Information Disclosure: Less is More for PTO?

The PTO hopes to change the disclosure requirement of Rule 56. The PTO does not want more references – it already has millions stored in its electronic databases. Rather, the PTO wants practitioners to perform a preliminary search and distinctly point out the closest features of the prior art. In tension with the PTO’s desires are the multiple cases finding patents unenforceable due to applicants failure to submit relevant prior art to the PTO. Based on those cases and on the increased potential value of patent rights, patent applicants have dramatically increased the number of references cited in each application. (See first chart on right showing rise of references over time). In my sample of 500,000+ patents issued 1971-2008, the average number of references cited on the face of patents rose five-fold – from fewer than five in 1971 to more than twenty-five in 2008. On the other hand, it seems that the increase of prior art is largely due to patent applicant activity. In particular, on their own, examiners only discover [cite] around six or seven references – even when the applicant submits no prior art at all.

This result is shown in the second chart which compares the number of references cited in issued patents from 2006-2007 where the applicant filed an information disclosure statement (IDS) versus those where no IDS was filed.

I don’t have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line).

181 thoughts on “Information Disclosure: Less is More for PTO?

  1. Thanks pds. Of course, I would be less patronising if I were writing under my real name. Writing anonymously on this blog has good and bad consequences. Glad you like Europe and Europeans. I also like most of the US patent attorneys who give me my instructions.

    Reasonable examples, you say. Well, this stream was kick-started by the listing of what the real John Darling is a specialist in, namely: vehicle transmissions, photolithographic processes, telephone call processing, flash memory and optical disc storage. Now I know something about all of those, but whether I am competent to draft in all of them, and secure for client all of what client deserves, of that I’m sceptical. One becomes proficient in those areas of technology that your client occupies, of course, but the old English civil service idea, that an intelligent, well-educated person can quickly learn anything, is ever more difficult to sustain, I should have thought. Interesting that, in the USA, mech eng is two-a-penny. In Germany, that’s more true of the chemists. Europe has one Patent Office serving 600 million people. All you mech eng 3 language people reading this, who fancy swanning around, billing exorbitantly, under the fancy title “European Patent Attorney”,and enjoy writing about solutions to real objective technical problems, think about coming to Europe, where there are good chances of securing a well-paid job taking instructions from patent attorneys in the USA.

  2. “That’s nice, JD. I stand by every word in my earlier comment.”

    Which comment? The one about supposedly unethical practices or the one about a lot of prosecution firms going down the drain?

    You really need to get out more.

    Max, when I refer to “around here” I mean DC/Virginia. The big shops around here have been around for a very long time, and I don’t see them going away any time soon.

    They may see a downturn in business from the economy. But then again, just about everybody probably will.

    I don’t see the decision in Bilski, whichever way it goes, having too much impact on the big prosecution shops around here.

  3. “You are going to sink or swim, and it won’t take long for you to figure out if you are drowning.”

    I had figured that with the work being based on clients that at least with the bigger clients in my field then they would use certain firms enough for them to specialize. AU thing isn’t a problem because there are many other AU’s that do my tech. To be honest with you there’s a good chance of my scraping by if I’m asked to do a lot of software/chem work. I already have to do that sort of thing on occasion in the office and lord knows it takes forever to familiarize yourself with the stuff that makes up the basics of the app. Late nights is what it usually boils down to for me.

    “Max here again. I can’t believe what I’m reading above. Somebody tell me it isn’t true, that US patent attorneys in private practice (in large firms, writing, filing and prosecuting patent applications) don’t specialise in the technical field for which their scientific or engineering degree qualifies them. ”

    I know max, no wonder I’m getting the amendments I do. Although to be fair, when I talk to the attorneys they usually seem to know a decent amount about the art. Though, they’re usually older guys. The ones by younger people are generally of poorer quality prosecution.

  4. pds “You are the type of person that your co-workers have to say, behind your back, “oh, just ignore Max, he’s like that to everybody and he doesn’t mean any harm.”

    What an incredibly obnoxious thing to say about … well, anyone.

  5. “BTW, my first firm is certainly not heading down the drain. They’re doing quite well. As are most of the big prosecution shops around here.”

    That’s nice, JD. I stand by every word in my earlier comment.

  6. “Somebody tell me it isn’t true, that US patent attorneys in private practice (in large firms, writing, filing and prosecuting patent applications) don’t specialise in the technical field for which their scientific or engineering degree qualifies them. Chemists writing gearbox cases, mech engrs doing pharma, EE’s doing medical devices.”

    Another person living in a dream world. I worked as an engineer for many years before becoming a patent attorney, and I used about a couple of paragraphs from one text book in my job as an engineer. Going to engineering school rarely trains one to do a specific job. Instead, going to engineering school trains one to think like an engineer. A good engineer and patent attorney should be able to pick up most technologies given sufficient time and training. There just isn’t enough work in one’s “initial” expertise for most attorneys to be an expert on only one thing. Moreover, the word “expert” is probably too strong. One needs to be competent, not an expert, to draft an application.

    FYI: You would almost never have a chemist write a gearbox case because mechanical engineers are a dime-a-dozen in most law firms. The “hard” mechanical cases go to the mechanical engineers and the easier mechanical cases can go to the chemist, software engineer, etc. For example, any attorney should be able to write an application about as to a simple golf training aid. Also, no mechanical engineer would ever write a pharma case (i.e., part of my biotech and other esoteric degree exception). As far as the EE doing medical devices, I cannot see why not. Most medical devices I’ve seen are very simple. Whether it is a stent, spinal implant, dental insert, etc., most of these are very basic devices that even non-engineers could understand.

    Max … try sticking with reasonable examples, and stopping hitting on Sandy Strawman, MM might get jealous.

    BTW: Don’t talk to me about the expertise of the average patent practitioner within the EPO (either examiner or agent/attorney). EPO examinations are less detailed than what one gets from a primary examiner in the US, which is saying a lot (for those that prosecute a lot, they’ll understand why I referred to a primary examiner instead of just an examiner). As far as agents/attorneys, the absolute worse applications I’ve seen have come out of Europe (and I’m not talking about German-language translations, which is a separate issue altogether). For having muddled specifications and overly-narrow claims, it is tough to top what I’ve seen from Europe.

    As believe I’ve mentioned before, I like Europe and Europeans. I have both work there and traveled extensively within Europe on many occasions, and I would like to go more often (danm that awful exchange rate). Luckily, in all my travels, I have never found somebody with such a condescending attitude as yours, for if I did, I’m sure it would leave a very bad taste in my mouth. You are the type of person that your co-workers have to say, behind your back, “oh, just ignore Max, he’s like that to everybody and he doesn’t mean any harm.”

  7. John, can’t imagine anybody writing in, to label any specific law firm a “sinking ship”, but I suppose somebody might. Generally, in your surveying of firms “around here” do you detect any sign of a brake being imposed by clients, on the activity of drafting and filing financial engineering cases? Maybe there are some “prosecution shops” heavily dependent on such business, that are watching Bilski with keen interest? Or is it that those that are cute enough to pick up the financial stuff will by the same token be cute enough to survive, even if there is a downturn. Or could it be that a turn down on Wall Street actually helps law firms in general to prosper?

  8. “That sort of broken culture is very typical of a firm heading down the drain. I suppose that applies to a lot of patent prosecution firms out there.”

    Yes, as pds correctly surmised, my post was intended to be humorous. But that “there’s fresh meat in the office, gather up your dog cases and unload them” routine does go on at a lot of firms. Happened to me at my first firm. I learned a lot from it. If you’re expecting to walk into a monstrous firm and get spoon fed, you’ll quickly be disabused of that fantasy.

    BTW, my first firm is certainly not heading down the drain. They’re doing quite well. As are most of the big prosecution shops around here.

    Do you have any of these sinking ships in mind that you can actually name?

  9. Max here again. I can’t believe what I’m reading above. Somebody tell me it isn’t true, that US patent attorneys in private practice (in large firms, writing, filing and prosecuting patent applications) don’t specialise in the technical field for which their scientific or engineering degree qualifies them. Chemists writing gearbox cases, mech engrs doing pharma, EE’s doing medical devices. This would explain quite a lot about the quality of the analysis that we in Europe find, in the instructions we receive from US law firms. We were always wondering, why the instructing associate seems not really to understand the invention, the art, or the point that the EPO Examiner is making. No wonder US corporations are cutting out outside US counsel, and instructing us direct. Very rational behaviour on their part, I would say, probably borne of despair. Now I understand better the disadvantages that flow, when a country uses for the high precision work of patent drafting and prosecution a profession (attorney at law) lacking the education and training of the specialist profession (patent attorney) set up to do that work with a requisite degeree of competence.

    Don’t get me wrong. I’m deliberately being provocative, to get outraged reaction, which will teach me yet more about the thinking of those who give me my marching orders.

  10. So according to flat earth Mooney “a lot of patent prosecution firms out there” have “broken cultures” and are “going down the drain.” Sounds a lot like sour grapes to me…

  11. I couldn’t have said it better myself PDS and I was about to try…

    Bill Brasky used to eat young associates for lunch, if they could climb out of his belly before 2:00 they were partnership material.

  12. “That sort of broken culture is very typical of a firm heading down the drain. I suppose that applies to a lot of patent prosecution firms out there.”

    Dude, you must live in San Diego or someplace where “peace, love, happiness and feng shui” permeates the office.

    Getting the sh it work is how people learn the best. There is just way too much work to do to spoon feed young attorneys with easy work. Sucks to be a younger attorney, but if you can survive the first couple of years, you will have the confidence to know that when you have to put in a couple of 90 hour weeks in a row for a few weeks (or few months) in a row, you can.

    Law is a SERVICE industry. We, as attorneys, need to be able to react to the demands of our clients, which means there is slow times and REALLY BUSY times. Throwing a younger attorneys to the wolves is a quick way to determine whether or not they have the fortitude to handle the REALLY BUSY times.

    This isn’t the culture of patent prosecution, this is the culture of most high-stress, high-demand professions. Look what they do to doctor interns. They do the same thing in engineering school and officer candidate school to name just a couple. These are all just weeding out processes designed to separate the wheat from the chaff. Are you really that naive that you haven’t noticed this?

    One doesn’t get paid $$$$$ for having it easy on the job.

  13. “Probably, I didn’t expect any better and still don’t. You lawyers are a bad bunch by all accounts.”

    Interesting …. yet you are so interested in joining the ranks.

    BTW: just because a client gives instructions doesn’t mean that the client isn’t knowledgable. Most of the “big” clients (found in many of the “big” firms) have attorneys that provide the instructions. Also, if the firm is working with a foreign associate, then they are likely working with some type of patent practitioner.

    “You might be right JD, I figured there were firms that more of less had a dedicated wing to this field as it is quite large and has plenty going on in it, but after this debacle I’m not so sure.”

    First off, as you should already know, one you leave the USPTO, you cannot touch an application in your art unit for 2 (?) years. I’m not sure of the exact restrictions, but you should. Regardless, although some firms “specialize” in certain areas of practice, it usually doesn’t work that way. The work being done is based upon clients, not specialty.

    Unless you are doing biotech or have some esoteric degree, you had better be prepared to work on anything. As an attorney, the opportunities to pick and choose your work is limited, particularly as a younger attorney/patent agent. Whatever comes in the door is what you have to work on, no matter how much (or little) you know about the technology. The succesful patent attorneys are the ones that are able to pick up new technology fast. If you don’t, the partner has to write off your time, and you won’t last long with that happening.

    Back to clients, some clients are able to give lots of work, in one specialty, which makes it easy to draft the applications as you are able to gain some technological expertise. However, in many instances, you’ll have a bunch of clients with a handful of patent applications each year in various disciplines.

    FYI: As low man on the totem pole, if there is any application dealing with a technology that nobody is familiar with, you are likely going to be the candidate to work on it. With the lowest billing rate, it is better to have you waste your time than the time of the $500/hour partner.

    It’ll be fun to see if you actually make it into a law firm. You are going to sink or swim, and it won’t take long for you to figure out if you are drowning.

  14. “Everybody needs to be trained … sounds like a great opportunity for a new attorney.”

    Give me a break. ‘Here’s some dog cases that make the rest of us sad. Welcome!’

    That sort of broken culture is very typical of a firm heading down the drain. I suppose that applies to a lot of patent prosecution firms out there.

    [shrugs]

  15. “Nothing remotely unethical about any of this, of course. Move right along, people.”

    Everybody needs to be trained … sounds like a great opportunity for a new attorney.

    Let me guess, you keep all the hard cases for your self?

    Ooops, I forgot. You aren’t a patent attorney, and you don’t prosecute patent applications. Otherwise, you would have found the humor in JD’s post.

  16. “The senior associates will smell fresh meat, walk down to his office, introduce themselves, and hand him a file that’s about 2 fee thick. They’ll have already cut and pasted the client’s instructions verbatim into an amendment template about 5 times, and filed an RCE or two, and now the client is getting restless. Perfect opportunity for the new guy to showcase his skills.”

    Nothing remotely unethical about any of this, of course. Move right along, people.

  17. “Of course, if you had done ANY RESEARCH on the firm in question, you should have quickly been able to determine whether or not they did work in your field.”

    Um, I said they did some, and my research did indicate they did. But everyone does random cases and 90% is NOT in that field, that means btw, that 10% are in that field.

    “They’ll have already cut and pasted the client’s instructions verbatim”

    Probably, I didn’t expect any better and still don’t. You lawyers are a bad bunch by all accounts.

    Thanks for the search engine though. It shows they do actually do some in my field but like they said, the vast majority are not. I wouldn’t know that they’re just randomly assigning cases though.

    You might be right JD, I figured there were firms that more of less had a dedicated wing to this field as it is quite large and has plenty going on in it, but after this debacle I’m not so sure. Looks like I’ll probably be doing mechanical, electrical, and god forbid chemical and software all at once.

  18. I’ve prosecuted many, many cases in all of those areas.

    6k can send all the resumes he wants. All firms realize they have to sift through a lot of chaff (sp?) to get some wheat.

    The odds that 6k is going to get hired to “work in his field” are mighty slim. In the unlikely event he can con somebody into hiring him, he’ll get assigned whatever dog cases are lying around the firm. The senior associates will smell fresh meat, walk down to his office, introduce themselves, and hand him a file that’s about 2 fee thick. They’ll have already cut and pasted the client’s instructions verbatim into an amendment template about 5 times, and filed an RCE or two, and now the client is getting restless. Perfect opportunity for the new guy to showcase his skills.

    LOL

    We’re not hiring. Though it would be fun to see 6k in his interview suit.

  19. “Unfortunately the big firm was actually looking for someone in another field.”

    Actually, what they told you is code for:
    “we were really looking for someone is your field, but once we had a chance to talk to you, we didn’t want to lead you on because we aren’t interested anymore and telling this little white lie is easier on everybody involved.”

    Of course, if you had done ANY RESEARCH on the firm in question, you should have quickly been able to determine whether or not they did work in your field.

    Really, it is quite simple. First, go to the following link:
    link to patft1.uspto.gov

    Once there, type in: lrep/”the name of the firm” and you would have seen the types of patents that were being written/prosecuted by the firm in question.

    You can thank me later.

  20. What art do you examine, e6k?

    Our good friend John Darling specializes in “internal combustion engines, vehicle transmissions, hybrid vehicles, recreational vehicles, laser and ink jet printing, blue and white LED’s, photolithographic processes and tools in the manufacture of semiconductors, medical apparatus including catheters, stents, syringes, and breathing apparatus, telephone call processing, flash memory, and optical media storage.”

    If there’s any overlap with your art, maybe you could ask him what firms to send resumes to. Perhaps there might be an opening at his firm.

  21. “Har har, um no, actually the “worst” field that I could imagine going into as a matter of fact. One which 1. I have little interest in being in, 2. I have little experience in and 3. I view as being improper as even existing. I’m sure the regulars here know which that is.”

    The field of patent law?

  22. Har har, um no, actually the “worst” field that I could imagine going into as a matter of fact. One which 1. I have little interest in being in, 2. I have little experience in and 3. I view as being improper as even existing. I’m sure the regulars here know which that is.

    Big- Actually they told me up front, as soon as I got there, before they knew anything about me other than the stuff they had based the decision to bring me there on. They wanted to have the interviews anyway, since apparently what little background I did have in that field qualified me. That and the fact that apparently the basic requirements they wanted were basic patent concepts (at this point I told them the proper interpretation of 112, hah, jk). So I figured what the hell, why not have the interviews and see what’s up? But working in that field is like working for philip morris. Sure, it’s all fun and games until it comes down to actually deciding to work for the devil.

    The only thing that has me miffed is that the first lady that was talking to me (over the phone) told me several times that it was a job specifically for my field when really they do very little work in my field. Why drag me out there just to tell me as soon as I arrive the position involves 90% in another field? Seriously, do they have nothing better to do? I almost left as soon as the first guy told me about that little detail.

    Either way, I had drinks with the lady that greeted me later ;) Mhmm. More interviews to come.

    Why are you lawyers so da mn incompetent? Can’t even bring in recruits that practice in your field? It’s like amending into a 102. Wtf are you thinking?

  23. “Unfortunately the big firm was actually looking for someone in another field.”

    Ah, yes, the field of competence.

    LOL

  24. “Unfortunately the big firm was actually looking for someone in another field.”

    Ah yes, the old “we’re sorry for the misunderstanding – we’re actually looking for someone in another field” gambit. That’s a good one. The other one I used to use is “those beancounters in upper management just instituted a temporary hiring freeze – we’ll let you know when things loosen up.”

  25. Anybody remember back when COCA-COLA used to sing:
    I’d like to teach the world to sing…..in perfect harmony.
    I’d like to build the world a home….and furnish it with love.
    That original ditty is still played with relish, over and over again, here in Europe. I guess, if I want your attention, on harmonisation issues, I will just have to sing more sweetly.

  26. “What don’t you understand about that?

    The interview at the monstrous firm must have gone splendidly. Explains why you’re still there.

    LOL”

    Um that’s what I said as well in the very beginning, what don’t you understand about that? Unfortunately the big firm was actually looking for someone in another field. Apparently the people in charge of figuring out who goes to what interview are incompetent. But it was good experience interviewing.

  27. Thanks for the gracious reply John Darling. “Useless” you say of my postings, by which I suppose you mean “having a zero possibility of changing anything”. Call me arrogant if you like, but I go on fondly supposing that the drip drip drip on the stone can sometimes make a difference, and even a camel’s back can be broken by one tiny straw. I put my faith in influencing other readers, maybe even an opinion-forming university professor or two, here and there, to confront the “Not Invented Here” negative mindset that bedevils judicial attitudes to reform. .

    So, I’ll keep on banging away too, in my hopeless quest to stimulate creative thought and a “Can Do” or “Why Not” positive attitude, in relation to any impediments that might be blocking optimisation of US (and mainland European) patent law. Sorry, I have forgotten what blocks stand in the way of having first instance judges specialised in science, engineering and patent law. In a common law system, there should be no appeal, unless the first instance gets the law wrong. That shouldn’t happen very often (and in reality doesn’t, in common law England) but, in the USA, it seems that most every patent case has to go to the appeal court, in order to get to the point of issue of an orderly Decision. BTW, mainland Europe (including the EPO) is a disaster area, for the efficacy of first instance Decisions (as I have whiningly written here countless times, you will recall).

  28. MaxDrei “I use this blog to tease out of American patent people how they view the world beyond the Homeland.”

    link to huffingtonpost.com

    “Asked about Palin’s national security experience, Cindy McCain could not come up with anything beyond the fact that, after all, her state is right next to Russia. ‘You know, the experience that she comes from is, what she has done in government — and remember that Alaska is the closest part of our continent to Russia.’”

    And there you have it.

  29. Max,

    Personally I enjoy most of your posts. Find them very informative. But your posts to the tune of “We do it perfectly here in Europe/ROW. You people in America have it all wrong” are simply useless.

    I’m not that offended by them, as are the others you lump me in with. Supposedly. JAOI and pds have some testy reactions to you, but it doesn’t seem to deter you. Nor should it. I thought my reaction(s) to your post(s) were rather mild. No offense intended, I assure you.

    BTW, I also enjoy JAOI and pds’s posts very much. Don’t agree with them all the time, but I enjoy them.

    I think it’s been explained to you, and others, many, many times why we don’t have specialized patent trial courts here in the U.S. but you just keep beating that drum.

    My ears are tired.

    That’s all.

    Please do keep posting.

    I’ll keep reading.

  30. “Deal with it” John, is what I do, every day, because my clients are in the USA. I use this blog to tease out of American patent people how they view the world beyond the Homeland. Whether I personally am “happy” with anything, or not, is irrelevant. I am therefore deeply indepted to the group comprising John Darling, pds, and JAOI(TM) for their splendid reactions to my posts. G0d willing, I’ll keep on posting. I fondly imagine that other readers, silent, nevertheless sometimes find useful what I write about Europe, which BTW has given everywhere else in the world except the USA the patent system it uses today. Group members, do, please, keep on illuminating me with your reactions.

  31. Any examiner probably would JD, the point 6k is making is that it shouldn’t be that way. It should be easy to request information already known to the applicant. If they don’t know then they don’t know. Perhaps a telephonic request program pre-first action would be most useful. That would be something good for those prefirst action interviews.

  32. “Does the reference say x or does it not? It is a question of fact, not of opinion. Just as the question of whether or not, to the applicant’s best knowledge, the official notice was proper. If the applicant “does not recall” then fine, they do not recall.”

    If the answer to that question is a matter of fact, then you can read the reference to find the answer, you don’t need me to read it to you or for you.

    If you are asking me for the answer, then by definition you are asking my opinion as to whether the reference says x or not.

  33. “Guess what? We can require any information relating to anything we can get our spe to sign off on.”

    LOL

    Considering that you’re such good buds with all of the higher-ups over there, and can arrange lunch with all of them, you shouldn’t have any problem getting your SPE to sign off on tons and tons of Rule 105 requests, should you?

    Why don’t you give us one example of a case where you issued a Rule 105 request.

    Just one.

  34. “My opinion of a document is not “reasonably necessary” for you to read it and apply it as appropriate.”

    None of the questions posed above were asking for your opinion. They were asking for a factual analysis. Even the last one, because the only alleged “opinion” being sought is merely asking would one of ordinary skill interpret the reference to mean specifically what it says (as opposed to some outlandish spaceland fantasy like the place where your opinion about 105 apparently came from). Does the reference say x or does it not? It is a question of fact, not of opinion. Just as the question of whether or not, to the applicant’s best knowledge, the official notice was proper. If the applicant “does not recall” then fine, they do not recall.

    I pose similar questions to attorneys in interviews literally all the time, and they nearly always answer straight up anyway, so whether the rule would be in effect or not it doesn’t matter. Bottom line is, the concept behind the rule is what should be moving the patent system forward.

  35. “Then, if the finder of fact is also a reasonable-thinking entity, honest patent holders should come out alright in the end (after millins have been spent in vexatious litigation). But is the fact-finder to be counted on? Juries sometimes decide what “no reasonable jury” could decide, don’t they? And for every such case, I would imagine there are 25, in which it is difficult to see how a “reasonable jury” could thus have decided, but not so difficult as to reach the “no reasonable jury” standard needed for over-ruling the doubtful jury decision.”

    Do you ever filter what you write? Or does whatever random thoughts that intrude your conscious get typed in a post?

    Next time, try to come to a conclusion.

    FYI … the same comments apply to your next post.

    BTW: Scrap that comment about you coming to a conclusion, your conclusions are always the same … the US system of doing things is terrible and we should copy everything that is being done in Europe. You’ve been whistling that tune for years, and honestly, it is getting really old.

  36. “Patent cases decided by a fact-finder that is not competent to decide high technology facts, not in any way comfortable assessing high technology, and furthermore not reasonable, is ‘no reason to change the system’. You state this as if it were self-evident fact, as if any other view would not be reasonable.”

    Judges may not be competent either. But they can get help to understand the technology. And one of the roles of the attorneys litigating the case is to make the technology understandable to the jury, or judge.

    “is anybody happy with it, except you, and the patent litigator attorneys?”

    Some are unhappy with it. You are unhappy with it, apparently. Others have expressed the view that there should be specialized patent trial courts. They’ve stated their case, and have been unsuccessful in persuading the rest of to agree with them.

    Is every judge or jury member an expert in our IRC, or our securities laws, or medicine? No. But we allow judges and juries to decide complex tax evasion, securities fraud, and medical malpractice lawsuits all the time. What makes patents so special? If we set up specialized patent courts, what’s next? Specialized medical malpractice courts where all of the judges and/or jury members are MD’s? Shall I go on?

    So what’s your problem exactly? You incessantly whine and complain about our system, and boast about how great your system is. We’ve heard your arguments and we ain’t buying them. Sorry. But that’s the way it is.

    “And you’re happy with ‘reasonably well’?”

    Well, yes. Like I said, it’s not perfect. But it works for us.

    That’s probably what you find so galling. You’re constantly telling us how perfect your system is, and our response is, “So what? We like our system. It’s not set up to make you happy. It’s set up to make us happy. Deal with it.”

  37. Patent cases decided by a fact-finder that is not competent to decide high technology facts, not in any way comfortable assessing high technology, and furthermore not reasonable, is “no reason to change the system”. You state this as if it were self-evident fact, as if any other view would not be reasonable. In Amendment VII, I wonder what “shall be preserved” actually means? The “suits” they were bent on preserving in 1789 were not really today’s high tech patent cases, telecoms and biotech, boggling, even to the mind of a trained patent attorney, were they. I thought the idea of the Constitution was to nurture the interests of the US people. Pursuit of their happiness. Are jury members happy. Are their customers happy? Are their employers happy? Are other observers of the system happy? is anybody happy with it, except you, and the patent litigator attorneys? Served us “reasonably well” you assert. And you’re happy with “reasonably well”?

  38. “Juries sometimes decide what ‘no reasonable jury’ could decide, don’t they?”

    Of course. But that’s no reason to get rid of juries in patent cases.

    In this country, we permit juries to decide all manner of cases. We don’t scrap the whole system, and our Constitution along with it, because juries occasionally get it wrong.

    We pretty much settled this on June 21, 1788. It’s served us reasonably well for 220+ years.

  39. Seems to me, from outside the USA, looking in, that the only thing that saves the system from absurdity is the JD point that you’re not on the hook until “intent” is proven. Thus, the system is still hospitable to reasonable people, who have no intent and by their reasonable actions display an overall pattern of behaviour that is incompatible with conduct that is inequitable. Then, if the finder of fact is also a reasonable-thinking entity, honest patent holders should come out alright in the end (after millins have been spent in vexatious litigation). But is the fact-finder to be counted on? Juries sometimes decide what “no reasonable jury” could decide, don’t they? And for every such case, I would imagine there are 25, in which it is difficult to see how a “reasonable jury” could thus have decided, but not so difficult as to reach the “no reasonable jury” standard needed for over-ruling the doubtful jury decision..

  40. “Others have argued that the duty requires disclosing up front any reference that might “conceivably be combined” with another (unknown) reference to form a 103.”

    Since we have cases showing that any breaches in the duty to disclose are curable by either the examiner finding the reference or the applicant submitting it later but in time to have it considered, we know that those arguments concerning disclosing up front don’t work under current law.

    However, things might be different if the PTO implements a scheme under which you cannot even start or continue examination prior to submitting material references. The proposed IDS rules do contain such requirements.

    In that case a court might find that a failure to submit a reference in advance is not curable by submitting the reference later because the applicant’s delay misled the PTO into opening prosecution.

    Failure to disclose easily forseeable 103 combinations of references might be evidence of intent to deceive, and certainly a defendant might have an expansive view of what an applicant should have forseen.

  41. “JD disagrees that a finding of IC requires intent. Please, JD, expound upon this legal theory of yours where IC does not require intent. A theory that is no doubt based upon mountains of common law and indeed, probably even statute.”

    That’s not what I said.

    Without intent, you’re off the hook.

    What don’t you understand about that?

    The interview at the monstrous firm must have gone splendidly. Explains why you’re still there.

    LOL

  42. AllSeeing -

    I have no idea what you and E6K are arguing about. I missed the beginning of the atoms falling out of a wire discussion. However, –never– is a pretty strong word.

    I don’t know how “fall out of a wire” was defined. But, it sounds a bit like the process relied upon to achieve electroplating to me.

  43. Tell it to the ref Cave. They’re the people publishing such “nonsense”. btw, it was “move in a” not “fell out of”.

    Attorneys, always wanting to argue with the refs.

  44. Atoms will never fall out of the wire 6k, and Mooney will never be able to rationalize away his statement with an army of strawmen (what strawmen have to do with materiality I’m not sure).

  45. “‘Anything that actually brings up the concept of ‘the truth’ is fought hand and nail.’

    Hand and nail?”

    Giggle!

    I like cloven hoof and talon. Hand and nail is quite ingenious, but when choosing campy phrases, I typically try for something really catchy. Next time, go for cloven hoof and talon. That creates a much more vivid picture.

  46. “While that may be true, given that your duty to disclose extends up to time of issue, there is never a time when anticipation is required. Under the current rules, the applicant always has the opportunity to look over every reference and all of the PTOs rejections and to determine which references are to be submitted.”

    Agreed. The relevance of a particular reference may change over the prosecution period. Others have argued that the duty requires disclosing up front any reference that might “conceivably be combined” with another (unknown) reference to form a 103. That’s what I’ve been arguing against.

  47. “Absent other facts, I can’t be held accountable for intending to deceive for failing to anticipate that a reference might later have turned out to be material.”

    While that may be true, given that your duty to disclose extends up to time of issue, there is never a time when anticipation is required. Under the current rules, the applicant always has the opportunity to look over every reference and all of the PTOs rejections and to determine which references are to be submitted.

  48. JD disagrees that a finding of IC requires intent. Please, JD, expound upon this legal theory of yours where IC does not require intent. A theory that is no doubt based upon mountains of common law and indeed, probably even statute.

  49. “That’s funny, that’s what has been being submitted. Though I agree IC requires intent. Still, that doesn’t let you off the hook.”

    e6k, I didn’t think it was possible for your misunderstanding of inequitable conduct to get any more muddled, but you’ve topped yourself.

    Congratulations.

  50. “Reading it as you suggest would require the disclosure of piles of information that only tangentially relate to the claimed invention, since you could never predict which particular element or word in the claim might be unsupported by whatever art the Examiner finds. ”

    That’s funny, that’s what has been being submitted. Though I agree IC requires intent. Still, that doesn’t let you off the hook.

  51. “You’re simply not considering this part of Rule 56. Information is material if (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

    In other words, if reference A is not submitted because it is clearly not 102, and later a reference B turns up that supports a 103 rejection in combination with reference A; then, the earlier failure to disclose reference A was inequitable conduct.”

    I respectfully disagree, Nonabbreviator. You appear to be forgetting that inequitable conduct requires intent; the Court of Appeals for the Federal Circuit (how’s that for respect, Dennis?) has made it quite clear that inequitable conduct is not a strict liability offense. Absent other facts, I can’t be held accountable for intending to deceive for failing to anticipate that a reference might later have turned out to be material. The only reasonable interpretation of the “other information” in Rule 56 is that materiality is determined with respect to information known to the applicant, patent prosecutor, etc.

    Reading it as you suggest would require the disclosure of piles of information that only tangentially relate to the claimed invention, since you could never predict which particular element or word in the claim might be unsupported by whatever art the Examiner finds.

    Rule 1.56 and inequitable conduct are intended to punish people who act in bad faith. They’re not supposed to create arbitrary traps for innocent practitioners.

  52. Leopold Bloom,
    You’re simply not considering this part of Rule 56. Information is material if (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

    In other words, if reference A is not submitted because it is clearly not 102, and later a reference B turns up that supports a 103 rejection in combination with reference A; then, the earlier failure to disclose reference A was inequitable conduct.

  53. E6k,

    Exactly what do you think this will accomplish? I don’t get it. Let’s say the USPTO adopts your ridiculous policy and that it doesn’t get slapped down like your beloved continuation rules, what will change? I really don’t get the whole point behind this new ridiculous idea (I’ve seen others spout it) and the AQS.

    I also don’t know about other firms, but here, when we file an application, we include an IDS that truly *does* contain the closest references that we know of. I usually include enough for you to cobble together a very poor 103 rejection.

  54. e6k -

    The technical information known to the applicant is in the cited document. You are asking for my opinion of the document, which is not factual information pertinent to patentablity.

    My opinion of a document is not “reasonably necessary” for you to read it and apply it as appropriate.

    Where a rule (e.g. 1.56) directly addresses the duty to disclose and explains what is and is not required, you cannot overly interpret another rule to mean more is required that is explicitly laid out in the rule that directly addresses the issue.

    I know your job is tough. That’s why I’m not an examiner. I don’t want to do your job.

  55. T:

    FYI

    “(1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:”

    :

    “(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.”

    Guess what? We can require any information relating to anything we can get our spe to sign off on. This includes, but is not limited to, “technical information known to the applicant”. If I make a 105 asking if you know whether or not official notice I just took was well known at the time the invention was made, and if my technical motivation to combine was also well know, then guess what you get to answer? Also, if I ask you does line x, page 10 of Ref A state: In order to make compound y you are required to have z. You get to say yes or no. And if I also ask: “Would a reasonable artisan interpret line x, page 10 of Ref A to mean: “In order to make compound y you are required to have z”.” Then you get to answer yes, no, or maybe (in which case maybe is taken to be yes because if the reference CAN be interpreted in a way then the office is to take it that way so far as I know).

    Rule .105 should be the thing increasing quality around here, not having more rejections per se. But noooo. Anything that actually brings up the concept of “the truth” is fought hand and nail.

  56. “Its like e6k saying that the atoms come out of the wire. ”

    Or like caveman trying to say they don’t when presented with evidence that they do…

  57. “Only a nationalized organization the mission of which is to uphold the integrity of the profession by providing an adequate defense of patent prosecutors will ensure this.”

    So let me get this straight. Either side will do whatever it takes… including commit IC before the office (in a reexam perhaps, or even in the prosecution that led to the patent), and also accuse the other side of IC. So you feel that upholding the integrity of the profession is best served by an organization backing the party that left themselves exposed to such accusations in the first place.

  58. “I have consulted 2 TQAS on this matter…”

    Did you get a tarot card reading too?

    “If you read the rule closely in combination with the duty to disclose, the request under 1.105 is proper in such a situation.”

    Right. And if you read In re Bogese and Symbol Technologies IV “closely” you’ll find that that PTO has the right to make rules arbitrarily limiting the number of continuations that can be filed.

    ROFLMAO

  59. SmallPeeingGuy: “I’ll say it again in case you still don’t understand: Materiality in a reference does not automatically mean that the reference is obviating or anticipatory.”

    That’s nice. Keep beating that strawman, Cavey. Your fans will still love you.

  60. Mooney, you do enough beating for everyone on the board. Its easy to tell when your buttons have been pushed – you actually quote your own offensive post. Personally you should be embarrassed to call attention to your own idi0tic statement, much less try to create some kind of smoke screen. Its like e6k saying that the atoms come out of the wire.

    I’ll say it again in case you still don’t understand:

    Materiality in a reference does not automatically mean that the reference is obviating or anticipatory.

    Pretty much every practitioner learned or should have learned that in patent kindergarten.

  61. I believe the answer to the inequitable conduct problem is political. Patent prosecutors must understand that we have an interest in patent litigation that is separate and apart from the two parties litigating the patent. I propose a national patent prosecutor’s insurance program. It will come to any prosecutor’s defense during patent litigation when a prosecutor is deposed. The result of the centralization of responsibility and money will result in a de facto lobby group to advance the interests of patent prosecutors before Congress. Moreover, there would always be a threat of a counter suit against one of the parties in the patent litigation on behalf of the patent prosecutor should traditional litigation torts arise.

    It seems readily aparrent to me that once the prosecutor comes to the litigation with a substantial organization behind the prosecutor it will no longer be easy pickings for a defendant who willfully infringes a patent and simply wants to invalidate the same for business purposes.

    In short you can analyze this situation until you are blue in the face. This is not an academic situation. When there are billions of dollars at stake and the parties in the litigation will stop at nothing to advance their position . . . patent prosecutors need protection and a voice. Only a nationalized organization the mission of which is to uphold the integrity of the profession by providing an adequate defense of patent prosecutors will ensure this.

    Remember, the party advancing the patent’s validity always sees a silver lining should they fail to prevail in that regard . . . that silver lining is the patent prosecutor’s errors and omission insurance.

  62. The one reason that I am very much for applicants doing a search and characterizing the prior art is: The Lulz. 3/4 of my applicants would characterize the prior thus: “Ref 1 shows xyz but fails to show j, and while ref 2 shows j used in the same kind of device it would not have been obvious to modify Ref 1 with 2 because of lmnop reasons (despite rstuv motivations being present). My OA would consist of regurgitating the applicants characterizations back to them pointing out the motivation. Done and done, lulzing my way to the gym and flirting with the good looking girls on my floor. After I googled the invention, plugged inventor name search in and found the proper classification and typed it into East that is. I searched all that, riiiight.

  63. Above, “T” blathered:

    Additionally, one should keep in mind that if an applicant thought any of the information was ‘material to patentability’ they would have no reason to file the application.

    Instead, the applicant submits art they are aware of that someone might twist, over interpret and take out of context in a accusation of materiality.

    If the 200 cited documents were material, they would turn up in your own search, right?”

    All the response really this needs is:

    “What a load of CROCK”

    But, I have to say more (like always ;) ).
    You say that “if an applicant thought any of the information was ‘material to patentability’ they would have no reason to file the application.”

    As pointed out “material” does not mean “anticipate” nor even “make obvious”.

    Two, you clearly have not seen many of the B$ claims that are filed every day. Take a look at some PGPubs & see some of the carp we have to deal with. More & more these days the initial claims are so broad that reading them would give you no real idea what the invention is. And often those claims read on the definition of a whole subclass, or worse.

    Three, when the app does file an IDS (often from a foreign search or related case) it is clear that the claims are not revised or reevaluated in view of that art. So, basically, an office action is wasted for the applicant & they are no closer to getting a patent. Even if you don’t want to amend the claims, at least ADD some that actually reflect the invention and are not anticipated by the art that you submit (& should know that they are anticipated because that is what the foreign search told you).

    “T” further recites “If the 200 cited documents were material, they would turn up in your own search, right?”

    Answer, “No, not necessarily.” Are they patents? Are they properly classified Foreign? What language? Do we have access to where they are found? NPL? etc…

    Now, enough with that. Personally, & my opinion only, I think that having the applicant perform a search & fully characterize (or whatever you want to call it) the prior art is a bad idea. I think that the examiners should do this & also it avoids the inherent appearance of a potential conflict of interest that comes up with an applicant doing it. As well as the potential problems for attorneys discussed above.

    What I would like to see is not so much a characterization of what you are citing, but tell us WHY you are citing the reference. It might be something as simple as being cited in a related case or the reference shows a conventional “widget” making system or such. Just SOMETHING rather than a list of a couple hundred references.

    I would also like to see it be mandatory that the applicant cite/list other related applications/patents. Particularly by one or more of the same inventors. The applicant is the one that is in the best position to provide this info. We have ways to pull it up (eDAN, EAST PALM), but they are not always complete nor is there any easy way to distinguish between inventors with the same name.

    Enough for now.

    MVS

  64. An Examiner wrote that he includes the following if an IDS is too large:
    “Applicant is respectfully requested to point out any particular reference which they believe may be of particular relevance to the instant claimed invention in response to this Office Action.”

    Maybe my response would be that Applicant would be pleased to so point out if Examiner can point out where in the statues, rules or case law there is any such requirement for Applicant to do so.

    (or maybe it is just late on Friday and I am tired, especially after listening to all of the financial news, and I would respond differently after a good nights sleep)

  65. Somebody wrote:
    “The U.s. still applies the rule of law, right?”

    Given the events of the last few weeks, I’d say, “no.”

    An Examiner wrote that he includes the following if an IDS is too large:
    “Applicant is respectfully requested to point out any particular reference which they believe may be of particular relevance to the instant claimed invention in response to this Office Action.”

    I’d respond as follows:

    “Applicants believe that the claimed invention is patentable over all of the documents in the IDS. Applicant does not differentiate based on “relevancy.” Applicant understands the law to mean that claims are either patentable or not patentable over art, with “relevancy” not a legally relevant (wink) measure.”

    If I got a jerk-off “please point to the best art” form paragraph from the Examiner, like the one above, I’d be operating from the premise that I’d be appealing the 1st final anyway.

  66. anon

    also, I find that it is useful to be in frequent contact with the client to ensure that the scope of claims being pursued are commercially valuable to the client in that the client’s product (method) may have changed and/or in view of a recently introduced competitor’s product

  67. I agree and disagree with the below comments. I think you have to have an idealistic approach, otherwise “gaming the system” can result in inequitable conduct. On the other hand, I agree that it is important to understand what works and what does not work.

    in-house wrote: “prosecution itself is a game (an unfair one at that)… Counsel that see prosecution as an academic exercise, argue technical points of law to an Examiner, fail to realize how the count system effects an Examiner’s actions, and generally fail to see how prosecution impacts my business are of no value to me. Truely valuable outside counsel are those that know how to “game the system” by obtaining patents of broadest possible scope (without “overclaiming”) in the shortest amount of time.”

  68. EG,

    I think Max knew that; I think we all did. A bit depressing don’t you think? We were trying to have some funny fun. I mean, after all, it is Friday afternoon.

    So tell me, do you ever laugh?
    Please try this:
    Sit back. Pour a drink. Light ’em if you got ’em. Play with yourself a little and try writing a joke. You’ll thank me in the morning.

  69. Leo,

    No, its not me. Me and my boss, everyone says — We are.. two wild and crazy guys!

    * * * * *
    query,

    I never tried toilet paper – how is it?

  70. Max,

    The etymology of “basket case” (from the Wikipedia):

    The term originated from WWI British English, indicating a soldier missing both his arms and legs, who needed to be literally carried around in a litter or “basket.”

  71. “Very few attorneys, especially patent attorneys, laugh a lot.”

    I’m just wondering how you could possibly know that. Maybe it’s just when they’re around you? (õ¿Q).

    (I could not resist no matter how I tried.)

  72. Max, I aim to please. Humor, the best medicine. Very few attorneys, especially patent attorneys, laugh a lot. It must be the law school that kills their sense of humor, but I have a proposed solution — perhaps we can patent it:

    Title: Patent Law Humor Restoration
    Abstract: To restore the natural humor lost as one works through law school, especially patent law school, print the text books on Cannabis paper; as each student successfully finishes a course, he rolls the pages and smokes them.

    They don’t call me the white rabbit for nothin’. Go ask Alice.

  73. Not sure that a “basket case” is anything to laugh about. When one knows the real origin. Still, Rabbit, I do confess that your offereing did raise a smile.

  74. Dear Sour kraut Max,

    Re: “In fact it’s a basket case (anybody know the origin of that expression?).”

    Why, that would be you!, No? (õ¿Q).

    (I could not resist no matter how I tried.)

  75. I remember that Rule. Folks in Europe still prepare such a thing, automatically, and are mystified when told that it’s, well, actually….just not the thing we do today. Reality is somewhere well over the horizon, we conclude.

  76. SmallPeeingGuy: “Materiality does not automatically mean anticipation.”

    That’s nice. You just beat on that strawman all weekend and exercise your other wrist for a change.

  77. For those who remember this far back (early 80′s), the PTO used to require that an IDS include a “brief description of the relevance” of each reference cited. This served as a check on the number of references cited and enabled an examiner to better identify the better references to focus on. At some point, the PTO dropped this requirement because it wanted more references. The PTO proposal for a detailed search analysis (aka, the applicant writing his own office action) is overkill, but the PTO should reconsider restoring the old rule.

  78. “Rather, the PTO wants practitioners to perform a preliminary search and distinctly point out the closest features of the prior art.”

    If by “distinctly point out” the PTO means to the level that the examiner’s “distinctly point out” the prior art features cited in their first office action, I see many of my ISD analysys merely alluding that “It’s in there somewheres.”

  79. Thanks in House. Just a pernickety point of law. I can’t comment from an EU perspective. The European Patent Office has 34 Member States (plus another 5 Associate States). It is not an EU institution. The European Union has only 27 Member States (for the time being). The EU isn’t very good at patents. In fact it’s a basket case (anybody know the origin of that expression?). At least, that’s how I see it.

  80. MaxDrei – Please don’t infer anything from my terse response. I value your viewpoint from a EU perspective. I too constantly struggle with what should be patentable and what has been allowed as a patent. Reality tells me these are two different things. I myself was recently reminded of the game US practitioners are forced to play. Once I re-realized that prosecution is a game, my discomfort and stress abated.

    Also, you misinterpret my point. It is not that the US rules are not easy and you do not understand them. Quite the contrary. From what I read you have a better grasp of US prosecution rules than some US practitioners I have met. The point is that once the realization is made that prosecution itself is a game (an unfair one at that) it becomes easier to reach your goals and reduced your stress levels.

    Regarding my treatment of outside counsel, yes my email is consistent with how I treat some outside counsel – those that don’t realize the game of prosecution. Counsel that see prosecution as an academic exercise, argue technical points of law to an Examiner, fail to realize how the count system effects an Examiner’s actions, and generally fail to see how prosecution impacts my business are of no value to me.

    Truely valuable outside counsel are those that know how to “game the system” by obtaining patents of broadest possible scope (without “overclaiming”) in the shortest amount of time.

  81. Annoyed -

    before citing references, you should read them, lest they make the point against you.

    “Thus, the court’s finding in this regard is clearly erroneous, and the determination that the method of disclosure constituted inequitable conduct cannot be sustained.”
    from Molins PLC v. Textron, Inc. – paragraph 45.

    I believe this type of examination is what raises the ire of most prosecutors on this site.

  82. To echo a few commenters above. Rule 1.105 relates to the submission of information, not for comments on information. Since the references have already been cited, the information has already been submitted. It is the Examiner’s JOB to sort through the information and make his/her independent decision as to what is material and what is not.

    As to your quote regarding “applicants are encouraged to provide a concise explanation,” note the use of the word “encouraged” instead of something like “shall” or “required.”

    The fact that certain applicants have positively responded to your requests is likely because they have determined that it is less of a hassle to respond to the request than to take you to the mat for abuse of your position.

    Your simple “encouragement” could very well put the patent rights of the applicant at risk. Unless applicant perfectly characterized all the references (which, of course, is totally up to debate), any potential infringer is going to allege inequitable conduct if a resultant patent is ever litigated. In fact, your request all but guarantees that inequitable conduct will be alleged, even if your request wasn’t responded to.

    Good job, in your efforts to “improve the quality of examination and in efforts to expedite prosecution” you have seriously compromised the potential validity of the patent.

    BTW: This is why many practitioners absolute detest the possibility that applicants may be required to both provide a search AND characterize the prior art. First, despite all the money that will be spent on the search and the characterizing, the examiner is going to provide his/her own search, which means a large percentage of this money is likely to be wasted. Second, any search that misses a really good reference or any mischaracterization of the references (or even omission) is going to result in an accusation of inequitable conduct.

  83. In my experience, haystacks hardly ever contain needles. I would expect, therefore, that it might be difficult to prove that there was any “needle”, let alone that somebody had any intent to hide it. The prior art documents are all different blades of grass, of different significance, with one being a marginally better “starting point” for exploring validity than any of the others. Seldom will you find a blade of dried grass so different in kind from all the others that it can be categorized as a “needle”.

  84. Annoyed–so it sounds like you and others at the PTO believe that no rule or statutory changes would be needed to require applicants to submit a concise summary of the relevance of submitted references, or at least that’s where it sounds like things are heading, especially in view of Mr. Toupin’s reported plans to propose such a thing. This seems to be similar to the approach the PTO took with the Continuation Rules package–we can just read things the way we want to get the results we want. I sympathize with the current plight of examiners, but don’t think that trying to get practitioners to make admissions against interest is the way to go with the current state of patent law–too much risk to patents being declared invalid for inequitable conduct (and there would be more because the ‘characterization’ of the reference would of course be scrutinized during litigation). Change Rule 56 and the IC standard and it might work, eventually.

  85. I understand your frustration. However, the office should keep in mind that applicants have to fend off accusations that information was withheld.

    Additionally, one should keep in mind that if an applicant thought any of the information was “material to patentability” they would have no reason to file the application.

    Instead, the applicant submits art they are aware of that someone might twist, over interpret and take out of context in a accusation of materiality.

    If the 200 cited documents were material, they would turn up in your own search, right?

  86. Yes, T — I mean rule 1.105 but the lingo is usually rule “105″ so sorry for the confusion.

    I have consulted 2 TQAS on this matter for a particular application that cites more than 200 references (patents and NPL) and is related to more than 20 copending applications all filed around the same time. In this case, it was deemed that it would expedite prosecution if Applicant pointed out only those references deemed “highly relevant” due to the nature of the jumbo case and its relative and due to the nature of the subject matter claimed. If you read the rule closely in combination with the duty to disclose, the request under 1.105 is proper in such a situation. Applicant could technically respond by saying “We believe all references cited are ‘highly relevant’” without pointing to any particular one, but they are then making such a statment formally on the record (and if such is found not to be true they could, for lack of a better way to phrase it, shoot themselves in the foot). This way too, it is clear that the Examiner (me) attempted to gain Applicant’s cooperation in efforts to improve the quality of examination and in efforts to expedite prosecution etc. etc.

  87. Ah, Rule 1.105, not 1.05.

    You should read the whole rule. It refers to submission of requested documents and information such as whether a Commercial data base could be searched and whether a search has been performed.

    It doesn’t require the applicant to comment on cited documents, which, as your pasted paragraph indicates, is not required.

  88. See MPEP 704.10-704.12

    “Information which may be required under 37 CFR 1.105 is that information reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111 (including a reissue application), in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding.”

    MPEP 609.04(a)(III) also says the following:

    “Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability”

    In view of this, I make the argument that since a large number of documents have been submitted on the record, it is requested that Applicant point out any references or documents of which they are aware (out of the large list of documetns cited in the IDS of course) that are “highly relevant” to patentability. I remind applicant that this is in accord with dicta from “Molins PLC vs Textron, Inc” stating that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith” and in accord with a subsection of the MPEP entitiled “Aids to Compliance With Duty of Disclosure”.

  89. annoyedexaminersickofmountainsofcitedreferences… is yet another examiner that thinks the ramblings in the mpep are “law”.

    yea… riiight.

    probably the same hard case examiner always telling me how I need to follow the MPEP’s “suggested format for specification sections and their titles”.

    bunk.

    when that crap is received, a response respectfully requesting citations to an actual applicable law/statute – that’s all that is ever required. anybody but a chimp knows that.

  90. Annoyed, don’t blame the attorneys. They do what they do to protect their clients from adverse inferences, downstream, in the courts. The USA is still a country that follows the “Rule of Law” no? Blaming the attorneys would be like blaming the derivatives traders for the present mess in the financial system. Instead, hold responsible those who make the Rules by which the legal “Game” is played. No, wait, I mean those who elected those who make the Rules. No, wait, I mean those who failed to educate those who voted for those who make the Rules. No, wait, I mean the parents of those who failed to educate those who elected those who make the Rules. Anyway, not the attorneys. If you want an attorney to blame for the present ennuie, take the one who, prompted by monstrously w’cked criminal acts, wrote for POTUS the opinion that the USA has the exclusive right to ignore the Geneva Convention, and “Customary Law”.

  91. Anytime I open up a new application that cites more than 40-50 documents (which is too dang often, let me tell you) I include the following statement in my Office Actions:

    ****
    Appplicant should note that the large number of cited references have been considered by the Examiner in the same manner as other documents in Office search files are considered by the Examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is respectfully requested to point out any particular reference which they believe may be of particular relevance to the instant claimed invention in response to this Office Action.
    ***

    If Applicant ignores this request when responding, in my next action I then go on to cite the various sections of the MPEP and related case law that expressly says when submitting a large IDS, Applicant is encouraged to point out those references material to patentability and that expecting the Examiner to “find a needle in a haystack” is illustrative of bad faith. I’ve only had one instance where after doing this Applicant continued to ignore my request. In that situation, I sent out a rule 1.05 requirement and called the attorney to warn him/her that if they ignored the request again they would recieve a notice of non-compliant amendment.

  92. I’ve said it before, given that the PTO is a government agency, aren’t patents, in a strong sense, already “nationalized”? If the government wants to use your patented technology, they pretty much can. If you have a more detailed version of your apocalyptic vision, please share it.

  93. Anybody want to do an under/over with me on how long before the U.S.S.A government nationalizes all patents?

    I’d go 28 months out.

    Why stop with insurance companies, banks, and auto manufacturers?

    Seriously?

    Patents aren’t useful in a fascist state anyway.

    Tough sh-t Hank Rearden.

  94. clever pseudonym wrote: “You’re talking about the presumption of validity in litigation, right? Do you really think that this supposed presumption makes any significant difference in most cases?”

    Are you suggesting that we should drop the presumption of validity since the USPTO does not read the references?

  95. To annon, thanks for the link. In that situation, since the patent application was a continuation of a patent under litigation, I would say that’s a bit of a no brainer. But point taken.

    Mooney scribbles: “Um … no. If a paper from 1980 is a material reference to claims in a newly filed application, then your claims are most likely anticipated.”

    Sorry Mooney, wrong again. You don’t practice do you? Materiality does not automatically mean anticipation. You must know all about career death – you talk about it all the time. Your career may have died before it took its first breath.

  96. “… and the patent gets a presumption of validity only with regard to those 5 references in any combination.”

    Which means what, exactly? You’re talking about the presumption of validity in litigation, right? Do you really think that this supposed presumption makes any significant difference in most cases?

  97. Exactly.

    Let the applicant decide best allocation of resources for a pre-examination search on a case by case basis.

    If they find a better one later down the path, tough cookies….or maybe let the applicant submit a super-IDS listing any references greater than the 5 freebies, but in the super-IDS, the applicant has to characterize each reference with respect to claim elements, etc., as in the various new IDS and claims rules.

  98. “Why not require that each applicant submit, for example, 5 and only 5 references — and the patent gets a presumption of validity only with regard to those 5 references in any combination?”

    Because the applicant will want to submit the best 5 references they can find at the time, but may later find much better references.

  99. Why not require that each applicant submit, for example, 5 and only 5 references — and the patent gets a presumption of validity only with regard to those 5 references in any combination?

  100. You can’t get hit with IC until the application issues.

    T is correct, no IC in your scenario. Would be nice though.

    “The simple fact is, there is more prior art today than there was 30 years ago, and finding it is much easier.”

    Um, about that … the simple fact is also that the amount of RELEVANT prior art today isn’t that much higher if you don’t count cumulative disclosure.

  101. “I stand by my original answer: Maybe. But isn’t that always the answer in this game?”

    Yes, except for when the answer is “career death”.

  102. No one reads all the references in an IDS ONLY? This also happens when some attorneys that only search of claim language in the references and do not read them!

  103. It is possible, as Jonesie suggests, that the increase in citations per application is due to a combination of a greater number and, especially, availability, of material references, rather than an overabundance of caution on the part of practitioners. It would be interesting to compare the timing and magnitude of the increasing trend from Dennis’ first figure with PTO/court decisions and rules interpreted as urging greater disclosures (e.g., Dayco & McKesson are fairly recent when compared to the entire temporal scope of the graph).

    Also, the second figure, though consistent with the conclusion that examiners cite fewer references than practitioners, does not support that contention very strongly. Two important caveats that come immediately to mind are: 1) perhaps examiners have an easier time finding more material references to cite when they have some to go on from a submitted IDS, 2) perhaps applications for which no IDS has been submitted represent a truly different population of applications, for which fewer material references actually exist, on average.

  104. “There is only a question if inequitable conduct if the examiner DOES NOT find the 150 page reference.”

    Or if material information is in the 50 pages that the examiner has not seen. I stand by my original answer: Maybe. But isn’t that always the answer in this game?

  105. Of course there are more references cited per application. The simple fact is, there is more prior art today than there was 30 years ago, and finding it is much easier. There are more patents issued, US applications are now published, there are more accademic publications, and everything is easier to find thanks to the internet. Of course we cite more prior art.

  106. “I don’t have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line).”

    The standard is ‘consider’ not ‘read’. I consider all cited references, just like I consider all of the patents in a subclass during a “flip” search.

  107. Not.

    From 1.56:

    The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98.

    There is only a question if inequitable conduct if the examiner DOES NOT find the 150 page reference.

  108. Let’s play a game of determine inequitable conduct or not.

    Facts -
    In application A, an IDS is filed naming a user guide for a program created by company X, who is the assignee of application A. The IDS lists no publication date for the user guide, and includes only 20 pages of the 200 page user guide. The Examiner locates a version of the same user guide in another application filed by company X which is now a patent, in which company X submitted an IDS listing the publication date as more than a year prior than the filing of application A, and containing 150 of the 200 pages of the user guide. The Examiner uses the 150 page user guide submited in the now issued patent to reject all claims of application A under 102(b).

    Question -
    Inequitable conduct or not?

  109. Marylena: “No, even if I had all the time in the world, I would still submit everything.”

    Except that you never submit everything. Nobody does. You submit a subset of everything.

    What did you really mean to say?

  110. “(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application”

    This is your answer, applicants and patentees. As we practitioners who have been on both sides of the battle in litigation, re-exam and/or prosecution know, this is where the rubber meets the road when confronted with charges that a references was intentionally “withheld.”

    And this is why it is a good idea to include not just the references you know are material, but also a few others: to create a soft downy pillow of potential cumulativeness.

  111. hoping “In the background, we may cite to a 1980 article about making proteins. If we do NOT cite this in an IDS, are we going to be hammered during litigation for trying to hide the ball? ”

    Um … no. If a paper from 1980 is a material reference to claims in a newly filed application, then your claims are most likely anticipated.

    “If the IDS rules change and applicants are required to “distinctly point out the closest features of the prior art,” it will be the end of biotechnology as we know it today.”

    Lighten up, Francis.

  112. LB wrote:

    “Agreed, but I still don’t think that this standard suggests that every conceivable secondary reference that might be applicable against a hypothetical primary reference is material.”

    Unfortunately, accused infringers will thing so.

    The rule says:

    (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim

    “other information” – not other information know by the applicant, not other information of record, “other information”

    ….and the office’s standard for “establishes a prima facie case of uppatentability” is quite low. See 9 of 10 office actions on your docket or mine.

  113. In response to JNP,

    Do you think that with In re Swanson, references on an IDS not only do NOT immunize you against Reexam, they provide a starting point for “an appropriate context of a new light” to shine upon in establishing a substantial new question of patentability? Since the references are listed, but most have no comment on how they were evaluated by the Examiner, who knows what 103 or 102 possibilities lurk therein?

    Hmmm, would it be proper to ask the examiner to put in writing for the record that all identified material has been thoroughly and completely evaluated?

  114. LB — I agree with your statements in theory. However it really comes down to whether a reference is cummulative or not. And, unforutnately, there is case law (I have forgotten which one) that says that even if two references disclose the same basic information, the one that discusses that information longer is more relevant and thus should have been disclosed despite the presence of the other, shorter, reference. I think the court in that case even compared the number of columns in each reference when addressing whether the non-cited reference was cumulative…

  115. Well, in House, from my desk in Europe I’m glad to read from you that you had a laugh about my contribution upthread, and that US Rules are “easy”. I’m happy to receive your education how things are in the USA. I’m less impressed by your command that I am now to “Learn them!” Is this always the tone you take, with outside counsel?

  116. MXL – CAFC has been using the reasonable examiner standard pretty consistently since. See Star Scientific (2008) and McKesson (2007), which discuss only the reasonable examiner test.

    MM – “Not really. It’s more like applicants not having time so they are forced to pretend to ‘comply’.” No, even if I had all the time in the world, I would still submit everything. CAFC law time and time again favors disclosure and punishes only the withholder. What is the prudent course of action? Submit.

  117. “The reasonable examiner standard defines material information generally as any non-cumulative information that a reasonable examiner would have considered important in deciding to allow the application.”

    Agreed, but I still don’t think that this standard suggests that every conceivable secondary reference that might be applicable against a hypothetical primary reference is material.

  118. Posted by: MaxDrei | Sep 18, 2008 at 06:01 AM “Tell me, Sanity, does your employer see any issue, with over-broad claims, that should never have issued?”

    I chuckle everytime I read a statement like the above. There are no “over-broad claims” or “overclaiming” by practicioners. Your statement begs the question.

    Until you realize that claims in issued patents are valid unless otherwise determined by reexam or a court, you will always cry foul. The rules of the game are easy. Learn them.

  119. The increase in citing reference in my experience is due to an increased fear of an inequitable conduct claim. Prosecution practitioners often work on very tight budgets and don’t have the luxury to read through and ponder each line of each reference – the way litigators with a blank check do. If we are tasked with reading and deciding whether or not to submit a reference then we should be held to a standard of unintentional error if we miss a nuance – instead of inequitable conduct.

    It used to be so much fun to be a patent attorney … those were the days …

  120. Leopold Bloom wrote:
    “As the rule says, with respect to potential 103 art, it’s only material if it’s not cumulative and if ‘the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard.’”

    Unforutnately this is only half-correct as the CAFC interprets its own caselaw. See Dayco Products (2003). In Dayco, the court stated that there are two possible standards, the narrower and newer Rule 56 standard quoted above, and the reasonable examiner standard. The reasonable examiner standard defines material information generally as any non-cumulative information that a reasonable examiner would have considered important in deciding to allow the application.

    However, the court decided the case without deciding whether the old reasonable examiner standard or current Rule 56’s definition of materiality is applicable in cases where patent applications were filed after January 17, 1992 (the date of the current language of materiality in Rule 56).

    Therefore, until the CAFC rules otherwise, we have to assume that the broader reasonable examiner standard will likely apply in cases that we are currently prosecuting.

  121. “In tension with the PTO’s desires are the multiple cases finding patents unenforceable due to applicants failure to submit relevant prior art to the PTO.” … seems like performing a preliminary search, combining the results with what the client already has, and providing reasoned statements of relevance and patentably distinguishable features in the claimed invention would overcome this problem. Of course, it would cost a heck of a lot of money.

    “As of now, the PTO will grant just about any reexam petition that finds some obscure, un-cited reference combined with a virtual “cut and paste” of the first Office Action rejection of the original prosecution.”

    Doesn’t even have to be un-cited. But you do have to come up with new grounds for rejection if the ref was previously cited.

  122. LB -

    Have you read many office actions? The Bar by which examiners judge “material to patentability” is extremely low.

  123. “What does ‘all information’ ‘material to patentability’ mean if not every possible 103 reference?”

    Well, it certainly doesn’t mean “any reference that might conceivably be combined by someone with any other reference in an assertion of ‘obviousness’”, as you originally suggested.

    As the rule says, with respect to potential 103 art, it’s only material if it’s not cumulative and if “the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard.” A reference describing a minor feature (“wherein the widget is red”) can’t possibly compel such a conclusion in the absence of OTHER information that describes the widget. Nothing in the rule (or case law) says that you have to suppose the existence of other references to determine whether a particular reference is material. Of course, once a reference describing the widget is on the table, it’s another matter.

    Inequitable conduct jurisprudence is screwed up enough without hysteria making it seem worse than it is.

  124. Ed,

    It is a lot easier to critique an application than to write one. It is easy to see errors creep in when you revise anything multiple times. But while we are on the subject, I see communications from Examiners every day with bad spelling, disagreement between the subject and the verb, partial sentences, etc… (the last communication I received had in one paragraph, quite literally, 6 spelling errors, 2 partial sentences, and a clause using a pronoun with no clear indication to what the pronoun was referring).

    Also remember that a large number of practitioners are working on a tight client budget and may thus be relying on others to proofread.

  125. I think it’s that examiners only have time to read 6 or 7 references. In a typical case, I usually tag 50 to 100 references based on pictures in a preliminary search, then after reading the claims again I pick out the ones with teh most compelling drawings to print out, and I end up reading maybe 6 before I realize that I’ve already spent my 16.1 hours allotted for both counts, and I spend about 3 hours VOT writing my first action. Any further prosecution before disposal requires more VOT, maybe some “sick” leave during fourth quarter.
    What kills me is the exorbitant fees that some attorneys charge, and how lazy they can be. At 400 dollars an hour and 10 dollars a word, or whatever it is, it’s not too much to expect that claims be at least error-free. If you ever get a 112 2nd rejection because you didn’t proofread claims after doing a half-assed cut and paste job, please pick another vocation, ’cause you’re wasting an awful lot of time and money. I’ve seen this about 4 times this week already.

  126. LB

    37 CFR 1.56

    § 1.56 Duty to disclose information material to patentability. – Patent Rules

    § 1.56 Duty to disclose information material to patentability.

    (a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:

    (1) Prior art cited in search reports of a foreign patent office in a counterpart application, and

    (2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.

    (b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

    (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

    (2) It refutes, or is inconsistent with, a position the applicant takes in:

    (i) Opposing an argument of unpatentability relied on by the Office, or

    (ii) Asserting an argument of patentability.

    A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

    (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:

    (1) Each inventor named in the application;

    (2) Each attorney or agent who prepares or prosecutes the application; and

    (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

    (d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.

    (e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.

    Specifically:

    The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98.

    What does “all information” “material to patentability” mean if not every possible 103 reference?

  127. I don’t have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line).

    The answer is to delete Rule 56 and get rid of inequitable conduct.

  128. “What form of insanity is it for the PTO to require that any reference that might conceivably be combined by someone with any other reference in an assertion of “obviousness” be submitted …”

    I missed that requirement – where do I find that?

  129. I am surprised there has been no reference to reexams. Yes, I agree with the veteran posts about the disconnect between the Federal Circuit and the desires of the PTO. Although I am too lazy to dig through my files at the moment, most of us are well aware of the relevant case law that has arose in the past from the CAFC regarding “quantity over quality” when it comes to inequitable conduct, presumption of obviousness, etc. In short, the CAFC has more then once has the opportunity to consider the question of whether a patentee “buried” a material reference in a box of prior art and upon consideration, not found such practice inequitable, but rather preferred. I have worked at two large corporations that considered this quandary some years ago with respect to establishing internal practice and after rather in-depth legal consideration, the CAFC decisions on this matter always led to the mass reference conclusion.

    That said, the Patent Office ignores it’s own actions and precedent. I am sure there is more than one practioner on this site that has been the “victim” of an unreasonable reexam request. As of now, the PTO will grant just about any reexam petition that finds some obscure, un-cited reference combined with a virtual “cut and paste” of the first Office Action rejection of the original prosecution. Thereafter begins about 2-3 years of uncertainty and panic as a competitor is allowed to enjoyable watch as the patentee wiggles in panic stricken anxiety hoping that the PTO does not decides that it’s own prior conclusions may have been inappropriate. Regardless of the patentability of such matters, we are all well versed in the “consistency” of PTO thought and I doubt anyone on this site would enjoy such an experience. As long as the PTO is willing to grant just about every reexam petition that comes in the mail, I am citing every reference I can find and doing a comprehensive search to make sure the pile is big. Further, as long as the CAFC is punishing, rather then rewarding patentees who submit low volumes of prior art, I am following the CAFC lead. The PTO has it’s head in the sand with this IDS stuff. If they have a problem with IDS volume, they should curtail their reexam culture and call the CAFC judicial staff, not punish practioners with poorly considered, knee-jerk solutions. There idea of a solution is something I would expect from Congress, not a patent office.

  130. “The PTO does not want more references – it already has millions stored in its electronic databases.”

    “I don’t have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line).”

    Dennis -

    I don’t understand the second quote in light of the first.
    If the PTO doesn’t want more references, isn’t the solution for the PTO not to ask for, nay not to require them? What form of insanity is it for the PTO to require that any reference that might conceivably be combined by someone with any other reference in an assertion of “obviousness” be submitted, while at the same time complaining that too many references are being submitted?
    Isn’t the whole examination processes predicated on the assumption that the examiner will find the relevant art? If that assumption isn’t valid, doesn’t that mean that the whole patent system is a farce?
    Accordingly, just drop the requirement that the applicant submit art, except art they are aware of that would clearly invalidate the pending claims.

    T

  131. Tell me, Sanity, does your employer see any issue, with over-broad claims, that should never have issued? It is evident from your post that you see such claims as yours more or less as of right but, if you want them for yourself, you have to let the competitors have them too. Is a system of registration only, unexamined rights, the way to run a patent system, in the best interests of its stakeholders ?

  132. new IDS rules = end of biotechnology

    The sky is falling. LOL

    Patent rules may change patents, but it won’t be the end of biotechnology.

    Seriously, the US should dump rule 56. It is not required by statute and no other country has this silly requirement. The USPTO is headed in the wrong direction, but the world won’t end.

    Of course, CERN’s Large Hadron Collider may end the world. But that is a different story.

  133. As a biotech patent attorney, I have a real problem with trying to decide whether to NOT cite in an IDS any reference we have cited in the patent application. In the background, we may cite to a 1980 article about making proteins. If we do NOT cite this in an IDS, are we going to be hammered during litigation for trying to hide the ball? There is a huge downside for not citing a reference, and no upside for not citing a reference. The Fed. Cir. has made it this way with their decisions.

    Of course, a competent examiner will find the relevant art even without an IDS. Australia stopped asking for any prior art…

    If the IDS rules change and applicants are required to “distinctly point out the closest features of the prior art,” it will be the end of biotechnology as we know it today. The cost will dramatically increase for prosecution, likely several fold. No matter how much time is spend trying to comply with the rules, what are the chances of finding an expert 10 years later who will disagree with your characterization? At $500+ per hour, you will have no lack of experts willing to testify that you mislead the patent office by how you characterized the prior art.

    Without patent protection, biotech start-ups do not get any funding. Without patent protection, new drugs do not go through clinical trials. Do we want any new medicines, or are we happy that we’ve already solved all current and future medical problems?

  134. Much more germane, than the last IDS related article, which was perhaps a prelude to this one.

    Mooney scribbles:

    “The submisssion of references is mostly an unthinking act. You submit most non-book references cited in the post-filing publication that the applicant is aware of, plus every patent that has already been cited in any remotely related application that the applicant has previously filed, plus all the foreign searches and any litigation docs.

    Does any prosecutor spend the time reading all that stuff? Only if asked to by the client or if it is actually relied on by an Examiner in an office action.

    A great deal of inequitable conduct does not arise from applicant’s *hiding* prior art. It arises from applicants telling ridiculous stories about what is disclosed by (and what is not disclosed by) the cited prior art. In that regard, it really is the Examiner’s job to be able to separate the baloney-shovellers from the forthright.

    Some of the Examiners are very good at this task. Quite a few of them are worthless. Who’s to blame for the vast discrepencies in perceived Examiner competency at the PTO?”

    What a stilted view of patent practice. “A mostly unthinking act”? Maybe for you, but not for anyone who knows what they are doing. If you are a practitioner, which I highly doubt, you must have had some terrible training. And what’s this about submitting “litigation docs?”

    The problem is, when the applicants and their attorneys get into the business of Examination, then there becomes a stronger legal argument for accountability on the part of the attorney for failure to cite a reference that may have unwittingly come into the attorney’s / applicant’s remote orbit. That duty already exists in muted form vis a vis Rule 56, but if the Rule is strengthened, then it will create undue burden on the attorney / applicant when a reference that, for example, the PTO finds is relevant, was not cited by applicant when, for example, it was listed by the Examiner in a questionably related case.

  135. “examiners only discover around six or seven references”

    LOL, you mean 40+ right? D, you my good man are hilarious.

  136. “examiners only discover around six or seven references”

    you means to say examiners only cited around six or seven references.

  137. “It’s more like applicants not having time so they are forced to pretend to “comply”.”

    true, true, true

    it’s much more cost effective to just cite everything without thought and, until the USPTO passes its new IDS rules that make it more cost effective to sift, the flood of references will continue

  138. “”the increase of prior art” is due to Applicants trying to comply with Federal Circuit law.”

    Not really. It’s more like applicants not having time so they are forced to pretend to “comply”.

    The submisssion of references is mostly an unthinking act. You submit most non-book references cited in the post-filing publication that the applicant is aware of, plus every patent that has already been cited in any remotely related application that the applicant has previously filed, plus all the foreign searches and any litigation docs.

    Does any prosecutor spend the time reading all that stuff? Only if asked to by the client or if it is actually relied on by an Examiner in an office action.

    A great deal of inequitable conduct does not arise from applicant’s *hiding* prior art. It arises from applicants telling ridiculous stories about what is disclosed by (and what is not disclosed by) the cited prior art. In that regard, it really is the Examiner’s job to be able to separate the baloney-shovellers from the forthright.

    Some of the Examiners are very good at this task. Quite a few of them are worthless. Who’s to blame for the vast discrepencies in perceived Examiner competency at the PTO?

  139. Dennis, I wonder how the number of pieces of prior art which the examiners cite today compares with the number which they cited in years past.

  140. When you say that “the PTO wants pratitioners to perform a preliminary search and distinctly point out the closest features of the prior art” are you referring to the proposed rules? What is their status? I remember there was a 20 or 25 reference threshold limit that caused a change in disclosure requirements when the threshold was exceeded.

    See also “The U.S. Patent and Trademark Office’s Proposed Information Disclosure Statement Rules: Too Novel and Nonobvious” available for free on http://www.indianalawjournal.org.

  141. What % of the documents cited are non-English?

    Can the PTO get the cited publications into their system so that they are word searchable by the examiners and so that they are readily available to other examiners? (Maybe there are copyright problems with doing that?)

  142. “Rather, the PTO wants practitioners to perform a preliminary search and distinctly point out the closest features of the prior art.”

    Sounds like the PTO wants to impose two new requirements on inventors — a search and a search analysis.

    And that sounds a lot like what we pay the PTO to do and what they are expert at doing.

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