Examiners Ignore Applicant-Submitted Prior Art

Professors Mark Lemley, Chris Cotropia, and Bhaven Sampat recently released a draft of their new article titled “Do Applicant Patent Citations Matter? Implications for the Presumption of Validity.” [Download Here.]

For the article, the trio analyzed the file histories of 1,500+ utility patents issued in 2007 and compared references used in office action rejections with the list of references cited on the patent cover-pages.  The objective was to figure-out the role of applicant-cited prior-art in the examination process.

Findings: Patent examiners rarely rely on applicant-submitted prior-art when making rejections.  Only 13% of the prior art used in office action rejections was applicant-submitted (despite the fact that 74% of cited references are applicant-submitted). Generally, the study found that examiners “effectively ignored” applicant-submitted prior art regardless of how few or how many references were cited; regardless of the timing of the IDS filing; and regardless of whether the submission included an EPO search reports identifying the references as “X-references.”

Implications: The authors suggest several implications of their findings: (1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway); (2) That the presumption of validity associated with patents may be too strong; and (3) That studies based on patent citations likely lack merit.

Notes: I have privately e-mailed Professor Lemley with several comments on the article. Patent prosecutors will not likely be surprised that US examiners tend to rely on their own search results. However, I was surprised at the extent to which they found that this occurs.  As a matter of patent office policy, I would think that some minor changes could alter these results. For instance, examiners should be given a tool for performing text-searches that are limited to submitted (and identified) prior art references.  The office may also want to educate examiners on how to read European search/examination reports.

There are several rational reasons for examiners to cite their own prior art. Because of the backlog, PCTs, and provisional applications, US examination often begins several years after the application was originally filed.  During that interim, many references become available that were not known at filing.  Thus, it is not surprising that applicants rarely cite 102(e) prior art, but examiners cite loads of it.  There is some reason to think that this “newer” prior art is probably better because of technological developments.  It may also be true that the applicant and examiner references are cited for different purposes — namely, applicants cite references that are generally relevant to the invention while examiners are looking for references that teach each particular element in the filed claims.  A third issue is that applicants tend to modify their claims during prosecution. That modification may make their originally cited art less relevant. 

In the words of Lawrence Solum: Download it while its hot.

160 thoughts on “Examiners Ignore Applicant-Submitted Prior Art

  1. Patent litigation: agreed. Lemley may not have intended this, but he put really put a sock into one of the fundamentals of the “duty of disclosure.” If the examiners do not actually read the IDS content, the duty of disclosure is a farce; a complete waste of everyone’s time. No data could have said it better.

  2. When I pick up a case for examination, it goes like this: 1.read the claims and determine the scope. 2. read through the spec to see if claim scope is different from my first impression and to see what was actually invented as opposed to what was claimed. 3. Go through the IDS references and note the relevance of each. 4. Search, with information gleaned from the spec and IDS references in mind.

  3. Patetnly Bummer,

    Re: Vansant – I’ve known him for years and he does a better than average job because he still cares about doing a quality job. It’s rare that he gets fired up enough to post on here though. Guess he didn’t want anyway disparaging all public searchers!

    Re: PCT Searches – Two large firms do this work on a contract basis for the PTO. It is a beautiful cash cow for them with very little oversight, buy I imagine your pontificating was rhetorical and you already knew this.

    Re: Crappy 1449′s – As someone who backcites 100′s of references per week, it baffles me where the applicant gets many of their citations. Not even the worst professional searcher doing 10 minute “quick and dirtys” would call much of it relevant.

  4. Bummer, will you allow me a comment on your “dumping” insinuations?

    Those who make PCT applications must apply to the designated “Receiving Office” (RO). For Americans, it is the USPTO. Many US Applicants did that, but designated the EPO as their ISA and IPEA (their international searching and examining authority). Why that then?

    After a few years, EPO Examiners grew weary of the offensive tone with which they were assailed by US patent attorneys, in PCT Chapter II prelinimary examination on the merits. So, the EPO simply invited the USPTO to do that Ch II work, for cases filed at the USPTO.

    How do you get from there to “dumping”?

    I should explain to readers that the EPO still examines in PCT Ch II cases filed at the EPO as RO. When these cases enter the national phase they get a Notice of Allowance, straightaway.

  5. SnakeFist.

    I was all set to jump your case about:

    Obviously, if an examiner is able to rely on prior art cited in an IDS – i.e., art the pracitioner knew of – to properly reject a claim, then the practitioner is incompetent.

    until I saw your weasel word “properly”.

    With that word you have eliminated 95% of all reliance on prior art cited in an IDS cause of the BUI effect.

    Of course, if “properly” could be assumed, we wouldn’t have the mess we have, now would we?

    (Yeah, that’s a sharp stick in my idol’s eye – but his posts lately have been so bad, someone’s gotta jump start him).

  6. A couple of years ago, I noted that, in my experience, examiners almost never rely on prior art cited in an IDS. According to Mooney and 6, that was the dumbest thing that had ever been posted on this site.

    Obviously, if an examiner is able to rely on prior art cited in an IDS – i.e., art the pracitioner knew of – to properly reject a claim, then the practitioner is incompetent. Almost by definition, the art cited in an IDS shouldn’t be relevant to the patentability of the claims.

  7. Before disparaging Examiners, I think you tools should look at the post by Vansant (or whatever his name is). Limy and Co. assume all public searchers, attorneys or inventors are so unbiased that they actually perform a proper search in the first place. In fact, are all searchers as skilled as Vansant?

    Better yet, I like the part where Vansant says he doesn’t even have the claims when he searches. You see as an Examiner I had many searchers show up at my door back in the day with a brush of notes or maybe a short paragraph describing an invention. If Lemely and his ilk had any actual experience in the patent system they would understand that this is at least one simple difference why a 1449 may not have good prior art. Hence examiners won’t use it…. Besides, if the Examiner has better prior art which should they use? Is there a comparison of this in their scholarly paper?

    Of course, this is even besides the fact that if the 1449 actually had a statutory death blow, then the case shouldn’t have even been filed in the first place. I guess there are some who need the income and file anyway. It isn’t like OED is going to do anything.

    So, as this paper proposes that Examiner’s are just ignoring all sorts of fantastic prior art in order to waste time looking for something else; this because their ex parte counterparts (us) are trying to be so helpful as to serve up the art on a platter…..I think is intellectually dishonest. In fact, if not dishonest then the California Medical MJ distributors are getting great business out of Stanford.

    BRI as interpreted by the Examiner v. Applicant. Let’s see, so you get that weak search from a public searcher (not their fault) based on a quick summary of the prior art and maybe a drawing. Do you file everything in the search? Do you vet the prior art and exclude some despite the potential for IC? Do you draft the claims around the prior art? Is it really likely that the Examiner is going to even use this art in a rejection.

    So how exactly can one conclude that the lack of 1449 prior art cited by an examiner in a rejection is evidence of anything?

    Sounds to me like someone either has an agenda (maybe he just wants the gov’t to gather up all the patents and evenly hand them out…a patent welfare system), they are grossly uneducated as to the real system at hand.

    In either event, regardless of motive, this paper is in the least a fluff piece and should have never cleared the hurdle of academic review. I think it is quite an embarrassing to the authors themselves.

    For the record, now that I’m on the outside I find my self being able to anticipate the hurdles that examiners approach with examination. I can actually use my examining experience to critique my finished product and attempt to eliminate any bias. Maybe PTO registration should require compulsory PTO employment before granting a registration number to give you geniuses a crack at it.

    By the way, anyone who knows anything about international searching and PCT’s, these filings are nothing but the stepchildren of the system. Europe couldn’t do them and probably didn’t care for them since they have their own patent system to worry about, and honestly I’m sure the PTO cared either.

    So EPO just effectively dumped them on the PTO. Now there are some clerks doing them as Examiner’s are no longer responsible for doing them. hmmmm, I wonder what the backrounds are for those doing the PCT’s these days……(unless they are just stealing the actions from the work of the examiner) do they have any technical expertise? Pesky treaties!

  8. “6

    If you don’t trust yourself to do your job properly, perhaps you should find another line of work.”

    I trust myself to do it better than most. And that’s what makes your reasoning for the presumptionlol even worse.

  9. Anon wrote, “… examiners …simply told their union POPA that a professional job with …”

    With apologies to Ping, this deserves the non sequitur of the day award more than MM.

    (Not to Anon, to the concept of “unionized professionals”).

  10. ping, I too have for a while been thinking that IANAE must be a law professor. But I don’t mind. Indeed, I’m glad. You see, my scribblings are aimed not at you but at leaders of opinion.

  11. Brilliant, IANAE. For the first time, I read a logical rational explanation of the Presumption.

    And I find it to be the same as it is in Germany. Petty patents are unexamined rights and get no deference. 20 year patents are “examined rights” which do get deference, in the courts trying infringement.

    It is just that, in Germany, we all know that any post-issue challenge to validity is adjudicated by a panel of 5 specialist judges (3 are ex-PTO Examiners or equivalent) in a court that goes by the name of “The Federal Patents Court”. We know that, after that panel has heard the opposing parties thoroughly, it has the effrontery to think that it improves on the rigour of the pre-grant, ex parte decision made by the lone time-pressed PTO Examiner, and has no hesitation in reversing that decision whenever the preponderance of the evidence requires it.

  12. IANAE,

    I though it was the law itself and som eother such ramblings – oh wait – that’s when it suited you.

    Your game is still off – usually you can pull this talk outa both sides of your mouth stuff so much better. Here it only looks like you be a professor yourself.

  13. I DON”T EVEN TRUST MYSELF TO DO THAT, WHY IN THE F WOULD A COURT?

    They trust you to do it, but not in the sense that they necessarily think (or care) that you’ve done a good job.

    They trust you to do it in the sense that they acknowledge that the responsibility for that decision has been delegated to you. The presumption is a matter of principle, the principle being that a decision once made in an official capacity is not lightly revisited.

    Because we all know the Federal Circuit hates reviewing questions de novo.

  14. “1. The US patent system sets the gold standard, in that, unique in all the world, every patent the PTO issues rides out in a magic cloak of invulnerability, called the “Presumption of Validity”.

    2. Who dresses the rider in that cloak? Why, 6 of course (or one of his brothers and sisters).

    3. How does he do that? It could not be simpler. All he has to do is “do his job”.

    4. What is his job? Just speed read every word of every IDS document. Anything more? Not so far as I can gather.

    On this thread, there seems to be a perception that, if only 6 would read all the docs, the gold standard is preserved and the magic cloak retains its powers.

    My point is very simple, that even after that reading, 6 needs help from those in the art, before he can grasp the full content of the state of the art, particularly that which, to the PHOSITA, goes without saying.

    LOLOLOLs.

    Exactly Max. And that is why I don’t support the presumption o validity. The patent system was fine without it for what? More than a century? Now all of a sudden people like myself declare a patent valid and it gets that presumption in court? I DON”T EVEN TRUST MYSELF TO DO THAT, WHY IN THE F WOULD A COURT?

    Seriously you guys should tell me another lolable proposition.

    Also I note that they don’t tell you anything about this before you get hired or in your first little while here. They don’t tell your real responsibility in this job, doing as shi tty of a job as possible to make better production to get promos so as to saddle as many defendants with presumptively valid patents against them. And don’t even try to tell me otherwise, because if it were otherwise I’d be getting promos for quality.

  15. “If the prior art isn’t being addressed, then the issue needs to be dealt with. There really are only two choices: (1) Rid us of all patents and the PTO and all of patent law, or (2) fix the patent office. ”

    Or (3) carry on the status quo.

    We’ve been doing it for years, why change now? Course, we could always do (3) with the slight change where we deprive you of a certain procedural mechanism in litigation…

  16. Lets try this again Malcolm.
    Only a More-off would want a weak, invalid, Patent. People MOST PEOPLE anyway that file Patents that are Independent Inventors want a Patent that they can use to start a business, or sell to sell another. Sort of like a writer of songs. their heads are full of them.
    Only a More-off would file a Patent that a Mor-on could steal from them.
    Real people just don’t do stooopid things like that. Only people that think because they have a Patent they are somehow special, even if it’s worthless are only in it for the glory. But that’s not glory Malcolm. I think they call that co@ky with a (c). And that gets you know where, except with a good wind and being so full of hot air you might take off.
    Metis

  17. “But I’d say about 10% of IDS sign-offs are more or less just phoned in, particularly those relating to IDSs filed after the first office action.”

    That’s probably a bit high imo. I would go a maximum of 2%. You simply have to remember the sheer volume of IDSs coming in, so all the ones that you genuinely suspect that happened in are rather quickly overwhelmed.

  18. If some reference is that relevant, you should be amending around it anyway.

    This ignores the fact that clients are often simply looking for a patent and are not terribly concerned about the strength of the validity of each claim.

  19. On another note MM is right that “many” examiners no doubt do ignore references. His word “many” is rather indefinite but I doubt that the number is all that large of a portion of examiners.

    It’s not that large of a portion and of examiners and not all examiners ignore references all the time. But I’d say about 10% of IDS sign-offs are more or less just phoned in, particularly those relating to IDSs filed after the first office action.

    Is that “many”? Do the math.

  20. Do Lemley et al. have any data on whether the 13% of IDS-sourced art rejections were more likely to have come from short IDSes or long ones?

  21. The point is moot because if you know of some prior art, and it’s material to patentability, you have to submit the art.

    If some reference is that relevant, you should be amending around it anyway.

    I was an Examiner, and I always considered Applicant submitted art.

  22. I think Lemley’s article is extremely valuable for this point: the duty of disclosure is quite demanding, but there is an underlying assumption that the examiner would actually review and use the information disclosed. But it appears that almost all examiners conduct only a cursory review, at best, of IDS materials. (See the supporting post of the biotech examiner above at 9:04 AM.) This turns the whole duty of disclosure concept into a farce – particularly where the remedy for nondisclosure of references that would not be considered by the patent office regardless is to have perfectly valid patents held unenforceable.

    If the intended to undermine the presumption of validity, he has actually done something quite different: he has undermined and demonstrated the almost total dysfunctionality of the and equitable conduct regime.

  23. Do you understand that Lemley produces a constant stream of nonsense regarding why patents/copyright/trademarks should no longer exist.

    I do not understand that. I understand that he produced one recent article that confirmed all of everybody’s expectations about the problem with over-inflated IDSes, and as a result he legitimately questioned how sure we can really be that our patents are presumptively valid.

    The patent office is having problems. Short sighted nonsense doesn’t help.

    Time to bite the bullet and pare down your IDSes, then. That’s the main problem the PTO is having in this area right now, and it’s compounded by agents’ short-term nonsense about inequitable conduct and billable hours.

    The title of Lemley’s article was clearly provocative.

    Of course it was. Nobody reads the text if the title is boring.

  24. IANAE >>some crazy person starts ranting that they’re >>calling for the destruction of the entire >>patent system.

    I can always count on you to simply not get it. Do you understand that Lemley produces a constant stream of nonsense regarding why patents/copyright/trademarks should no longer exist.

    The patent office is having problems. Short sighted nonsense doesn’t help. Focus on fixing the patent office. The title of Lemley’s article was clearly provocative. I wonder if there are interests that indirectly give him money for such articles. I would guess yes.

    Let’s hope that Gate’s prediction comes true about universities.

  25. ?? aim’s got nothin to do here. Total Non-Sequitur.

    IANAE, I gotsa tell ya – your posts have been really wack lately. It’s like your concentration isn’t quite there. C’mon man – I expect better from you.

  26. Perfection is not acheived in this life.

    You might not hit the bulls-eye every time, or ever, but that’s no reason why you shouldn’t be aiming for the target every time.

  27. The accusation is that examiners don’t give IDS citations the attention they are due. If that is true, what other short-cuts are examiners taking? Are they saying they searched class/subclass xx/yyy when in fact they did not? or they did not look at those references with as much scrutiny as Lemley would like?

    There are some 7,000,000 plus US patents, many more foreigns and printed publications out the wazoo. They do not all get fully read every time an examiner examines an application. Instead, the examiner uses searching tools and his/her training and experience to define a subset for review and from that review, usually he/she narrows down the population of references to a dozen or less for close scrutiny. We all find that perfectly fine, do we not?

    If the examiner includes the group of citations by the applicant in these stages of review and scrutiny, she is doing her job.

    Perfection is not acheived in this life.

  28. The perception that consideration of a submitted a reference in an IDS requires an examiner to completely read that reference is simply incorrect. MPEP 609 clearly states the following: “Consideration by the examiner of the information submitted in an IDS means nothing
    more than considering the documents 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. The initials of the examiner placed adjacent to the citations on the
    PTO/SB/08A and 08B or its equivalent mean that the information has been considered
    by the examiner to the extent noted above.” The same definition is also found in MPEP 609.05(b). Thus consideration of an IDS could be as little as looking at the list of documents as deciding that they were all found within a database (such as the USPAT and USPGPUBS databases) that the examiner had already searched by other means, or looking at a title and deciding that the document will not be helpful

  29. Maxie,

    As for that “On this thread, there seems to be a perception that, if only 6 would read all the docs, the gold standard is preserved” line o crrp, see my post above at 9:05 PM – that was another N A I L E D post.

  30. 6: On another note MM is right that “many” examiners no doubt do ignore references. His word “many” is rather indefinite

    His word “ignore” is also indefinite.

    I don’t think many of us are saying that many examiners sign off on IDSes without looking at the art at all. I imagine something more like an examiner skimming the front cover drawings of the references with a possibly-subconscious but probably reasonable preconception that he’s not going to find much of relevance. In other words, by whatever mechanism, the art is not being fully considered.

    Lemley’s statistics, whether you believe/trust them or not, point to art not being properly looked at. They don’t suggest any sort of deliberate misconduct or negligence other than what you’d expect when you needlessly give an overworked person additional work he knows will be unproductive.

    J: An examiner friend of mine got an IDS with an anal probe.

    That’s certainly a more effective way to get the examiner to consider the IDS than electronic filing.

    NWPA: (1) Rid us of all patents and the PTO and all of patent law,

    Lemley and his gang of bozos wants to burn the system down

    What is it with you people? Any time anybody says anything short of “make patents issue without examination, and abolish the defenses of invalidity and inequitable conduct” some crazy person starts ranting that they’re calling for the destruction of the entire patent system. Must have learned that from Glenn Beck.

    Protip: Moving the US system part-way toward what other countries with a perfectly good patent system do is not the same thing as destroying the patent system.

  31. 6,

    It has nothing to do with the law mo ron. It has to do with policy.

    Whew, for a moment there I thought ya might have something of substance like law or fact. Since it be policy, let me just put it with the rest o my “policy” arguments…damm, where is that Willton file…

    Maxie,

    So, tell me folks, whether I understand it right
    Um, right there the odds are pretty good the answer is gona be “No”. This be driven by different factors at different times and it appears that this time the driver is Maxie’s jealousy and desire to take down his competition – the US patent.

    But let me throw one thing back atya: How does the glorious EPO examiner get to that pinnacle D1 reference that is the closest thing at the time of filing? How does that single one reference separate itself from the entirity of the prior art? Someone has look for it no? “ How does he do that? It could not be simpler. All he has to do is “do his job”. Tell me Maxie – does the EP do an exhaustive search and read every piece of prior art to find that closest one?

    As for “6 needs help from those in the art“, that canard died inthe claims and continuations rules fiasco. Such help aint the applicants job. Such help be illegal to make the applicant do. The royal we of applicants aint goin to do the job of the examiner – that’s why we pay examiners (well except for Ned).

    NWPA – ya N A I L E D it bro.

  32. sara – they be after me now – three posts in two days – and Iza know that the last two were clean of filter-catchin words.

    Cypher move L7-block2

  33. >>It “follows” because he came to a conclusion >>which would support that. That plainly >>examiners are ignoring relevant art irl, >>despite your best efforts to make them not >>ignore it. So, he wonders, why give the >>presumption of validity?

    6, the point is that Lemley and his gang are coming after patents and do not care about logic and fairness. The PTO has problems and those probems need to be addressed.

    If the prior art isn’t being addressed, then the issue needs to be dealt with. There really are only two choices: (1) Rid us of all patents and the PTO and all of patent law, or (2) fix the patent office.

    I think that (2) is the right way to go and all the paper that Lemley generates is trying to get us to chose (1).

    I’ll say it again: (1) move to Richmond, (2) give examiners twice the time for first action, (3) get your search system fixed, and (4) get your classification fixed so examiners can become experts in small fields.

    Lemley and his gang of bozos wants to burn the system down with their “academic” papers. You bozos wouldn’t know patent law if it bite you in the ****.

  34. Hey J, great laugh there but, has it occurred to you that that particular attorney might be deliberately including that particular piece of prior art in every single IDS he files, as his own little joke, just to see how far the Examiners are willing to go. Come to think of it, it is rather like including a few lines of junk code in the computer software arts, just to see who’s taken it.

    But What, you mean to tell me that you haven’t yet met James’s wife Sarah? Readers, is it possible that Dennis has excommunicated Sarah so now she posts as James?

  35. An examiner friend of mine got an IDS with an anal probe. He’s in the computer arts. I’m just saying, maybe the applicants are partly to blame.

  36. So, tell me folks, whether I understand it right:

    1. The US patent system sets the gold standard, in that, unique in all the world, every patent the PTO issues rides out in a magic cloak of invulnerability, called the “Presumption of Validity”.

    2. Who dresses the rider in that cloak? Why, 6 of course (or one of his brothers and sisters).

    3. How does he do that? It could not be simpler. All he has to do is “do his job”.

    4. What is his job? Just speed read every word of every IDS document. Anything more? Not so far as I can gather.

    On this thread, there seems to be a perception that, if only 6 would read all the docs, the gold standard is preserved and the magic cloak retains its powers.

    My point is very simple, that even after that reading, 6 needs help from those in the art, before he can grasp the full content of the state of the art, particularly that which, to the PHOSITA, goes without saying.

  37. “6,

    the filter nabbed my lecture on your NPE bias – suffice to say, Ida love to see where that bias has any basis in da law.”

    It has nothing to do with the law mo ron. It has to do with policy.

    On another note MM is right that “many” examiners no doubt do ignore references. His word “many” is rather indefinite but I doubt that the number is all that large of a portion of examiners. I do however know for a fact that at least one examiner I know has signed an IDS without going over it. In her particular case though she will end up going over it before any allowance. On a Sat night when you need no workflow points some sht will happen, that is a necessary evil of the count/workflow system.

  38. Now Malcolm – I aint lookin up the quote and I did not fave the page, so yous gonna have to trust me.

    Ya said it plain as day – now perhaps Iza not remembering right – perhaps you said that you yourself was never the target of an IC charge (thatta cover your weasely defend IC cases comment and still comport with my lazy memory, and Iza can easily see you “bringing it on” with the way you throw those charges at the poor examiners – speaking o which – a few choice words:

    An information disclosure statement filed in accordance with the provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner assigned to the application.

    encouraged to submit information to the Office so the examiner can evaluate its relevance to the claimed invention.

    so that the Office will consider information contained therein before a patent is granted.

    and of course, my fave:

    The initials of the examiner placed adjacent to the citations on the PTO/SB/08A and 08B or its equivalent mean that the information has been considered by the examiner to the extent noted above.

    I see ya wanna weasel on the “many” – take your pick either your first comment don’t mean nothin (many being the Malcolm more than- but down to four individuals), or weza just go with my thousands.

    Hey I even found a bonus for the old geezers:
    For unpublished, pending applications, any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291 prior to the mailing of a notice of allowance.

    Kinda nice.

  39. ping Ya gotta remember that Malcolm has admitted that he has zero actual experience with real Inequitable Conduct cases

    Nice. Just making stuff up now, ping? Bold.

    I do have experience defending IC cases as well as bringing it on in litigation. Not sure why you’re confused about that as I’ve never asserted otherwise.

    C’mon sunshine – you just laid a pretty hefty charge against thousands of examiners – lying, falsifying government documents, etc.

    I think I said “many” Examiners. And it’s not “lying”, not any more than sleepwalking or sloppiness is lying.

  40. I saw this over at Zura’s 271 and thought it merited my steal..er um, copying it here: I modified slightly, just to add my personal touch.

    So, why do we need a duty of disclosure? Is it tied to the presumption of validity?

    Note: this is a nekked assumption type of thing that Lemley blows.

    The duty of disclosure is to make sure that the Office has any and all items so that the Office can do it’s f_n job and make the examination decision. The duty of disclosure is a mechanism to prevent applicants from hiding the ball and providing anything that the applicant may have that may be material, so that the examiner can decide for himself whether that material should be used in making decisions about patentability – note this does not mean that the material submitted actually is material, in fact the rules expressly state the applicant’s neutrality on this matter.

    The duty of disclosure is not (nor is it meant to be) tightly tied to the level of presumption (Lemley – that’s a big whifff for your bias, buddy), or to put another way, it is not meant to drive any level of presumption – this is evident in the IDS rules that explicitly waive any such inference (Next time try to include the rules of the game in your little expedition).

    What this is is another academic attack on the strength of patents (a painfully obvious one at that).

    The presumption of validity is an anchor of the value of patents. If one cannot simpy get rid of patents altogether, one can at least try to emasculate them.

  41. Ned,

    Did y’all have a good discussion of 37 CFR 1.97 (h)?

    agreeing with my brief” – what part of the IDS form is this “brief” contained in?

  42. ping, OK brilliant (cough…), tell us how you could get an examiner to actually consider a reference on the record. As I said, I have been struggling with this.

    That said, in a recent IDS, I essentially filed a brief explaining in pertinent detail the references and how they did not apply, etc., etc., etc. The examiner responded with an “allowance” discussing these references and agreeing with my brief.

  43. Do you really think that you will be given a question that permits such an answer?

    Maybe not by defendant’s counsel (but you can still give your answer). And surely you will be asked some softball questions by plaintiff’s counsel at some point.

  44. but also discuss a reference that might even be better than his reference an discuss just why your claims define over this reference as well.

    LOL Ned – what’s better than forcing the applicant to perform the examination?

    Having that ruled illegal, but then doing it anyway.

    Wow Ned, did ya run out of blues and greens?

  45. So every time there is a car accident involving two licensed drivers, the presumption should be that the accident was caused by brake failure until proven otherwise by clear and convincing evidence.

    Bad analogy. Try again.

  46. And Malcolm,

    I aint fogot about you.

    the evidence which shows that many Examiners do not look at art cited by Applicants is fairly overwhelming

    Oh really? – would such evidence than make every examiner a perjurer or worse for signing off on IDS’s during patent prosecution – which by the way is uncontroverted evidence that the Examiners did look at the art cited.

    C’mon sunshine – you just laid a pretty hefty charge against thousands of examiners – lying, falsifying government documents, etc.

    But if ya be right (giggle), can government employees be sued? Is this the start of a new cottage industry?

    Ya really want to earn that Non Sequitur of the Day Award, doncha Malcolm? – as if the rights under a driver’s license are anything at all like the rights granted with a patent. Did you even think twice before sending that one out?

  47. Man I ha_te the Ha_te filter – it just lost the world a beaut.

    Hey LR,

    Ya gotta remember that Malcolm has admitted that he has zero actual experience with real Inequitable Conduct cases – not that that fact affactes how most people take his advice.

    6,

    the filter nabbed my lecture on your NPE bias – suffice to say, Ida love to see where that bias has any basis in da law.

    Ned,

    the filter also lost the sage observations I had for you and New (Dim) Light – like how your answer don’t affect like any art on initially filed IDS’s or even later filed IDS’s that aren’t touched in an Office Action and the wee small part ya gonna have with the very rules of IDS (that they explicitly are not a statement on patentability).

    “Metis”,
    nice to see ya back, ya gotta do soomethin about being able to post as yourself tho, seeing the james mcpherson tag is kinda creepy.

  48. Do you really think that you will be given a question that permits such an answer?

    If you don’t, you’re home free. Intent is an element of inequitable conduct.

  49. American Cowboy,
    The art I gave to the Attorneys was supposed to be the “drawings filed.” I, as I said gave Photos, an EXCELLENT model, A video, and drawings. I sure hope I get an Atty. soon. Because I am about to bust wide open with so many things that I have. Even things they wrote in the Files that they can’t deny.
    My first model was in vinyl, as I said. And it had no piping strip. The Ripstop was because as I said easier to work with. The models were of Ripstop Nylon. And they all had the piping. The foldables had the piping at the top because the pockets were sewn before hand. And the drawings, photos, model, and video reflected the new design. And that was what I sent Les, I mean American Cowboy. And bye the way I am a Real Person.

    Metis

  50. New Light, you have identified a problem I have been wrestling with myself. The ONLY solution I have come up with is to fully explain the relevance of a reference when submitting it to the examiner. The best way to do this is in an amendment where you not only distinguish the reference cited by the examiner, but also discuss a reference that might even be better than his reference an discuss just why your claims define over this reference as well.

  51. “Yes, I know, there is the argument that the technology is not “new” if there really was invalidating prior art. But, the art was obscure enough that the inventor who knows his field in many cases, the attorney who likely did a pre-filing search and the examiner who definitely did a search did not find it. For all practical purposess, that hidden prior art did not exist, so the invention is new. Particularly when judged using hindsight, based upon substantial investments made by the inventor or his backers. Their efforts and investments in the government-reviewed patent should not be tossed aside like last year’s supermodel. They should be justified in relying on the government grant.”

    If NPE’s were not allowed to bring infringement cases then I would stand with you on this.

  52. “Yes, I know, there is the argument that the technology is not “new” if there really was invalidating prior art. But, the art was obscure enough that the inventor who knows his field in many cases, the attorney who likely did a pre-filing search and the examiner who definitely did a search did not find it. For all practical purposess, that hidden prior art did not exist, so the invention is new. Particularly when judged using hindsight, based upon substantial investments made by the inventor or his backers. Their efforts and investments in the government-reviewed patent should not be tossed aside like last year’s supermodel. They should be justified in relying on the government grant.”

    If NPE’s were not allowed to bring infringement cases then I would stand with you on this.

  53. “Why not just say that the spin on the reference didn’t occur to you?”

    Do you really think that you will be given a question that permits such an answer?

  54. It is much less enjoyable to explain why you didn’t cite a particular a reference, particularly if the oppposing attorney is able to put a spin on the reference that didn’t occur to you.

    Why not just say that the spin on the reference didn’t occur to you?

  55. I have been intrigued with the reexamination process and its limits for some time. I had always thought that any major change in how patent law was perceived would have had an inadvertent effect on all live patents that were not evaluated under the newly evolved standard.

    I fully realize that this would create an unworkable dilemma, given that any and every patent would be at the mercy of a switch in patent theory as announced by the courts (most likely) or through congress (most likely not).

    When KSR came out, those applications caught in the process that had been prosecuted under the TSM philosophy were casualties, while the exact same style freshly minted patents skated. This just did not seem fair.

    I learned that the change in legal philosophy was NOT a matter that could drive the Substantial New Question of Patentability (per Office edict).

    I have always been a bit unsatisfied with this as an answer.

    Ned’s focus at 2:56 PM was exactly the vehicle I proposed – any patent on the face of the patent, but not specifically discussed or used by the examiner could serve as the segue into applying TSM-killing arguments on obviousness type rejections.

    I was told that this was not possible because even though so few patents are actually used by an examiner or discussed during examination, the fact that they are checked off by an examiner means that they have been fully reviewed under ALL existing legal theories, and the patent is indeed vetted.

    Just like the KSR legal theory, such an answer leaves me unsatisfied. Yet, to me this flies directly in the face of Case Law which says that a reference discussed in a certain way, can be used in a way that it was not discussed. To me this again raises a fundamental fairness question that seems to benefit having less actual discussion during patent prosecution.

    And similarly to the change in legal theory rationale, I understand the “can’t have that” of the clear unintended aspects of throwing every single patent open to perpetual questions, is a legal end that will be avoided.

    For example, and following Ned’s thoughts, how do applicants drive the desired strong presumption?

    Short of applicants demanding an examiner discuss every reference on the face of a patent somewhere in the prosecution – be it an Office Action (as through an applicant’s response containing a de facto style argument blankly stating that the application is patentable above each and every reference (and listing each and every reference)) or attempting to do the same in a response to Examiner’s Statement of Allowance – what is a real-world workable solution?

    Applicants will not be willing to simply surrender the presumption of validity without a fight (and I have to believe that any Office change affecting that presumption will be fought since such a change by definition is outside what the Office can do on its own (based on the lesson from the Rules changes affecting an applicant’s substantial interests).

    I am baffled at the apparent contradiction that there is a presumption that the Office actually did its job and actually did fully consider all references – except those it really did consider and discussed, but perhaps did not discuss in all types of manner or combinations.

    The path is just so murky to me.

  56. They should be justified in relying on the government grant.

    So every time there is a car accident involving two licensed drivers, the presumption should be that the accident was caused by brake failure until proven otherwise by clear and convincing evidence.

  57. As numerous posters have pointed out, the fact that the art the applicant cited is not used in making a rejection does not mean it was not looked at.

    Right. Except of course that the evidence which shows that many Examiners do not look at art cited by Applicants is fairly overwhelming. Or maybe they look at it but that’s it. They just look at it. Then they look away and get back to the next application on their docket. Ka-ching!

    The presumption is a crock.

  58. Lemley et al. use their findings to attack the presumption of validity. This is specious, and part and parcel of a general attack on patents that has sprung up inappropriately in the last decade or so.

    As numerous posters have pointed out, the fact that the art the applicant cited is not used in making a rejection does not mean it was not looked at. The authors can only come to this conclusion by thinking that applicants and examiners each for their own devious ends bring about a farce and a fraud. Where else in the law are people presumed to be crooks? Well, yes there is Congress, but this is not supposed to be a blog about politics.

    Further, the presumption of validity applies even to art the examiner did not consider, for sound public policy reasons. Patents are property and are the foundation of, in many cases, very substantial investments. Society thinks investments in new technology are good and to be encouraged: they provide jobs as well as access to the goods themselves. If the foundations are shaky, the investments won’t be made and the jobs won’t be created.

    Yes, I know, there is the argument that the technology is not “new” if there really was invalidating prior art. But, the art was obscure enough that the inventor who knows his field in many cases, the attorney who likely did a pre-filing search and the examiner who definitely did a search did not find it. For all practical purposess, that hidden prior art did not exist, so the invention is new. Particularly when judged using hindsight, based upon substantial investments made by the inventor or his backers. Their efforts and investments in the government-reviewed patent should not be tossed aside like last year’s supermodel. They should be justified in relying on the government grant.

    We are a bunch of lawyers and we think litigation is an everyday thing and invalidating patents is an everyday thing. Real people don’t think that way.

  59. I wonder if IANAE has ever been accused of inequitable conduct since it sounds so simple to follow his advice, i.e. weed out the cumulative references and trim down the IDS to manageable proportions. I was accused a number of years ago. I imagine others who have been in the same spot find it to be much easier to explain how a reference differs from the invention and doesn’t alone or in combination with another reference anticipate or make the invention obvious. It is much less enjoyable to explain why you didn’t cite a particular a reference, particularly if the oppposing attorney is able to put a spin on the reference that didn’t occur to you.

  60. Chris said: “In my personal experience, it’s usually that the examiners’ interpretation of the claim language is broader than the inventors’. That’s the main problem I have with finding inequitable conduct for withholding a reference – there is no accounting for honest disagreements about what a reference teaches or how the claim is interpreted.”

    I agree that this is a major reason for the examiner to want to search independently, and not the myopia that Lemley presupposes. Lemley merely assumes that the examiner and the applicant agree on what the claim is claiming. They do not in many if not most cases.

    Ditto the US examiner and the foreign examiner.

    MOREOVER, one must assume and I think the examiners do assume that the applicant has submitted claims that are patentable over the art submitted. This is another reason why they conduct a “fresh search” with fresh eyes, reading the claims the way they are written and not reading into them narrow meanings that a claim drafter may have intended when he drafted them.

    Applicants submit art for two reasons: first, to avoid a charge of inequitable conduct, and second, to “launder” the references by attaching to them an “enhanced” presumption of validity by being listed on the face of the patent. As Lemley adequately explains, the result is both farcical and counterproductive.

    The whole doctrine of IC is up for review. Hopefully the Feds finally get it and do something about the doctrine. Hopefully as well, the Director does something himself by simply banning the submission of searchable prior art and foreign search reports.

  61. Oh ohhh I feel it bubbling.I can’t help myself.

    I can see clearly the rain is gone.
    I can see all obstacles in my way.
    Gone are the dark clouds that had me down.
    It’s gonna be a bright bright bright sun shiny day.
    Metis

  62. You are way to kind Chris. If a person is withholding the Reference in the ART…. could it be that they are making the applicant pay for the application that was not necessary? Why would they do that? If all had been on the up and up? So if a Non Provisional were written as expected…. then A CIP or a Divisional would not be necessary.
    And if you tried to file a Malpractice suit, but couldn’t because the Atty. second in line would not let you. Then yes I guess I may have answered your question, and answer Chris… MY BAD…A SELF FULFILLING PHROPECY

  63. Here is what happens:

    Inventor discloses invention to attorney and says the invention is the combination of a, b, c and d.

    Attorney does search and finds five references showing, respectively:
    a and b
    c and d
    a, c and d
    a, c and d’
    a, c and d”

    So the opinion is that as long as you stick to the combination of a, b, c and d, with b necessarily present, you distinguish over the art. Attorney drafts application with claims limited to (a, b, c, and d) and (a, b’, c and d). Attorney files along with

    Examiner gets the case, glances at the claims and the ids and says, well none of these references support a rejection, since they don’t show or suggest the combination of a, b, c and d.

    Examiner then does his own search, FOCUSSING ON THE CLAIMS THAT WERE DRAFTED TO OVERCOME THE ART FOUND BY THE ATTORNEY. Lo and behold, with the search parameters altered from what the attorney used (since the presence of b is so much more important in the claims than seemed to the attorney when doing the pre-filing search) the examiner finds something suggesting the addition of b that the attorney did not find. Hence the rejection relies on art found by the examiner, not what was in the the ids.

  64. I think it is important to point out that in considering the question of “substantial new question of patentability” during re-examinations, the PTO has apparently adopted the position that if a reference was not actually used to reject the claims in a prior prosecution, and if the reference is not clearly cumulative of references that were discussed in such a prior prosecution, the reference can be the basis of invoking a re-examination based upon a substantial new question of patentability even if the reference was listed in the patent under consideration.

    This also extends to references cited as a basis of a substantial new question of patentability to invoke a re-examination even if those references are not subsequently used to reject the claims in a re-examination.

    What this means is that there is practically is no presumption of validity with respect to references that are not actually employed to reject the claims, or which do not form the basis of a re-examination order.

    I am not so sure whether a court could properly instructed jury along these lines, but it seems quite reasonable to say that if a reference was not actually discussed in some manner during ex parte prosecution, there is no presumption that the claims are either valid or patentable over such a reference.

    To the contrary, to the extent that a reference was discussed, the presumption that the claims are valid over that reference should be strong and should not be set aside by a court unless the court is convinced that the patent office committed clear error.

  65. Do examiners assume that applicants have good arguments for distinguishing over art they cited so they don’t bother using it in their rejects, but rather use their own art?

    In my personal experience, it’s usually that the examiners’ interpretation of the claim language is broader than the inventors’. That’s the main problem I have with finding inequitable conduct for withholding a reference – there is no accounting for honest disagreements about what a reference teaches or how the claim is interpreted.

    But to address your scenario, if you know that a piece of prior art on your IDS is a rock-solid 102 rejection against your claims, why would you proceed and waste everyone’s time?

    You would likely try to draft the claims prior to filing to avoid that 102 rejection, wouldn’t you? So it is a self-fulfilling prophecy to some extent. The examiners will use different art in the rejection than what was cited, in some part due to the fact that the practitioners have already read the claims they drafted, and considered the prior art they are citing.

  66. Do examiners assume that applicants have good arguments for distinguishing over art they cited so they don’t bother using it in their rejects, but rather use their own art?

  67. (1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway);

    What a ridiculous conclusion. How can you even type that with a straight face? In effect you’re saying “Practitioners shouldn’t be penalized for not citing the best art for the examiner, because the examiners usually don’t use the art the practitioners cited for them.”

    How many of the examiners’ cited references (not on the IDS) were used in 102 (b) rejections only because the original claims were written so broadly that they read on numerous references not cited by applicant? How many were used in 103 rejections for that same reason?

    How many of those references were used by the examiner only for some minor feature that was not in the original claim, but that applicant threw in after receiving a rejection?

    Personally I think there should be a much higher burden of proof for inequitable conduct for alleged withholding of a reference. It’s as simple as that. The burden in court should be to prove that the practitioner 1) read and/or discussed the specific piece of prior art, 2) knew and understood that the specific piece of prior art would be relevant to the claims and 3) chose to withhold it anyway. The whole purpose of having PTO is to find that art that the practitioners missed for whatever reason. Practitioners can’t be expected to find every possible 102 or 103 reference. That’s the examiner’s job. Literally.

    Inequitable conduct based on false or misleading statements made during prosecution is a whole different matter, but not in the purview of the paper.

  68. Slonecker–

    And tedious to a PHASIPP (acronym mine)

    Species does not here anticipate the genus!

    I like PHOSIPP very much, I think it should enter standard usage at least here on Patently-O.

  69. IBP

    If I implied any such assumption its was inadvertent and certainly not intentional.

    I have read many academic papers that do provide very useful,insightful, and thought provoking information, but such papers seem to be in the clear minority. I happen to believe that this paper is not within the beneficial minority, but is instead manifestly obvious to a PHOSIPP (acronym mine).

  70. Slonecker–

    You seem to assume that academics write papers with a view toward, or for the benefit of, “professionals practicing within the field of patent law”.

    I don’t think any such assumption is warranted.

  71. Not meaning to mix Religion and Politics. But I really have to share this. My Father now would have been 103 today if he were alive. And if I had to chose where he would go, with a choice of three Barrels I have here in front of me. 1 being a good egg. He would still go in Barrel number 3 along with Fred, Barney, and Bam Bam. But today is his birthday. And I can’t seem to recall ever looking at the drawings, the model, the photos, and considering the video and the fact that the edges were missing until this morning. Maybe he has passed over. And if he has, then God is VERY forgiving. Way more forgiving than me. So anyway I just thought I would share that tidbit. Maybe a sense of forgiveness is expected from me. But nope… I just don’t feel that warm and fuzzy feeling. But I still wanted to share it anyway.

  72. I simply must ask the question. Is there anyone who has been involved in patent prosecution practice well beyond the “wet behind the ears” stage of their careers who finds anything contained in the paper earth shattering?

    It seems to me that the authors could have obtained almost identical results from having discussed the matter in detail with well seasoned attorneys, agents, and examiners.

    If the paper could be characterized as a patent application, does anyone really belive it would not be rejected (and sustained on appeal) under 102 and 103? I think not.

    Importantly, I am not slamming academics such as Mr. Lemley. The sole point I am making is that professional practicing within the field of patent law are not as uninformed about the law, policy arguments, case law, etc. as some academics appear to believe may be the case.

  73. Perhaps in your world all prior art references can neatly be classified into cumulative/non-cumulative boxes. That’s not the real world.

    No, it’s not. Because in the real world the agent doesn’t even bother to read the references. They’re all equally material, as far as he knows.

  74. I think these results may not paint a completely accurate picture. While working as an examiner I noticed that using art from the IDS was far more common among primaries and experienced examiners. It doesn’t look like the study considered that.

  75. “This paper, for all its alleged shortcomings, is not entirely unflattering to examiners. ”

    O rly? Maybe you didn’t finish the whole thing?

    Myopia? Are you fin kidding me? A reference is a reference is a reference once it is plugged into EAST. It doesn’t matter where it came from. My search, your IDS they’re all the same.

    The whole shebang is based on a small percentage of EPO references not being used in rejections when he has arbitrarily defined them as “relevant” and his arbitrarily designating any reference not used in a rejection as “ignored”.

    “You guys are not doing your jobs, the gov tried to make applicants do your jobs since you were too lazy (but we’ll leave out the part about the courts saying this was illegal), and you guys are the largest single reason why patents suck.”

    Man f you, you write them badly in the first place. I’m not even going down that road because you’re trolling.

    “OK, Lemley, how does that follow? The burden is supposed to be on the USPTO to find the prior art. The examiner is the expert. ”

    It “follows” because he came to a conclusion which would support that. That plainly examiners are ignoring relevant art irl, despite your best efforts to make them not ignore it. So, he wonders, why give the presumption of validity?

  76. IANAE,

    Help me out here – “You mean, like disclosing material art in an IDS?” – I done already handed out the Non Sequitur of the Day Award to Malcolm, so maybe youse can tell me how an IDS is the job of the examiner, or about the afraid to read references stuff – Anon didn’t mention anything like that.

    And try to keep it simple – Iza don’t got the razor mind like you.

  77. IANAE: Right off the bat, you can pare down such a ridiculously over-inflated IDS by about 90% by simply eliminating all cumulative references.

    IANAE, you put waaaaay too much weight on this “cumulative references” point of yours. Perhaps in your world all prior art references can neatly be classified into cumulative/non-cumulative boxes. That’s not the real world.

    IANAE: And then you can look into your misunderstanding of the concept of materiality. If two elements of your claim are fastened by a screw, you don’t have to submit every prior art reference that discloses a screw because it could be used in combination with some unknown reference that has them glued together to make out a 103 rejection. You only really need to submit one or two references showing the closest art, and a handful of references that are closest to suggesting your improvement over the closest art. If those references don’t make out a 103 rejection, nothing else you’re aware of will do the trick either.

    IANAE, I’d love to like in your world where the closest art is neatly and distinctly identifiable, for all to agree, in but one or two references. Me thinks you’re over-simplifying a tad.

  78. Mark Lemley is a Professor of Law at Stanford and has cited 10 of his own earlier papers. But that does not make his work necessrily suspect

    It don’t clear it either.

    Ad hominem dismissal of their collective work serves no useful purpose.

    Yeah – but it should.

    I don’t care how good ya think ya are, or whether ya think being a professor should cut you some slack – that paper is crrp, pure and simple.

    As for sticking up for your bro’s – I get that. But if it smells like sht and squishes like sht, you aint coming into my car with that on your shoes.

  79. Au contraire, Paul–

    Ad hominem attacks can play a vital role in identifying the existence and sources of bias in any exposition.

    Although they must be carefully filtered and assessed, like every other type of information, ad hominem comments should not be summarily dismissed as useless.

  80. Mark Lemley is a Professor of Law at Stanford and has cited 10 of his own earlier papers. But that does not make his work necessrily suspect – it is necessary to look in detail at the substance of the paper. It points to the conclusion that much of the paper flood finding its way into the USPTO is of little value, and predictably so because examiners being ordinary human beings do not have time to read it all. Those conclusions neither rubbish Professor Lemley nor the US examining corps, some of whose members have made very useful comments from the inside about what actually happens.

    It should also be mentioned that Chris Cotropia and Bhaven Sampat are also professors at their respective universities. Ad hominem dismissal of their collective work serves no useful purpose.

  81. As the self-appointed Hero of the Examiner, you are being tarred with the same brush of incompetence.

    I never appointed myself any such thing, and you’re not well placed to allege incompetence if you’re tarring people with a brush.

    But thanks for dismissing IDS practice as a PTO labor relations issue. That’s real helpful. Now we can get back to our argument about whether unions should exist, instead of focusing on how applicants are deliberately lazy about filtering IDS art because it meshes nicely with their paranoia about inequitable conduct.

    As to any type of making the applicant do a part of the job of the examiner,

    You mean, like disclosing material art in an IDS? That’s still the job of the applicant, right? I don’t think Tafas got that particular rule repealed, and in fact the Federal Circuit seems to have taken a shining to that rule.

    Now, can it really be said that the applicant is doing his job of disclosing material art if his agent proudly announces (on a blog, for example) that he doesn’t read any of it because he’s afraid of having to decide which references are material?

  82. Former Examiner says that “Examiners are ultimately responsible for the search…”

    Really? What are the criteria by which the sufficiency of the search is judged? Who judges that sufficiency? What are the ramifications for an examiner of an insufficient search? Who institutes and monitors the ramifications, if any?

    Seriously, I’d like some definitive answers to the above questions, not some abstract narrative.

  83. IANAE,

    As the self-appointed Hero of the Examiner, you are being tarred with the same brush of incompetence.

    If the examiners en mass simply told their union POPA that a professional job with X number of references to check takes Y amount of time and that the professional better not be docked by the PTO, then the situation wouldn’t be as we have it and you would not have to assume the position of defending the indefensible.

    As to any type of making the applicant do a part of the job of the examiner, that option will die quickly care of the Claims ruling not being wiped from the books (Thank you Dr. Tafas).

    I realize that you neither “get it” nor care about such minor details, but us lawyers who are not so h_ll-bent on defending examiners do.

  84. Max: But if the observations are solid novelty or obviousness arguments, what happens then? Answer: the EPO Examiner writes to Applicant “You’ve seen the arguments. Reply to them please”.

    That’s why I wouldn’t mind it if IDSes required a brief but somewhat specific statement of the materiality of each reference. Could be as little as you get on an ISR. Or at least if examiners could bounce unduly-long IDSes on the basis that they are clearly unreasonable in size and it is not realistic for the examiner to stake his reputation on a statement that all references therein have been considered.

    I don’t even think it would necessarily require a statutory amendment, as long as the requirement was kept to a minimum, and didn’t grow to the size of an ESD or an obligation to search. And of course the PTO would have to stick to its guns when the new rule is inevitably challenged in court.

    Considering how little time examiners are given to do a search and write up a rejection, and considering that applicants are not required to do the search part, I can’t imagine the requirement would be all that onerous on applicants.

    Les: It’s not paranoia if they ARE out to get you.

    Your opinion that they are out to get you is evidence only of your opinion that they are out to get you. That’s still consistent with paranoia.

  85. ” unless it is required of them by their paranoid patent agents.”

    It’s not paranoia if they ARE out to get you.

  86. IANAE, you might be interested to read online some of those EPO files where a member of the public has mailed the Examiner observations on patentability under Art 115 EPC.

    If the 3rd party “IDS” is just a list of prior art, the file will (more often than not) suggest that the Examiner has simply “ignored” it. The art has to be significantly better than what the Examiner is relying upon, to stir the EPO Examiner.

    But if the observations are solid novelty or obviousness arguments, what happens then? Answer: the EPO Examiner writes to Applicant “You’ve seen the arguments. Reply to them please”.

    I suspect that it is the ordinary EPO Examiner’s heavy experience of trials at opposition hearings that helps them to decide how they handle those 3rd party observations on patentability. Indeed, Art 115 is often dubbed the “Poor Man’s Opposition” provision of the EPC. I’m still mystified how anybody can seriously base a crucial Presumption of Validity purely on what a PTO Examiner up an ivory tower thinks of the prior art.

  87. 3) Examiners are ultimately responsible for the search, which is why they were opposed to outsourcing searching.

    That’s understandable. You can’t trust someone else to do your job when that job involves your skill and you’re the one held accountable.

    But what’s so bad about supplementing your search with the IDS references? I mean, other than the obvious – the IDS art is unfocused, often irrelevant, usually not the result of a formal search, and way too numerous for you to meaningfully review in the time you’re given to produce a rejection.

  88. 1) Examiners seldom use IDS submitted references because Applicants submit a glut of slightly relevant art in order to avoid the liability hook. 2) Examiners work within a narrow technical window, so they know that particular field well and where to find art. 3) Examiners are ultimately responsible for the search, which is why they were opposed to outsourcing searching.

  89. NWPA: The duty of disclosure is to cover cases where there may be specialized knowledge that is not accessible to the examiner.

    I can get behind that sentiment.

    How’s about we exempt (or forbid?) applicants from submitting US patent documents as prior art, unless they are cited by foreign examiners? Let’s focus on foreign patent documents with no US counterpart, non-patent literature, and non-documentary prior disclosures. Give the examiner a reason to actually consider the IDS, and a glimmer of hope that he might find therein something remotely relevant.

    Train the examiner to search US art, give him enough time to do it properly, and trust him to do his job.

  90. Applicants are REQUIRED to submit ALL information they are aware of that is “material to patentability”, where “material” means it COULD be used in combination with some other unknown/unspecified document in an obviousness rejection under 35 USC 103.

    That is not at all what is required of applicants, unless it is required of them by their paranoid patent agents.

    Right off the bat, you can pare down such a ridiculously over-inflated IDS by about 90% by simply eliminating all cumulative references.

    And then you can look into your misunderstanding of the concept of materiality. If two elements of your claim are fastened by a screw, you don’t have to submit every prior art reference that discloses a screw because it could be used in combination with some unknown reference that has them glued together to make out a 103 rejection. You only really need to submit one or two references showing the closest art, and a handful of references that are closest to suggesting your improvement over the closest art. If those references don’t make out a 103 rejection, nothing else you’re aware of will do the trick either.

    Oh, and don’t forget one non-patent reference consisting of the inventor’s sketch of his inspiration for the invention.

    Very little art is actually cited in comparison with that requirement.

    Why is that? Because you ran out of IDS forms? You can always print more, you know. Or change the application number at the top and re-use them for all your other files.

  91. >>(2) That the presumption of validity >>associated with patents may be too strong;

    OK, Lemley, how does that follow? The burden is supposed to be on the USPTO to find the prior art. The examiner is the expert. The duty of disclosure is to cover cases where there may be specialized knowledge that is not accessible to the examiner.

    It is always so much fun having to read your twisted logic and media pandering.

  92. not entirely unflattering to examiners

    You guys are not doing your jobs, the gov tried to make applicants do your jobs since you were too lazy (but we’ll leave out the part about the courts saying this was illegal), and you guys are the largest single reason why patents suck.

    But you guys look nice and smell great.

  93. IANAE -

    Applicants are not given the luxury of submitting ” a manageable quantity of the most relevant art”. Applicants are REQUIRED to submit ALL information they are aware of that is “material to patentability”, where “material” means it COULD be used in combination with some other unknown/unspecified document in an obviousness rejection under 35 USC 103.

    Very little art is actually cited in comparison with that requirement.

  94. Max: “And it insults the integrity of the USPTO examining cadre to boot.”

    It sounds like the examiners are quite eager to feel insulted, at least in this thread.

    This paper, for all its alleged shortcomings, is not entirely unflattering to examiners. It does say that examiners aren’t given the time to properly consider every IDS reference even if they wanted to, and also that when an examiner does look at the thousands of IDS references he does so with a legitimate expectation that most of them are completely irrelevant for his purposes.

    At the risk of sounding like everyone else, I’m going to go out on a limb and claim that this paper confirms my own biases. Namely, IDSes are more or less useless to examiners if applicants don’t use them properly to submit a manageable quantity of the most relevant art, and current IDS practices are bad for the examination process.

  95. Speaking as an examiner, I always consider the references submitted in an IDS — at the very least, I read the abstracts and run a keyword search. The vast majority of the time, those references are only tangentially related to the claimed invention. I would estimate that only once or twice in the last hundred applications I’ve dealt with has applicant submitted art been of sufficient quality/relevance to use as a grounds of rejection (not counting references I originally cited on an 892 in a related application).

    As for IDS references also being cited on the 892, it simply boils down to ease. Every reference searched in EAST that I found meaningful (i.e., tagged) is exported to OACs for auto-filling into the 892 form, regardless of the type of search that brought the reference to my attention. I could cross-reference the IDS and manually remove the duplicate entries, but doing so risks accidentally removing a non-duplicate entry.

  96. OOPS and that EXCELLENT MODEL. You know just the same ones I sent that other Lawyer, to show him what My Patent,was about. And for the life of me, I can not understand why he has never been mentioned as a Bridge over the River Cry.
    Metis

  97. Tommy, I don’t understand. Is it not in the interests of your client that the USPTO Examiner does indeed consider all those X category official citations before your client’s patent goes to issue?

    If so, even if you are “ethical”, are you not still vulnerable to a malpractice suit?

  98. The Law Office used Photos and Drawings and a Video. And obviously as I have stated who didn’t know Les. Do you need another paddle Les? Here quick catch, here’s a bucket. You seem to have a big hole in your Boat. Send a flare to Moby DICK. He’ll get you he get’s everything.

  99. Don’t forget that really “zealous” prosecutors can satisfy their “ethical” duty with regard to foreign “X” references by waiting until they get an allowance, and then filing their X-reference IDS. Can’t supply the necessary certification under 37 CFR 1.97(e)? Don’t worry about it. Failure to certify merely means that the examiner won’t consider (i.e., will “ignore”) the IDS; “ethically”, you are in the clear.

  100. 1) Did the study compare the relevance of the art cited by the applicants to the relevance of the art cited by the examiners or did they just count numbers?

    2) If, as I assume, most of the cited documents are patent documents, then if the documents were relevant (according the the PTO word search measure of relevance) then the documents would have come up in the examiners search, wouldn’t they?… So, its perfectly natural for an examiner to ignore patent documents that don’t come up in the search they have been trained to use, isn’t it?

  101. @Jules

    “Another possible explanation of the examiner preferring his art is that he’s the one most expert in the classification and searching system, so he will find the best references. If you hire a third party searcher, they have no experience examining, and they don’t know how to apply art to a claim. Therefore, references by third party searchers are often useless.”

    In defense of the many professional searchers who work in the Public Search Room (and use the same tools as the patent examiners) – you are wrong. Many of us are agents or former examiners who can apply art to a claim, but most search requests do not include claims. We are searching to find relevant art so the attorney can draft claims around the art we find. Some of us measure the quality of our product by reviewing the art cited by the examiner on issued patent. Unless the attorneys claims stray far from the invention they described to me, the examiner should not find anything more on point than I did. That is a quality search.

  102. ping, no. I don’t understand where you are going. Anyway, why should I? I’m trying to work, here. What’s in it for me?

    Why don’t we save time. Can’t you just tell me?

  103. Oh and Dennis, the name I was told to type in the recapture was SLIZEY. Now that was too much like Lizard. And I called a person a lizard if you all remember. So if it wasn’t from you, and I have been silenced on My computer. Would this justify as another attempt at taking my and my husbands Free Speech again if it was the little Lizard.
    Metis

  104. Maxie – in the best scholarly manner, would you hazard a guess as to the identity of the most cited author in the Lemley paper is?

  105. Examiner writes:

    “the paper assumes, without acknowledging, that the quality of the submission(s) or “prior art” submitted is worthy enough to be used in a rejection.”

    As to EPO cites, another Examiner, upthread, has explained why a reference that is an X at the EPO might nevertheless be useless at the USPTO.

    Now I know why I have not bothered to give the Paper even a passing glance. It was written a million miles away from the real world in which we live. And it insults the integrity of the USPTO examining cadre to boot. Thanks, you examiners, for bringing this out so clearly and concisely.

  106. I also think that if the Trifecta were really a Trifecta, that would be it. There was an agenda. and for me to be punished because I thought it was more of a Superfecta than a Trifecta which it was because of personal interests and feelings for one of them, is more in line with why did they chop off the Piping? Why wasn’t that noticed? HEAVENS we know it was out there. Do I even need to speak of who knew! Who didn’t know?
    When you do the OP ED. Would you mention what I have to show it was really a Superfecta. No offense to those who didn’t have an Agenda. All it took was one Lemming. And then it became two.. and so on.
    I appreciate how you all feel about the very organization that you work with. But i am not blaming the whole Organization like Lemley has.
    Now I understand why Nurse Ratchet really left. She may have been the Mother Lemming.or just one in a row of lemmings. But, a Lemming none the less.
    Dennis I was just spammed with a recapture for your site. Was that you or Fred and Barney. Dino wants to know.
    You probably won’t print this but you can pass it around to those that think I don’t have a justification for a Superfecta. Because let’s face it……….

  107. Unless I missed something, the paper seems suitable for an op-ed piece in the New York Post rather than a researched article for a law journal. I have a couple of issues with it:

    First, MPEP section 609 (based on 37 C.F.R. 1.97/1.98) requires that a submission(s) by applicant must be considered (provided certain conditions are met). I would say, based on experience, 99% of the time those certain conditions are met. So, assuming that the submission(s) indeed qualify as prior art and have been considered, applicant’s submission(s) or submitted “prior art” could not have been “ignored” by the examiner.

    Second, the paper assumes, without acknowledging, that the quality of the submission(s) or “prior art” submitted is worthy enough to be used in a rejection. Again, based on experience, most submission(s) are not of sufficient quality to be used by an examiner in a rejection.

    In conclusion, the paper cannot be taken seriously and “ignore” is a poor choice of words.

  108. Paul Cole,

    There are not many times when I find myself in agreement with 6. And while I do not share his indignation that the paper appears to slap examiners for not doing their job, the paper itself is an abysmal conglomeration of bias and has no place in a court of law.

  109. EWEEE lookie here. A photo of my first model. It is vinyl. But because the vinyl kept breaking my needle or pulling the needle clear out of the shank, I switched to a more friendly material for my home sewing machine.
    So then I see that with PPE it won’t take on water like the Kapok type foam. So I also add a piping to close it. I send it to the Law Office. A video and some drawings, all have the sides where a grommet will go…. I also send a model. A model that looks exactly like the one that hangs over a boat. I think that would be called to be the same ART in the Patent?
    But I am told I can’t have that. I am also told the MODEL I sent was EXCELLENT. ( I bet)Great help in the case. But the drawings in the application omit the Piping area? And one of the models I drew is omitted? Why? Oh I get it. It showed to universal an approach to the Idea…. Now is that intent or Prior Art?
    Then I hire another. He was hired because he was a one stop shop. After he does his thing he says to get lost. Even after I knew he was a stop shop, so he said in his Yellow page ad. I had a Trademark now. I had another Application at the USPTO set to print, and now the one he did, giving me all the other Law firm claimed wasn’t allowed. I even signed a Contract with the draftsperson. And I was well on my way. The Lawyer then says as he dumps me, sell it on QVC, he doesn’t do any Marketing. Why would I do that. Is that Intent or Prior Art.
    I wait and wait for My Patent. Finally I receive 9 copies of the ten I ordered,twenty days later than the Patent printed. Now is that prior Art for the second Application or Intent?
    So in the mean time I hire a Marketing Firm. Then it really gets dicey.
    See it’s so confusing Prior Art , Intent, Copyrights by the Draftsperson. Copyrights by the US Copyright office. A Trademark I paid for. A Trademark I didn’t pay for. Which is it? A Patent I paid thousands for. A Patent I didn’t get. A Patent I paid for that wasn’t what I paid for.
    Maybe Mr.Lemley needs to redress his article and discuss the other side of the coin. I know I will.
    Metis

  110. Thanks Bartmans. I too noticed the 7 utterances but chose not to bother to reply. But now you have commented, I will too.

    Novelty and obviousness are two utterly different (but complementary) concepts. When D1 counsels that the solution to a specific technical problem is prevented by including a widget in the machine, it has nevertheless disclosed to the reader the option of including a widget in the machine. It has destroyed novelty. Been there, done that, so not novel any more.

    But, of course, it does not render it obvious to include a widget in any apparatus that does indeed solve that same objective technical problem. The idea of “teaching away” is just as potent at the EPO as it is in the USPTO.

    Not that I need to tell you that, for it is screamingly obvious to anybody prosecuting at the EPO, where novelty and obviousness have to be considered rigorously separately. My comments are for the benefit of other readers, who mistakenly think that the EPC is inferior.

  111. If, as may happen especially in the chemical arts, 60 references are submitted to an examiner, how can he or she possibly be expected to read them all in the limited time allocated by the USPTO work schedules? At most, a preliminary scan is possible, and in most instances that is all the references deserve. The reasons for filing even marginal art, to get the benefit of a presumption of validity and to avoid the risk of inequitable conduct, are too well-documented to need repeating, see the recent brief submitted to the Federal Circuit by the USPTO in the Therasense case.

    It would, however, be useful for someone to submit a copy of the paper in that case so that the judges are made even more inescapably aware of practical reality.

  112. “Regarding EPO search reports, I read them and the art they cite. However, the standards for patentability are different and the EPO searches aren’t as great as MaxDrei likes to believe.”

    I think the searches themselves are excellent; the analysis thereof, however, borders on atrocious. Entire claim limitations are utterly ignored. Portions of a reference that say “for the love of god, never ever use a widget here” are cited for a claim term that says use a widget here, etc.

    7, your last observation may be right, but you seem to forget that also negative statements are considere to be novelty destroying under EPC (case) law.

  113. John:
    6 is likely a PTO examiner (or at least he pretends to be one on a blog for patent nerds). Reading 6′s comments and his “ilk” should give you insight into dealing with people who can make your job easier or harder.

    For example, after reading 6′s comments, I now know that in order to effectively comminicate with the young PTO examiners I need to learn the current slang of the kids and then employ it.

    6, wassup, don’t reject my patent or I’ll have to Ice you bro.

  114. Lack of civility and professionalism? Are you fin kidding me? Did you read this paper? Talk about a lack of civility and professionalism. Lemley may as well come right out and say it: “I don’t believe that examiners read the IDS references therefore I’m going to concoct a half-baked paper and spout such nonsense in a supposedly academic paper conveniently avoiding a tad bit more work that would completely show my thesis to be wrong”.

    The entire paper is one big insult, not only to examiners, but to scholarly work.

  115. Thanks to all those who have commented on EPO Examiner work product. I note that the search as such is more or less OK but their analysis of patentability over the art is “atrocious” because, inter alia:

    1. dependent claims are not addressed,

    2. claim limitations are ignored, and

    3. the “problem and solution approach” to the analysis of obviousness is hopelessly compromised by hindsight reasoning.

    I think this gulf of difference is best explained by the absence in Europe of any US-style Presumption of Validity (ie beyond that “presumption” which is inherent whenever the petitioner for revocation, post-issue, carries the burden of proving its case to the tribunal).

    In this absence, Europe has no compunctions about holding an issued claim to be invalid (old or obvious).

    So, prior to issue, your dialogue with the EPO Examiner is a dress rehearsal for your day in court. The Examiner is basically giving you a warning where you might face problems.

    So, is not the intelligent response to think carefully about what the Examiner is writing, and then assume the responsibility of creating for your client a set of claims, and a specification, that will see off all 102 and 103 attacks brought to bear, post-issue. You think you’ve got problems getting the EPO to accept a claim amendment during ex parte examination. You ain’t seen nothing yet. Just try and get your claim amended over the objections of, say J&J as an Opponent at the EPO.

    It starts straight after issue, with opposition. Think of those natural history programmes you have seen, in which the little turtles, newly hatched, rush down the sandy beach to the sea. Most don’t make it. Skewered by the skuas. I’m not saying that most patents at the EPO do not survive opposition, but it won’t do you any harm to imagine your newly issued European patent to be one of those newly hatched turtles.

    So, there is a sporting chance that you will be back in front of that same Examining Division, in post-issue opposition proceedings, in which your client’s fiercest competitor is doing his best to convince the Examiners that your claim embraces something old or obvious.

    Often opposed patents are then revoked. End of story. Remember, this is long after your client has paid for his 50 or 100 page specification to be translated, at issue, into the languages of the 38 States that are members at the EPO. So, might it not be a good idea to look forward to that eventuality, when reflecting on the “atrocious” reasoning in the EPO’s FAOM, and respond thoughtfully, with claims that will withstand such oppositions? Just suppose your competitor is fleshing out, in a 50 page brief with hundreds of pages of supporting evidence, the jottings of the EPO Examiner in the EESR.

    On that basis, the shockingly brief jottings of the EPO Exr in the EESR begin to make more sense. Your client’s future is in your hands. For Europe, forget IC. Just gine 100% concentration to 102, 103 and 112, as judged by a panel of technical experts.

  116. “Only 13% of the prior art used in office action rejections was applicant-submitted (despite the fact that 74% of cited references are applicant-submitted).”

    OF COURSE! Isn’t the main purpose of searching prior art so that the inventor can claim around it? So 13% failed to do so to the satisfaction of the examiner.

  117. John, 6 is at times bit crass, but he is good and generally gives us good insight into the mind of the examiner.

    There are others though who seem to be nasty as a matter of habit.

    On Lemley, I think he has a pro-big business bias that manifests itself across the board to weaken the patent system. He assumes it is broken and needs fixing, much like the Coalition for Patent Fairness.

  118. Dennis: just thought you should know that I will no longer be reading or participating in the comments section due to the lack of civility and professionalism by “6″ and his ilk.

  119. Just the view of one who started prosecution back in the late 70′s. There is a lot to recommend:

    1. Pre-X searches performed by persons who know what they are doing (I always had these preceeded with the searcher discussing with a supervisory examiner what the invention involved and the art units that the examiner would invariably/most likely turn to for prior art references relevant to the invention).

    2. Using the classification system as it is intended, and not keyword searches, as the primary means to identify what appears to be relevant and what does not.

    3. Use of the much maligned Brief Description of the Prior Art to identify and discuss what is deemed to be the most relevant prior art, why it is so deemed, and its shortcomings.

    4. Drafting an initial set of claims distinguishing over what is believed to be the most pertinent art.

    In virtually every case it was additional art discovered by the examiner that formed the basis for rejections. Good art had already been cited and discussed, modestly relevant art was noted, and the examiner used the information provided to try and find better references that were undiscovered during the search.

    Some times the “old” way does turn out to be the better approach that actually facilitates prosecution to a successful conclusion.

  120. “Either applicants submit uniformly weak prior art, or examiners simply ignore what they receive and focus on the art they find themselves. Based on our further examination of the data, the latter explanation seems more likely.”

    I can assure you that 95%+ of app submitted art is “weak” and a good 70%+ needn’t even have been cited since it is wholly irrelevant to the invention, even the whole spec. Seriously. At the minimum. Not even lying. This is so easily verifiable it is nearly painful that he would miss it.

    “Second, it is far from clear that the law should presume a patent valid over art that the examiner has not given much consideration.”

    So now the examiners didn’t “ignore” or “effectively ignore” the references, they just didn’t give them much consideration?

    “The PTO seems positioned to narrow claims in patent applications, but generally not to reject applications.”

    Considering the infinite things that the mind can dream up it is pretty hard to stop someone from getting a patent on some small difference between their embodiment and in that of the prior art, especially when having factored in the vastness of and how spread out the art is.

    “The reason is intuitive (as to why fact-finders invalidate claims over art not before the PTO more often than not)”

    No, the reason is that the art goes on forever and ever and there are vast amounts of art not before the examiner. And to make matters worse, every day that goes by this problem grows.

  121. Having finally read his paper it is worse than I’d originally thought it would be.

    Just wt f is “effectively ignore” supposed to mean? They ignore it? Or they don’t ignore it? Perhaps that the ignoring that they do of the IDS art is effective? Effective at what?

    Or, is he trying to say that they don’t ignore it but it appears as if they ignore it because the effect it has on prosecution is minimal?

    Naw, probably none of the above, what he’s really trying to do is use a weasel word that makes you think it has some meaning but is actually devoid of any substance. All his sentence in which he uses the phrase means is that we usually find our own references.

  122. I can’t speak for every USPTO examiner so I’ll just speak for myself.

    When applicant submit relevant prior art, I use it if it’s the best art available even after I’ve performed my own search. In fact, I just sent out an office action today rejecting all the claims under 102b over art submitted by the applicant in an IDS. This art happened to be one cited by another examiner in a parent case. Many of the other art which were cited in the IDS and which were not cited in any related case by an examiner were barely relevant to the application and there were some I wonder how anyone reasonable could think them relevant at all to the application that they need to be cited.

    It has been my experience that most of the art submitted in IDS’s for most of the cases (unless cited by an examiner in a related case) are either not relevant or only marginally relevant. On most of the occasions where the art submitted are not relevant, I think it’s just a coincidence that the art was not relevant rather than that the attorney took the time to draft claims around the art. Many of the art (if it wasn’t cited in a related application by an examiner) are so off based from what could conceivably be considered relevant by anyone who bothered to look at it and apply some common sense that the only reasonable explanation as to why it got submitted is that it got submitted only to avoid charges of inequitable conduct and the attorney probably didn’t bother looking at the art at all to see if it was relevant to the claims or the invention.

    Regarding MaxDrei’s comment on cribbing the EPO’s work–part of my search (depending on time constraints) typically involves checking to see if there are any related foreign applications filed and if there are any, seeing if any work has been done by examiners in the other patent offices and looking at those search reports or office actions.

    My experience with the EPO (and this is also from having worked with EPO examiners first hand a few years ago) is that despite the acclaim that many attorneys here appear to have for the EPO examiners, I think the acclaim is rather overblown. The search done by the EPO is more often than not satisfactory by my standards, but the analysis in the office action themselves tend to be substandard and in many cases worse than what I typically send back to junior examiners at the USPTO to fix before I’m willing to sign.

    Further, the problem-solution approach used by the EPO for obviousness determination in many cases reeks too much of hindsight reasoning (in my opinion, based on the art I examine and based on US case laws I’m familiar with dealing with obviousness).

  123. Allow me to sum up my post. There are lies, dam lies, statistics and then Lemley papers, roughly in that order in terms of trustworthiness.

  124. “Regarding EPO search reports, I read them and the art they cite. However, the standards for patentability are different and the EPO searches aren’t as great as MaxDrei likes to believe.”

    I think the searches themselves are excellent; the analysis thereof, however, borders on atrocious. Entire claim limitations are utterly ignored. Portions of a reference that say “for the love of god, never ever use a widget here” are cited for a claim term that says use a widget here, etc.

  125. Given that the applicant is required to file claims that are patentable over the prior art, it is not all that surprising that the examiners would agree with them.

    Second, given the requirements to avoid IC, applicants file any and all reference cited to them in searches or cited in related cases without regard to relevancy or cumulativeness.

    Third, applicants cannot really guess how their claims will be interpreted using BRI. Thus the art searched by the examiner often is quite different from the art searched by the applicant or even by other patent offices who do not use BRI, but rather who use the “proper” construction from the get go.

  126. Regarding X refs out of PCT searches and EPO searches: Rarely do these references go very far beyond taking down the independent claims, so when you’re searching to pick up a subject-matter-relevant (instead of tacked-on) dependent claim, you may find some better art that you cite instead of the X ref.

    On PCT searches in particular, though, because there’s no penalty to the searcher for stretching the art, the art gets stretched *a lot*. Entire limitations get glossed over, so after further more careful analysis, the reference ends up being usable only as a Y ref or even winds up actually being an A ref.

  127. CAPat, regarding form 892, examiners are NOT to indicate any IDS references on this form. Doing so causes problems for support staff when they’re preparing the actual patent document for issuance (something having to do with duplicate entires for the same reference in their system). Examiners should indicate in the action that the IDS has been considered and also sign/date each IDS document (form 1449).

    You are correct in that examiners should be able read EPO search reports since they prepare the same search reports occasionally.

  128. This study seems to be such a waste of time.

    Examiners would love to rely on IDS references more than their own searches… why in the world would an examiner waste his/her time searching for prior art when supposedly the best prior art is already available!? Ask an attorney and he/she will go on and on about how lazy examiners are. So why are we doing the extra work?

    The authors of this paper state “Clearly, then, examiners focus almost exclusively on art they find themselves in considering whether a patent application is new and nonobvious. The question is why.” (page 12). Well ask the examiners!! There’s THOUSANDS of them… literally.

    As an examiner I often ask myself “Why the heck did they submit this reference?” Can the authors please do a study on this? It would really provide some insight.

  129. Two things. First, I find in my own practice that examiners often cite prior art to me in their PTO-892 which I have already cited to them in my IDS. Which tends to confirm the research report. Second, examiners already know how to read EPO search reports, or should, as they are the same as PCT search reports, which U.S. examiners prepare.

  130. Sometimes IDS references can be combined to form some kind of weak 103 rejection. I have never come across a solid 102 rejection based on an IDS reference.

    Based on my experience, the best IDS references are those that the applicant discloses as having been cited by another examiner in a related case.

  131. Why would anyone claim around the art. It costs more time and more money. And if it ain’t far enough from the art why bother. If you are just trying to see if you can claim you are an innocent infringer after getting slammed, You ought to be slammed for claiming you are innocent of Infringing.
    I have two maybe 3 Ideas that are just like my First Idea. They ain’t out there. Cause if they were they’d be already prior Art selling like hotcakes.
    And Les they ate my note to you. But you already know that you had opportunity to be the Marketing Atty. for a prolific
    Inventor, and also you would have gotten two scum bags off the roles, and did the world a favor by keeping your head in the game instead of playing lawyer games. That would have been more for all the good ones. You played it very badly.
    So I’m stooopid. What does that make you?
    Sarah

  132. Thanks, Dennis. But I don’t know if that really supports their theory. Considering the current state of inequitable conduct law, references that are filed in an IDS before first OA’s probably came from an application that is in the same portfolio or is related directly. A lot of times those references are not relevant, but they are submitted to remove all doubt.

  133. Some folks have raised a reasonable argument that applicant-cited art is less likely to be useful because applicants claim around the art. The authors considered that argument and tested specifically for it. In particular, the study looked at prior art that was submitted well-after filing but before any amendments had been made. That late-filed art was also very rarely used in examiner rejections.

  134. “Second, a possible explanation of the examiner preferring his art is that his art is based on BRI while the submitted art is based on a proper construction of the claims.”

    BRI is the proper construction of the claims during prosecution, but I understand what you’re getting at.

    As for the article, the article improperly rules out the “applicants claim around their cites” and “applicant art isn’t relevant”. The authors’ final non-sequitur conclusions are themselves based on their preconceptions and other non-sequitur conclusions. The article proves my preconceptions that law professors shouldn’t write articles based on statistics without a statistician as a co-author.

    Regarding EPO search reports, I read them and the art they cite. However, the standards for patentability are different and the EPO searches aren’t as great as MaxDrei likes to believe.

  135. Another possible explanation of the examiner preferring his art is that he’s the one most expert in the classification and searching system, so he will find the best references. If you hire a third party searcher, they have no experience examining, and they don’t know how to apply art to a claim. Therefore, references by third party searchers are often useless. Further, art from related patent offices is often a joke. They wing it … “it would have been easy” and “solves the same problem, therefore your solution, although different, is solving a problem already solved” are often strange motivations you might find in a foreign examination, while the US has it’s “prima facie” standard which incentivizes the US examiner to find the best art by far out of all patent offices.

  136. It seems to me one obvious reason for not using the applicant-cited art in a rejection is that the art does not render the claims unpatentable. Isn’t it standard operating procedure to craft claims in light of the art we are citing? In my mind, a client would be upset if we received a legitimate rejection based on art that the client provided.

  137. A better possible explanation, and one far less sexy, but far more simpler, is that examiners do not use the applicant’s cited references because in large part, the applicant’s work is distinguishable over the art the applicant and her representative had while crafting the application.

    Sure, I would expect every once in a while a legitimate difference of opinion about a particular work and what that work teaches may prompt a rejection with art cited by the applicant (especially as noted when the examiner is stretching the teachings by applying BRI – or BUI as the case may be – this also appears to be reflected in the actual data.

    It really is not a surprise, given who the authors are, that such a direct premise did not even enter their minds.

  138. What this argues for is simply excluding by rule the submission of any searchable prior art. The examiner should be required to independently review international search reports of corresponding non US applications published in English just prior to any action on the merits. Any searchable prior art or non US English search reports should be “deemed” submitted just as is the case now with respect to art cited in a parent.

    Second, a possible explanation of the examiner preferring his art is that his art is based on BRI while the submitted art is based on a proper construction of the claims.

  139. You know, if ya think about it long and hard. If the Federal Government induces a person to undertake an action (file a patent application) and then fails to exercise reasonable care to undertake services that person pays for (search and examination) and then at the end of the day holds a person liable (patent practitioner) for errors occuring during the services, doesn’t this sound a great deal like a Bill of Attainder. One is being held liable, because one is a class of person (patent applicant) defined by Federal Statute.

  140. Perhaps of more value would have been a report noting the timing of the IDS’s. Seems more likely for the examiner to use the art before a first action, rather than later once she has performed her own search.

  141. Does the article distinguish between examiners who (1) relied on applicant-cited art, which happened to pop up in the examiners’ own search results and (2) relied on applicant-cited art, which wasn’t in the examiners’ own search results?

  142. Jules, by “studies based on patent citations likely lack merit” the paper was referring to organizations that get paid to do fancy patent portfolio and competitive analysis for alleged financial valuations and alleged technology leadership based on the number of citations of those patents in later patents in the same technology, on the assumption that the most cited patents are the most important.
    Besides the inherent inaccuracy in that assumption from what these authors note, as Dennis notes above, later improvement patents or published applications [with narrow claims but with more specification details and more recent information] are far more likely to be cited than older pioneer patents, by examiners OR applicants.

  143. Dennis writes:

    “The office may also want to educate examiners on how to read European search/examination reports”

    and I wonder what is so difficult about reading them, that an expert like a USPTO Exr needs education before he can understand them.

    Typically, an EPO search report is on one side of one sheet of paper and recites the key paragraphs and drawing figures of each prior art reference that deprives the claims of patentability. Now that the EPO is banging them out within a few months of EPO entry, one would have thought that the quickest way for a USPTO Exr to put together a FAOM would be to go online and crib the EESR from the EPO file. 6?

  144. (1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway);

    I disagree, for two reasons. First, the examiner should be considering the art, and whether he does or not should not change the propriety of withholding it. Second, applicant-cited art is far from insignificant. It is apparently responsible for every eighth art-based rejection, and inequitable conduct is generally (and as a matter of law) based on an applicant withholding those few really close references that are most likely to be cited in a rejection (the wheat, not the chaff).

    And for the record, I never much cared for the clear-and-convincing presumption.

  145. “For instance, examiners should be given a tool for performing text-searches that are limited to submitted (and identified) prior art references. ”

    They already have that.

  146. “The authors suggest several implications of their findings: … (2) That studies based on patent citations likely lack merit.”

    Hmmm… that kind of cancels out the other conclusions of this paper… Guess I don’t even have to read it! ;)

  147. Dennis, it was nice of you to come up with some possible excuses for examiners ignoring applicant cited references in your last paragraph above. However, especially considering how few hours examiners have for prior art searching, I think a more cynical view is more appropriate in this case.
    I and others have had far to many office actions over the years in which the art relied upon by the examiner for initial claims rejections was not nearly as relevant as applicant cited art.
    [That leads to interesting further prosecution questions, such as, should one use the President Truman 2x4 method to get on the record that the examiner's attention was forcefully directed to the much better reference, or just distinguish the irrelvant references cited by the examiner?]

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