next time I will ask my european guys the questions you gave me and will report back on the answer. I’m pretty confident in them, as their advice as to what work or won’t work is usually spot on and everything I have seen from them is good work. (And, believe me, I see lots of bad work from various firms).

    So, I will report back.

  6. Lowly, don’t you start writing c-i-t claims, please. Don’t even let your “European” guys do it, unless they know what they’re doing. (But that’s probably not a worry, because UK practitioners don’t like c-i-t claims any more than you do.) Wait and see what D1 turns out to be. Your friendly EPO Examiner will certainly call on Applicant to put claim 1 into c-i-t form, relative to D1. Now: ask your “European” guy a question: would a one part form or a two part form of claim perform/deliver/litigate better, post-issue, on the mainland. I would be interested to learn of your assessment, in due course, as to the “quality” of the advice you receive, in response to that question. How confident do you feel, about the advice you get?

  7. Max,

    Good guess. Two of the European firms we use are UK firms. They do quality work and are nice enough to help me with more difficult inventive step rejections.

    You say some darn scary things about C-I-T claims, however! How am I supposed to know what D1 will be? I can do my own search but that is no guarantee that the examiner will choose the same reference that I would. Or are you suggestion amending the claims to be in two-part form only after I receive an office action?

  8. AND, Lowly, don’t use a c-i-t unless you are totally convinced and absolutely sure that D1 is a safe base reference for application of the EPO problem and solution approach. A c-i-t claim has meaning ONLY for the PSA. Suppose D1 is not a realistic PSA starting point but, nevertheless you went and based your c-i-t claim on it. Woe betide your client, in opposition proceedings, where the bad c-i-t claim gives opponent a springboard he should never have had. If you don’t have any empathy for PSA, you’re reliant on your “European guys”. Many of those guys also have little empathy with PSA, or with c-i-t claims. Fully understandable.

  9. Lowly, I’m wondering who your “European guys” are. Off the mainland, maybe? It grieves me to type it, but the British regard “Europe” as even more alien than the USA. Every lawyer thinks his home jurisdiction is the best, and there are no lawyers who have the 34 nation EPO as their “home” jurisdiction. Regardless whether your “European guys” are British or German, they will think their judges have a sharper vision than the menials at the EPO. Then I have to say that my theory about c-i-t claims in the German courts is not something you are going to find confirmed in any learned Paper. As to Jepson, I agree immediately that a c-i-t claim is also an admission. However, do please correct me if I am wrong, but I had thought that a Jepson preamble is taken to be an admission that feature combination A+B+C is “conventional” or “common general knowledge” or typical of a class of apparatus, product or process. Obviousness is going to be relatively easy to prove, once we have it established that A+B+C is cgk. The extent of admission in a c-i-t claim is much less. It goes as far as to admit that A+B+C is in one embodiment of D1, but no further. Despite that explicit and crystal clear admission, you get a patent. To get the patent revoked, the attacker needs to do better. Usually he can’t, and with a c-i-t claim the court can more clearly see that he’s failing. Civil law jurisdictions are not adversarial, in the sense understood in a common law jurisdiction. Civil law courts have difficulty seeing the need to keep “evidence” and “attorney argument” separate. The whole subject of “admissions” is different, as between common law and civil law.

  10. “Lowly, the c-i-t claim is meaningful only for pointing up the contribution to the art as it is relative to the single pinpoint “closest prior art reference” in the published art, namely, a specific embodiment, enabled in the D1 reference. When you assert in Germany, what judge is going to deny your petition for interloctory injunctive relief, when your characterizing features (your contribution to the art) are there, plain as day, in the embodiment you’re accusing of infringement? And is the Federal Patents Court going to find your claim invalid? With validity fuzzier, I’m not so sure you will get your interlocutory injunction, with a one part form of claim. But do carry on with your one part form, if that’s what you’re comfortable with.”

    Now, why aren’t my european guys telling me this? :( It certainly gives me something to think about and to do some research on.

    In any case, how is the c-i-t claim different than a jepson claim? Are you not actually admitting that the first part of the claim is prior art in a c-i-t claim?

  11. Lowly, the c-i-t claim is meaningful only for pointing up the contribution to the art as it is relative to the single pinpoint “closest prior art reference” in the published art, namely, a specific embodiment, enabled in the D1 reference. When you assert in Germany, what judge is going to deny your petition for interloctory injunctive relief, when your characterizing features (your contribution to the art) are there, plain as day, in the embodiment you’re accusing of infringement? And is the Federal Patents Court going to find your claim invalid? With validity fuzzier, I’m not so sure you will get your interlocutory injunction, with a one part form of claim. But do carry on with your one part form, if that’s what you’re comfortable with.

  12. “The EPO c-i-t claim has meaning only within the context of EPO-PSA. A Jepson it certainly isn’t. Confuse the two at your peril.”

    How is the c-i-t different then a jepson claim? In any case, I never use the two-part form in my european applications. How could it help me? I’m curious.

  13. “If you skipped one pixel in the performance of step d, then you would not infringe because it specifies “each” pixel.

    I think Mr. Mooney has a valid point.

    The claim says that d is performed for “each pixel in the digital image” which at least arguably suggests that not performing d on one or more pixels “in tthe digital image” avoids literal infringement.

    Of course a plaintiff would argue that a digital image sans one pixel is simply a different digital image. Not sure if the argument would work.

  14. The EPO c-i-t claim has meaning only within the context of EPO-PSA. A Jepson it certainly isn’t. Confuse the two at your peril. Just like auxiliary requests, a good c-i-t enhances your position, but a bad one may wipe you out. Don’t pick up power tools till you know how to use them. Lowly, that claim of yours would be all that the EPO needs, to issue you with a Refusal Decision (as pds will surely confirm). See Rule 137(3) EPC 200: one try at amendment is all you get (unless the ED is feeling generous).

    For the difference between search performance USPTO v EPO see World Patent Information 23 (2001) 15-23 Adams. EPO searches according to “specific industry” whereas USPTO searches by “inherent functionality”. Vive la Difference. Why not search both, as your best chance of unearthing the killingmost art. But….is that what you want?????

  15. “I think I the US went to the two part format of the EPO (“prior-art charaterised in that here-is-the-new-part”) a lot of IC could be made to go *poof*. No need to sumbit prior art for the first part, and no need to submit prior art for the second part because its the delicious golden brow nugget of newness. Just a thought which I gave as much thought to as it took to write this.”

    You can write jeppson claims if you want. It’s just a bad idea.

    Here’s how I would write one: A device characterized in that … ;)

  16. What ever happend to the concept of pto doing searches now they want inventors to do it and be held responsible for inequitable conduct if they fail to find all refrences?How can inventors be aware of copending applications if there kept secret for 18 months after publication? Why doesent pto have a boulined searchable database of foreigh patents if they want to clainm inequitable conduct for not finding all foreign refrences?Are we going to be held liable if there written in foreign languages that we dont understand?Do we have any guarantees that foreign offices are as non corrupt as our office is supposed to be?Will we ever get rid of our system of awarding patents on the basis of largest pack of liars wins and change to invention held within the secrecy of the mind?

  17. Judge Real must have retired from LA to Arizona so he could foul up patent cases there, too.

    He has a fairly long history of poor patent decisions, many of which have been swatted down by the Federal Circuit. I don’t imagine that the identity of the trial judge escaped the panel.

  18. I think I the US went to the two part format of the EPO (“prior-art charaterised in that here-is-the-new-part”) a lot of IC could be made to go *poof*. No need to sumbit prior art for the first part, and no need to submit prior art for the second part because its the delicious golden brow nugget of newness. Just a thought which I gave as much thought to as it took to write this.

  19. A decent start, but look at Chapter 8 of my book “How to Write a Patent Application”. Lots more to consider including related litigation, non-prior art papers that might be contrary to arguments made or raise inventorship issues, FDA submissions, …

  20. Why don’t you stop posting on PatentlyO and go out on a date? Oh wait, nevermind, I saw your picture in the NY Times.

  21. Well, I don’t think my bitmap dithering with modular addressing is anything like that Mooney. You are an arrogant pr1ck aren’t you? If you don’t understand “modularly addressing” then why are you so quick to impugn my claim?

  22. “So Mooney, do you really not think that everyone can see your little game of quoting yourself as Leopold Bloom? What kind of creepy idi0t are you?”

    I mostly agree with you AllSeeingEye. You are really smart, you know?

  23. So Mooney, do you really not think that everyone can see your little game of quoting yourself as Leopold Bloom? What kind of creepy idi0t are you?

  24. “Rader is out to lunch”

    Eeeyeah, with your wife/girfriend. I think Rader forgot more about IC when he last blinked than everything you have ever known Mooney.

    So Mooney, how much did you have to pay the NYT to post your picture?

  25. I would say not just art from foreign searches, but examiner’s comments from foreign office actions.

  26. With regards to the RCT v. Microsoft case, are there any Inequitable Conduct cases that were affirmed when both Judge Newman and Judge Rader were on the panel?

    For what it is worth, I do think that subsequent test results can be material and should be submitted to the patent office. However, I do not think that anything that is subsequent and not submitted should be the basis of an Inequitable Conduct finding. (Of course, I also think the whole doctrine of Inequitable Conduct and IDSs should vanish into oblivion).

  27. “I’m not sure why you’re concerned with “more correlated” and “less correlated” – in the context of this technology these terms make perfect sense, since there is a statistical underpinning.”

    Leopold, correct me if I’m wrong but isn’t it the “statistical underpinning” sort of the whole ball of wax here?

    And yet the claims do not require any calculation of any statistics in order to be infringed. All that is required is that the following composition is “provided”:

    “a memory containing a dither bitmap for each input pixel value of the digital image where the dither bitmaps are partially correlated, by “partially correlated” it is meant that the dither bitmap for any particular input level is more correlated with dither bit maps at adjacent input levels and less correlated with dither bitmaps at more distant input levels, whereby once a pixel is turned on or off, it is more likely to remain on or off for nearby input levels and less likely to remain so for more distant input levels”

    After that, you just select each dither bitmap from the memory and “modularly address” it (whatever that means). Seems like an image with as few as 4 pixels could infringe (or anticipate). Reminds me of some really elementary math games. But that’s true of most software claims.

  28. “http://www.nytimes.com/2008/08/03/magazine/03trolls-t.html?em
    Is that you, Mooney?”

    That’s funny. But not as funny as the New York Times commenting on someone else’s “moral fluidity.”

  29. “Is it really plausible to argue that a patentee is obligated to disclose the results of experimental research conducted after the application is filed? Sure, if the research yields facts that contradict an assertion previously made to the PTO, but otherwise?”

    Leopold, I agree with you that it is not plausible. But it is certainly no less plausible than every other argument made during litigation.

    The problem here was not the argument or the fact that it was made but the fact that the judge (1) apparently bought it and (2) apparently bought it so hard that he couldn’t even bother to explain what the heck he was doing so the CAFC could properly evaluate the judge’s reasoning. Let’s just be glad that this doofus didn’t get the chance to try claim construction. Then we’d all be crying.

    It seems to me that what really gets people’s underwear in knots is not that IC is raised as an issue (why shouldn’t it be? the litigation motto is that if you can afford to pay for the kitchen sink, then throw it) but that the penalty for IC is too severe. But given that even the harshest penalty seems to have little effect on the behavior of applicants who want badly want a patent, it’s hard to imagine a reason for favoring a lesser penalty.

    And I’ve yet to see any movement toward a paradigm wherein inventors or prosecutors themselves are immediately disciplined or sanctioned by the PTO for easily discovered violations, e.g., signing oaths relating to the invention of claims that nobody could credibly assert were new as of the filing date.

    So what is the hangup with IC anyway? The most efficient and practical way to get rid of IC charges in patent cases is to enforce IC with a sledgehammer, as regularly and ruthlessly as possible while respecting the parties’ civil rights.

  30. “So what’s wrong with using different doese? It’s standard, accepted practice.”

    Just because you can find occasional examples where people do not report the doses where different doses were used does not mean that the failure to report the doses IN THIS INSTANCE is “standard” or “accepted.” The point of the declaration was to show that the half life was (allegedly) unexpectedly longer when compared to the prior art. But that was only true when different doses of the drug were used, i.e., the dose did affect the measured half-lives.

    “the half-life of the Aventis drug in the upper part of the D-R curve would be of interest to no one but a m0r0n lawyer trying to bust the patent, or a gullible judge”

    Then why was the data presented? This information was somehow very important to Aventis’ who, under oath, repeatedly made a point of presenting these alleged half-life differences to the PTO.

    “Please read Judge Rader’s dissent.”

    I did. Rader is out to lunch when it comes to IC. I practically ralphed when I read his bit about the “scientist not risking his reputation” and whatnot. He reminds me of Britney Spears telling everyone that “we should just listen to the President because, like, he’s the Commander in Chief.” It’s ridiculous. And as I’ve noted before: Rader wasn’t there to listen to and watch Aventis and their witnesses scramble and stutter at the District Court trying to explain why none of the bizarre things they did and said before the PTO “really mattered.”

    As for this:

    “a preeminent pharmacologist who has done research for 50 years and been awarded the coveted Galien Research Prize”

    That is a laugh riot. I’ve seen decs signed by scientists who were far more famous than this guy and those decs were completely misleading. Pure smoke. Did the declarant know what he was doing? Who cares? The attorneys who helped prepare the dec and filed it surely knew what THEY were doing. And then there’s William French Anderson, the “father of gene therapy.” He won all sorts of honors, too. Would Rader trust him to babysit his grandkid?

  31. “It would seem that regardless of how you want to construe all that baloney, direct infringement could be avoided simply by not practicing step c on one pixel of the image. Would such a method still infringe under the DOE? Anybody’s guess, my friends. Anybody’s guess.”

    Probably. Should it? Yes.

    Not that I’m the slightest bit interested in starting another flame war, but this claim doesn’t look so bad to me. My biggest concern is that I can’t tell what “modularly addressing” means, but I’m assuming I could give it a definite meaning after consulting the description. So what exactly makes this “baloney”? The claim (at least at first glance) appears to be definite, it clearly is directed to a method that is probably at least slightly useful. In particular, I’m not sure why you’re concerned with “more correlated” and “less correlated” – in the context of this technology these terms make perfect sense, since there is a statistical underpinning.

  32. Malcolm,

    If you skipped one pixel in the performance of step d, then you would not infringe because it specifies “each” pixel. If you use a “for” loop in your program, put a single skip step somewhere in the midst of it (e.g., an extra increment (e.g., i++)), and you would not infringe.

  33. “This Microsoft case, by the way, has nothing to do with the alleged ‘problems’ associated with contemporary IC practice and everything to do with the existence of moronic Federal judges. That was a huge slapdown by the CAFC.”

    I think you’re mostly right – especially with respect to the slapdown. However, one of the ‘alleged problems’ associated with contemporary IC practice is that it is raised in far too many cases. This would appear to be one of those cases. Is it really plausible to argue that a patentee is obligated to disclose the results of experimental research conducted after the application is filed? Sure, if the research yields facts that contradict an assertion previously made to the PTO, but otherwise?

  34. Mooney said:

    “The problem, of course, is that Aventis’s expert “forgot” to include a key piece of information with their proof: the results achieved using different dosages. Why would Aventis neglect to disclose this fact to the Examiner when it presented the data? BECAUSE COMPARISONS AT THE SAME DOSE SHOWED LITTLE DIFFERENCE IN HALF LIFE. (see page 9 of the decision).”

    Here’s the passage from page 9:

    “The court found a strong inference of intent to deceive because it could find no credible explanation for comparing half-lives at different doses and because comparisons at the same dose showed little difference in half-life.”

    What this passage proves is, primarily, that these judges do not have even a vague idea of what they’re talking about. If Prost and Moore couldn’t see the very credible explanation Aventis gave, they ought to find other work.

    Generally, half-life comparisons are done at the ED50 of each drug, which are very likely to be different doses, and they would certainly be different in this instance because that was the whole point of the comparison: the ED50 is shifted to the left in the Aventis drug because of the longer half-life. So what’s wrong with using different doese? It’s standard, accepted practice.

    By comparing equal doses as the court seems to demand, one drug could be at a toxic dose where the receptor systems are saturated, the kinetics are zero order, and there is no meaningful half-life. So the data are worse than useless because you think you are looking at half-life when you’re not, even though the doses were the same.

    Avenits made this argument, but the trial judge and Prost/Moore were too dim to figure it out. Mind you, the issue here was not whether these were the best possible data or the best experimental design. The only issue was intent to deceive. Of course there was a credible reason to analyze half-life at different doses. In fact, there is no credible reason to analyze half-lives at equal doses — it doesn’t tell you anything those equal doses are at the ED50′s.

    Unless the goal of the treatment is to overdose the patient, the half-life of the Aventis drug in the upper part of the D-R curve would be of interest to no one but a m0r0n lawyer trying to bust the patent, or a gullible judge who knows less about pharmacology than Dudas knows about patent prosecution.

    If one is properly comparing half-lives in the the therapeutic part of the D-R curve for both drugs, then the presumption that absolute drug doses are not relevant is not far off and would not be deemed “inequitable” by anyone with more than fish bait for a brain and one semester of undergrad pharmacology, even if the presumption is wrong legally.

    What Prost/Moore are saying is that even if your presumptions about what is relevant are sound and justified from a scientific point of view, unless they are also legally sound, you are acting inequitably. In other words, more judicial idi0cy by judges who are not even remotely trained in the technologies they are blathering on about. What you’ve got is technological know-nothings like Moore and Prost second guessing a preeminent pharmacologist who has done research for 50 years and been awarded the coveted Galien Research Prize. Talk about incompetent appointments, Moore is going to end up doing more damage than Dudas and Peterlin combined. And she’s there for life. Jeez.

    Please read Judge Rader’s dissent.

  35. Here’s claim 1 of USPN 5,111,310 in that RTC v. Microsoft case:

    1. A method for halftoning a digital image having an x,y array of pixels each having an associated input pixel value, comprising the steps of:

    a. providing a memory containing a dither bitmap for each input pixel value of the digital image where the dither bitmaps are partially correlated, by “partially correlated” it is meant that the dither bitmap for any
    particular input level is more correlated with dither bit maps at adjacent input levels and less correlated with dither bitmaps at more distant input levels, whereby once a pixel is turned on or off, it is more likely to
    remain on or off for nearby input levels and less likely to remain so for more distant input levels;

    b. selecting a dither bitmap corresponding to the input pixel value for a pixel in said digital image;

    c. modularly addressing the selected dither bitmap with the location of said pixel to obtain an output halftone image value;

    d. repeating step b and c for each pixel in the digital image.

    Basically this is another one of those software claims: “provide”, “select”, and “address,” together with a bunch of functional language including some extremely loosey goosey garbagola a la “more correlated”, “less correlated” “more likely” “less likely” etc.

    It would seem that regardless of how you want to construe all that baloney, direct infringement could be avoided simply by not practicing step c on one pixel of the image.

    Would such a method still infringe under the DOE? Anybody’s guess, my friends. Anybody’s guess.

  36. “I don’t recall the last time that the CAFC remanded with orders to assign a new judge.”

    It’s been a while but I vaguely recall one of those E. Dist. of Texas judges getting the back of the hand in the last year or so.

    This Microsoft case, by the way, has nothing to do with the alleged “problems” associated with contemporary IC practice and everything to do with the existence of moronic Federal judges. That was a huge slapdown by the CAFC.

    On the other hand, we can rest assured that Microsoft was loving every minute of it.

  37. For a contrasting inequitable conduct case, check out RCT v. Microsoft, which just issued: link to cafc.uscourts.gov.

    In this one, the trial judge apparently concluded that he didn’t need to actually observe the law on inequitable conduct, since, in his words: “I am not trying a patent case I am trying a particular matter that has been presented to me having to do with candor and good faith.” If the facts of the case are presented accurately (which is not a given – the CAFC opinion is horribly written), then this was a truly “exceptional” case at the trial level. I don’t recall the last time that the CAFC remanded with orders to assign a new judge.

  38. In the last paragraph of my previous comment, I wrote “reduce” instead of “fuel”. My deepest apologies.

  39. “Aventis v. Amphastar in which the issue was that the patent disclosed half-life comparisons but did not disclose that the half-lives were determined at different doses.”

    Excuse me but that is a ridiculously simplified account of the inequitable conduct that was identified in that decision. How much is Aventis paying you?

    “Pharmacologists would not normally report the doses used to determine half-life”

    So you say. Of course, we’re not talking about a pharmacology report. We’re talking about a proceeding before the USPTO where the USPTO has found art that is very close to the claimed invention and is asking for evidence demonstrating unexpected results before it grants 20 years exclusive rights to the claimed composition. Aventis could easily have been very candid in presenting its awesome results to the PTO
    (if it had them) but instead Aventis decided to play games.

    With respect to the unexpected results, Aventis’ presented a comparison between their drug and the prior art drug, and their expert testified: “[t]his represents an increase in 250% in the half life and is very significant because it enables the same effect [as the prior art compound] to be achieved with lower dosages.”

    The problem, of course, is that Aventis’s expert “forgot” to include a key piece of information with their proof: the results achieved using different dosages. Why would Aventis neglect to disclose this fact to the Examiner when it presented the data? BECAUSE COMPARISONS AT THE SAME DOSE SHOWED LITTLE DIFFERENCE IN HALF LIFE. (see page 9 of the decision).

    After the patent is allowed, Aventis attempted to float the same bogus “argument” that BB recited above (“Pharmacologists would not normally report the doses used to determine half-life”"). But we can all read the decision at page 12 to understand the actual facts: “We also rejected Aventis’s
    explanation for nondisclosure that using different doses in half-life comparisons was
    common practice in the field because, IN CONTRAST TO THE REFERENCES CITED IN SUPPORT OF THIS PROPOSITION, Aventis did not disclose the actual doses. Further, this court did not accept the explanation that the half-life data were dose independent because the evidence clearly suggested otherwise.”

    I’m not surprised that otherwise intelligent practitioners could be confused by the facts in this case because Aventis kicked up more dust in their attempts to keep their greasy hands on this patent than any patentee in recent memory. It is to the CAFC’s credit that they saw through it all and kept their noses trained on the rat smell that, for all of Aventis’ arm-waving, simply refused to go away.

    “I think a better approach for practitioners is to start pushing back against this whole inequitable conduct paradigm.”

    Actually that’s the worst approach because it will only further reduce the perception that patent prosecution is (once again) a backwater practice for hacks and greedy attorneys who couldn’t make it elsewhere. See, e.g., ambulance chasers.

  40. Not sure about “sealed” Babel. The fundamental difference between ROW and the USA is the common law vs civil law difference. Mind you, the (civil law) Dutch courts like to look at the EPO file wrapper, and there are several (common law) English cases where the court was swayed by the file wrapper. Everybody looks to the court, to stop the dispute getting unfocussed. Patent litigation is most economical when it is before experienced specialist patents judges, who are empowered to manage the case in an orderly fashion. Is that how it is, in the USA? It’s now week-end, for me, here in Europe.

  41. Also:

    Step 9 – argue with Examiners when they cross references off your SB/08 form because of one or more of the following:
    a – they are not patents or patent publications;
    b – they are foreign search reports of office action in related U.S. cases;
    c – they are deemed “irrelevant” to the claims.

    (Yes, I see all three frequently).

  42. Step 8 – wonder how you are going to submit all material references when the Patent Office changes the IDS rules to dissuade you from filing “too many references.”

  43. The “if handled by other examiners” rule arguably contradicts the third ground of inequitable conduct found in McKesson where failing to cite a Notice of Allowance from one application in another application being handled by the same examiner constituted inequitable conduct. While I don’t necessarily agree with McKesson, this issue should be considered.

  44. I’d never diss using a check list. I’d be lost without them. I even have one for getting up: get out of bed; go to bathroom, take shower, shave, put on (clean) underwear. . .

    But . . . I’m not sure about this particular check list. Ms Anderson’s article was inspired by Aventis v. Amphastar in which the issue was that the patent disclosed half-life comparisons but did not disclose that the half-lives were determined at different doses. I don’t think any of the items on this list would have helped in Aventis.

    Pharmacologists would not normally report the doses used to determine half-life — UNLESS the drug was administered at a saturating dose and zero-order kinetics kicked in. That’s the whole point of half-life, in most cases it’s not dependent on dose. I forget the details of the case, but I do remember thinking “what a crock.”

    If you’re gonna’ get shafted, you’re gonna’ get shafted, and no check list in the world is gonna’ save your bacon. I think a better approach for practitioners is to start pushing back against this whole inequitable conduct paradigm. In fact, the prosecution file ought to be sealed, as in most countries. MaxDrei, please check in.

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