Poor Man’s Opposition at the PTO: Trickery

Several attorneys relayed their experience with my poor man’s opposition. One gamey approach that is for the third party to hold its prior art materials until the USPTO issues a notice of allowance and then immediately forwards several important references to the patent applicant the case. The patentee can either (1) suffer the delay of withdrawing the patent from issuance in order to have the new art considered or (2) allow the patent to issue while knowing that its duty of disclosure had not been fulfilled.

118 thoughts on “Poor Man’s Opposition at the PTO: Trickery

  1. dmb question – That’s not a dumb or ignorant question at all. However, the only way it will be privileged is if the only existence of the communication is a single communication from the client directly to the attorney that is left protected. If they CC the secretary, have any internal communication (e.g. between two of the engineers), or they are not the “client” (is an engineer in a large company “the client” for attorney-client privilege purposes?), the document is not well marked, or the court decides to apply an exception, then the attorney-client privilege will not hold. You should never send a communication assuming the attorney-client privilege will hold.

    Further, if the sender is deposed and falsely testifies about knowledge of relveance when the attorney KNOWS differently (attorney cannot be a party to a false communication to a tribunal) again you have an ethical dilemma that likely involves the attorney withdrawing from the representation, preferably before the false testimony is offered. In most jurisdictions in non-criminal proceedings, when a client offers false testimony to a tribunal that the attorney KNOWS to be false, the attorney is required to correct that testimony to the tribunal (see, e.g. Massachussets rule 3.3(a)(4) comment 6).

    The bottom line is, if the client contacts you with a reference and the client asserts that the reference is relevant, upon litigation it is likely that the client opinion of the relevance will be discovered, and it is certain at a minimum that the attorney is going to be placed in a very thorny ethical situation. You should treat this communication as discoverable because the consequences during litigation can be dire.

  2. Following Mooney’s advice is like asking the schizophrenic in the subway station for directions. For a while, it sounds like they know what they are talking about. Then, you realize they haven’t bathed for a while and are living out of a box behind the vending machine. Then, they start babbling incessantly about clandestine Examiner interviews and protein folding. Then, you move away as quickly as possible and dive into the next train.

  3. “If that patent is litigated, the existence of that reference and communication will be discovered.”

    ignorant question – why isn’t that communication privileged?

  4. Mooney, you are like that attorney who filed a 15 page petition. When you don’t know what you are talking about, your word count goes up dramatically. Maybe you should learn to STFU.

  5. “Someone follows your advice on this at their own risk.”

    What advice? I’m not telling anyone how to practice or telling anyone what manner of awesome or horrible fates await them if they file a piece of relevant art or not. I’m merely providing a non-hysterical description of reality.

    If folks would like to change reality to reflect their perceptions of how things really are, they are welcome to lobby Congress or email the PTO with those suggestions.

    Of course, whenever anyone suggests possible ways that Rule 56 could be given some teeth and result in consistent and severe punishment for any and ALL violations of the rule, those suggestions are met with deafening silence.

    I find that interesting.

  6. Mooney,
    Someone follows your advice on this at their own risk. Like I said, under the hypothetical this isn’t even a close case. We don’t have “arguable” relevancy (e.g. like in your 17 MPH example) – the client communicated the relevancy directly.

    I didn’t attach any moral, or “do-good” motives to this. My solution is the only practical one to ensure valid patents and a long fruitful career.

    Apologies for not using enough CAPS for you, I’ll work on it.

  7. “Client e-mails me the reference, saying it is relevant but I am not to submit it to the PTO. If I do not either 1) submit it to the PTO since I am representing a client in that matter or 2) promptly withdraw from the representation and notify the client of potential consequences, then I am risking my career. If that patent is litigated, the existence of that reference and communication will be discovered.”

    False. It may be discovered. It may not be discovered. You don’t know what will be discovered and what won’t be discovered. Is it discovereable? Sure. Even if it was in fact discovered, what happens after that discovery? It’s anybody’s guess.

    And if the patent is (like almost all patents) never litigated, then what?

    You know the answer: then nothing.

    Going back to the inequitable conduct case du jour, do you think Abbott knew about the blatant inarguable contradiction between its EPO files and its US files when it made the contradiction? Do you think it knew about the contradiction when it informed Bayer about the patent? Do you think think it knew about the contradiction when it filed the suit in court? Do you think Abbott really gave a crap one way or another about how the patent went down? The attorney who filed the response and got busted by Judge Alsup — did he get fired by his present employer?

    The answers to all these questions wash over this lame-ass hypothetical like a tidal wave. Get over yourselves already.

    “large companies absolutely will drop tainted attornies”

    LOL. Yes, some will. Some won’t. Do you know what? They’ll also drop attorneys who aren’t tainted. They’ll also drop attorneys who don’t do what they’re told. What is your point, except to puff yourself up like the world’s only do-gooder? Give us a break with the pissing contest already.

    It’s like taking someone to task for “hypoethetically” driving 17 miles an hour in a 15 mile an hour school zone with the response: MY GOD DONT THEY KNOW THAT WHEN THEY RUN OVER AND KILL A CHILD THEIR LICENSE MAY BE SUSPENDED???!?!?

    Get a grip.

  8. Mooney:
    Client e-mails me the reference, saying it is relevant but I am not to submit it to the PTO. If I do not either 1) submit it to the PTO since I am representing a client in that matter or 2) promptly withdraw from the representation and notify the client of potential consequences, then I am risking my career. If that patent is litigated, the existence of that reference and communication will be discovered. Even if the PTO does not sanction me (which they could), my other clients do not have the time or inclination to be associated with attorneys participating in such shenanigans and they will drop me. You seem to not believe this to be true, but I can tell you from direct observations that large companies absolutely will drop tainted attornies. This is the career death sentence option.

    I believe that you understand that the patent is unenforceable if the client manages to prevent the reference being submitted to the PTO. This is the patent death sentence option.

    In today’s world of e-discovery, the communications WILL be discovered, making each death sentence option CLEAR. This isn’t even a close case, or one that would make me reluctantly stare at the phone wondering what to say to my client.

    I do run across cases where someone has done what you mention on occasion, and it always makes for a great week because I get to be the hero to my client when I discover the easy un-enforceable case. And whenever that happens and we point it out to the court, I get the settlement call the next day from our opposition’s new attorney. Guess what happened to their old attorney?

  9. If patent applicant and patent attorney have done their part in properly assessing the patentability of their invention (assuming they had / given time to do this assessment), and patent examiner has been helpful during prosecution of the application, ‘the trick’ will be no good. As such how much time would an experienced patent attorney or perhaps a team of patent attorneys take in analysing prior art filed? All unscrupulous, vexatious attempts need to be discouraged in strong way. Honesty still remains the best policy.

  10. As for anticipation, last time I checked, the PTO, and not the attorney was the judge of patentability – MAN do you have a lot to learn.

  11. “And of course all you need to do is say that you believed you were following Rule 56 and then you have immunity.”

    Unless a judge with a brain gets a hold of the case and the facts support them smacking you down. In that case I get to lollolololollllolllol.

  12. Yes anyone who has opened more than a handful of file histories, which doesn’t include you Mooney. You don’t open file histories, you just sniff them, remember? You can spot an obvious claim at ten paces by smell only. Especially that heady Crystal City Restaurant + BBQ sauce smell…

    talk about self righteous.

  13. If you want so desperately to rail against me, try sticking to the correct facts of my hypothetical. Otherwise, those shrimp aren’t going to serve themselves…

  14. “I guess if your client instructed you to falsify a document you would do that too.”

    Nice strawman.

    If your client asked you to file a claim that you knew was anticipated, would you do it? Would you tell the client, but file the client’s oath even though you knew it was false? Or would you tell the client that if they choose to file that claim, you would withdraw it and send a letter to the PTO informing them of the lie?

    How self-righteous are you, TFNC?

  15. “Upholding your duty is not “tampering with a file”

    Except when it is and you happened to misunderstand something about the art or the claims.

    Therein lies the rub. Oh, but I forgot: you’re perfect. Clients make mistakes but you don’t. And of course all you need to do is say that you believed you were following Rule 56 and then you have immunity.

  16. “You’re right, of course, that the probability of adverse consequences from failing to disclose is close to zero. But in this scenario, do you folow the client’s instructions because you don’t believe that you have a duty to disclose, or because you’re willing to ignore that duty? Serious question.”

    I think a question about the rationale for an activity that has close to zero adverse consequences is per se NOT serious.

    I’m a lawyer. I am prepared to fashion a reasonable argument to explain just about anything that I am needed to explain.

    For the folks who are so fascinated by this mundane “dilemna”, I ask: why isn’t the PTO immediately banning that attorney at Abbott who just got busted by the CAFC? And why isn’t the PTO investigating everyone at Abbott who might have known about the bad behavior in real time and didn’t do anything about it?

    I mean, I would think that someone like TFNC, who files stuff at the PTO even when HIS OWN CLIENT demands that stuff not be filed, would be collecting signatures to send to Dudas and his congressman to make sure that this mess is cleaned up with a really pretty bow on top. Whatever happened to “where there’s smoke, there’s fire”?

    Or maybe some folks around here just can’t stand anybody daring to write what is perfectly obvious to anyone who has opened more than a handful of file histories.

  17. Upholding your duty is not “tampering with a file” – you have a lot to learn Mooney.

    I guess if your client instructed you to falsify a document you would do that too.

    Second reminder to self: NEVER, EVER hire Mooney.

  18. “Reminder to self: NEVER hire Mooney.”

    LOL. This from the Troll Formerly Named CaveMan who is on the record as admitting he would tamper with a client’s files even when the client expressly instructed him not to do so! Nice.

    Given that the only justification for his actions was Rule 56, one wonders why TFNC would stop there. Anybody at TFNC’s firm would presumably be at risk of having their files jeopardized by a spontaneous submission from TFNC as well, should TFNC happen to come across art that he felt was material to the prosecution of their patents. After all, it’s TFNC’s *duty* to ride into town on his white horse and correct every abhorrent failure to file that material art. If he’s willing to disobey his own client, then of course he would be even eager to correct the record when it’s somebody else’s client! I suppose he’ll even pay the fees for “saving” your client’s patent as well. What a great guy! Never mind that the client was considering donating the patent to the public or withholding it from issuance permanently. What’s important is that TFNC did the right thing: ignored the client’s instructions and proved that he is the most virtuous prosecutor on earth. Even now, we can only assume he is searching the firm’s database, looking for activity that merits a friendly submission to the PTO regarding a fellow attorney’s unethical behavior and failure to disclose material art.

    If only every attorney was as virtuous as TFNC, there’d be no need for inequitable conduct findings. We’d all be outing our unethical comrades until those evil prosecutors were simply disappeared.

  19. “If a client asks you not to disclose the art and let the patent issue, I do it. Then the patent issues.”

    Interesting. You’re right, of course, that the probability of adverse consequences from failing to disclose is close to zero. But in this scenario, do you folow the client’s instructions because you don’t believe that you have a duty to disclose, or because you’re willing to ignore that duty? Serious question.

  20. wasn’t me : “Either non-submission action is a clear death sentence for the patent or the attorney’s career (respectively).”

    Actually it’s not clear, even if it makes you and a few other dense, self-righteous commenters feel good to say so.

    If a client asks you not to disclose the art and let the patent issue, I do it. Then the patent issues.

    I still have a career. The client has a patent. I still have a client.

    Where is the “death sentence” you were referring to?

    The answer is: there is no “death sentence” because you’re simply full of it.

  21. I posted the following in response to the IP survey, and then realized that the comment would be more appropriate for this particular thread. So, with many apologies for a duplicative comment, I am re-posting the comment in this thread.

    –DUPLICATE COMMENT BELOW–

    In my humble opinion, I think that there is something shady about an attorney that: (a) knows of non-cumulative prior art; (b) plans to send the art to the inventor; but (c) waits until the notice of allowance to do so.

    I do not think that there is anything wrong with promptly providing those references or non-cumulative prior art to the inventor (or inventor’s counsel). But, if that information is known for months and the attorney chooses to employ a delay tactic just to inconvenience the inventor, then I think that there is an ethical violation from the submitting attorney also.

    I am not sure about other states, but, in Georgia, employing such tactics comes really close to violating (if not actually violating) the code of professional conduct.

    Specifically:
    If the attorney contacts the inventor directly (and not the inventor’s counsel), then it is a violation of RULE 4.2 COMMUNICATION WITH PERSON REPRESENTED BY COUNSEL (Subsection (a) recites: “A lawyer who is representing a client in a matter shall not communicate about the subject of the representation with a person the lawyer knows to be represented by another lawyer in the matter, unless the lawyer has the consent of the other lawyer or is authorized to do so by constitutional law or statute”).

    If the attorney has the information but waits until the very last minute to provide that information to the inventor or inventor’s counsel, then it may be a violation of RULE 4.4 RESPECT FOR RIGHTS OF THIRD PERSONS (“In representing a client, a lawyer shall not use means that have no substantial purpose other than to embarrass, DELAY, or burden a third person . . . .” (emphasis mine)).

    My guess is that other states have similar provisions in their respective codes of ethics.

    Again, only my two cents.

  22. Mooney,
    The client instruction in the AllSeeingEye hypo is to not withdraw the case from issue, not an instruction to not submit the reference.

    I don’t know of any client that would explicitly instruct not to submit the reference, nor of any attorney that would not either submit the reference or withdraw from the representation. Either non-submission action is a clear death sentence for the patent or the attorney’s career (respectively). In today’s day and age of discovery, there is no way someone out there thinks they will actually get away with this. Your statements indicate that either 1) you didn’t understand the facts of the hypothetical, or 2) you are just trolling.

  23. “Did you know the avg cost of examining your application you paid 1000$ to file is over 4000$?”

    At this rate, the UPSTO would be “losing” $3K an app. But wait, doesn’t the USPTO have a surplus? I’m confused?

  24. “Did you know the avg cost of examining your application you paid 1000$ to file is over 4000$?”

    LOL

    Where did you get that? Oh, that’s right, you got it from Dudas? Where did he get it? He pulled it out of thin air.

    ROFLMAO

  25. “There will be nothing boring about what your former client does…”

    That sounds like a drama queen of a client anyway – just your type Mooney. And besides, what are they going to do?

    More often than not if a client is trying to be cagey, they might say art is relevant and hint that they think it shouldn’t be cited (if they didn’t think it was relevant, why are they sending it to me anyway?). Then they sit back and hope I fall into the moral trap of not citing out of a free floating sense of nervous fear of losing them as a client. Then, if something goes wrong they can blame the attorney.

    Personally, that has never happened to me because it would take a real a$$hole client to do that, but if it did happen, I would go ahead and cite the art anyway (after perhaps exchanging a few clarification letters). Nervous, shrimp serving valet attendants like you Mooney can fall into the practice trap of not citing it.

  26. If they told me it was relevant and also told me not to cite it, then they are a cheesy skulking kind of client. I will happily turn over that cheesy skulking client to you Mooney, since you seem to like that kind of thing.

  27. “sometimes patent law, and doing the right thing, is downright boring.”

    There will be nothing boring about what your former client does after he/she finds out that you filed art with the PTO on your own personal initiative after they expressly instructed you not to do so. Will you bill them for your services, too? Might as well. You’ll have nothing to lose at that point.

  28. As my good friend CaveMan once told you, sometimes patent law, and doing the right thing, is downright boring. No cloak and dagger, drama, Truman Capote, or clandestine Examiner Interviews…

  29. I think the guy who serves us the shrimp and parks our cars will be even more impressed. Oh wait, that’s you Mooney.

  30. “My own experience over the years has been that USPTO quality has varied inversely with fees.”

    Did you know the avg cost of examining your application you paid 1000$ to file is over 4000$? Even assuming that’s a high estimate it is well established that maintainance fees are subsidizing your application by at least half so I’d quit my crying. The powers that be could slash maintainance fees by half and jack application fees by double and still be coming out even so don’t push them to do that unless that’s what you really want.

  31. “If I had a letter from the client saying here is a reference that we think is material, but don’t withdraw the case from issue to cite it. I would write a very concise letter about why I think it should be cited upon a withdraw from issue and then advise them of the consequences should it be discovered that they knew about the reference well in advance of submitting it to me. Then I guess I would send it in for inclusion to the file wrapper.”

    And then the Patent Purity Practice Parade would march right up to your office and give you a huge medal for being So Goshdarn Righteous! You could hang it right next to your certificate of membership in the Golden Key National Honor Society. The guy who vacuums the floors will be really impressed.

  32. In addition to having other parties send additional art multiple times on a case about to be allowed, I have seen what appears to be another use of this tactic. Namely, the inventor who sends multiple e-mails saying his patents are “material” to many of your applications in an apparent attempt to have them cited many times so that they will show up as being “important” under a citation analysis (perhaps similar to using multiple hidden keywords for a webpage – the more you have the possibly higher you will appear in the search results).

    The US appears to ignore harmonization on “inequitable conduct”. How many other countries have the same onerous disclosure rules? Could “inequitable conduct” be dropped and the USPTO be managed in a way that results in high quality searches reasonably consistently (which I thought was their job)? My own experience over the years has been that USPTO quality has varied inversely with fees.

  33. If I had a letter from the client saying here is a reference that we think is material, but don’t withdraw the case from issue to cite it.

    I would write a very concise letter about why I think it should be cited upon a withdraw from issue and then advise them of the consequences should it be discovered that they knew about the reference well in advance of submitting it to me.

    Then I guess would send it in for inclusion to the file wrapper.

    I realize its a tough call, but it seems like some on this thread think citing art is some kind of trivial matter. I think citing art is probably up there with one of the most important things we do. Decisions regarding citation of art among the most consequential.

  34. AllSeeingEye:
    The discussion wasn’t about “which one is smarter,” it was about what is ethically required.

    I fail to understand how, under my client’s specific instructions not to withdraw from allowance, I would be allowed (much less ethically required) to withdraw the application from allowance. There is only an ethical duty to disclose the reference in good faith, which sending it to the PTO as soon as you receive it would clearly fulfill.

    My client is allowed to do silly things (but not illegal things), and it’s not up to me if I advise them properly. In fact, they generally don’t do silly things, but I’m not ethically required to keep them from doing so.

  35. “Gee, I wonder which one is smarter…”

    Ok, you’re the smartest. And the only one here who takes his practice seriously. Does that make you feel better, Gideon?

  36. “In the above scenario, how would doing what the client demanded lead to the “loss of your career”? Or are you just being sarcastic, Lowly? You’re certainly not making much sense because patent attorneys are not sanctioned by the USPTO or the bar in the draconian way you seem to be suggesting that they are.

    So what are you talking about? I ask because ignorant people might think you are referring to a real-world situation instead of your own paranoid delusions.”

    I’m talking about being accused of inequitable conduct and having it stick. That can be a career killer, although it really shouldn’t be given how commonly it’s raised. (and the fact that it’s usually raised over something like the fact that an attorney made a clerical error not citing one reference what was cited in a sister case being prosecuted in another country)

    I wasn’t talking about being disbarred or losing your registration number. I should have been more specific.

  37. Not withdrawing a case from issue in the face of relevant art in order to cite the art is like setting out to sea knowing you have a hole in your boat.

    Withdrawing the case from issue to cite the art is like fixing the hole before leaving port.

    Gee, I wonder which one is smarter…

  38. Yes, paranoid delusions like secret Examiner Interviews where deep dark mysterious agreements about claims that miraculously lead to allowances for no discernible reason are reached outside the reach of Mooney’s hungry clutches.

  39. I think the McKesson decision is pretty draconian. Sounds like Maggot Mooney and PleaseUpholdMyBloomers are fomenting malpractice. Bloomers doesn’t think one needs to withdraw a case from issue to cite art, yet withdrawing cases from issue to cite art is done ALL THE TIME for those of us who actually take our practice seriously and have clients who don’t give us bogus instructions to flout our legal duties.

    An attorney has an ethical duty to act independently, therefore, even if your client tells you not to cite art that they have indicated is relevant, you should anyway. The indication of relevance itself should give rise to a duty on the part of the attorney to cite the art.

    If the client said, please don’t cite the art, we don’t believe its relevant. That is a different story.

  40. “…because patent attorneys are not sanctioned by the USPTO or the bar in the draconian way you seem to be suggesting that they are.”

    True enough. However, perhaps we should pretend that they are, to avoid getting onto that slippery slope. One of the advantages of being subject to a code of ethics is being able to tell a client “I can’t do that because I can lose my license.” Most laypersons I’ve dealt with appear to have at least as much respect for those professional obligations as I do. This is one reason why I suggested that this question might be harder for in-house counsel. It’s a little harder in that environment to maintain a client-professional relationship, rather than an employer-employee relationship.

  41. “Better to piss off / lose a client than lose your career.”

    In the above scenario, how would doing what the client demanded lead to the “loss of your career”? Or are you just being sarcastic, Lowly? You’re certainly not making much sense because patent attorneys are not sanctioned by the USPTO or the bar in the draconian way you seem to be suggesting that they are.

    So what are you talking about? I ask because ignorant people might think you are referring to a real-world situation instead of your own paranoid delusions.

  42. “I have a duty to disclose that is independent of the applicant’s. I’m telling them that, and disclosing the art. As I said before, however, I don’t believe that duty extends to a duty to withdraw an allowed application from issue.”

    That’s exactly how I would handle it. That’s like a client asking you to bribe a judge — you don’t do it and you explain why you can’t. Better to piss off / lose a client than lose your career.

  43. “He says don’t cite it and go ahead and pay the issue fee which isn’t due for a month or more.”

    I haven’t had one of those clients yet. My guess is that this is a little harder question for inside counsel. For those of us in a firm, a client is probably less likely to keep pushing this issue if two or three partners that they respect tell them the same thing.

    As an initial matter, however, I have a duty to disclose that is independent of the applicant’s. I’m telling them that, and disclosing the art. As I said before, however, I don’t believe that duty extends to a duty to withdraw an allowed application from issue.

  44. A good question, curious, but one that would be better answered in an anonymous poll. Otherwise we can expect the usual baloney (“I don’t know any attorney who would just go ahead and pay the issue fee”).

    But if I may pretend to be even purer than all the rest, I might ask: even if I withdraw, do I not have a duty to disclose the failure to the USPTO?

    Perhaps the Patent Bar should have its own rabbis with whom we could hash out these vexing scenarios.

  45. Leopold and others:

    A Notice of Allowance has issued and you then become aware of very relevant prior art which if cited would invalidate at least one claim.

    You client fully agrees that it is very relevant, but he is tired of waiting the six years it has taken for the PTO to allow his application. He says don’t cite it and go ahead and pay the issue fee which isn’t due for a month or more. What do you do? Don’t pay it and withdraw from representing him?

  46. Miss Bloom,

    I’m not confusing anything. If the duties overlap, then, by definition at the point of overlap they are the same… Therefore, by erring on the side of caution and withdrawing a case from issue to have art considered, you are covering all your bases.

  47. “It wasn’t that long ago that they were. I still hold out hope for a return to the system that allowed “a method of swinging on a swing” and a “laser device for entertaining a feline.” It wasn’t perfect, but it wasn’t as bad as the current mess.”

    As anyone who has lived long enough will tell you, everything goes in cycles. The pendulum will eventually swing the other way. I have hope that once we get Dudas out of there, things will improve.

    My two biggest problems with the PTO lately are: 1. how examiners are now very adversarial with attorneys, when it did NOT used to be that way (indeed, we have E6k stating that his job is to reject applications) and 2. the attempts at reducing the backlog by punishing those who file patents.

    I’ll never understand the crying about “poor quality applications.” Last time I checked, applicants pay money for an examination. If the money being paid isn’t enough, raise fees. (although i think that ending fee diversion would be enough). If there is no patentable subject matter in the application, reject it.

    What’s so difficult?

  48. “Otherwise you could routinely wait to cite all of your prior art after you have paid the issue fee so that it is never considered.”

    If I did this, then I agree that I would be violating the duty to disclose. And the requisite “intent to deceive” for a finding of inequitable conduct appears to be built right into that behavior. But I agree with Wasn’t Me – I don’t have a general duty to pull an allowed application from issue. That said, I’ve advised clients to do just that on several occasions.

    AllSeeingEye appears to repeatedly confuse ethical duties, what’s best for a client, and avoiding malpractice. These overlap, but they’re not identical. Sometimes an attorney has to actually think about what he’s doing.

  49. Reading rules 56, 97, 98 together with MPEP 2003.01, it seems clear to me that if you give the art to the patent office as soon as you receive it, you are covered from any ethical considerations. The rules are clear that, in the opinion of the PTO, the duty is not “to disclose in a manner so that it will be considered” but rather to disclose in good faith and with candor.

    Having said that, it may well be in the interest of your client to re-exam, but that’s not the “duty to disclose” that we’re discussing. I don’t even know if not doing a re-exam could be malpractice, especially where you advise your client that his patent may be worthless, and he decides to leave it alone anyway.

  50. Mooney is saying that “Abbott” would rather just have a patent than a properly prosecuted patent.

    No, I’m saying that Abbott very recently asserted an improperly prosecuted patent and didn’t blink until a Federal Judge ripped it apart into tiny tiny pieces last month.

    But thanks for playing. Good night.

  51. Now Mooney is dropping names… wow Mooney you must be extremely insecure. But we already knew that.

    Mooney is saying that “Abbott” would rather just have a patent than a properly prosecuted patent. I wonder if the in-house people at “Abbott” would agree… whoever “Abbott” might be, of course.

  52. Leopold:

    You wrote earlier: “For what it’s worth, the duty is to disclose – there is not a duty to have the art considered. If the art is relevant, than you want to pull the case from issue anyway, so that amendments can be made. If it’s not, just submit the art, knowing that it won’t be considered. You’ve met your duty. Right?”

    I disagree. Your duty is to disclose in a manner so that it will be considered. Otherwise you could routinely wait to cite all of your prior art after you have paid the issue fee so that it is never considered.

    Your thoughts?

  53. Poor examiner’s opposition: Examiner goes to the ends of the earth to find art, withholds it, allows application, sends art anonymously to attorney a week after notice of allowance. Repeat as necessary.

    To be used only in “problem” applications.

    L O L

  54. Lowly said: “If only the USPTO were so reasonable…”

    It wasn’t that long ago that they were. I still hold out hope for a return to the system that allowed “a method of swinging on a swing” and a “laser device for entertaining a feline.” It wasn’t perfect, but it wasn’t as bad as the current mess.

  55. “Final rejections do exist in Canada, but they are quite rare. This may be due, in part, to the fact that if the response to a Final rejection in Canada does not persuade the Examiner, the application is automatically sent to the Patent Appeal Board for review.”

    Thanks for that tidbit. I just learned something. I still have never received a final rejection in Canada and I’ve prosecuted god knows how many Canadian patents. Heh.

    I will say that I rather like the Canadian patent office. I think they treat us pretty well. You perform a decent examination and actually seem to approach applications with an open mind. If you misread and misconstrue a reference and I point it out, you withdraw the rejection. If you combine references and I come up with a good argument why they’re not combinable, you withdraw the rejection.

    If only the USPTO were so reasonable…

  56. “I get attorneys in interviews that actually say, “sorry, I didn’t write the application; I would never draft claims like this”. Sure you wouldn’t.”

    You don’t get it. A lot of foreign clients have US applications drafted by foreign attorneys and they file the things as is in the us. They then hire us practitioners to prosecute the patents. So, an attorney prosecuting an application that he didn’t write, having claims he would never draft, is entirely possible and in fact happens all the time.

  57. treble maker says “I say, bring it on. If it’s good art, better to take it on in prosecution. But if it’s bogus…” What is “good art” compared to “bogus” is a matter of interpretation. Just ask E6K. He reads a reference to say one thing, the entire world reads it to say another.

    While most of this board looks at it from a prosecution standpoint, I prefer to think of it from a litigation standpoint. In that sense, whether I didn’t disclose to the PTO and find my self defending an IC charge or the defendant infringer simply held onto the art to use as invalidating art during litigation, the fact is, I must now convince a jury of laypersons why the art isn’t “good” but is merely “bogus.” Ever read a Teva litigated case? Good luck.

    teacup says “Ideally, what you need is two prior art references.” Sounds like wicked strategy. Show the Queen to the patentee during prosecution. If the patent still issues, when I get sued for infringement, I still have my invalidating Ace-in-the-hole! I like it (said with sarcasm, for those just wondering)

  58. re
    “As an aside, Canadian examiners are the same. Total hit or miss. However, they never seem to issue final rejections (in fact I don’t think those even exist in Canada) and I find that browbeating them works well. (if you beat them up for making a poor rejection, they typically withdraw it. unlike USPTO examiners who are likely to stick to their guns)”

    Final rejections do exist in Canada, but they are quite rare. This may be due, in part, to the fact that if the response to a Final rejection in Canada does not persuade the Examiner, the application is automatically sent to the Patent Appeal Board for review.

  59. Paul Morgan: “a PTO disciplinary investigation (for a possible license suspension) is far more likely [than a malpractice suit], and dangerous, for a reported alleged Rule 56 violation.”

    Likely and dangerous? This issue came up in the context of the McKesson thread, as I recall.

    After a finding of inequitable conduct by a registered prosecutor, is an investigation of a Rule 56 violation automatically initiated by the USPTO? Assuming the USPTO agrees with the finding, what minimum penalty would be appropriate given the facts in the Abbott v. Bayer case we’ve been discussing?

  60. “Max, I guess you (and possibly Mooney) have been working too much with pathetic startups that think having a patent is more important that having a properly prosecuted patent.”

    Startups ike Abbott? Take a hike, AllSeeingEye. Your trolling is tiresome.

  61. How many would support comparable USPTO fees?

    I don’t think you’ll find too many who wouldn’t … particularly when the alternative would be these god-awful, search documents that’ll cost as much as some applications, likely won’t be particularly useful for examiner, and will likely cause my malpractice rates to go up.

    As I’ve said many, many times before, the USPTO is in the best position to perform searches. As such, if there is a complaint about searching, the solution will be to improve the current system than to implement a system that will probably provide lesser quality searches than what the USPTO currently provides.

  62. treble maker said: “After the patent issues, I’ll find out which client you represent and which of their product(s) infringe. Wait a bit to let the damages grow — not too long though. Then, in discovery, I’ll find the emails your client sent telling you about the patent application, the product, and your “ingenious” strategy of submitting bogus art to delay the issuance. Should be some good facts for willful infringement and 3X damages. Who knows, maybe I’ll even get a claim of IC out of it and bring you to the attention of Harry Moatz an the state bar. Top that off with a MP claim against you by your client, and I’d call it a good day.”

    A lot of smoke, no fire.

    Willful infringement? Doesn’t meet the elements.

    Inequitable conduct? It is perfectly within the rules as they exist and there is no separate cause of action for IC that I am aware of.

    And what are you going to report to the Bar and Moatz? It would have to reach the level of fraud to be of any interest, not just your standard of ‘bogus,’ whatever that means.

    By now you can see why I’m not concerned about an MP claim.

  63. I’d support higher USPTO fees if the money went to a better search. I could bring cases to a final resolution a lot more quickly if the examiner found the best art right off the bat, as opposed to waiting until the 1st or 2nd RCE. Overall, this would save my clients money.

  64. Re the comment that the EPO is “10x better at [prior art] searching than the USPTO.”
    They should be, since the EPO’s applicant FEES for prior art searching and examination are several times greater than those of the USPTO. I.e., this is not a fair comparison.
    How many would support comparable USPTO fees?

  65. “I also changed the claims in the US case after a very good rejection of the same claims in China. The US examiner was just dicking around with baseless rejections, but the Chinese PTO actually issued a good, salient rejection. Why can’t the USPTO be that good? Why do I need to go to China for a good examination?”

    I prosecute plenty of Chinese patents. Chinese examiners are hit or miss. Many times I have received terrible rejections with terrible art.

    As an aside, Canadian examiners are the same. Total hit or miss. However, they never seem to issue final rejections (in fact I don’t think those even exist in Canada) and I find that browbeating them works well. (if you beat them up for making a poor rejection, they typically withdraw it. unlike USPTO examiners who are likely to stick to their guns)

    If you want to talk about consistently good examiners, discuss europe. Can they be unreasonable, especially with inventive step rejections? Yes. However, are they 10x better at searching than the USPTO? Yes. Rarely do I get poor art from an EPO examiner.

  66. All of this begs the question: If the information in the “information bomb” was out there, why didn’t the examiner find it and consider it already?

    If we all accept that the “information bomb” scenario is reasonably likely, what does that say about the presumption of validity?

  67. All of this begs the question: If the information in the “information bomb” was out there, why didn’t the examiner find it and consider it already?

    If we all accept that the “information bomb” scenario is reasonably likely, what does that say about the presumption of validity?

  68. Re the tactic of third parties deliberately withholding prior art submissions against applicants until their patent is about to issue, to significantly delay patent issuance. Thanks to Mr. Bloom for noting that “The ABA’s Model Rule 4.4 says “(a) In representing a client, a lawyer shall not use means that have no substantial purpose other than to embarrass, delay, or burden a third person, or use methods of obtaining evidence that violate the legal rights of such a person.” Does intentionally delaying until the issue fee is paid run afoul of this rule?”
    The corresponding (but narrower) PTO disciplinary rule seems to be 37 CFR 10.85(a)(1).

  69. David,

    While I agree that the PTO needs to do a better job in hunting down relevant prior art. The Applicant can also avoid this potential problem by conducting a reasonable art search and submitting all relevant art. If the art search is sufficiently broad in scope, any further art will be cumulative. There is no requirement under Rule 56 to submit cumulative art.

    I have little sympathy for patentees who take the “throw it against the wall and see what sticks” approach to patenting. In fact, I like the idea of requiring applicants to certify to having conducted an art search before filing of a nonprovisional application.

  70. It’s hard to believe that a licensed PTO practioner could find much comfort in believing that “I’m still waiting to hear about a successful malpractice suit against a patent prosecutor that did not involve a dropped bar date” when a PTO disciplinary investigation (for a possible license suspension) is far more likely, and dangerous, for a reported alleged Rule 56 violation.

  71. The problem isn’t that third parties may manipulate the system by submitting prior art just before NOA. The problem is that the PTO needs to do their job. While I can sympathize with the PTO, in that, the number of applications (good or bad) that they receive have to be prosecuted by an Examiner, and having enough personnel, etc. to accommodate this – can be difficult. In my opinion, relying on third parties to pick up the slack – is not the answer.

  72. “couldn’t you argue that you did not submit the art prior to the NOA simply because. . .”

    “‘Thus, their client may lose due to their toying with the system – and that’s beginning to smell like malpractice to me.’

    I’m still waiting to hear about a successful malpractice suit against a patent prosecutor that did not involve a dropped bar date.”

    The point of ethics rules is to provide a code of conduct for practitioners to follow with the objective of being ethical. Does acting unethically knowing you probably won’t get caught or having a plausible defense accomplish that objective?

  73. Ideally, what you need is two prior art references. Send the first one, in good time because you’re not a d:ck, and cause the applicant to amend his claims in a direction smack dab under the hammer of the second reference, which you keep in the drawer for a rainy day.

    An unlikely perfect storm scenario, but if it panned out it would be so sweet.

  74. I say, bring it on. If it’s good art, better to take it on in prosecution. But if it’s bogus…

    After the patent issues, I’ll find out which client you represent and which of their product(s) infringe. Wait a bit to let the damages grow — not too long though. Then, in discovery, I’ll find the emails your client sent telling you about the patent application, the product, and your “ingenious” strategy of submitting bogus art to delay the issuance. Should be some good facts for willful infringement and 3X damages. Who knows, maybe I’ll even get a claim of IC out of it and bring you to the attention of Harry Moatz an the state bar. Top that off with a MP claim against you by your client, and I’d call it a good day.

  75. In the rare cases that art was cited that actually anticipated the claims, I’ve changed claims, or dropped whole cases. Recently I dropped a case in view of prior art I found myself after filing that I thought invalidated the claims. I never even cited it. Why waste the time?

    I also changed the claims in the US case after a very good rejection of the same claims in China. The US examiner was just dicking around with baseless rejections, but the Chinese PTO actually issued a good, salient rejection. Why can’t the USPTO be that good? Why do I need to go to China for a good examination?

  76. I can see using the throw-the-prior-art-at-the-attorney route earlier in prosecution. But waiting until the Notice of Allowance issues….there is a special place in hell for purveyors of this type of trickery.

  77. Stop dreaming. I routinely examine independent claims that read on admitted prior art or IDS references. You know, those three-line claims that read on the industry standard for the past two decades? You’re telling me that if I actually issued the claim, you wouldn’t take it? Right.

    Nevermind the question of why the claim was even filed in the first place.

    I get attorneys in interviews that actually say, “sorry, I didn’t write the application; I would never draft claims like this”. Sure you wouldn’t.

  78. As a client, I’d rather have a valid patent that’s been properly examined and allowed in view of all relevant art than one that’s suspect, but if my competitor is going to use chicanery to subvert the process, F- him. Unless he sends me a 102, I’ll take the patent, and cite the art in a CON. Besides, if a good search was done, I’d be surprised if anything that wasn’t cumulative was sent. When we get to court, I’ll take discovery of when he found the art and ask why he didn’t cite it earlier. When the answer is essentially, “I was gaming the system” (and don’t think this thread won’t be introduced) I’ll be wearing the white hat, a position I always want to be in.

    Also, if you think companies get garbage patents just to have patents, don’t believe it. We have better things to do with our money. We get garbage patents because we thought they would be worthwhile when we filed them (or issued them) and the project failed, or the technology moved on.

  79. Thank you Eye. Not start ups, but maybe with non-American corporate clients that haven’t yet been on the wrong end of an IC matter, and so have still not yet (despite the best educational efforts of their US counsel) grasped the downside consequences of going to issue on the back of a sub-optimal prosecution.

  80. Max, I guess you (and possibly Mooney) have been working too much with pathetic startups that think having a patent is more important that having a properly prosecuted patent.

    No one said the patent had to be abandoned. It just, in some cases, needs to be withdrawn from issue so that additional art can be considered. It might set issuance back a few months. If your investors are all waiting around for a patent to issue, I personally would be looking for a new client. What a bunch of hoo-haw.

    By the way, yes, I am a shill for good patent practice.

  81. You just don’t get it Mooney.

    Come on out of the “Closet of Patent Horrors” out here into the light…

    Its nice and warm and friendly out here. Out here, we do things the right way – just because its the right thing to do. We don’t have secret interviews with Examiners while wearing trench coats and we don’t smack pinatas around either.

    And we don’t let patents issue if we are aware of art. As someone who constantly rails against so-called garbage patents, I’m surprised that you advocate such slouchery – actually, I’m not surprised at all.

  82. Perhaps you should not open any ‘anonymous’ mail or mail from law firms of which you are unaware.

  83. “my clients would NEVER opt for a suspect patent.”

    Now THAT is some serious prosecutor koom-buy-yah. Again I say: if you’re going to amend the claims anyway because the art is so bad, why not just take the patent and file a continuation? And if you’re not going to amend the claims because you’ve got a credible argument to get around the newly disclosed art, then why not just let the patent issue “as is”? In the latter case, you really have nothing to worry about. If you have a credible argument that the art is not material, then you’re insulated from inequitable conduct.

    Even if there was a mild controversy, you’d be much better off putting your expert on the stand in court than hanging a declaration in the file history like a lumpy prosecutor-shaped pinata.

  84. You’ve got me riled now, Eye. This reader happens to think that the distress that Mooney’s contributions generate is simply because they make fun of pom_pous patent lawyers. For example: you ridi_cule Mooney’s assertion that Applicants press on to issue, even when they know the validity of their claims is suspect. But, you cannot be serious. Applicants, having already spent large sums of money, go to issue because a patent duly issued by the USPTO impresses one’s competitors, one’s investors and one’s accountants, even when Applicant knows really that it belongs in the category “garbage”. I can’t recall any client saying to me:

    “You mean there is some doubt as to the validity of these pending claims? OK. That’s enough for me. Abandon the application forthwith”

    Strikes me that, if anybody’s a shill, it’s you.

    PS, problems with the Spam filter

  85. “I just took a poll – its pretty much unanimous – you’re the only wanker around here Mooney.”

    Figure it out readers. MM is a shill. When you let him and “examiner 6k” get you fired up, you’re just taking the shill bait.

    MM=DC=E6k

    Hey Dennis, do I get extra points for that?

  86. Well, one could always send a return message.

    Such as directing to the original attorney a similar package for every case he/she, or any of his/her partners/associates, has come to issue for the rest of his/her career.

    You know, just to make sure that the proper art is on the record.

    It wouldn’t take too long to communicate the point that professional decency contradicts such d-ckhead moves.

    This would be particularly useful if one was, for example, not an attorney or agent.

  87. 1) “In the latter case, what client would NOT take the issued (but suspect) patent over no patent at all?”

    ~ my clients would NEVER opt for a suspect patent.

    2) “The reasons for doing so are quite obvious to anyone who has every tried to file an infringement suit based on claims in a patent application that has never issued.”

    ~ Are you filing infringement suits on pending applications again Mooney? No wonder you were let go and have all this time to blog.

    I just took a poll – its pretty much unanimous – you’re the only wanker around here Mooney.

  88. By the way, in answer to one of my own questions, here’s a nice update to the Patent Troll Tracker saga:

    link to thepriorart.typepad.com

    A sample of Niro’s baloney (try to believe this was actually filed in a Federal Court in 2008): “As set forth in the Statement of Facts, above, Frenkel has no education nor training whatever as a journalist. If he had, he would have learned that his activities in connection with his “troll tracker” blog were the diametrical opposite of what “reporters” do.”

    It appears that Ray Niro is on a quest to ensure his enshrinement in the Wanker Hall of Fame. In a truly just society, he’d be sanctioned for putting inane crap like that in a brief before the court. But maybe all the hyperventilating will lead the judge to take pity on Ray, finding that he’s just one of those crotchety old geezers that likes to yell at kids for the hell of it.

    Let’s hope not.

  89. “The patentee can either (1) suffer the delay of withdrawing the patent from issuance in order to have the new art considered or (2) allow the patent to issue while knowing that its duty of disclosure had not been fulfilled.”

    Seems to me this is a no-brainer in the case where a continuation is going to be filed in any event. Either the art is not so bad and arguably redundant so let it slide, or it’s so bad that the patent is likely to be found invalid. In the latter case, what client would NOT take the issued (but suspect) patent over no patent at all?

    Again, I refer everyone to the facts that are routinely laid out for all of us to see in decisions such as that recently penned by Judge Alsup: businesses like to have issued patents EVEN IF THEY ARE PURE GARBAGE. They frequently engage in all manner of chicanery to procure these garbage patents. The reasons for doing so are quite obvious to anyone who has every tried to file an infringement suit based on claims in a patent application that has never issued.

  90. “Thus, their client may lose due to their toying with the system – and that’s beginning to smell like malpractice to me.”

    I’m still waiting to hear about a successful malpractice suit against a patent prosecutor that did not involve a dropped bar date.

  91. To Captain Obvious,

    If it can be shown thatthe attorney with the “information bomb” came upon the material a significant amount of time before submitting to the prosecuting attorney, I think there is at least a presumption of bad faith. If the bombing attorney is a party to a litigation, I would say there could be a basis for sanctions. The problem would be the multifariousness of the reasons for delay.

    To Leopold, I would say that under Rule 56, the idea is to have the art considered. Therefore submitting art for the file jacket that could be material to patentability is not quite meeting your duty IMHO. Cases are regularly withdrawn from issue to have important late breaking art considered.

  92. By forcing the applicant to file an RCE, you are also giving the examiner another bite at the apple. There will be a new search, maybe even a new examiner, and all of the other USPTO-created costs, delays and misery that can ruin a perfectly good patent application. It seems that the longer an application pends, the less likely it is to issue. How about some research on that?

  93. Leopold,

    Just trying to answer your hypothetical (w/o expressing my opinion), but couldn’t you argue that you did not submit the art prior to the NOA simply because you did not believe the patent office would allow the case, and therefore you were saving your client the resources necessary to actually mail the art, but once the patent office did allow it, then you had to actually take the extra steps to protect your client as best you could?

    Just a thought.

  94. Never mind. You’re obviously talking about Dennis’ original scenario up top. And you are right.

    Somebody above suggested that the timing of submission couldn’t make an otherwise ethical act unethical. The ABA’s Model Rule 4.4 says “(a) In representing a client, a lawyer shall not use means that have no substantial purpose other than to embarrass, delay, or burden a third person, or use methods of obtaining evidence that violate the legal rights of such a person.” Does intentionally delaying until the issue fee is paid run afoul of this rule?

  95. “Any attorney that would do this is putting their client’s rights and their livelihood at risk.”

    That would do what, exactly? I don’t follow your argument, because I don’t understand which scenario you’re exploring.

  96. Leopold – that looks right to me.

    Any attorney that would do this is putting their client’s rights and their livelihood at risk. In the close case, the presumption of validity for a patent could mean the difference between the art invalidating the patent or not. Especially if the attorney screws up and maybe what ends up being an important reference from the withheld list was actually considered somewhere (listed on a lengthy IDS somewhere, or maybe just the foreign case number or an academic paper that was the basis for the reference and Mr. Withholder didn’t realize it). Thus, their client may lose due to their toying with the system – and that’s beginning to smell like malpractice to me.

    As far as being the guy receiving the stuff – it’s still cheaper to deal with it right then than it would be in litigation.

    These kinds of situations where someone is coloring outside the lines tend to snag people eventually, and the system is fairly unforgiving when they get snagged.

  97. Rule 97(i) is still in effect, as far as I know. At least until PTO (mis)management publishes and implements the IDS rule package.

    LOL

  98. For what it’s worth, the duty is to disclose – there is not a duty to have the art considered. If the art is relevant, than you want to pull the case from issue anyway, so that amendments can be made. If it’s not, just submit the art, knowing that it won’t be considered. You’ve met your duty. Right?

  99. anon – care to explain why it is an ethical violation to make the prosecuting attorney aware of relevant prior art when the issuance of a patent would adversely affect your client? Your job is to act in the best interests of your client, not to make it easier for everyone to get patents. The timing of the submission to the attorney does not change an ethical act into an unethical one. It is simply a matter of strategy.

  100. And so the attorney files an RCE and has the new art considered and another Notice of Allowance issues and the third party sends another piece of art to the attorney and so forth.

    Or maybe the third party waits until the issue fee has just been paid to send the prior art to further complicate the attorney’s life.

  101. To those attorneys that do this: I hope it comes back ten-fold to you when you do this so that this practice stops. I also wonder if there is a professional ethics violation to do this that can be reported to the respective bar to bring disciplinary charges to the attorneys that do this.

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