I compiled a list of the over five hundred thousand reference citations in the almost eighteen thousand utility patents issued in the past two months. (Jan 1, 2009 – Feb 18, 2009, excluding reissues and reexaminations). In this sample, the average patent issued with 31 cited references. This is a skewed average – the median patent only cites 15 references. The vast majority of references (77%) are introduced by the applicant during prosecution while less than a quarter (23%) are cited by the examiner.
Patent documents (including US & foreign issued patents and published applications) represent 82% of the cited documents while non-patent literature represents 18% of the total. As was noted in the comments regarding PTO search tools, PTO searches are overwhelmingly focused on patent documents. Thus, 95% of references cited by PTO examiners are patent documents. (See pie chart aside).
Although – on average – applicants submit most of the prior art, Applicants submitted absolutely no references (zero) 15% of the patents in my study, and the median number of references cited by the applicant is only 7. Applicants cite over 200 references in only 2% of cases. The PTO’s stalled IDS rules give the applicant 20 ‘free’ references that can be cited without payment of a fee or further description. About 23% of the issued patents in my sample include more than 20 references cited by the applicant. The chart below is a histogram of applicant submitted references. About 12% of patents are “off the chart.” In those cases the applicant cited more than 40 references.
Take-away: First, the data shows that applicant submitted references are substantially different from those cited by examiners. Non-patent literature is an important category of prior art that is largely missed by examiners, and the current information disclosure system does a pretty good job of getting more of that type of art in front of the examiner than he or she would otherwise see. A second point is that most of the time, examiners are not being swamped by reference submissions. It is surprising that 15% of patented cases include absolutely no applicant cited references. On the other hand, folks who submit over 200 references are deliberately choosing to do so. Generally, the very large reference volume comes in cases where the applicant knows that the innovation is important and is looking for more assured protection. In those cases, I don’t see the harm in making the applicant somehow pay for the additional resources required to review those references. [Of course, in that case, the PTO should allow more examination time as well]
The next graph shows the average number of applicant-cited references for various top-patenting companies. The size of the blue bar reflects the number of applicant cited reference on average, for that assignee’s Jan-Feb 2009 patents. (Scale at bottom). The graph is sorted so that companies with the greatest average number of cites are shown at the top. Although this is not strictly true, the difference between companies is largely a difference in areas of technology. Thus, companies patenting electronics generally cite less prior art than others. You may also notice in this list that US based companies tend to cite more prior art. The final chart in the series shows that – on average, US assignees submit over three times as many prior art references as do their foreign counterparts or patents without an assignee.
Interesting Comment here.
This is a reply to myself.
“Resident Nut Job”
LOL
Here is a post from a real nut job…
“”Ronald Reagan’s corpse called. He wants you to continue fellating him.”
link to patentlyo.com
In my experience, I see a lot of references cited in two situations:
– where there are a lot of related cases, and esp. with foreign counterparts.
– patent applications somewhat based on academic papers.
I will admit that both are a function of paranoia.
On the other hand, the paranoia runs the other way with some big (in my experience) electronics and computer companies. They don’t search since they would have to cite anything they found in at least that case, and possibly in many others.
“How much you bill your clients for those searches?”
I guess I should’ve been more specific. I don’t use a search firm for most applications due to the cost. Instead, I do my own search when I receive a disclosure. I typically spend an hour searching and an hour analyzing my findings, so the cost to the client is fairly low. If there is non-obscure 102 patent literature out there, I’ll usually find it in that hour, as I’m a decent searcher.
Even if it’s a $6,000 application, spending $600 on a search is well worth it, as it may save the other 90% of the cost.
Obviously I’m biased with regard to the value of a patent search since I’m a searcher, but I always thought the value was not so much in filing vs not filing (except for individual inventors), but in getting to the crux of patentability faster. We hear complaint after complaint on this blog that the examiner finds new art for every rejection they send, but if you have most of the good art to start, won’t there be less back and forth during prosecution? More money up front, less money and time during prosecution.
Also, searchers are no different than attorneys and examiners. Most are average, some great, and some stink. Keep an eye on us and do some quality review periodically. No one is perfect and no search is 100%, but you want a consistent product on the correct side of the bell curve of quality.
6 and examiner; thanks for the replies, I appreciate the answers. And I wholeheartedly agree with one of the posters above that we cite patents over NPL because patents are much more detail oriented. Their disclosures are meant to support claims, NPL disclousures are to get published. Two very different things.
Gratzi, all four of those PG-Pubs would live in a single, virtually random location picked by rolling dice at the time of filing. After issuance, who knows, depends on the particular examiner and their personal feelings on classification. I surmise that the one’s who do class searching properly classify and the ones in love with key words just throw them some place randomly.
This thread reminds me of a Nov 2008 Patently-O topic where the Examiner said “I’ll do my best” in reviewing a large IDS submission. See link below:
link to patentlyo.com
“Re: McKesson – Is anybody actually citing and submitting Office Actions, Notices of Allowances, Bored decisions, etc. from related applications?”
Yes – Particularly when a patent is in litigation and related patents are being prosecuted.
“Would anyone venture to comment on the following:
No matter how many references I cite, the examiner always uses the references that he/she found in making the rejections.”
I have received an 892 citing a reference “by the Examiner.” As it turns out, I actually filed an IDS including that same reference when I filed the application. So what conclusion do I draw – My IDS was simply signed without the examiner paying any attention to its content. What other conclusions could I have drawn?
Even assuming, arguendo, perfect classification of all published patent applications and issued patents, no matter how much we pay for a pre-filing patentability search, we can’t avoid the substantial risk that 102(e) art will be found and used against our app/patent by an examiner/opponent. Add to that the vast uncertainty wrought by KSR as to the materiality of previously marginal references, and it becomes clear that “An application is more…” STILL makes a very serious point.
There is no question that pre-filing patentability searches can occasionally knock-out certain concepts. Yet by the very nature of pre-filing patentability searches, with some significant frequency, there will be killer prior art references that are missed during the best of such searches, only to be found and used against the applicant/patent owner by an examiner, opponent, etc.
“If it uses certain terms it will be classified a certain way.” Precisely the point. Applications are often classified according to the terms they use, rather than the concepts they claim. And if an application claims those concepts using “inventor as lexicographer” terms, then it could easily be classified incorrectly, that is, with concepts to which it does not actually pertain, and away from those concepts with which it is most closely associated, thereby resulting in a “mis-classification” for lack of a better phrase.
Example 1: Let’s say I’m drafting claims for an inventive computer-implemented method (no Mooney-esque critiques invited) for monitoring PatentlyO and reporting via e-mail alert each of the many anti-patent suggestions, arguments, etc. And let’s say I claim it using “lexicographically-creative language” such as found in the following independent claim (from which the usual gaggle of dependent claims follow):
“A process myrphically-implemented on phrag-loped gurtheizer, said process comprising runching each splot gralinated on Patently-O”;
where each of these terms is defined in the specification in such a manner that the concept described above is actually patentably claimed.
Let’s also assume that other than the definitions, which I’ve subtly embedded throughout the detailed description, the remainder of the application is written using the same lexicographically-creative language.
Consider MPEP 903.04, which states: “The selection of a primary classification of a patent application publication is based on the application’s main inventive concept using the claims as a guide”; and “At least 9 weeks prior to the projected publication date, applications are classified using programs designed to enable entry of certain data required for publication of patent applications.”
Also consider MPEP 903.07, which states: “When an application is passed to issue, it is the duty of each primary examiner to personally review the original classification”, and goes on to describe in painful detail how this duty should be fulfilled.
With that classification strategy in place, what process exists in the USPTO to classify the above-described application correctly? To what extent is it accurately employed? To what extent is the process described in MPEP 903.07 properly employed to classify the resulting patent correctly?
Example 2: Same claims, but application written in more typical/straightforward terms. Same questions.
Example 3: Same claims, but application written in more typical/straightforward terms, and, via preliminary amendment submitted soon after initial classification, lexicographically-creative claims cancelled and claims to completely different invention submitted. Same questions.
Example 4: Same claims, but application written in more typical/straightforward terms, and, via preliminary amendment submitted soon after application publication, lexicographically-creative claims cancelled and claims to completely different invention submitted. Same questions.
For other challenges facing the classification/search scheme, see link to patentlyo.com, and particularly the 1st and 4th paragraphs in the posting by Public Searcher DIP on Feb 13, 2009 at 10:12 AM.
“You speak of saving client’s money, but you don’t seem to consider that a search may make a client realize that a certain idea just isn’t worth pursuing patent protection for. When I get a batch of 5-10 disclosures from a client, I often kill at least one of them by finding dead on 102 art, the kind E6K sprays his shorts over. Sometimes in a published app by the very same client.”
How much you bill your clients for those searches? Even an average search firm is going to charge $1K, at the least. Add in your time to review the, disclosure, identify what you think you need to search, and then review the results, and you’ve spent $2K. OK when you are drafting $20K apps, but when drafting $6K apps, you’ve blown 1/3 of the budget with likely nothing to show for it.
Unless you are knocking out a substantial percentage of disclosures, then the client is not getting their money’s worth.
The problem with many attorneys is that they don’t have very good sense of what is a high value added activity versus what is a low value added activity. Granted, performing a search is a value added activity, but it is a low value added activity compared with actually drafting the patent application.
Litigators are well-known for this. They’ll blow 80% of the client’s budget on low-value added activities. However, this is how they make their billables.
I go back to my “extended warranty” analogy. Having the extended warranty is nice when the product breaks, but on average, the product doesn’t break and when that happens, you’ve spent your money and gotten nothing more for it than a little piece of mind.
In the patent realm, considering the impreciseness of doing a search, particularly before the claims are even drafted, any search performed should not give a patent-savvy client that much piece of mind, even if the search didn’t find anything.
If a well-informed client asks you to do the search — great. They know what they want, so give it to them. Unless the client was completely clueless as to the prior art and/or the client needed a lot of hand-holding, I wouldn’t recommend performing a search.
“mis-classified”
LOL
Nice try Mooney. If it uses certain terms it will be classified a certain way. I don’t think that amounts to “mis” classification. But if you don’t search those areas, you have mis-searched.
Gratzi, nice interesting new name professor Mooney.
Sorry to disappoint you, well actually I’m not sorry at all, but pds is not me.
Just Sayin’ “At least I only use one name at a time”
LOL. Yes, that is the least you can do, CaveMan. Where did you hide pds, by the way?
Even when we pay big $$$ for a top-quality prior art search, we can’t avoid the substantial risk that 102(e) art or some way off-axis art (that which uses non-traditional terms to describe/claim a concept, and is thereby also mis-classified) will be found and used against our app/patent by an examiner/opponent.
Add to that the vast uncertainty wrought by KSR as to the materiality of previously marginal references, and it becomes clear that “An application is more…” makes a very serious point.
Different arts have different numbers of hours per production unit, which is measured to disposal. Disposal can be a very long path. If you want a good art search which will protect you during litigation (i.e. yours is not one of the 95% of applications which make zero money–and messrs. and madames attorneys, would you please stand up and bow for being responsible for that aspect of patent examination quality, as well as for examiner-shopping identically worded limitations across 5, 15 applications sent to different arts?), the 20-ish hours is of negligible use, we need double that. And I am one of the VERY few whom patent attorneys name to SPEs for good searches, a fact to file with that hour estimate, please. Some arts are asked to take on applications from other arts because that unit has a backlog. It is traditional to stick beginning examiners with the dogs nobody wants. It is also traditional to promote “people like me”, which at the SPE level usually does not include an IP law degree, though other areas in the office, especially senior management, has many with law degrees. Though the TQAS pass on errors they see, rarely do they come over and talk to the examiners or do a town hall.
By the way, different arts receive different numbers of hours to examine. And that 20-ish number of hours cited is until disposal, which may include amendments, second non-finals when office guidance changes (as recently has been happening on the 101), numerous alerts to attorney that they are trying to add new matter, interviews with inventors not familiar with the process or unsophisticated at the art, hour-eating help to pro ses, and of course the whole appeal path, down time due to tools and an overburdened and spottily unknowledgable helpdesk staff, and now use of the public help process, and so forth. One examiner says that one SPE says not to go to the website where the public posts relevant NPL, because it is a work in progress and examiners shouldn’t be influenced while searching.
Most of us try to be reasonable, really. And some people have forces beyond their control shaping what you see. Please try to be as understanding as we usually try to be, especially the foreign nationals who have their own legitimate reasons for what you see as poor quality sometimes. Spelt political pressures.
To An application is more about the invention than the prior art:
I disagree with you about the value of searching. While a well drafted specification drafted in a vacuum ought to SUPPORT the same set of allowable claims as a well drafted specification drafted in light of a proper search, the claims that are drafted in a vacuum will NOT be the same as claims drafted in light of a proper search in most instances.
You speak of saving client’s money, but you don’t seem to consider that a search may make a client realize that a certain idea just isn’t worth pursuing patent protection for. When I get a batch of 5-10 disclosures from a client, I often kill at least one of them by finding dead on 102 art, the kind E6K sprays his shorts over. Sometimes in a published app by the very same client.
My wallet hates me doing that, but the clients thank me every time.
Sorry, accusations of inequitable conduct
In business methods, Applicants cite references unrelated very very often to avoid any accusations for inequitable conduct, such as have been leveled against Messrs Alderucci’s and Boundy’s firm. Applicants seem to cite few references otherwise, adn even frewer which are relvant, and rarely find the patent references examiner applies during prosecution. Examiners can usually reject on references quite old, and also receive arguments about using ancient software techniques to an interface or the like. Difficult to tell if attorney is genuinely technology-ignorant or multiplying fees. One examiner of many years’ of experience asserts that it is never never necessary to allow, as what is cited is never innovative at all.
Hi Dennis,
I usually enjoy all your columns. Part of the analysis along statistics may need to be revisted and reanalysed. From a cursory look at the analysis, Big Pharma companies don’t show up in your list. Your list is mostly baised towards electronic companies. The conslusion that you have reached below i.e electronic companies cite less does’t support the chart and data that you are showing. Citation analysis is not as straight forward and is easy to make mistakes.
Cheers-
Curious george
“The next graph shows the average number of applicant-cited references for various top-patenting companies. The size of the blue bar reflects the number of applicant cited reference on average, for that assignee’s Jan-Feb 2009 patents. (Scale at bottom). The graph is sorted so that companies with the greatest average number of cites are shown at the top. Although this is not strictly true, the difference between companies is largely a difference in areas of technology. Thus, companies patenting electronics generally cite less prior art than others.”
Re: McKesson – Is anybody actually citing and submitting Office Actions, Notices of Allowances, Bored decisions, etc. from related applications?
With all due respect to those who differ, a nod of sincere appreciation to the clear and detailed rationale provided in the posting dated Feb 22, 2009 at 04:10 AM.
Application, with all due respect, do you think you’re holding some kind of freakin seminar here?
I’m not saying I necessarily disagree, but your words/per/salient point ratio is kind of high. I hope you don’t charge your clients by the word.
“. . . unless, of course, the prior art teaches everything that’s in your ‘solid’ specification . . .”
As I said, once the ‘solid’ application has been written, then let the chips fall where they may. If the prior art teaches EVERYTHING, including all of the dependent claims, then what would you have added or done differently had you known that this prior art existed?
Once you’ve written a ‘solid’ application, the only disclosure that could possibly be omitted are narrow embodiments that likely have very little commercial value. Thus, the only thing you could have added is something that wouldn’t save the application anyway.
Searching, analyzing the search, talking about the search with the inventors, redrafting the application in view of the search all suck up time (and money) from a finite set of client resources. Additionally, these activities do little to help describe/enable the applicant’s invention, which is the purpose of a patent application.
An application that was well-drafted without looking at the prior art should produce the same set of allowable claims as an application that was drafted while having a looking at the prior art. As such, the major benefit for doing a search would be to stop the preparation of an application. However, the client will spend far more money on searches than they money they recoup by not filing an application.
This is why many clients do not want a search performed. After performing a cost/benefit analysis on searching, their conclusion is that searches are not cost-effective.
I view attorneys “selling” clients on patentabiliy searches then same way I view electronic stores selling customers on extended warranties. Sure, it is nice to have the extended warranty/search if things go bad. However, in the aggregate, the client/customer ends up paying more than if he or she didn’t get the extended warranty/search. Personally, I am loathe to waste my client’s money, which is why I don’t recommend them.
“unless, of course, the prior art teaches everything that’s in your “solid” specification ”
that’s correct anastasia.
” You’re really funny, especially when you go after Dennis for allegedly being “too liberal.” ”
Thanks, unlike you, I don’t “go after” people. I just try to shine a little light into the fever swamp.
And I don’t make half baked conclusions to promote an anti-patent agenda.
I’m sorry, let me clarify. What I meant is most here agree with me and 123 that you are a sideline watcher that doesn’t know what the fck you’re talking about.
At least I only use one name at a time, and I don’t troll my own blog.
Our Resident Nutjob: “I don’t think I’m alone when I say that most of “us” agree with 123″
Then you’re wrong because nobody, including you, has come forward to say that he or she agrees with 123’s absurd bullcrap that Examiners don’t cite references listed in an IDS.
There are a few regular commenters here who don’t change their user name every week in an effort to make their psychosis less palpable to the rest of us. You’re not one of those commenters, obviously. But keep it up. You’re really funny, especially when you go after Dennis for allegedly being “too liberal.”
“Claims can always be amended. The specification cannot. Spend the time and money drafting a solid specification and it doesn’t matter what the prior art teaches.”
. . . unless, of course, the prior art teaches everything that’s in your “solid” specification . . .
“I have also heard several attorneys comment that Examiners do not cite the best prior art, which was cited in the IDS.”
What is your point? You have no point. You cannot draw any conclusions based on your anectdotal evidence of what “several” attorneys comment.
Just like with the “speedy” word games you and yours are trying to play. You understand exactly what I’m trying to say and did in the first instance. Whether I said speedy examination, or get it examined faster (which is, btw, also speedy examination) is besides the point. I suggest moving your app to the front of the “examiner wants to work on it” line by doing what you know will get it there. Do it or cry more.
Get your ridiculous sht out of here please. Oh, and while you’re at it, get it out of your professional responses too please. It makes me feel bad to be so dam condescending with you mor ons every day.
“I have seen way too many times legal firm policies that run exactly to writing applications in a vacuum and ONLY dependent on the client statement of what is prior art – and the previous commentators additional statement of ‘Eventully, when you do this long enough, you have to rely upon your clents know what exists in the prior art.’ exemplifies (IMO) a clear dereliction of duty that disgraces our sanctioned profession.”
Get off your high horse. As somebody else put it, unless you show were the law imposes a duty to search the prior art, then you are just flapping your gums and making wind.
You can only do a solid search after you’ve drafted your claims. By the time you’ve finished up the claims, you are probably 90% finished with the application.
OK. You’ve just spent $6K of client money drafting an application and then you do your “ethically-imposed” search and you find solid 102 art on the dependent claims. What next? Are you going to search all of the dependent claims as well? With this 102 art, you incorporate some limitations from the dependent claims. Do you search again and then redraft? What happens if you find possible 103 art? Do you want to address it in the Background of the Invention? Should you bring this art to the inventor and let them describe it?
With all of this, you’ve added another $3K to the application after you told the client that it was going to take $6K to draft the application. Of course, you could have told the client it was going to take $9K to draft the application, but you only spent 2/3 of the money actually describing the invention, and you spent the other 1/3 of the money doing the Examiner’s job while charging the client a lot more to do it.
Clients want solid applications, and they would rather let professional searchers (i.e., the Examiners) do the search. It saves time and money and if the application is well-drafted, it doesn’t matter if the Examiner finds that same 102 art for the independent claims. Claims can always be amended. The specification cannot. Spend the time and money drafting a solid specification and it doesn’t matter what the prior art teaches.
Unfortunately, cost is an issue for almost all applicants. The “perfect” application would cost 2x-4x what the average application costs. That being said, the first thing that should go is the search of the prior art.
“That would be ‘speedy examination’ jakas. Start thinking broadly instead of narrowly and you might have less of a problem with the way examiners beat you down repeatedly.”
Ignorance of the English language is a classic trait of Examiners. We might get better examinations out of English majors. At least they might actually take the time to read the claims and try to understand why one word was chosen over another.
The ability to distinctly claim an invention presupposes that Examiners give words their distinct meanings.
BTW: I have also heard several attorneys comment that Examiners do not cite the best prior art, which was cited in the IDS.
You and MM — two lovebirds in a nest. I couldn’t think of two people that deserved each other more.
“SpringerLink and ScienceDirect, ”
Srsly, we need those two.
“Actually, you said didn’t say “for the sake of speedy examination,” you said to get examined first.”
That would be “speedy examination” jakas. Start thinking broadly instead of narrowly and you might have less of a problem with the way examiners beat you down repeatedly.
“Regardless, only an Examiner with an ignorance of the real world of patents would suggest that an applicant draft an important application just so that it would be taken up earlier by an Examiner.”
No, an examiner telling you how to get around the problem you’re bitcing about would be the one to suggest that. You don’t like having to wait on an app to get examined? Then draft accordingly. Dmbas.
“Ahem, um, Mooney, who, exactly, is this “we” that you’re talking about. ”
That would be me and him dmbas.
“I don’t think I’m alone when I say that most of “us” agree with 123″
Oh, really? You agree that examiners have (all but) never rejected you over art you submitted in an IDS and that you feel comfortable extrapolating from your own experience enough to say that this is generically the case for a good portion of examiners? If you agree, you’re dmb. There’s no two ways about it.
Kindly but your dmb flamer as out of conversations that you don’t even know wtf is going on in. Thanks in advance.
Dear god, if attorneys that I actually work with commented in this section then ridiculousness like that which is spouted in you alls comments above wouldn’t even ever get any attention, and they sure as f wouldn’t be agreed with. But, I guess for the most part, you’re the bottom of the barrel.
crumbs, I appreciate your candor. I suspect we’re not that far apart in practice, but I can’t join in your condemnation of the statement: “Eventually, when you do this long enough, you have to rely upon your clents to know what exists in the prior art.” I agree with it. When discussing an invention disclosure with an inventor, I ask detailed questions to determine which features the inventor believes are novel. And of course I bring my existing knowledge to the table. (That’s where the “when you do this long enough” comes in.) But if I feel technically competent to describe the invention, I don’t substitute my judgment for the client’s with regards to how much searching for prior art should be done. I certainly don’t believe that some obligation to do so flows from Sections 102 and 103. So where does this obligation come from?
You seem unwilling to accept that there is a difference between a thorough understanding of the current state of the art and the technical competence required to adequately explain an invention so that a PHOSITA can understand it. I only need the latter to meet my ethical obligations with regards to technical competence. The fact is that I am not a PHOSITA in many of the specific fields in which my applications fall. Neither the law nor my ethical obligations require me to be. I actually think it’s a bit dangerous for attorneys to assume that they’re PHOSITAs in any given technical field, whatever the level of searching they’ve done.
Leo,
Thanks for your feedback – it does appear that I misunderstood your position.
Your quote “If I need additional technical background, I go find it, and disclose what I find as appropriate.” is exactly the vacuum filling work that I allude to. Does this work fall under the ethical duty regardless of what a client is willing to engage in (e.g. search parameters)? And if you knowingly do not do this work, based on client wishes, have you compromised your ethical duty?
I am not implying that a search is always required – only that a search is required if needed to understand PHOSITA position in the art being applied (it’s a whole ‘nother question to consider different perhaps non-analogous arts that may “likely” involve solving a similar problem that KSR helps open the door to). I include in a de minimus search a “cataloguing” if you will, of your own knowledge in the field (and what may serve as the non-vacuum state).
“Of course I can’t write an application in a vacuum,…”
I have seen way too many times legal firm policies that run exactly to writing applications in a vacuum and ONLY dependent on the client statement of what is prior art – and the previous commentators additional statement of “Eventully, when you do this long enough, you have to rely upon your clents know what exists in the prior art.” exemplifies (IMO) a clear dereliction of duty that disgraces our sanctioned profession. The previous poster falls back to applicant’s duty (under 35 USC), yet this thread is addressing the legal representative’s duty – not the applicant’s. To imagine the legal representative as not having a duty beyond the applicant’s duty is ignorant at best and dishonest at worst.
Perhaps phrased in a different manner, would it be considered that our duty, even in merely writing an application, extends beyond an applicant’s duty, and necessarily include considerations of prosecution (e.g. meeting not just 112, but 101, 102 and 103)? In this light, can we ethically accept a client stand if that stand involves applications in a vacuum?
“if you let the client dictate your ethical boundaries, you then by definition don’t have ethical boundaries and you should not be practicing.”
I agree, and if my comments are read in their entirety, I never suggested otherwise. Please don’t put words in my mouth.
“- mighty big “if’s” and completely ignores the point about writing in a vacuum.”
Those are indeed critical “if’s”. But those are precisely the factors that determine my ethical responsibilities. Of course I can’t write an application in a vacuum, but you proposed an ethical duty to “provid[e] an application with a reasonable chance of being approved.” In context, you appeared to be suggesting that a prior art search is always required.
I don’t write applications that I’m not technically competent to write. If I need additional technical background, I go find it, and disclose what I find as appropriate. But as the last commenter said, you don’t need to know the full scope of the prior art to write an application that a PHOSITA can understand.
“How can ANY application written in a vacuum comply with this ethical obligation? It would seem that you cannot offer to NOT perform at least a de minimus search, that the option of no-search-written-in-a-vacuum is simply not an (ethical) option.”
Applicant’s duty is to disclose and enable his invention per the 1st paragraph of 35 USC 112. There is no need to look at prior art to accomplish this. A well-written application will cover all aspects (broadest to narrowest) of what Applicant considers to be the invention. Draft indepependent claims comensurate with the broadest aspects and dependent claims comensurate with the narrower aspects and let the chips fall where they may.
Sure, it is nice to know the prior art, particularly if you are trying to design around it. However, knowing the prior art isn’t necessary to draft a solid application.
Eventully, when you do this long enough, you have to rely upon your clents know what exists in the prior art. Depending upon the industry, they are the ones that are looking at their competitors products and going to conferences.
“I don’t think you understand, 123. We’re telling you that you are full of crap and we’re right and you are wrong. ”
Ahem, um, Mooney, who, exactly, is this “we” that you’re talking about.
I don’t think I’m alone when I say that most of “us” agree with 123, e.g. that 99 times out of 100, you don’t know what you’re talking about. And that 100th time, well, even a stopped clock is right twice a day.
“Um, I believe I said for the sake of speedy examination. But considering you’re too blind to see that, carry on. Yw btw.”
Actually, you said didn’t say “for the sake of speedy examination,” you said to get examined first. Being examined first doesn’t necessarily mean speedy examination. Like most Examiners, you don’t choose your words carefully or well.
Regardless, only an Examiner with an ignorance of the real world of patents would suggest that an applicant draft an important application just so that it would be taken up earlier by an Examiner.
Leopold,
a few questions/comments if you don’t mind:
“The client gets to define the bounds of my representation.”
– only to the extent that you let him – if you let the client dictate your ethical boundaries, you then by definition don’t have ethical boundaries and you should not be practicing.
“…and if I’m competent to write an application that meets the requirements of Section 112, and if I can present the claims in good faith, then I’m set.”
– mighty big “if’s” and completely ignores the point about writing in a vacuum. NOT writing in a vacuum pre-supposes that you need to understand what PHOSITA understands (not possible if operating in a vacuum) and the part about “presenting claims in good faith” is meaningless if good faith is absent ethical considerations (and not your client’s ethics).
You may recall from my last episode, I took issue with the article’s unsupported conclusion that “companies patenting electronics generally cite less prior art than others.”
I would now like to take issue with the next unsupported conclusion made in the article:
“Non-patent literature is an important category of prior art that is largely missed by examiners, and the current information disclosure system does a pretty good job of getting more of that type of art in front of the examiner than he or she would otherwise see.”
Non-patent literature is available to and is routinely cited by examiners. Often times however, patent references provide better disclosure and are probably more persuasive. Note the rules of incorporation by reference, which allow patent documents to be incorporated by reference for essential matter but not non-patent literature.
The “take away” is that examiners prefer to cite U.S. Patent documents when available. Its true that sometimes examiners can get lazy and not check the foreign or non-patent documents, but I can guarantee you that most half-decent examiners, notwithstanding 6, will check non-patent literature if they can’t find good U.S. Patent or Patent App. art.
The second part of the statement above, “the current information disclosure system does a pretty good job of getting more of that type of art in front of the examiner” I do not understand at all. How does the current system “do a good job” of getting art in front of the examiner? Either the applicant cites non-patent art or doesn’t the manner of doing so hasn’t really changed too much and I don’t see how it has any effect on getting anything in front of the examiner.
“Don’t you have an ethical obligation – regardless of the client’s desire to pay for a search – of providing an application with a reasonable chance of being approved?”
I don’t know about 123, but I don’t. The client gets to define the bounds of my representation. If my client is informed about the pros and cons of a literature search, and if I’m competent to write an application that meets the requirements of Section 112, and if I can present the claims in good faith, then I’m set.
Your “willful ignorance” standard falls apart with any scrutiny. If I do a 15 minute Google search, I’m remaining “willfully ignorant” of essentially everything that’s not apparent from the titles that pop up. How do I know when I’ve searched enough to meet this supposed ethical obligation?
“I always spent 45 minutes to an hour doing keyword searches at least, to see if I could find a straight 102 for the simple inventions or at least something from which I could crib a background. ”
And I’m guessing that Mooney, er I mean, Hutz, or whoever never kept track of those little searches and if the record showed that the references that he “cribbed from” were material and he didn’t cite them, his firm is going to be in hot water with their malpractice underwriter. Chances are, if he cribbed from them they are relevant.
There are times when it is better not to know anymore than your client’s search department tells you. Then again, this is not the first time that Mooney/Hutz/TrollerOfMyOwnBlog has given recommendations that could easily be considered traps for the unwary.
123,
Don’t you have an ethical obligation – regardless of the client’s desire to pay for a search – of providing an application with a reasonable chance of being approved?
How can ANY application written in a vacuum comply with this ethical obligation? It would seem that you cannot offer to NOT perform at least a de minimus search, that the option of no-search-written-in-a-vacuum is simply not an (ethical) option.
“Willful ignorance of the prior art” is not a standard (unless you think it falls it the common sense portion of KSR), but maybe it should be. After all, an application writer MUST be concerned with PHOSITA, and PHOSITA certainly is the antithesis of willful ignorance.
I’d like to see the breakdowns based on class. I would guess 25% of the stuff I cite are NPLs.
“Just so you know, most of the NPL you find on Google Scholar is only available to you because you’re using a recognized PTO ISP address. On the outside, most of those references have non-available links and expensive services/time has to be used to figure out whether they’re good.”
Sometimes. There’s two solid NPL host sites that the USPTO doesn’t subscribe to, SpringerLink and ScienceDirect, that I find potentially solid (based on the free preview) references on all the time. If I can’t find another hosting source of that specific article, I draft the rejection with a weaker reference.
“Have you ever had anything of value provided to you by the PLUS system?”
Yes. I run it for every application and review the top 10-20 results. In about 5% of the applications I get a 102 or a solid primary. All in about 10 minutes. Of those applications, and without PLUS, I would have had to spend longer than 10 minutes searching in 50% of them.
“What exactly are the ‘inherent risks’ of drafting a patent in a vacuum? That you’ll be rejected?”
Maybe that you’ll be forced to amend the claims and thereafter get slapped with a 112, first paragraph “new matter” rejection because you don’t have proper support for making such amendment. If your client is operating in a “crowded” area, wouldn’t you want to know what else is out there before you sit down to draft the claims??
“‘Willful ignorance of the prior art’ – I haven’t heard of that standard, what rule or case does it come from?”
It comes from experience and good business sense. How are you competent to represent your client when you don’t know the art?
“If I were your client, and you bill me for your paralegal’s time for filing an IDS, I’m going to want to know what references you listed and where you got them from, and when you tell me you performed a search after I told you I didn’t want one performed, I’d fire you.”
I never said to perform a search after the client explicitly told you not to. I said that I’d explain the risks of not performing a search and let the client make an informed decision before proceeding.
Anon: What exactly are the “inherent risks” of drafting a patent in a vacuum? That you’ll be rejected? Newsflash: That’s going to happen, one way or the other. “Willful ignorance of the prior art” – I haven’t heard of that standard, what rule or case does it come from?
If I were your client, and you bill me for your paralegal’s time for filing an IDS, I’m going to want to know what references you listed and where you got them from, and when you tell me you performed a search after I told you I didn’t want one performed, I’d fire you.
“My point is, once you begin searching for and reviewing references, you open the door to all sorts of obligations and potential pitfalls, and I wouldn’t force those risks on a client who has expressly refused a search.”
I hope you’re very clearly explaining to your clients (preferably with written confirmation) the inherent risks that come with drafting an application “in a vacuum” with willful ignorance of the prior art.
“I have never had an examiner base a rejection on a reference listed in an IDS, even though the listed references are usually a heck of a lot more relevant than the art they do cite. They CAN cite the listed references, they simply DON’T.”
I thought you didn’t submit IDSs? In any event, IF this is true (which I sincerely doubt), then you are the only patent attorney on the planet that can claim this.
“I’m sure very few attorneys reviewed all of their patentability searches and opinions in pending cases immediately following KSR”
I don’t think this kind of law change would affect which references I would submit to the PTO. If I was relying on TSM to establish that some combination of references would not invalidate my claim, I’d still want the PTO to see those references involved in the combination.
123: “That’s great, except you clearly don’t have any experience and know nothing about patent law.”
I don’t think you understand, 123. We’re telling you that you are full of crap and we’re right and you are wrong. Are you asking us to pull a prosecution history from PAIR and prove it to you? I mean, go ahead and ask. Please. Make our day.
Lionel Hutz: What about Just Visiting’s point that once you begin reviewing references you have to keep revisiting those references as prosecution progresses or as case law changes. For example, I’m sure very few attorneys reviewed all of their patentability searches and opinions in pending cases immediately following KSR, but everyone should have because any number of references they earlier dismissed as irrelevant might very well have suddenly become relevant. My point is, once you begin searching for and reviewing references, you open the door to all sorts of obligations and potential pitfalls, and I wouldn’t force those risks on a client who has expressly refused a search.
Mooney: “In my experience, they don’t care where the ref comes from.” That’s great, except you clearly don’t have any experience and know nothing about patent law.
I have never had an examiner base a rejection on a reference listed in an IDS, even though the listed references are usually a heck of a lot more relevant than the art they do cite. They CAN cite the listed references, they simply DON’T.
“And on another note, when you’re back in your office on Monday (hopefully not tomorrow), please see if you have any references published after Feb. 1, 2008 in the EP database; after Oct. 1, 2008 in the JP database; or after Dec. 19, 2008 in the Derwent database. If not, please complain loudly. ”
I think you brought this up the other day, and I posted that I could find all the stuff you asked about, but D’s site ate my post and I gave up.
6 “I don’t know any examiner who shy’s away from using an IDS reference.”
Likewise. In my experience, they don’t care where the ref comes from.
“Examiners have always seemed reluctant to cite references disclosed in IDSs. I can only guess that they assume any reference disclosed by an applicant doesn’t invalidate the claims or else the applicant wouldn’t have filed the claims in the first place (or, if the reference is discovered after filing, would have amended the claims to avoid the reference). Anyway, that’s why a lot of attorneys like to submit long IDSs – because anything in them is generally safe from being cited against the claims.”
I don’t know any examiner who shy’s away from using an IDS reference. That’s the stupdest thing I’ve ever even heard suggested on here. If you claim the prior art then you will get busted, IDS or not.
“Dumb/water them down for the sake of Examiners — nice suggestion 6.”
Um, I believe I said for the sake of speedy examination. But considering you’re too blind to see that, carry on. Yw btw.
6, Have you ever had anything of value provided to you by the PLUS system?
And on another note, when you’re back in your office on Monday (hopefully not tomorrow), please see if you have any references published after Feb. 1, 2008 in the EP database; after Oct. 1, 2008 in the JP database; or after Dec. 19, 2008 in the Derwent database. If not, please complain loudly.
“Just so you know, most of the NPL you find on Google Scholar is only available to you because you’re using a recognized PTO ISP address. On the outside, most of those references have non-available links and expensive services/time has to be used to figure out whether they’re good.”
I am aware, but I can find plenty of good refs from right here at home as well.
I may be off base here, but here’s why I think the US clings to IC.
Patents, in most peoples’ minds, are considered monopolies, whether this is accurate or not.
For the most part, monopolies are considered bad things. That’s why the Antitrust Division of DOJ exists.
If there is ANY reason not to grant, or enforce, a monopoly, that is a good thing.
ANYTHING that happens during patent prosecution that is not pristine is, in some peoples’ minds, enough to warrant eliminating the monopoly.
Whenever a reference appears during litigation that the applicant knew about and the examiner didn’t, it is assumed that something fishy was going on.
Using that mindset, IC is a natural in front of juries.
To combat this mindset, the CAFC reverses IC holdings so often and sets a high standard for IC because if it didn’t almost every patent could be knocked out for something that happened during prosecution.
“Are we the only country with such an obligation?”
Lionel,
Unfortunately, I think we are. But citation of references isn’t the main problem; inequitable conduct and the nebulous standard for it is. In the interest of “world patent harmonization,” I wouldn’t mind at all if we simply gutted IC as a defense, and let the patent rise (or fall) on its merits.
The simplest solution is to eliminate the need for disclosure and rely upon Examiners to do their job. Are we the only country with such an obligation?
I disagree with 123 with respect to searches. When I worked in a law firm, I always spent 45 minutes to an hour doing keyword searches at least, to see if I could find a straight 102 for the simple inventions or at least something from which I could crib a background.
In some cases it helped me understand the invention even better and sped up my drafting of the application. The IDS is free. I have never submitted more than 10 references, except in a divisionals or continuations where I was submitting a mix of patents I previously submitted plus new ones.
I have also filed a number of cases where I submitted nothing because I was unaware of anything and the inventors were unaware of anything and I did not find anything close with a quick keyword search.
Also, there is so much art out there, that KSR allows the examiner to buy time in a case where every single pertinent reference is not found the first time through. Yes, the MPEP says that examiners do a complete and thorough search on the first action, but with time restraints on examiners, also to mention the fact that humans aren’t perfect searching machines, examiners being human, the best references may not be found until later. That being said, other initiatives could be taken, such as a more thorough hiring practice that matches the skills of potential employees to already successful employees, already successful employees judged not by their GS level, but by the quality of their work.
It’s called a “duty” for a reason. Instead of struggling to understand what is material, you could just be honest with what is laid before you. Of course, when money is involved, everyone can become selfish.
There was a time where “consideration” of the reference in an IDS by the examiner inoculated the reference against being considered in a reexamination request by another. The law has changed.
If the application and claims are drafted in the light of the applicant’s knowledge of the “prior art”, then the reference submitted are, in the applicants judgment, not relevant to the patentability of the invention claimed. One can only say that in an abundance of caution they are submitted in the case the the examiner takes a different interpretation of the reference.
Indeed, as the field becomes crowded, the need for this disclosure would seem to increase, even if it could be argued that almost all of the references, after consideration by the examiner, are not relevant to patentability.
The issue of “counts” should not be the basis for discouraging the disclosure of that information of which the applicant is aware, and which the examiner MAY consider relevant.
Sagnac,
Examiners have always seemed reluctant to cite references disclosed in IDSs. I can only guess that they assume any reference disclosed by an applicant doesn’t invalidate the claims or else the applicant wouldn’t have filed the claims in the first place (or, if the reference is discovered after filing, would have amended the claims to avoid the reference). Anyway, that’s why a lot of attorneys like to submit long IDSs – because anything in them is generally safe from being cited against the claims.
Here is an idea which has helped re major clients who think they are saving money and getting quality patents by not paying for a prior art search (and thus having their applications written in a prior art vacuum with inadequate spec and claim suport for distinctions over the prior art):
Mutually agree that if that O.C. finds killer prior art on its own for X proposed applications that said O.C. will be rewarded with 2X more applications.
Surprised but glad to see Kimberly-Clark at the top of the list.
When I was there, there was also a culture in the technical community of taking pride in knowing the literature, and that often resulted in lots of help from the inventors in providing material references. K-C also has a terrific search team, good search resources for the technical community, a real desire to be thorough in disclosures, and lots of internal training to help inventors understand issues like the duty to disclose. I think all these are best practices for large companies, anyway, that can contribute to patent quality.
I have seen a little pushback from the PTO when IDS was large. No safe way to prioritize documents, unfortunately, but many times I wish I could say, “These first 10 refs are most interesting. Others are more remote but still potentially material.” Any suggestions?
Would anyone venture to comment on the following:
No matter how many references I cite, the examiner always uses the references that he/she found in making the rejections.
“Maybe you and yours should stop the practice of making ‘important’ patents long and complex and instead breaking them up into short and to the point apps.”
Dumb/water them down for the sake of Examiners — nice suggestion 6.
“The test is whether a reasonable examiner would deem a reference to be relevant; the fact that you can make an argument for non-obviousness is not definitive”
Materiality can be based on a number of standards. The broadest one is that information is material if a reasonable examiner would consider the information important in considering patentability.
In other words, the reference need not establish a rejection of a claim to be considered material. Additionally, as arguments are made, references identified, and claims are amended, the importance of previously undisclosed reference changes.
If you have a stack of references that you elect not to submit, then you have to reassess that stack during prosecution. If you do submit the stack, then even if you fail to review them during prosecution (or simply review them and miss something) then it will be more difficult to demonstrate that your failure constitutes inequitable conduct.
Anon:
“Even after KSR, you can almost always make an argument why something is NOT obvious.”
The test is whether a reasonable examiner would deem a reference to be relevant; the fact that you can make an argument for non-obviousness is not definitive. Having said that, I have no idea what the mythical “reasonable examiner” might be like since I’ve never dealt with one, so I agree with the notion of leaning toward not disclosing unless the relevance is very clear. But I hope you don’t, as a general rule, refuse to list any potential 103 references on your IDSs.
“For purposes of both 102 and 103, what’s ‘prior art’ on the day the application is eventually examined is the same ‘prior art’ on the day of filing – that much does NOT change.”
Yes, but what is RELEVANT prior art does change. Prior to KSR a prior art reference that did not meet the TSM test could be relatively easily dismissed; subsequent to KSR the same reference might kill the application altogether. That’s what I meant by the rules of the game changing so quickly.
6: Just so you know, most of the NPL you find on Google Scholar is only available to you because you’re using a recognized PTO ISP address. On the outside, most of those references have non-available links and expensive services/time has to be used to figure out whether they’re good.
Overall though, I agree with your thoughts on the IDS and applicant submitted art.
Lowly, you need a new search service if they send you 50-100 refs for a patentability search! Talk about throwing in the kitchen sink. The whole point of outsourcing a search is to leverage your more valuable time.
“Yours (and JD’s) comments assumes that the Examiner will take (the same) X amount of time on a 40- or 50-claim application as they will on a 5- or 10-claim application.”
Maybe my comments “assume” that but I don’t. Personally, I don’t favor across the board time increases for examiners.
Why?
Because if examiners are given one, or two, or however many, more hours, minutes, days, to examine applications, my prediction is that it will not improve the “quality” of Office actions one bit. Examiners will simply dispose of less applications.
If the PTO’s average expectancy is 19.5 hours/BD (which is the assumption (mis)management bases the production system on), increasing that to 20.5, or whatever, is not going to improve Office Action quality. The examiners are still going to be pumping out the typical, “Well, none of the references show feature X, but the examiner takes Official Notice that In re Boilerplate is widely regarded as standing for the proposition that it is inherently obvious to routinely optimize everything through experimentation.”
Examiners don’t need more time for that. In fact, they need less time for that.
Simply alloting more time is not a “fix” of the count system. It needs to coupled with actual reforms.
The current state of examination is exactly as others have described it. Some PTA brain washed newbie examiner who has been taught nothing but “quality = reject, reject, reject” does a succession of text searches of a couple terms from the first independent claim, cobbles together a combination of the 2 or 3 references that floated to the top of the search results, clacks away on the keyboard, is very careful not to include the word “allow,” or any of its variations, in the Office Action and turns it in. It is reviewed by a primary or SPE, who does a quick scan to make sure nothing is indicated as allowable, and it is immediately signed and then mailed out.
After a few rounds of this, the applicant gets fed up and appeals. Then a conference is held. The conferees include the newbie examiner. And two uselessdonothingknownothingdeadweightGS-15’s, like a SPE/SPRE/QAS/etc., neither of whom has 1) read the application, 2) the applied prior art, 3) the prior Office Actions, and 4) the prior responses. Then a “decision” is made.
And the process starts all over again.
Simply alloting more time for the examiners to perform this “process” is not fixing anything.
“Anon: Are you kidding? You can’t think of anything that has changed re patentability in recent years? . . . Not sure why you’re focused only on 102.”
Because your post was in the context of IDSs and why you may or may not want to submit references to the examiner. Even after KSR, you can almost always make an argument why something is NOT obvious. In the context of 102, I don’t see your problem with not searching/submitting references to the examiner in an IDS. For purposes of both 102 and 103, what’s “prior art” on the day the application is eventually examined is the same “prior art” on the day of filing – that much does NOT change.
Inequitable Conduct: A big problem between overly zealous attorneys. Why don’t you all stop slapping each other around in these vague attempts to negate patents and just concentrate on the art at-hand? The solution is not to cite 1000’s of references to the examiner in order to avoid these petty spats between over-paid prosecutors.
If the art is there and is relevant to the patentability of the claims then it is irrelevant during infringement proceedings if “inequitable conduct” was present due to lack of the client citing the reference.
This problem is here because of the bickering between prosecutors and not because of a problem with the office. Get over it.
Anon: Are you kidding? You can’t think of anything that has changed re patentability in recent years?
How about KSR and Bilski for starters? KSR calls into question the validity of every patent issued under the narrower TSM-only test – did you see that one coming? Which test did your opinions rely on immediately prior to KSR? Did you file any business method patents immediately prior to Bilski?
Not sure why you’re focused only on 102; an opinion limited to 102 issues would be almost worthless. 103 has always been the most difficult to predict, and now 101 has become equally nebulous, and these days every decision seems to hold a new surprise.
“I think we can all agree that the “count” system is flawed and should be changed. If the Applicant is charged extra fees for claims, length of application and as proposed by Dennis, a large amount of prior art then the Examiner’s time to examine should also reflect that in some way.”
I get your point, but how would one actually “police” how the Examiner is spending his/her (extra) time? Just because they’re given extra examining time for any one application does not necessarily mean they’ll use it for that application. Why wouldn’t they still be motivated to do 2/3 smaller apps in that same time? Yours (and JD’s) comments assumes that the Examiner will take (the same) X amount of time on a 40- or 50-claim application as they will on a 5- or 10-claim application. In reality, as Dennis suggests, that is not the case. If the application takes longer than the “alotted” time, Examiners (at least I do) typically takes whatever extra time they need to do the examination knowing that whatever “extra” time it takes to do the examination will be made up later when (taking LESS than the “alotted” time) examining smaller/shorter applications.
“Given that the rules of the game are changing so quickly that a patentability opinion rendered today doesn’t say anything about patentability two or three years from now when the application is actually examined, I don’t blame small clients for letting the Examiner do all of the searching.”
WTF??? I haven’t seen any amendments (or proposed amendments) to 35 USC 102 lately, so what exactly are you talking about, “the rules of the game chaning so quickly”???