Poor-man’s Opposition Proceeding

Nowotarski and Bakos propose opening the patent prosecution process to third parties – at least to allow some forms of protests or pre-issuance oppositions. Those activities are expressly barred by 35 U.S.C. 122(c). [LINK]

Although no direct oppositions are available to third parties worried about pending patent applications, an increasing number of attorneys are employing a strategy that could be termed a ‘poor-man’s opposition.’ The round-about strategy relies on the patent applicant’s duty of candor to ensure that opposition materials be submitted to the PTO.

Poor-Man’s USPTO Opposition Procedure:

  1. Create package of prior art and report explaining why pending claims are unpatentable;
  2. Forward package to attorneys representing patentee with reminder of the duty of candor (retain evidence of submission);
  3. Applicant should submit entire package to PTO;
  4. Monitor PAIR to ensure that examiner receives and uses package;
  5. If necessary provide follow-up evidence and reports.

If the patent applicant fails to submit either the prior art or the associated reasoning, any issued patent may well be found unenforceable due to inequitable conduct during prosecution. An additional feature of this procedure is that the opposing party can – at its option – remain anonymous. Many attorneys don’t like this process because of the lack of control and because it “shows your hand.”

104 thoughts on “Poor-man’s Opposition Proceeding

  1. Lowly, triple dog dare you to admit on the record that you didn’t comply with my interpretation of 112 in any one of your cases. Come on big man, file a response, give me a serial number when you do. I’ll keep your identity completely secret.

    examiner6k@yahoo.com

    In the mean time maybe you could just read this:

    link to ll.georgetown.edu

    Discussion section B

    There is an inquiry to be made, but the standard of what is admissible evidence is too high to catch you. Court’s got your illegal back homie, yo yo. Inventor’s testimony? Hah, worthless in a trial about about whether or not they actually invented something. Preposterous. And they base that on Markman. Ludicrous.

  2. “6k, you’d be hard pressed to find even one patent attorney who complies with what you believe 112 2nd to say.”

    Tell us more about why the patent system is in a shambles.

  3. Mooney, I’m glad to hear that you find doing the right thing so boring. I look forward to hearing a sordid story about your woefully failed at advancing your client’s causes through chicanery and tardlicking.

  4. “Except … every day when I routinely draft claims that do not comply with 112 2nd”

    by this, you actually mean Except … every day when I routinely draft claims that do not comply with one jaded examiner’s interpretation of 112 2nd, that nobody other than him shares.

    6k, you’d be hard pressed to find even one patent attorney who complies with what you believe 112 2nd to say.

  5. “In a situation where a superior somehow pressured me to break the rules, I would happily begin an immediate search for a new job, right after I penned my signature on the IDS with the contents of the foreign action.”

    You’re so awesome, AllSeeingEye! Your medal is in the mail.

    “Sounds like Mooney is saying that if someone told you your job was on the line unless you refrained from submitting potentially material art, you should do what you are inclined not to do”

    You seem to suffer from reading comprehension. Have you considered night school?

  6. Sounds like Mooney is saying that if someone told you your job was on the line unless you refrained from submitting potentially material art, you should do what you are inclined not to do.

    In a situation where a superior somehow pressured me to break the rules, I would happily begin an immediate search for a new job, right after I penned my signature on the IDS with the contents of the foreign action.

    Mooney, sounds like you thrive in dysfunctional environments…

  7. “It seems that a mandatory punishment of some sort would not be unreasonable given the extreme rarity of such behavior and its unforgivable awfulness. Perhaps a five year ban on prosecuting before the PTO and a $10,000 fine?”

    That’s an interesting proposal. However, you’d have to give the attorney a chance to defend himself. I seem to recall that an attorney was denied standing to intervene in a case a few years ago – he argued that the inequitable conduct issues in the case had a direct impact on him. Anybody recall the case?

  8. “Malcolm, I don’t know any attorney who would engage in such behavior.”

    That’s fine. But do they exist? Of course. You need only look at the behavior of attorneys working out in the open for the government to understand how some attorneys working under the darkness of a giant corporate umbrella will behave.

    “A lawyer who breaks the rules for the outcome of one case is a lawyer who may be out of a career later.”

    Maybe. Or maybe not. Are the prosecutors in McKesson and this Abbott v. Bayer case still employed? I believe they are. I am certain there are many patent attorneys out there who would love to be in their shoes and collecting their paychecks.

    I find it interesting that peanut gallery here who seem to believe that inequitable conduct by patent attorneys is incredibly rare are unwilling to opine on what the punishment should be for those attorneys who are busted at the Federal Court level. It seems that a mandatory punishment of some sort would not be unreasonable given the extreme rarity of such behavior and its unforgivable awfulness. Perhaps a five year ban on prosecuting before the PTO and a $10,000 fine?

  9. “Unless, of course, it was “made clear” to you that the allowance of the claims, regardless of their validity, was an important milestone for your career development. Then maybe you wouldn’t mind being that hapless attorney, at least until you found a new job.”

    Malcolm, I don’t know any attorney whowould engage in such behavior.

  10. “Except … every day when I routinely draft claims that do not comply with 112 2nd.”

    shouldn’t u be searching the art or something that last OA i got from u lacked in a serious way

  11. “I’ll fight valiantly within the rules for my client’s patent, but if I cannot get that notice of allowance, I can’t get it and I’m not going to knowingly mislead the PTO in an effort to do so.”

    Except … every day when I routinely draft claims that do not comply with 112 2nd.

  12. “Do you think Abbott was disappointed in prosecutor Pope’s performance? Or do they remain very sympathetic and appreciative of everything he did for them?

    I’m not saying I know the answer to these questions but I think it’s naive to say that “the prosecutor blew it”. In fact, prosecutor Pope achieved what nobody else had been able to achieve after, what was it, thirteen other attempts??”

    A lawyer who breaks the rules for the outcome of one case is a lawyer who may be out of a career later. It’s never worth it. I’ll fight valiantly within the rules for my client’s patent, but if I cannot get that notice of allowance, I can’t get it and I’m not going to knowingly mislead the PTO in an effort to do so.

  13. “I, for one, would not want to be the hapless attorney who failed to submit the foreign case and was charged with inequitable conduct that resulted in my clients patent being unenforceable.”

    Unless, of course, it was “made clear” to you that the allowance of the claims, regardless of their validity, was an important milestone for your career development. Then maybe you wouldn’t mind being that hapless attorney, at least until you found a new job.

    Do you think Abbott was disappointed in prosecutor Pope’s performance? Or do they remain very sympathetic and appreciative of everything he did for them?

    I’m not saying I know the answer to these questions but I think it’s naive to say that “the prosecutor blew it”. In fact, prosecutor Pope achieved what nobody else had been able to achieve after, what was it, thirteen other attempts??

  14. Miss Bloom, er, I mean Mooney

    Since patent law is a statutory regime and not a creative free-form regime, its not so much that I want to surround myself with people who “think like I do” its that I want to do the right thing out of an abundance of caution. There may or may not be a case regarding submission of foreign art (there probably is).

    The idea of waiting for a case before establishing a course of legal practice is backward thinking and, in fact, not very creative. If being all “touchy-feely,” using politically correct feminine pronouns, and waiting for case law before you take action, is more important than making key strategy decisions about when to submit art to the PTO, I wish you much luck with your practice.

    But I, for one, would not want to be the hapless attorney who failed to submit the foreign case and was charged with inequitable conduct that resulted in my clients patent being unenforceable.

    I guess you would.

  15. “But if your aim was purely to dispatch with or cause a desirable amendment of a problematic patent application then you could use [37 CFR § 1.99 Third-party submission in published application]?”

    Yes. But, often the patent isn’t noticed within the two month window or the client doesn’t appreciate the impact on their business during the two month window.

    Also, many clients would prefer not to get involved if not necessary. So they would rather wait to see if the examiner does a good search before spending their own money. That could be years after the window has closed.

    The window is too short to be useful in most cases. And given that other options are available, why worry about it.

  16. Clive: Thanks for the info. But if your aim was purely to dispatch with or cause a desirable amendment of a problematic patent application then you could use this?

  17. “But you shouldn’t be betting your client’s sack.”

    I’m not. I’m adding one line to an IDS and copying a few pages that we all agree are unlikely to even be considered by the examiner.

    You are.

    If I am right your client loses their patent. If I am wrong my client loses a few dollars, at worst.

    Explain that to your client and see which route they pick.

  18. MJ: because of the tight window of time to do so, the fee, and the lack of Rule 56 squirming it applies to the attorney of record (er, I meant, lack of setup for an IC charge down the road).

  19. Why can’t a third party use the following provision as outlined in the MPEP (37 CFR § 1.99 Third-party submission in published application) and just send the prior art direct to the USPTO:

    (a) A submission by a member of the public of patents or publications relevant to a pending published application may be entered in the application file if the submission complies with the requirements of this section and the application is still pending when the submission and application file are brought before the examiner.

    link to uspto.gov

  20. So, has anyone here actually (a) made a Rule 99 submission or (b) sent a packet of art to the attorney of record for the target application? For either course of action, did it make a difference as to whether a patent issued or the scope of granted claims? If option (b), did you monitor the application to see if the art subsequently was submitted?

    Curious how much bang the poor man gets for his buck.

  21. “Sorry Ms. Bloom, I would not want you on my team.”

    I understand – it’s important to surround yourself with people who think exactly like you do.

    You have any case law that even hints that omitting to submit the opinion of a foreign examiner, with respect to a reference that has been considered by the PTO, is inequitable conduct? If not, you’re wasting your clients’ money.

    You can bet your entire sack, along with Keith, that it might happen some day. And it might, although I’d bet MY sack that it will only happen in the context of a bunch of other smelly facts. But you shouldn’t be betting your client’s sack.

  22. —What should have happened is that the Examiner should have said “Go right ahead but if you think that I’m going to find testimony FROM AN EMPLOYEE OF THE OWNER OF THE INVENTION persuasive, you must be high on crack.”—

    This is an interesting point. Whose testimony would you say is acceptable to both the Examiner and to the applicant? Presumably anyone who is willing to provide testimony has an interest. The same argument could be made against the testimony of a university professor who isn’t willing to make the declaration unless he receives his consulting fee. I seriously doubt that the applicant would be willing to disclose such information to, say, the chief R&D guy at his closest competitor, to find out whether he would be willing to make the declaration.

  23. SF “Here, the applicant went beyond the USPTO’s expertise by submitting evidence in a declaration, which is a key distinction.”

    But they didn’t. What happened is that the USPTO rolled over when it should never have allowed the claims to issue. The phrase that was being discussed was “optionally, but preferably”. The prosecutor’s argument (before the USPTO only) was that this phrase meant “required”.

    The Examiner rightfully didn’t buy it but when the prosecutor asked if he could file a declaration from a scientist arguing that an “expert” would understand that “optionally” meant “required”, what was the Examiner supposed to do? Say “no, I won’t let you do that.”

    What should have happened is that the Examiner should have said “Go right ahead but if you think that I’m going to find testimony FROM AN EMPLOYEE OF THE OWNER OF THE INVENTION persuasive, you must be high on crack.”

    Instead, the Examiner rolled over. Truly pathetic and how shocking it must be for you all to learn that the patent issued on October 13, 1998, right in the middle of the patent bubble. Remember how big the shrimp were at the IP firm parties back then? Good times, good times.

  24. To Doug M, you may have me confused with someone else, I think foreign reports CAN be relevant and generally should be submitted even if the document is already of record in the U.S. case.

  25. Note to self: seriously consider hiring Mooney for analysis and remediation next time barn smells bad.

  26. Sorry Ms. Bloom, I would not want you on my team… Are you sure you’re not Mooney?

    Let me repeat.

    Counterpart application, identical claims, same reference, case allowed in the U.S. rejected in China.

    As for my Examiner, I will submit the substance of that Chinese office action to him every time.

  27. Ek6,

    I prosecute a fair amount of chinese patents and they often cite US art. That’s not at all uncommon.

  28. If someone sent me one or two references, I would have no problem reviewing it. If someone sent me 50 I would return them or destroy them without reviewing them.

  29. “No way am I submitting a Chinese office action in an IDS. Different law, different language – merely translating the claims makes them different than their US counterparts. I’ll give the Examiner the reference – she can draw her own conclusions.”

    I got one in a case just last week and it was most helpfull. They even cited US art in the Chinese action. They had some CH art too though.

  30. I just read the opinion in the Abbott/Therasense case mentioned above – it’s fascinating. My favorite sentence, although unrelated to this discussion: “Nonetheless, this order appreciates that a legitimate invention may eventually be found lurking in a disclosure even though the inventors missed it themselves for over a decade.” Apparently the good judge doesn’t agree with e6k’s interpretation of Section 112, paragraph 2.

    As was clarified above, this case did not involve a failure to submit a foreign office action, and does not suggest that such a failure would necessarily be material. As SF suggested, a key point is that Abbott submitted a declaration – evidence – rather than just argument, knowing that this evidence was directly and unambigously contradicted by earlier submissions in the European opposition proceeding. As far as I could see in the opinion, Abbott never argued “different jurisdiction, different law.” This would have been off-point, since the issue was not claim construction, etc.

    Here’s a good quote from the opinion:
    “This is unlike the situation where a reference is already before an examiner who can draw his or her own conclusions as to what it teaches and is able to discount spin offered by counsel. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379 (Fed. Cir. 2008). Although the key sentence itself was indeed before Examiner Shay, the inquiry had shifted to a point of extrinsic evidence. That is, Examiner Shay had acquiesced to Attorney Pope’s request to resort to extrinsic evidence to show that the sentence would have been understood by skilled artisans differently than its words suggested. Having received permission to supply extrinsic evidence, Attorney Pope was duty-bound to present any inconsistent extrinsic information known to him. In the arena of extrinsic evidence, the examiner was unable to fend for himself. He had no way of knowing what, if any, contrary extrinsic information had been left out of the Sanghera declaration. He was completely dependent on Attorney Pope and Dr. Sanghera to fully disclose any extrinsic information, pro and con, known to them on the factual point covered by the submission.”

    Good stuff.

  31. I’ve been on both ends of this strategy before. Personally, I don’t like receiving art from chicken-**** third parties, but I don’t mind in the least reviewing the art and evaluating my claims in view of them. I don’t want a patent that’s fatally invalid — I’m just not that invested in “winning”.

    Maybe I wasn’t in private practice long enough to become jaded and feel getting that NOA was the ultimate goal. Maybe the in-house experience is just jading me in different ways!

  32. “Yes, it might have reached a different conclusion but given all the rest of the facts in this case (minus the bogus declaration, per your hypothetical), a finding of inequitable conduct would still be richly deserved.”

    Deserved, probably. Legally supported? Who knows. But you and SF raise an important point. The specific (and abundant) facts of this case, and of McKesson, are critical. In neither case did the attorney simply omit to disclose an interesting item of information. Rather, in both cases the totality of the facts conspired to make “the courtroom smell like a barnyard disease.” Perhaps this was just good lawyering on the parts of the defendants. But I suspect that the judges were correct in detecting a stench.

    This is why I don’t buy the “sky is falling” interpretations of McKesson. Yes, the court made some unfortunate and overbroad statements of law. But the outcome was compelled by the specific facts. This is probably how it should be in an issue of equity. If you’re doing something smelly, then quit it. If you’re not, then don’t lose any sleep over inequitable conduct. It’s almost always alleged. But it’s still rarely proved.

  33. “There was a very good reason that Pope wasn’t convincing. The reason was that he was forced to make an argument that was so ridiculous it made the courtroom smell like a barnyard disease.”

    This was is a similar problem with McKesson where the attorney testified as to materiality and wasn’t a credible witness on that subject.

    Deliberately making an argument with the intent to deceive should be immaterial if the USPTO can read the reference and readily see that the reference teaches “up” despite the deliberate argument to the contrary. And if the USPTO can readily read the reference and decide whether to reject or accept the argument, then there isn’t materiality because, whether right or wrong, the USPTO is presumed to be experts in examining the content of prior art references and had all the material information regarding the prior art (the reference itself). Here, the applicant went beyond the USPTO’s expertise by submitting evidence in a declaration, which is a key distinction.

    I’m not saying there couldn’t be other ethics issues for a lawyer deliberately making a bad argument with the intent to deceive.

  34. “If it had merely been an attorney making an inconsistent argument, the court might have reached a different conclusion since the USPTO was free to reject the argument and consider the reference for itself.”

    Yes, it might have reached a different conclusion but given all the rest of the facts in this case (minus the bogus declaration, per your hypothetical), a finding of inequitable conduct would still be richly deserved. Brainwashing oneself to believe that “up” means “down” is not an ethical attorney stategy, regardless of whether a declaration is filed.

    You did notice Judge Alsup’s classic comment about poor Mr. Pope, didn’t you? “”Attorney Pope did not prove to be a convincing trial witness.”

    There was a very good reason that Pope wasn’t convincing. The reason was that he was forced to make an argument that was so ridiculous it made the courtroom smell like a barnyard disease.

  35. nice,

    Keith was proposing that the foreign office action itself should be submitted. I don’t think anyone disputes that the references should be submitted, although 1.56(a)(1) doesn’t actually say that they must.

  36. “…I would ‘bet my entire sack’ that the FC will find IC for not providing and international search report or office action in the next five years.”

    I’m confused, as I thought the rules already required you to cite to the USPTO any references cited in a foreign action. How is everyone here interpreting 37 CFR 1.56(a)(1) and 37 CFR 1.97(e)(1)?

  37. “The Abbot v. Bayer case cited by Malcolm above seems to be a case of a company swearing that words mean one thing in front of the EPO and another thing in the USPTO.”

    The “swearing” was the key part because it was a sworn declaration (which was evidence, instead of attorney argument) that was used to overcome the rejection in the USPTO. If it had merely been an attorney making an inconsistent argument, the court might have reached a different conclusion since the USPTO was free to reject the argument and consider the reference for itself.

  38. “Mr. Bloom distinguished between contradictory arguments made by an attorney on similar issues of fact and official office actions issued by a foreign office. Which was actually at issue in Abbott?”

    The Abbot v. Bayer case cited by Malcolm above seems to be a case of a company swearing that words mean one thing in front of the EPO and another thing in the USPTO.

    Not exactly the same thing as you are proposing, but based on the same logic that because it is a different jurisdiction with different rules and even different claims at issue then it is not material to what is happening in the US.

    It is my opinion that this logic will sink ships in the current IC environment.

  39. “It seems that the primary problem was that Abbot counsel put too much weight on the argument that it was a different jurisdiction with different rules. I am surprised that this argument is still used by serious practitioners, but I take Mr. Bloom at his word that he still believes it.”

    Mr. Bloom distinguished between contradictory arguments made by an attorney on similar issues of fact and official office actions issued by a foreign office. Which was actually at issue in Abbott?

  40. Malcolm said “I will bet my entire sack that they knew about it long before the trial, most likely many months before the Markman hearing, and possibly even before the complaint was filed. When your goal is to tank or seriously devalue a patent, pulling any corresponding EP file histories and reviewing them for admissions and contradictions is as fundamental as pulling the US file histories. Neither Bayer or Abbott are naive about how the game is played. Hence Judge Alsup’s expression of dismay regarding the behavior of “professionals.”"

    Upon reflection you are probably right. It seems that the primary problem was that Abbot counsel put too much weight on the argument that it was a different jurisdiction with different rules. I am surprised that this argument is still used by serious practitioners, but I take Mr. Bloom at his word that he still believes it. I’m fairly certain he’s not the only one.

    It may not have happened yet, but I would ‘bet my entire sack’ that the FC will find IC for not providing and international search report or office action in the next five years. Eventually, I agree, they will have to back down from this standard, but the direction they are heading requires over disclosure to be safe.

  41. Mr. Bloom: The logic you are using (different claims, different jurisdiction, different laws -> not material) is exactly the trap the Abbot counsel fell into above. The problem is that the standard for what is ‘material’ has been lowered so much by McKesson and other cases (read Newman’s recent dissents if you would like some hyperbole) that I would love to attack you and your patent where you ‘actively concealed’ the Chinese office action. It gives me goose bumps just thinking about it.

    Anon: No judge cares what your SPE thinks the law is. What matters is what the law actually is, or will be, at the time you try to enforce the patent.

  42. “Inasmuch as the EPO submissions centered on the same key sentence at issue in the PTO as well as the key issue before the PTO, a reasonable examiner would have plainly considered the EPO submissions to be highly material, given the contradictory teaching ascribed to the sentence.”

    That’s interesting, but I think it’s a slightly different issue. (I also think it’s likely wrong, as a matter of law, but that’s another matter.) One issue we’ve been discussing is whether the opinion of a foreign examiner is material to patentability in the US. I think not. Another issue, which is where the above quote appears to be directed, is whether an attorney can take opposite positions in two separate proceedings. This obviously doesn’t “feel” right, but I don’t see how this becomes inequitable conduct.

  43. What about inventorship? Say one inventor in a joint inventive entity files an app without the knowledge of the other inventors, the PTO publishes, and the other inventors soon find out about the skulduggery. There’s only limited opportunity for protest, and the PTO is not supposed to look at third-party filings. Should the other inventors be forced to wait for the patent to issue and then file for reexam/section 256 DJ?

    The “Poor Man’s Opposition” gives the rogue inventor and counsel a chance to “do the right thing” in an inexpensive way, rather than forcing the other inventors out of the picture.

    This is also a good way to remove the stink of the initial misrepresentation of ownership, regardless of whatever claims issue. IC has probably already occurred under PerSeptive Biosystems.

    Seems like this is the point of Rule 56.

    Thoughts?

  44. Add yet another wrinkle – consider the timing. If patentee receives the package after the notice of allowance, but before issuance, what does he do?

    The reality of this “poor-man’s opposition” is that it creates uncertainty for the business. The dilemma is either to submit the art to the PTO and delay issuance of the patent or dismiss the art as duplicative. Each has its own risks – hence the uncertainty.

    See my post – Posted by: link to patentlyo.com

  45. Add yet another wrinkle – consider the timing. If patentee receives the package after the notice of allowance, but before issuance, what does he do?

    The reality of this “poor-man’s opposition” is that it creates uncertainty for the business. The dilemma is either to submit the art to the PTO and delay issuance of the patent or dismiss the art as duplicative. Each has its own risks – hence the uncertainty.

    See my post – Posted by: link to patentlyo.com

  46. McKesson doesn’t say anything about foreign patent office rejections. I’m not aware of a CAFC decision holding that.

    However, here is a quote from a recent district court case Therasense Inc. v. Becton Dickinson & Co., N.D. Cal., No. 04-02123, 6/24/08.

    “Inasmuch as the EPO submissions centered on the same key sentence at issue in the PTO
    as well as the key issue before the PTO, a reasonable examiner would have plainly considered
    the EPO submissions to be highly material, given the contradictory teaching ascribed to the
    sentence.”

    This note is regarding an EPO/applicant discussion of a reference that was before the PTO.

  47. “Didn’t you read McKesson?”

    I did. Even with its overly broad statements (mark my words, the Federal Circuit will backtrack from this case), it doesn’t support a conclusion that FOREIGN office actions are material. No way am I submitting a Chinese office action in an IDS. Different law, different language – merely translating the claims makes them different than their US counterparts. I’ll give the Examiner the reference – she can draw her own conclusions.

  48. I have to agree with AllSeeing. Since when is someone else’s opinion relevant, whether that’s the opinion of another patent office, or another attorney who doesn’t happen to be employed by a patent office. Why should an examiner’s opinion be any more relevant than an agent who is not an examiner … right now? How about a former examiner? An attorney who’s not an examiner? John Dudas? Q. Todd Dickenson?

    Also, how about if I send a package of blank papers. I can later contend there was anything in there that I like. How will someone later prove what was sent (or received)? I’ll mark it “personal and confidential” so the attorney opens it directly. The secretary never sees it, so there’s no independent confirmation of what was in it. In fact, I should send one each to a bunch of attorneys, thus covering multitudes of cases prosecuted by each. I’ll have signed returned receipts in hand and can contend they received anything I can conjure up … later.

  49. “Sorry anon, I think you are mistaken on that one. There is no rule or guideline that says you only have to submit the references from foreign reports. You probably are pushing back because you have been omitting such submissions in your practice – of course that makes you uncomfortable. Office actions and reports from foreign offices are not exempted from submission.”

    Tell it to your attorney friends AllSeeingEye. If you’d have read a little closer, you’d see that I’m an EXAMINER and I’m speaking from PERSONAL experience about what I see INSIDE the office.

  50. Question to USPTO Examiner readers: do you read EPO files online. (If not yet, try http://www.epoline.org then go to Register Plus no password needed) Do you find the online EESR helpful? The Extended European Search Report is the EPO search report with a FAOM annexed to it. It is what the EPO issues these days, within a few months of the filing date. Of course it doesn’t help when you are examining business methods, because the EPO isn’t into that stuff, but it might help you in other fields like, say, medical devices, where most of the references are US-originating. And of course, if you can grasp EPO Problem and Solution logic, it will help even more.

  51. Sorry anon, I think you are mistaken on that one. There is no rule or guideline that says you only have to submit the references from foreign reports. You probably are pushing back because you have been omitting such submissions in your practice – of course that makes you uncomfortable. Office actions and reports from foreign offices are not exempted from submission.

    Here is an example.

    Applicant files in US, DE, and CN (China). Reference A is cited in the FAOM in the US case. China issues a rejection over, guess what, reference A.

    Lets make it more interesting – lets say the US Examiner issues a first action allowance over reference A. Before paying the issue fee you get the CN Office Action rejecting the identical claims over reference A.

    What would you do anon? Didn’t you read McKesson?

  52. If the package is opened, whether anonymously submitted or not, the recipient is immediately charged with constructive knowledge of the contents. If the relevant application is identified in the letter then receiving attorney would have a hard time rationalizing a failure to submit the materials particularly if it was found out later, such as during litigation, that the materials were relevant to patentability and were not submitted.

    If an EPO report (or any other office for that matter) contains a substantive rejection based on references already of record in the U.S. case, the EPO’s (or any other office’s) remarks are material IMO. We do it all the time (“we” are in PTO’s top 20 foreign filers).

    If a mere search report listed a reference already of record, then the fact that the reference is marked as an “X” reference in the search report would be material IMO and go beyond mere submission of the document. In this case the search report would be properly subject to the duty.

  53. “An alternative to the “Poor-man’s strategy”, is to “informally” send the prior-art and the non-patentability report to the examiner assigned to the application in question. Informal submissions can be sent to an examiner via his direct fax line and/or USPTO email address.”

    See, this is what I would think would go on all the time. Heck with having an attorney do it, have your son send an email from his gmail. “Hey examiner dude, I was totally checking out this case you’re looking over and check out this awesome art yo, 102b fo sho” What has been seen cannot be unseen.

    Someone who is probably lurking right now sent me art on the interwebs. I haven’t actually used it, mine’s better, but it was interesting art. How can I stop them from doing that? I don’t know of any way to. They didn’t even say what case it was for, but that’s hardly needed.

  54. “Anon says “Applicant has NOT violated any duty of disclosure by NOT submitting the EPO/JPO/WIPO report IF the references cited in those reports are otherwise listed in an IDS.”

    Are you sure, Anon?

    Anyone else have an opinion on this?”

    I can tell you that Examiners have a right under 37 CFR 1.105 to make a request for information from Applicant. I, as an Examiner, recently got turned around by a SPRE/QAS (whatever you want to call em) when I wanted to make a request for a PCT search report that was prepared and sent to Applicant but was publicly unavailable because the PCT application was later “withdrawn.” I was told to forego making any such request because the PCT search report was nothing more than an “opinion” on the patentability of Applicant’s claims, notwithstanding it was something I (as the Examiner) considered “material to patentability.” Besides this specific example, more often than not from what I’ve seen as an Examiner, Applicant will NOT submit the written report, but only the IDS as I’ve previously stated. That’s why I (and I suspect most other Examiners) begin every new search with a check of continuity data for the application and a cross-check to related EPO/JPO/WIPO applications to determine whether any “foreign” search has already been done and the results of such search.

  55. Anon and query,

    In light of the fairly recent McKesson v. Bridge Medical 82 USPQ2d 1965 (Fed Cir 2007) and Monsanto v. Bayer 85 USPQ2d 1582 (Fed Cir 2008) decisions, Applicant needs to be careful in choosing not to submit reports and office actions from foreign jurisdictions, particularly if Applicant chooses to take a contrary position to those expressed in those documents.

    In my opinion, it is better to err on the side of caution and submit everything and have a stronger patent for it.

  56. “Are you joking? … Read the opinion.”

    No. But I have since read the opinion, which differs from the summary in the article you cited.

    Because the article did not mention the declaration that was submitted (a material omission?), I inferred that it was an attorney argument/characterization case. If it had been an attorney argument/characterization case, then I’d stick with my original position.

    However, since there was a declaration involved, rather than attorney “spin”, the court correctly treated it as an evidence case: “This is unlike the situation where a reference is already before an examiner who can draw his or her own conclusions as to what it teaches and is able to discount spin offered by counsel.”

    Someday I’ll learn not to trust case summaries.

  57. Anon says “Applicant has NOT violated any duty of disclosure by NOT submitting the EPO/JPO/WIPO report IF the references cited in those reports are otherwise listed in an IDS.”

    Are you sure, Anon?

    Anyone else have an opinion on this?

  58. can we as attorneys give evidence to a judge as he is walking to his car after court that day?

    can we anonymously and secretly put it in his home mail box?

  59. “Regarding submission of the non-patentability report: An examiner would likely find this report useful (and thus material) if it explains how the prior art relates to the claimed invention.”

    I would have to disagree on that one. The patentability report is merely an “opinion” with regard to patentability, it’s not conclusive by any means. Note that Applicants aren’t under any duty to submit a patentability report of the EPO or JPO on a related application under examination in the PTO, but only the refernces cited in such reports. Thus, typically Examiners will NOT receive the JPO/EPO/WIPO patentability report if there is one, but rather an IDS with 50 or so refernces listed (including the 3 or 4 most relevant references cited in the JPO/EPO/WIPO report buried somewhere in the IDS). It’s then the Examiner’s job to sift through the references of the IDS and determine what’s relevant and what isn’t. Applicant has NOT violated any duty of disclosure by NOT submitting the EPO/JPO/WIPO report IF the references cited in those reports are otherwise listed in an IDS.

  60. “anon101 and others — are there ethical issues if we patent attorneys informally fax prior art and reports to examiners handling applications for which we do not have a power of attorney?”

    What’s the difference between this and the “peer patent review” trial program that the PTO has going in a few art units now where ANYONE can submit prior art they consider relevant to examination of a patent that is currently undergoing review????

  61. Lionel: “Even if not sent anonymously, he can have it destroyed without reading it. What’s the problem?”

    There is none. I believe that’s perfectly ethical behavior and, in some sense, is exactly what many patent attorneys do with respect to art that is “out there”, i.e., avoid looking for it and, if they happen to see something out of the corner of their eyes, look away and don’t think about it again and don’t visit that place again. This is how the attorney keeps his or her mind “clean.” That way the attorney can sleep comfortably at night, in blissful ignorance of the art that might invalidate those claims the client is demanding (which seem really absurdly broad but, hey, the client has been informed of its duty so really there is not much more that the attorney needs to do).

  62. Keith: “do you think Bayer was aware of this at the onset of litigation or did they discover this during trial?”

    I will bet my entire sack that they knew about it long before the trial, most likely many months before the Markman hearing, and possibly even before the complaint was filed. When your goal is to tank or seriously devalue a patent, pulling any corresponding EP file histories and reviewing them for admissions and contradictions is as fundamental as pulling the US file histories. Neither Bayer or Abbott are naive about how the game is played. Hence Judge Alsup’s expression of dismay regarding the behavior of “professionals.”

  63. This brings back very bad memories of a reexamination proceeding we were handling a couple of years ago. Near the time the NIRC was going to issue, we received a email from a company called Patent Trakker. The email included a list of about 60-70 US patents and a note that they were trying to assist us with their prior art. It was a big mess! By the time we filed it in an IDS, the NIRC had issued and the patent office refused to review the art. We petitioned twice to no avail.

    I do not like any of this. It is too easy to abuse applicants and patent holders in this way.

    If you do not have the balls to file for a reexamination, don’t mess with the patentee. (I happen to like reexamination and believe it should be used more often.)

  64. “Kudos to counsel for getting this past the District Court. I doubt, however, that this will get past the Feds.”

    Are you joking? If not, what is your argument?

    Assuming the IC finding is even appealed, I predict the Feds wouldn’t simply affirm the district court and be done with it. Read the decision. It’s not short. Judge Alsup did his homework.

  65. anon101 and others — are there ethical issues if we patent attorneys informally fax prior art and reports to examiners handling applications for which we do not have a power of attorney?

  66. to Lionel: Seems like a lot of work to achieve a dubious goal.

    What if I don’t include references?

    What if I have you served by a process server?

    This could be a fun game no matter how you care to play . . .

  67. Mooney:”The key word here is “eventually.” You realize that even with that slam dunk case of inequitable conduct stinking up the file history, Abbott took this puppy to trial. You think they are going to end up paying all of Bayer’s attorney fees?”

    But, do you think Bayer was aware of this at the onset of litigation or did they discover this during trial? Timing is everything.

    Also, making different arguments to different bodies in different jurisdictions where different standards and rules are used does not seem as “inequitable” as sitting on relevant prior art. I can see counsel convincing themselves that the former is acceptable while I can’t see any serious prosecutor convincing themselves that they can ignore art in their hands. At least, not in the current environment.

  68. On the other hand, Lionel, don’t you want the Patent Office to consider all relevant art before your client’s patent issues?

  69. Why can’t an attorney avoid such disclosures?

    (The following is not meant to be an advocacy of these methods in any way, shape, or form, but is instead to argue there is no disclosure violation)

    It seems to me that if his admin opens his mail, as I assume many attorneys have their admins do, he could just have standing instructions that if (1) the mail contains patents or publications, and (2) it was sent anonymously, that the admin is not to deliver it to him. She can inform him about it and about which application it was related to, and nothing more.

    Even if not sent anonymously, he can have it destroyed without reading it.

    What’s the problem?

  70. “Is that the holding of some case I’ve never read or heard about before?”

    I’m not aware of any particular Federal Circuit case with that particular holding. But I’m also not aware of any Federal Case affirming IE based on an alleged mischaracterization of what a cited reference taught or did not teach. Kudos to counsel for getting this past the District Court. I doubt, however, that this will get past the Feds.

  71. “Regarding submission of the non-patentability report: An examiner would likely find this report useful (and thus material) if it explains how the prior art relates to the claimed invention.”

    Dennis, while I agree with you, and having had to deal with this “Poor Man’s” procedure on numerous occassions over the last several months (and submitting everything that came in the package), don’t you find it ironic that we are not allowed to submit or provide commentary in an offical 3rd party submittal?

  72. “Comments made before the EPO or the USPTO regarding the reference are immaterial when the USPTO can review the reference itself.”

    Is that the holding of some case I’ve never read or heard about before?

  73. Anon101: Although this is a seeming ‘technicality.’ I am doubtful of the ethics of a patent attorney directly contacting the Examiner to provide information about a would-be ex parte proceeding.

  74. An alternative to the “Poor-man’s strategy”, is to “informally” send the prior-art and the non-patentability report to the examiner assigned to the application in question. Informal submissions can be sent to an examiner via his direct fax line and/or USPTO email address.

    BTW: The direct fax line for an examiner is the same as his direct phone line, with the only difference being the third digit – 3 instead of 2. Thus, if the phone # is 571-272-1000, the fax # is 571-273-1000.

    Some savvy examiners may even copy and paste parts of your non-patentability report into their rejections.

  75. Mooney: Wacky IE opinion. The USPTO was free to read the reference and understand what it did or did not teach. Comments made before the EPO or the USPTO regarding the reference are immaterial when the USPTO can review the reference itself.

    As to the whole anonymous thing, just retain counsel (not your ordinary counsel so as to conceal your identity) to sign the letter and the package. The recipient could not then say “I don’t open anonymous letters.”

  76. Regarding submission of the non-patentability report: An examiner would likely find this report useful (and thus material) if it explains how the prior art relates to the claimed invention.

  77. Keith: “the Abbot story seems to show that these things come to light eventually. I would love to be a third party whose relevant art is ignored and is later sued for infringement.”

    The key word here is “eventually.” You realize that even with that slam dunk case of inequitable conduct stinking up the file history, Abbott took this puppy to trial. You think they are going to end up paying all of Bayer’s attorney fees?

    As I have noted previously, “winning” is often NOT the point of litigation. So be careful what you wish for.

  78. “Why, as a competitor of the patent applicant, would I submit good art to the PTO? So the PTO can allow the application over my good art and inhibit any later invalidity argument regarding the good art?

    That’s not an accurate statement of the law with respect to previously cited art. The only invalidity arguments that are “inhibited” based on an earlier citation of art are those arguments that were actually made. In fact, I think it’s likely that an incompetent Examiner’s earlier failure to recognize why the art is invalidating helps to pave the way for a later invalidation relying on the same art, a stronger argument, and a forceful condemnation of the Examiner’s initial crappy effort.

  79. “For a lot of the same reasons that reexaminations are rarely used, these “poor man” submissions fell out of vogue several years ago when examination quality dropped.”

    But the new “quality assurance” program, as a part of the PTO’s stringent fight against allowing anything, is making this and reexams far more attractive. Have you seen the stats on reexams, and interpartes reexams in particular?

  80. “It’s true.”

    I thought as much. Good to have confirmation.

    “But I was also making a serious point about one of the gaping holes in this “poor man’s” strategy.”

    But, the Abbot story seems to show that these things come to light eventually. I would love to be a third party whose relevant art is ignored and is later sued for infringement.

  81. For a lot of the same reasons that reexaminations are rarely used, these “poor man” submissions fell out of vogue several years ago when examination quality dropped.

    Why, as a competitor of the patent applicant, would I submit good art to the PTO? So the PTO can allow the application over my good art and inhibit any later invalidity argument regarding the good art? I’m better off sitting on the art until the patent is litigated.

  82. “So what should an attorney who receives this package and report do?”

    Let’s see . . .

    “(1) Report it to his client?”

    Yes.

    “(2) Confirm that the prior art is actually prior art and not fraudulent prior art?”

    Certainly. Although there is little reason to assume fraud, it is your duty to look for it. This does set up some interesting scenarios . . . but that would be for later.

    “(3) Assuming that there is actual prior art, submit the prior art to the PTO? Submit the “report” with the prior art? Or just submit whatever “comments” the attorney usually submits?”

    The art, at least. The ‘report’ is tougher. I would say there is no legal duty at this time to disclose the ‘report’, but there are reasons to do so, as I noted above. Additionally, if the ‘report’ is so clearly biased, it should be easy to note that in your accompanying reply without saying too much.

    “(4) If the prior art is foreign language prior art, have a (certified?) translation made of it to submit to the PTO? Rely on the Poor-Man’s translation, if any?”

    The requirement is “a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, unless a complete translation is provided . . .” I would think that standard should be easy to meet with an explanation of where the art came from along with your statement of general ignorance. Unless you or others under the duty happen to speak the foreign language at hand.

    Of course, if the client can afford a translation then I would get one done and provide it. The translation could be used to show that the biased third party representation does not hold water. Or it could show that the art is very much on point and your claims are toast. That would suck, but not as much as having to pay tens of thousands of dollars to see your claims shot down at the summary judgment stage of litigation.

    It is a bad thing to receive such a letter, but it is not wholly bad. You are simply being shown the art you and the examiner missed during your searches. If you can still get claims allowed around the art then your patent will be in a better position when you do enforce it. If you can’t get meaningful claims allowed you will at least save yourself the hassle of trying to enforce a patent that will not be upheld. I prefer getting the bad news up front. Others don’t.

  83. “And Malcolm was kidding at 3:06.”

    It’s true. But I was also making a serious point about one of the gaping holes in this “poor man’s” strategy.

  84. “I don’t know any prosecutor who would follow your advice given at 3:06.”

    Perhaps you don’t appreciate the pressures that can be brought to bear on prosecutors in unfortunate circumstances:

    link to law.com

    Judge Kills IP Claim, Blames Lawyer

    Illinois-based Abbott had sued Bayer and other pharmaceutical makers over a patent on strips used by diabetics to test their blood. Judge William Alsup of the Northern District of California made a finding of inequitable conduct on Tuesday, saying that the patent in question had been obtained only because Abbott attorney Lawrence Pope had withheld key information in connection with the patent filing.

    “The withheld evidence here was richly material,” Alsup wrote in the 54-page ruling. “And, intent to deceive, not just to withhold, was clearly in the mind of attorney Pope, hard as it is to so conclude as to a professional.”

    ….

    The patent at issue in Alsup’s ruling, known as the ’551 patent, was rejected 12 times by the patent office over a period of 14 years, starting in 1983 with a company called Medisense. ****All but one**** of those rejections cited U.S. Patent No. 4,545,382, known as the ’382 patent, which had been issued previously to the same researchers.

    After Abbott bought the company in 1996, it assigned in-house patent lawyer Pope, now counsel at Mayer Brown in Chicago, to work on the ’551 patent.

    Along with an Abbott researcher, Pope argued that ’551 was novel because it didn’t require a protective membrane between the sensor on the strip and the blood like the ’382 patent had. Even though the ’382 patent had stated it was “optionally, but preferably” to be used with the membrane, Pope argued that was patent law speak for “required.”

    ———————

    Got that, everybody? When we prosecutors say “optionally but preferably” that’s just code for “required”. Who knew? Friends, this “argument” was ACTUALLY MADE in front of a very experienced Federal judge, under oath. But wait!! There’s more ….

    —————–

    [Abbott] had strenuously argued to European patent officials just the opposite — that the protective membrane was optional, not required — in defending the European equivalent of the ’382 patent. Alsup ruled that Pope intentionally kept that material information from the patent examiner.

    —————–

    Oops! But these sorts of shenanigans are truly exceptional. Except for this one digression by one of our cohorts, no prosecutor would ever ever ever do anything that could possibly be construed as inequitable conduct. It never happens!!!! Because what’s most important to our clients is not that they obtain a patent, but that they do the right thing, all the time.

    Meanwhile, back on earth …

  85. Ok – can somebody explain to me how this “poor man’s option” creates estoppel? I don’t believe it.

    And Malcolm was kidding at 3:06.

  86. “My question is this: has anyone ever known a district court case where the exercise of the “poor man’s option” during prosecution was part of the record or was relied on for an IC argument?”

    No. The threat seems to carry enough weight. I don’t know any prosecutor who would follow your advice given at 3:06.

    And as to the chicken hearted nature of prosecutors, most that I know would use the poor man’s option more often if it weren’t for the litigators in the office constantly harping about estoppel while actually being mad about not getting the fees that would be generated during litigation/reexam.

  87. “So what should an attorney who receives this package and report do?”

    Read it.

    If the art is bad and affects the business strategy and the patent is close to being obtained, chuck the package in the trash and train your mind to understand that it was never received.

    Then file a continuation with claims that clearly avoid the issues raised by the art. The art need never be cited in the continuation because it is no longer material to patentability.

    Of course, if the art was sent by registered mail, you should put it back in the package, give it to your secretary and tell him/her to send it back where it came from with a note that says “My secretary’s brief perusal of these documents revealed that it was unsolicited personal mail. They are being returned to you unread, per our firm’s policy.”

  88. So what should an attorney who receives this package and report do?

    (1) Report it to his client?

    (2) Confirm that the prior art is actually prior art and not fraudulent prior art?

    (3) Assuming that there is actual prior art, submit the prior art to the PTO? Submit the “report” with the prior art? Or just submit whatever “comments” the attorney usually submits?

    (4) If the prior art is foreign language prior art, have a (certified?) translation made of it to submit to the PTO? Rely on the Poor-Man’s translation, if any?

  89. DC – I think James Daily’s statement covers non-anonymous submissions; I agree that an attorney can’t very well claim he never opens unsolicited mail from other attorneys… at least not if he cares about his malpractice insurance premium…

    However, I do think that an anonymous submission could probably be safely ignored; after all, if there’s no name on it, no indication it’s from an attorney or from anyone else in particular, who’s to say it’s not just an envelope full of offers for copier toner?

    I haven’t thought of a solution to that, other than not to send art anonymously…

  90. This poor man’s option has been around a long time but it is only very rarely used because patent prosecutors are notoriously chicken hearted about “estoppel” (the same characteristic that leads some to believe that a reexamined patent is ten times more valid than a non-reexamined patent, even where the claims are just as broad and crappy as they were before reexam and where the additional “arguments” made by the applicant’s attorney during re-exam provide an abundance of ultraripe inequitable conduct arguments).

    My question is this: has anyone ever known a district court case where the exercise of the “poor man’s option” during prosecution was part of the record or was relied on for an IC argument?

  91. Max, you are correct about still being able to argue the art in either reexam or litigation, but most litigators don’t want to rely on such distinctions. Their logic is that you get one shot with a piece of art and that you should not “waste” it on the examiner if you don’t also get a chance to participate. It is a bit self serving for litigators to say this, but still it does hold some water. It can be hard to convince a judge that the art was considered by the PTO, but not fully appreciated. After all, the PTO is the technical expert in our system.

    Also, this is not new. The first time I did this was over 6 years ago and the attorney I was working with had previously been the recipient of a similar missive. It is not a bad gambit.

    Finally, with the steady expansion of what is “material” over the last ten years I would be a bit careful about not submitting anything, even anonymous third party opinion. I’m not saying that current law requires submission, but I can see it being required at some point if the current trend continues.

    To circle back to my first point, not submitting the third party arguments makes it a bit easier on the third party to argue in later proceedings that the art was misrepresented. So, even if the court does not find inequitable conduct, the third party has their toe in the door to re-argue art that you thought was dead. Well done.

  92. Over 30 years by now, Art 115 EPC doesn’t hasn’t had much use in Europe, but so what, Europe doesn’t have a duty of candor. To my untutored eye, this looks like an idea with potential. And, as to “showing your hand”, why should you not be able, in post-issue inter Partes proceedings, to explain how, in the ex Parte proceedings prior to issue, your “hand” was mischaracterized or misunderstood, or mis-assessed, because you simply weren’t then given any right of audience, to explain it.

  93. I don’t think an attorney can claim not to open unsolicited mail, especially not mail originating from another attorney. Consider cease and desist letters, subpoenas, etc.

    I agree with Observer, though, that there is likely no duty to report the opinion of a third party, especially if it were merely attorney opinion and not the opinion of an expert regarding, for example, the level of skill in the art.

  94. The duty to submit the references is obvious, but why would one be under a duty to submit the reported opinions of a biased third party (most likely a direct competitor)?

  95. But can’t the applicant’s attorney just say “I don’t open unsolicited mail” and be covered (especially if the submission is anonymous)?

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