- Rational Ignorance at the PTO: I received many interesting comments on The Lemley-Cotropia-Sampat article yesterday. Many of the comments pushed-back against the authors’ conclusions with reasons why applicant-cited art is more-rarely asserted in prior art rejections. Query: Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art.
- Patent Law in Print:
- Joe Mullin at Corporate Counsel (an ALM Magazine) reports on Patent Attorney Wes Whitmeyer’s patent infringement lawsuits against Brinks Hofer, Dinsmore & Shohl; Benesch Friedlander; Edwards Angell; and WilmerHale. [Link]
- Susan Pan and Natalya Dvorson have a useful article in IPToday on how to obtain refunds from the USPTO. [Link]
- Abigail Rubenstein of Law360 has a brief article about the en banc request in Telcordia Tech v. Cisco. In that case, Cisco is asking the Federal Circuit hold that Judges (rather than Juries) should decide whether patent claims are invalid as indefinite. Microsoft and GM filed a joint brief in support of the petition. [Link]
- Sharon Oriel has published a short article in Intellectual Asset Managament (IAM) magazine describing “a three-step process to persuade a company that it can prosper and grow through investing in intellectual asset management.” [Link]
- Recent Patent Law Jobs:
- Amazon is looking for business-minded corporate counsel with at least 5–years of patent prosecution experience and combination of in-house and law firm experience. [Link]
- Miller Nash law firm is looking for a patent attorney (or attorneys) with 4+ years experience and a focus on medical devices and life-science related software. [Link]
Very well, thank you, and you?
ping we all know all awful those Cherokee Jihads have been –
Wasn’t Timmy McVeigh part Cherokee?
Oh wait, I forgot: he was a full-blooded teabxgger.
IANAE, I see your point.
“I’m not trying to resolve the Middle East conflict”
Damm – and I was so hopeful.
“The Cherokee have the same “problem””
Yeah – and we all know all awful those Cherokee Jihads have been – how many Cherokee children have been wrapped up in explosives and sent in to mingle with those (evil) citizens minding their own fricking business.
Whew – no wonder nobody is saying that the Cherokee faith is inherently evil or dangerous or anything like that.
Ned: IANAE, the problem as I see it is that most (if not all) Muslims think that the whole of Palestine IS Muslim land and that no one, not Israel nor the UN nor the English, had a right to take that land and give it to Israel — without their consent, that is. And they did not consent.
Well, that’s half of the problem. The other half is that Israel views the same land with the same sense of historical entitlement.
I’m not trying to resolve the Middle East conflict, I’m simply saying (and I think you agree, even) that the Muslims in the region aren’t attacking Israel because Israel is non-Muslim. They’re attacking Israel because as far as they’re concerned Israel is on their land. If Israel had instead been given to Muslims from India (which I suppose the British could have done), the Palestinians would have been just as upset. If America’s support for Israel came from a Secret-Muslim president, that probably wouldn’t appease them either.
This is not a problem with Islam. This is a problem with taking people’s land and expecting them to get over it. The Cherokee have the same “problem”, and nobody is saying their faith is inherently evil or dangerous or anything like that.
Ned: “Now circling back a bit to Middle Eastern history, why is it that the Arab states attacked Israel in 1947? Could it be that they viewed Israel to be a foreign, non Muslim, entity illegality occupying Muslim land?”
IANAE: “It’s much easier to be upset when you think someone is taking your land than when they simply disagree with you. You get a lot more ‘radicals’ that way. The Muslim nations fight amongst themselves, too.”
IANAE, the problem as I see it is that most (if not all) Muslims think that the whole of Palestine IS Muslim land and that no one, not Israel nor the UN nor the English, had a right to take that land and give it to Israel — without their consent, that is. And they did not consent.
Al Qaeda even claims they still “own” Spain.
We have to understand their views on this — because the “problem” of Israel will remain unresolved until either Israel ceases to exist, or Islam as a whole recognizes Israel’s right to exist. And, so long as Israel exists, we are going to have “problems” with Islam due to our support of their existence.
The way forward is clear, but it is almost impossible to achieve. It requires all of Islam to change.
An Old Jewish Man
A female CNN journalist heard about a very old Jewish man who had been going to the Western Wall in Jerusalem to pray, twice a day, every day, for a long, long time.
So she went to check it out. She went to the Western Wall and there he was, walking slowly up to the holy site.
She watched him pray and after about 45 minutes, when he turned to leave, using a cane and moving very slowly, she approached him for an interview.
“Pardon me, sir, I’m Rebecca Smith from CNN. What’s your name?
“Morris Feinberg,” he replied.
“Sir, how long have you been coming to the Western Wall and praying?”
“For about 60 years.”
“60 years! That’s amazing! What do you pray for?”
“I pray for peace between the Christians, Jews and the Muslims.”
“I pray for all the wars and all the hatred to stop.”
“I pray for all our children to grow up safely as responsible adults, and to love their fellow man.”
“How do you feel after doing this for 60 years?”
” Like I’m talking to a phuckin ‘ wall.”
You all must be able to find muslim patent attorneys that you can discuss this with. They might not all be terrorists. They might even be willing to engage in dialogue instead of diatribe.
Buy bulk Vending Locator, vending Machine locator. We have call center to provide you best location for your vending Machine locators in your area.
Now circling back a bit to Middle Eastern history, why is it that the Arab states attacked Israel in 1947? Could it be that they viewed Israel to be a foreign, non Muslim, entity illegality occupying Muslim land?
It’s much easier to be upset when you think someone is taking your land than when they simply disagree with you. You get a lot more “radicals” that way. The Muslim nations fight amongst themselves, too.
I bet you’re the same way. The two of us disagree all the time, and I bet we could still be civil to each other if we met in person. Yet, if I appropriated half of your back yard, you’d have a serious problem with that. You’d probably even call some people with guns and uniforms to have me forcibly removed.
9/11 wasn’t a concerted effort by the world Muslim community. It wasn’t about Middle Eastern politics and land disputes. It was a terrorist act and the world’s biggest cry for attention by a small-ish group of crazy people who, yes, happen to self-identify as Muslim and are pretty radical about nonbelievers.
Are there still people who believe 9/11 was a Jewish conspiracy? I wonder if they’d oppose building a synagogue a couple blocks from Ground Zero. Or maybe they’d rather jump on the anti-mosque bandwagon for no good reason.
All religions are pretty much that way? I somewhat agree in principle — which is why we do not allow religions to run the state. But we do have that in Islamic states where Sharia Law is the law of the land. We also had it in Europe where the Catholic Church was generally part of the government. We then had it in England where the likes of Cromwell decimated in the name of religion.
I agree wholeheartedly with your observation, IANAE.
Now circling back a bit to Middle Eastern history, why is it that the Arab states attacked Israel in 1947? Could it be that they viewed Israel to be a foreign, non Muslim, entity illegality occupying Muslim land?
That is exactly what they said then and is exactly the what they say now — and this sentiment is not limited to the so-called radical Muslims. It is virtually all of them.
Aren’t there a lot of Amish in Pennsylvania?
“The Amish practice what they would consider strict Christianity, and it’s pretty incompatible with a lot of Western civilization”
Dear SARAH,
Re:
“Someone shut my Computer off three times. So I will see you all later. I can’t be bothered with half a life. But it ain’t over till it’s over.
Posted by: sarah mcpherson | Aug 24, 2010 at 03:54 PM”
Someone please, shut off sarah’s computer. Feed her cat, give her half a life and tell her its over and its over.
Watch out INANE, you are falling into the Jaoi trap. We were going to skip that chapter, remember? Leave that for the wingers.
Well, IANAE, there are religious beliefs that I and many others oppose in principle.
Everyone who has religious beliefs also has religious beliefs they oppose in principle. They’re called “the religious beliefs of others”.
We need to understand that one mans right of religious liberty does not allow them to oppress others in the name of that liberty. We have consistently understood this in US law.
I assume you mean that we shouldn’t be oppressing Muslims in the name of our own liberty. Only, that seems to be very inconsistently understood.
I find a lot in strict Islam (some would call it, radical Islam) incompatible with Western civilization.
The Amish practice what they would consider strict Christianity, and it’s pretty incompatible with a lot of Western civilization. We extend to them considerable freedom to act as they see fit. Heck, Judaism allowed polygamy until a few centuries ago, and I bet it still doesn’t allow the use of firearms on the Sabbath. We’ve decided that polygamy is a fundamentally bad thing, so we criminalize and prosecute polygamy, but that does not entitle us to prosecute Mormonism generally or prevent Mormons from building places of worship.
But what gets me the most about (radical) Islam is its religiously mandated intolerance and bigotry.
I guess this is your first experience with religion. Spoiler alert: they’re all that way, pretty much.
Not all Muslims are out to kill you. Islam doesn’t even have a central authority that might order the deaths of all nonbelievers like Pope Urban II did a few centuries ago. Not all Muslims are even from the Middle East.
You know what gets me the most about (radical) American patriotism? Its religiously mandated intolerance and bigotry.
Well, IANAE, there are religious beliefs that I and many others oppose in principle. Do we allow the oppression of women in the name of religious liberty? Obviously not. We need to understand that one mans right of religious liberty does not allow them to oppress others in the name of that liberty. We have consistently understood this in US law.
Mormans believe in and some sects even today attempt to practice polygamy. We prosecute them.
Islam has the same beliefs. Do we allow a Muslim the right to polygamy. I would hope not.
I find a lot in strict Islam (some would call it, radical Islam) incompatible with Western civilization. I oppose those aspects of Islam, just as I oppose the barbaric practices of other religions.
But what gets me the most about (radical) Islam is its religiously mandated intolerance and bigotry. I find it hard to accept that we must accord Islam the same respect we have for other religions when Islam has no respect for the civil rights or freedoms of others who are not Muslims.
would you approve of a religion that would make a holy sacrifice of a live human baby?
You must be putting me on.
Dear IANAE,
Am I to take it that you approve of all religions?,
no matter how bazaar?
For example,
would you approve of a religion that would make
a holy sacrifice of a live human baby?
Thou shall not kill those what don’t deserve to be whacked
Interesting qualifier.
The Old Testament mentions four approved methods of capital punishment for people who don’t live by Da Rules. Do unto others, indeed.
It’s really quite consistent with your “I am not against any religion I approve of” post at 3:26 PM yesterday.
Thou shall not kill those what don’t deserve to be whacked
Does one tolerate the intolerant, the irrational, the immoderate, those who oppose civil liberties in principle, those who view woman and unbelievers as inherently unequal?
Apparently so, even though they haven’t been in power for a couple of years now.
“Thou shall not kill”
It depends – Does the inherent meaning extend to self-killing? to self-killing when the continued living is an affront to the dignity of the individual? And in the other direction, does it extend to purposeful harm of another person? to any sentient living being? to any living being?
Ima pretty sure that your begging won’t answer the questions to everyone’s satisfaction.
Dear IANAE,
I beg to differ; e.g:
Do unto others
Thou shalt not kill
What do you think are the inherent meanings of these phrases?
IANAE, “If we are defending the ground of equality, tolerance, rational thinking, moderation, and civil liberties, our footing looks very weak indeed.”
Does one tolerate the intolerant, the irrational, the immoderate, those who oppose civil liberties in principle, those who view woman and unbelievers as inherently unequal?
Umm, make that “major US religion”. I can’t possibly account for them all, but it’s pretty easy to rule out the big ones.
Your point being ? …
My point being, not one single religion has world peace and harmony as an inherent belief. Certainly not your own.
Dear IANAE,
Your point being ? …
Someone shut my Computer off three times. So I will see you all later. I can’t be bothered with half a life. But it ain’t over till it’s over.
as long as world peace and harmony are an inherent belief thereof/therein.
You do know, I presume, that inherency is disproved by a single counterexample.
Dear IANAE,
Thank you for your assumption regarding my broad tolerance of different religions.
Yes, all else being equal, I am not against the practice of any religion, nor the building of any place of prayer or worship, as long as world peace and harmony are an inherent belief thereof/therein.
I believe that is explicitly and implicitly clear from my postings.
I knew I was dreaming
FREEDOM…, I get the Martin Luther King thing.. Really I do. I always have. Can I Patent now? Can I work? Can HAH? Or am I dreaming?
I have two things to offer to this thread.
CAT the other white meat!
And that’s why god made more women!
“If we are defending the ground of equality, tolerance, rational thinking, moderation, and civil liberties”
Those that turn the other cheek get slapped twice as hard.
I only oppose the construction of one mosque, the one near Ground Zero, which many Americans consider hollowed ground.
I’ve seen the photos. It is clearly hollowed ground.
I presume you’re dead set against all the other mosque protests around the country, nowhere near Ground Zero? Footage available at dailyshow.com. Because, y’know, this isn’t at all about hating Islam. It’s just that Murfreesboro TN is too close to the hallowed ground.
It’s fascinating to watch this ideological tug-of-war unfold. Funny thing about tug-of-war, it’s not won by the stronger side – it’s won by the side with the better footing. If we are defending the ground of equality, tolerance, rational thinking, moderation, and civil liberties, our footing looks very weak indeed.
Enough, enough for one day.
I should have listened to my Mother, don’t suffer fools —
(no offense to those what don’t deserve it).
known — oops
Dear Lionel,
Re:
“And my point is if you oppose the construction of new mosques (which the community center is not) then you do oopose [sic] freedom of religion.)
What a smuck – I only oppose the construction of one mosque, the one near Ground Zero, which many Americans consider hollowed ground.
If you were able to follow the gist of the thread, you’d have know that!
Re EFS being down for 24 hours–isn’t there supposed to be an emergency backup site?
There was, and there was a link to it.
Only for EFS, though. Not for PAIR.
Re EFS being down for 24 hours–isn’t there supposed to be an emergency backup site? Doesn’t sound like it, from the posts above. We haven’t switched over yet to electronic filing and were starting to consider it, but in view of this, I think we’ll put it off for another couple of years. I don’t need any help having a stress-induced medical emergency because I can’t get something filed.
I thought we weren’t going to talk about this…
“This controversy has little, nay, nothing, to do with freedom of religion.”
Meant to include that tidbit in the cut and paste for my first quote.
And my point is if you oppose the construction of new mosques (which the community center is not) then you do oopose freedom of religion.
Not in context…
“There are mosques all over NYC and our country with no more objection to Muslims practicing their religion than to Christians or Jews practicing theirs.”
“Regarding the building of the proposed mosque, there is no way it would ever be completed in my city. No construction worker would tolerate such construction, and they wouldn’t tolerate scabs on the job.”
JAOI maybe your tiny brain cannot comprehend, but there is an apparent conflict between these two statements.
none of my posts appear to be going through. They will probably all go through later.
Max you are generally accurate in your assessment.
Oh, wait; you need a brain to have a psychiatrist…
Dear IANAE,
Re: “Maybe a second psychiatrist is in order?”
Confucius say:
He who is in glass house shouldn’t throw stones.
You got that right …
It scares Jon Stewart that American journalism has fallen so far that a fake news show hosted by a failed actor covers more real news stories in two hours a week with more insightful commentary and has more journalistic integrity than any of the several 24-hour dedicated news networks.
After all, Jon Stewart is the one who followed the money from that Ground Zero mosque all the way to Faux News. Even Faux News itself couldn’t figure that one out.
judeo-christians is what I meant.
Dear IANAE,
Re: “And that scares Jon Stewart, too.”
You got that right …
Maybe a second psychiatrist is in order?
Dear IANAE,
I thank you for your sage advice.
I have three cats two of which are a mating pair, a trophy wife, an amazing son turning 21 who is an accomplished scholar, an adorable, absolutely unique physical therapist, a brilliant psychiatrist, a beautiful PCP and gifted specialist physicians – I think I’ll pass on a dog until I retire. But I do miss the wonderful Shepards I had.
What do you think about the mosque?
All Europeans get all of their information about the USA from The Daily Show with Jon Stewart
To think, you don’t even get the full version of his show.
Even in America, he’s among the most trusted journalists. And that scares Jon Stewart, too.
All Europeans get all of their information about the USA from The Daily Show with Jon Stewart – FACT
JAOI, if you want attention this badly you should seriously consider getting a dog.
Dear Lionel,
Re: “Just the sort of irrational, xenophobic stuff I’d expect from you.”
You still have the sensitivity of a frog, a dead frog at that. Here’s some advice – Get a heart – you’ll thank me in the morning.
PS:
Re: “irrational, xenophobic”
Isn’t that a bit redundant?
———
Dear Max,
Re: “Lionel to assuage your concerns…”
Your anti-anything American bias is showing. Moreover, each of you’re your gathered “facts” begs the issue, is a misstatement or is Just plain wrong.
And furthermore, you are phucking delusional – to suggest that:
“We gather over here that…”
You got a mouse in your pocket? For whom else do you speak? Please, with all due respect, provide some explanation for your phucking delusional assertion.
Dear Max,
Re: “I’m mindful that, yesterday, another poster deplored those who indulge themselves here in “pissing competitions”. I think he was right too.”
Thanks for pointing out that some comments made yesterday in this thread are no longer present: I salvaged these comments:
———————————————————–
Dear IANAE,
Re: “I don’t have the patience to deal with each of your particular delusions on an individual basis.”
Thanks again for your comment.
I accept it for what it is despite the redundancy therein.
Regarding the building of the proposed mosque, there is no way it would ever be completed in my city. No construction worker would tolerate such construction, and they wouldn’t tolerate scabs on the job.
So, this is only an academic concern, and on that score, with all due respect, you are somewhat ill-equipped. 🙁
[Posted by: Just an ordinary inventor(TM)]
———
Regarding the building of the proposed mosque,
Wow, trolling two threads now? It really is astonishing how desperate you are to have an argument about this on the internet. Not to mention how much difficulty you’re having in finding someone willing to argue an issue that comes with pre-manufactured controversy.
Posted by: IANAE | Aug 23, 2010 at 03:31 PM
———
Mosque controversy?! That’s all we need to pull in IP professionals for civil, patent-related discussions.
I say protect the hallowed grounds of patentlyo.com from the sewage of online political rants.
Posted by: Andrew Dhuey | Aug 23, 2010 at 03:36 PM
———
Dear IANAE,
I felt compelled to state certain facts in my comment on the hot-issue-of-the-time in this, the forum I respect most, and in the community in which I have labored.
However, I inadvertently posted in this thread – I meant to post in the Patently-O Bits and Bytes thread – oops.
Posted by: Just an ordinary inventor(TM) | Aug 23, 2010 at 03:53 PM
———
I second “protect the hallowed grounds of patentlyo.com from the sewage of online political rants” even though they provide me rare opportunities to agree with Mooney.
Posted by: Znutar | Aug 23, 2010 at 03:56 PM
———
There is only one reason to get involved in this nonsense and that is to cut the nonsense out of the system.
Posted by: 6 | Aug 23, 2010 at 04:05 PM
———
Dear IANAE,
I believe that anyone with a strong opposing opinion about the mosque would have commented by now. None have – perhaps my comment rings true in readers’ minds.
Fellas, get a life!!
As much as I love Patently-O, and you know I do, there is nothing hallowed about it.
Those who work in the IP industry are people, Just people, hopefully people making a comfortable living in IP.
Posted by: Just an ordinary inventor(TM) | Aug 23, 2010 at 04:08 PM
———————————————————–
This is by no way scientific, but I have lost count of the number of times we have submitted in an IDS what we believe to be the closest prior art and the Examiner comes back with different art that is not only less relevant than our submitted art, but often nearly irrelevant. I don’t know if this means the Examiner is ignoring the submitted art or not, but that certainly would be a reasonable hypothesis.
Lionel to assuage your concerns, I should perhaps chime in from Europe. We gather over here that 1) it isn’t actually a “mosque” 2) in the context of densely populated lower Manhattan, it isn’t actually anywhere “near” Ground Zero, 3) any stick will do, and 4) on high quality blogs such as this, there is good reason to ignore posters who try to hi-jack the thread.
I’m mindful that, yesterday, another poster deplored those who indulge themselves here in “pissing competitions”. I think he was right too.
JAOI,
Just the sort of irrational, xenophobic stuff I’d expect from you.
I hope you’re out there opposing the building of YMCA’s two blocks from schools and/or planned parenthood offices.
I accept that as tacit approval.
Believe what you want. I don’t have the patience to deal with each of your particular delusions on an individual basis.
Dear IANAE,
This time!
You didn’t disagree, and I accept that as tacit approval.
I have come to expect no more of you – and that’s fine by me.
I take it that you agree with the sentiment of my comment.
In all the time I’ve been posting here, when have I ever done that?
Dear IANAE,
Thank you for your comment.
I take it that you agree with the sentiment of my comment.
Thanks,
I knew you’d put respect for your fellow Americans and especially New Yorkers above the lack of any particular need to build a mosque on the proposed construction site. A mosque there would offend, to say the least, millions of Americans and others worldwide.
Subject: A mosque near Ground Zero.
Wow. Someone’s in a trolling mood this morning.
Subject: A mosque near Ground Zero.
Pres. Obama finally came out on this riveting political, religious and moral debate giving his approval, and supporting his approval with reference to our Constitution.
Not one day later Pres. Obama withdraws his approval based on a judgment call.
Talk about flip-flopping based on public opinion!
This controversy has little, nay, nothing, to do with freedom of religion.
There are mosques all over NYC and our country with no more objection to Muslims practicing their religion than to Christians or Jews practicing theirs.
The conflict here, a new mosque near Ground Zero, has to do with common sense, courtesy and respect for your neighbors.
Especially, given that, historically, Islamic monuments and mosques around the world were built to commemorate victory against Islamic infidels, the idea of building a mosque near Ground Zero is crazy-nuts, a blatant affront to the common sense of all except some Muslims and Muslim sympathizers.
The outcry against a mosque near Ground Zero should come from within the peace-loving Islamic community – where, oh where, is their outcry?
Is there a peace-loving Islamic community? – their silence is deafening.
1) A nice piece of evidence is to have a look at the worksheets in the file wrappers. When an examiner didn’t seem to find the time to sign off the lines of form 1449 individually but just made a wavy line and initials on top and bottom of the page — What would you think about the amount of time spent per reference? – I’d say less than a second.. This actually turns the form into a “list of prior art submitted by the applicant and ignored by the examiner”.
In line with an anonymous posting (Aug 20, 01:52) “How many Federal Circuit cases have affirmed a theory of burying a reference?”: when examiners fail to consider art submitted in an IDS, if the applicant knows of a piece of art of particular relevance, there’s no safer way of hiding it from the examiner than just submitting it together with a bunch of other pices of more or less loosely related art in an IDS. And all of a sudden the presumption of validity has whitewashed the patent, making it at least at first sight “novel” over the submitted prior art.
For example: If the examiner looks at 50% of the submitted art: there’s a 50% chance of “burying a reference”.
2) A “hard” piece of evidence would be when a patent was found invalid based on art that was already listed on the front page. I’d love to know how frequently that happens.
“That’s what I am told – but why?”
Cause that be the law.
I’D LAUGH IF IT WASN’T SO SAD. SO SAD FOR YOU,NOT. IMAGINE I DON’T EVEN KNOW WHAT IT EVEN LOOKS LIKE. THAT’S WHY I CAN’T GET ANY THING. HOW ABOUT A LITTLE SMASH MOUTH BABEL BALL. IMAGINE SENDING WHAT YOU WANT ME TO SEND TO THE OFFICE BECAUSE I DIDN’T HAVE A CLUE. THIS HAS TO GO TO THE DIAMOND. SMALL ONE LARGE ONE IT DON’T MATTER. BUT IT MUST BE WRITTEN IN FLINTSTONE.
METIS
Hey Babel Boy,
It’s my turn now.
I ordered these things a long time ago. The order numbers on one set that took forever didn’t match what I ordered. So obviously all this time I thought what I signed was what I got. Oh how silly of me. I got what I thought was what I have been complaining about forever. So imagine my surprise when I realized (DUH) It’s not anything like I should have gotten. And the reason for that is because I didn’t know what I had. And I wasn’t supposed to get it. But I got it GET IT! GOT IT!
BROUGHT TOP YOU BY THE DOG DINO. THE DOG OWNED BY METIS. WUFF WUFF GAFFE!!!!!!!!!!!!
“(at which point the admission is implicit anyway)”
That’s what I am told – but why?
Ned makes a good point:
“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.” MPEP 609.
Maybe you could get an examiner to tell you whether or not a reference that you think is a “key reference” doesn’t render the claims anticipated or obvious, but it’s unlikely that an examiner would admit to this until allowance (at which point the admission is implicit anyway).
American C, “ignore” needs to be defined. “Review,” really means, according to the PTO, that the examiner has cursorily looked at the reference. But to us, that means “ignore.”
Our “ignore” is equivalent to the PTO’s “review.”
Dennis, I think we ought to look at what really is important – and that is the standard for “substantial new question of patenability” in a reexamination. If a reference is actually applied in a rejection, or mentioned in a Notice of Allowance, or as a basis for a reexamination order, it is completely “of record” so that it should properly forms the basis of a presumption of validity and ordinarily should not be the basis of a subsequent reexamination order.
Every other reference cited may or may not have been reviewed thoroughly by the examiner. The PTO gives no presumption that it has when considering whether it can form the basis of “substantial new question.”
As I mentioned in another thread, at times many of us would like the examiner to say something about a particular reference so that we may get on the record why we believe our claims are patentable over the reference. Simply citing the reference in an IDS provides no guarantee that the examiner will even look at it in any but a cursory fashion. I also do not think explaining reference in the IDS or background section is enough to assure that the examiner has fully considered the reference. Perhaps an examiner interview might do the trick so that we can get on the record that we actually discussed the reference with the examiner?
Regardless, any study should clearly limit “examiner used references” to references actually mentioned by the examiner in the prosecution history and not merely listed on some form.
To get back to Dennis’s basic Query: Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art?
Concluding that they ignore the references requires that the single most likely inference is that the examiner was intentionally derelict in his duty and committing fraud when initialling the PTO-1449, simply because applicant submitted references are not used often in making rejections. This is where recent IC cases are going as to an inference of intent to deceive based upon a bare record that the attorney had a reference he did not submit.
That is, Lemley’s accusation requires us to assume something nefarious about examiners, so it better be the only assumption that is reasonable. I don’t think it is the only assumption that is reasonable.
Is there any disincentive to willfully, carelessly, gratuitously, offensively accusing the other side of “inequitable conduct”?
If not now, should there be one tomorrow?
Only asking.
“Don’t we also have a duty to our clients to get the art actually considered during examination if we know the art to be material to patentability”
IANAE, ya sound like blah blah blah.
Do you know what “considered” means by rule? Do you know that by putting it on the IDS you have completed your obligation?
Really, it is that simple.
This isn’t about avoiding allegations.
It is to some extent. A lot of the relevant comments in this blog are about the hardship of being falsely accused of inequitable conduct, the deposition, the trial time, the distraction, and the eternal black mark on your reputation.
Pretty much every actual finding of inequitable conduct is based on deliberately withholding a reference someone knew was problematic, or withholding what was known to be the closest art. That kind of thing is easily avoided by simply being conscious, reasonable, and honest.
Remember, the “plague” is about how frequently it’s alleged, not how frequently it’s proven.
IANAE wrote,
Even if you file absolutely everything you’ll still catch the plague, same as everyone else.
and
Because litigators will argue pretty much anything, you know.
Amen. You can’t prevent the allegations by gigantic IDSes.
But you can prevent findings of inequitable conduct based on the art cited therein. How many Federal Circuit cases have affirmed a theory of burying a reference? This isn’t about avoiding allegations.
I have found that the first IDS submission can be very helpful if: I file it before the first OA and make sure it has only a few refs (3-10) that are really on point.
It’s great to see that someone here knows how to use an IDS form.
Just one question, though. At what point do you disclose all the unhelpful art “because of Rule 56 and the crazy case law on inequitable conduct”? Before the first office action or after? Are you at all concerned that you might contract the plague that’s going around by submitting some art when you believe the examiner will read it and other art when you believe the examiner will ignore it?
Because litigators will argue pretty much anything, you know.