Ex Parte Contact with USPTO Examiners

Radio Systems Corp. v. Accession, Inc. (Fed. Cir. 2011)

Accession is a small private New Jersey corporation. Its owner, Thomas Sullivan, is also the sole employee and named inventor of the company’s patent. Accession makes and sells a pet door (the “Wedget”) that installs within a sliding glass patio door. Accession’s Patent No. 7,207,141 issued in April 2007 and claims this “portable pet portal insert for use with a sliding patio door.” Radio Systems is headquartered in Tennessee and makes pet-related products, including a patented electronic pet access door (the “SmartDoor”).

The personal jurisdiction holding in this case will be discussed in a different post, but here I wanted to bring up the interesting facts regarding Accession’s ex parte contact with the USPTO regarding Radio System’s pending patent application. Judge Bryson explains the facts as follows:

On August 20, 2009, Accession’s counsel left a voice message with the PTO examiner for the [Radio Corp] SmartDoor application, alerting the examiner to the existence of Accession’s ’141 patent. On the same day, Accession’s counsel telephoned Radio Systems’ counsel and stated his position that the SmartDoor infringed the ’141 patent and that interference proceedings would be warranted between the ’141 patent and the SmartDoor application. Later that day, Accession’s counsel left a voice message with Radio Systems’ counsel indicating that Mr. Sullivan should be named as a co-inventor on the SmartDoor application. On August 25, 2009, Accession’s counsel sent an e-mail to Radio Systems’ counsel asking whether Radio Systems had brought the ’141 patent to the attention of the PTO. The next day, the PTO examiner returned the phone call of Accession’s counsel. As a result of that conversation, the PTO withdrew the notice of allowance previously issued for the SmartDoor application. On August 28, 2009, Accession’s counsel sent an e-mail to Radio Systems’ counsel informing him of the communication with the examiner.

Of course, third-party contact with an examiner is expressly prohibited under the Manual of Patent Examining Procedure unless expressly authorized by the applicant. Further violating procedure, the USPTO Examiner then returned the telephone call and based upon the information learned issued a “Notice of Withdrawal from Issue.”

Once an examiner learns of important prior art it, that examiner should use the prior art. Here, the examiner cited the Sullivan patent as prior art against claim 17 of the SmartDoor application and indicated that the “pertinent prior art document” had been disclosed in a telephone conversation with Accession’s patent attorney on August 26, 2009. In response, Radio Corp cancelled claim 17.

In its brief, Accession attempted to rebut the argument that its attorney had done anything wrong – writing that:

Nothing in the record could establish that the Patent Office considered Accession’s contacts to be “wrongful.” Indeed, after the first contact, a voicemail left by Accession’s counsel with the patent examiner, the Patent Office reached out to Accession’s counsel and subsequently took action it believed appropriate. That action did not include sanctions against Accession. There is nothing in this record (or elsewhere) suggesting that the Patent Office found Accession’s counsel’s actions to have violated any rule, policy, or law. Further, the record demonstrates that the sole purpose of the contacts was to alert the Patent Office to the fact that the Radio Systems pending application was deficient.

What should happen here?

184 thoughts on “Ex Parte Contact with USPTO Examiners

  1. I have no problem extending the time period for response from two months to three months and then with fees to the maximum of six months.

    However, we should distinguish the submission of art and an actual response to office action – as the submission of art explicitly calls for only the submission of art and not for third party commentary on that art. So your premise of needing time to develop any type of patentability opinion or compose observations is off the mark.

    Notwithstanding such an error, I still would have no problem with expansion of repsonse time of up to four additional months.

  2. I posted mine below, before I saw yours above.

    I welcome anything that encourages folks to give emerging A publications the attention they ought to receive. Thus, the EPO gives an Applicant 6 months from publication of its search report and patentability opinion, to decide whether to pay the EPO to do its examination on the merits.

    I think 3rd parties need just as long to file such observations on patentability as spring to their minds when they are reviewing the A publications of their competitors. Two months is deliberately far too short.

  3. I can see that comment on whether the law makes sense or not is boring for you. Much more fun for you is to beat up another contributer. I’ll leave you to it then.

    This 2 month cap is effective to extinguish all informed and effective 3rd party observations on patentability, before they are even composed. How long does it take, to review emerging A publications and then compose effective observations on patentability? As long as to respond to a FAOM, perhaps? Three months shall we say?

    What does this 2 month cap, plus C+C after issue, do for public confidence in the Presumption of Validity? The whole thing is a joke. Oops, you call it a “strong patent system” don’t you, and the reason why the 20th century belonged to America.

  4. is not the Examiner free just to ignore them?

    You miss the point – in order to determine whether or not they are rubbish, the examiner would have to, well, examine them. That examination is clearly against the rules.

    And does this not make a nonsense of the idea that the PTO is at all interested in anything that might have a bearing on the presumption of validity of the patents it duly issues?

    Not at all – the art can be submitted – but you have to follow the rules (specifically the timing rules). IN fact, having such timing rules should make people more attentive to the patent system and make people more inclined to do a little something that forms the basis of even why the patent system exists (that little somethign has to do with dissemination of the disclosures submitted by applicants).

  5. “But if the observations are rubbish, is not the Examiner free just to ignore them?”

    Even determining that they are rubbish would require the examiner’s time. That’s the whole point of Rule 99. Give the public a limited time in which to submit information, and don’t permit comments from those submitting the art. And this decision from OED makes it clear: if you miss your Rule 99 opportunity, you’re done. Wait until the patent issues, and if you have an issue with the patent, file a 3rd party request for reexam.

    Ned is wrong. He was told that over and over and he insisted he wasn’t wrong.

    Ned is wrong.

    I’m sure he’ll come back with a Supreme Court decision from 1817 that says he’s right, but he’s wrong.

    Wrong. Wrong. Wrong. Wrong.

  6. Many thanks, that contributer. I can see why the PTO wants no truck with 3rd party submissions of relevant prior art during its examination on the merits. It gives the Examiners more work and is a temptation to 3rd parties to use, to delay the issue of patent rights to their competitors.

    But if the observations are rubbish, is not the Examiner free just to ignore them?

    And does this not make a nonsense of the idea that the PTO is at all interested in anything that might have a bearing on the presumption of validity of the patents it duly issues? One would think it might welcome observations, from experts in the field, on the degree to which the Examiner can rely on the blandishments of Applicant’s zealous advocates during ex Parte examination on “the merits”.

  7. From June 14, 2011 Official Gazette:

    Notice of Reprimand

    Eugene F. Derényi of Ottawa, Ontario, Canada, registered patent agent
    (Registration Number 52,409). The United States Patent and Trademark Office
    (“USPTO” or “Office”) has publicly reprimanded Mr. Derényi for violating 37
    C.F.R. § 10.23(b)(6) (engaging in conduct that adversely reflects on a
    practitioner’s fitness to practice before the Office) by making third party
    submissions in another person’s patent application that did not comply with
    37 C.F.R. § 1.99.

    On four occasions, Mr. Derényi filed papers in another person’s published
    application without the applicant’s consent, outside the allowable time
    period, and without submitting adequate justification to permit the
    out-of-time filing. Mr. Derényi erroneously interpreted the patent rules as
    permitting his submission of prior art beyond the permissible two-month
    period. He mistakenly believed that the patent rules permitted him to file
    the submissions, while monitoring the examination on the USPTO’s public
    Patent Application Information Retrieval System, when he subjectively came
    upon information that might be relevant to the ongoing examination of the
    other person’s application. On one occasion, information submitted by
    Mr. Derényi contained annotations and other markings. Additionally, he spoke
    directly with the patent examiner assigned to the application on several
    occasions. Mr. Derényi mistakenly believed that these contacts with, and
    third party submissions to, the examiner were permitted. In short,
    Mr. Derényi’s interaction with the Office violated rules pertaining to a
    third party’s involvement in another person’s application during the USPTO’s
    ex parte examination process.

    A third party is permitted to submit patents and publications in another
    person’s published application within two months of the date of publication
    of the application or prior to the mailing of a notice of allowance,
    whichever is earlier. See 37 C.F.R. § 1.99. Any submission by a third
    party beyond the time limits set forth in 37 C.F.R. § 1.99 is permitted only
    with the applicant’s consent or upon a showing that the patents or
    publications could not have been submitted to the USPTO earlier. See 37
    C.F.R. § 1.99(e). Moreover, a submission under 37 C.F.R. § 1.99 shall not
    include any explanation of the patents or publications or any other
    information. See 37 C.F.R. § 1.99(d). Highlights, marking, and annotations
    are likewise prohibited. See Manual of Patent Examining Procedure (MPEP)
    § 1134.01. Finally, the involvement of a third party ends with the filing of
    the submission, and the third party should not contact the Office or submit
    any other inquiries. See MPEP § 1134.01.

    The USPTO considers the filing of a petition or other paper on behalf of
    a party having no standing in an application, and not otherwise authorized
    by the patent rules of practice, to be a petition or paper presented for an
    improper purpose. See 37 C.F.R. § 11.18. Filings by a third party in
    published applications other than those expressly permitted under 37 C.F.R.
    § 1.99 may be referred to OED for appropriate disciplinary action. See “Third
    Party Attempts to Protest or Otherwise Oppose the Grant of a Published
    Application,” Official Gazette (April 22, 2003) (publicly available at
    link to uspto.gov)

    This action is taken pursuant to the provisions of 35 U.S.C. § 2(b)(2)(D)
    and 37 C.F.R. §§ 11.20, 11.26, and 11.59. Disciplinary decisions regarding
    practitioners are posted at the Office of Enrollment and Discipline’s Reading
    Room located at: link to des.uspto.gov.

    May 23, 2011 MARIA C. CAMPO
    Acting Deputy General Counsel for General Law
    Office of General Counsel
    United States Patent and Trademark Office

  8. And shrieked at the top of his/her lungs, “Oh my, I never!”

    Seriously, should the Examiner have also ignored the reference? If so, how does that serve the interests of the public, or the interests of judicial economy? If not, then would you really punish the discloser for violating the letter of a USPTO procedural rule, while acknowledging that the disclosure itself had substantive value to the public and the patent system? I think this case is just another indication of USPTO procedural rules and policies that frustrate rather than serve the public interest.

    Can anyone logically defend the current system that enables a third party to file a protest only while an application is secret, but after it publishes, bars all protests, except for the toothless and useless Rule 99 submission? That is, except that it insulates the USPTO from having to do the work of dealing with protests and more prior art?

    Wouldn’t it really be more efficient and fair to enable protesters to effectively submit their references and arguments against patentability while the original application is pending, rather than requiring them to wait until the application issues and then file a reexamination request (that now will be granted only if they can show “a new technological teaching that has not been previously discussed on the record during original prosecution”) or requiring them to challenge validity of the issued patent in Federal Court, but then with a presumption of validity?

    As for this case, I think these Radio Systems people have nothing to complain about, despite the violation of rules by Accession’s counsel. If the reference is really that good, they were saved from getting an invalid patent that would have drained them of hundreds of thousands of dollars in litigation, only to learn that the patent is invalid in the end after all.

  9. I’m with you, TF. I read all the posts, and checked all the cited rules and statutes. I don’t see it either. Several posts mention rules apply to ex parte proceedings, others have mentioned rules of conduct that apply to proceedings before a tribunal. None of these apply to this situation.

  10. With all due respect, my comment was posted after having read each of the preceding posts.

    Having read those posts, I fail to see any that cites a rule that was violated by Accession’s counsel. My question for those villifying the conduct of Accession’s counsel, is simply:

    WHAT RULE WAS BROKEN?

    I can understand a patent applicant not being amused that another would bring to the attention of an examiner relevant prior art that the examiner missed. I do not understand the basis (if, in fact, there is any) for claiming that the one who brought the art to the examiner’s attention has violated a legal or ethical rule. If, in fact, there is any such basis, I would like to know what it is so that I and the other patent attorneys I counsel can avoid any such violation.

    CAN ANYONE CITE A RULE OR ETHICAL STANDARD THAT WAS VIOLATED BY ACCESSION’S COUNSEL? (or are the posts here mere rants and raves?)

  11. I cite the rule itself:

    From rule 1.131:

    “Prior invention may not be established under this section if either:

    (1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in § 41.203(a) of this title, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this title; or”

    and

    § 41.202 Suggesting an interference.

    (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:

    Note, the patentee in reexamination cannot suggest an interference.

    Big stinking hole in our laws and procedures, n’est-ce pas?

  12. Question, during reexamination, the examiner cites a reference not a statutory bar disclosing and claiming the same invention.

    You file an affidavit demonstrating prior invention.

    The examiner rejects your affidavit based on the “rule” that 131 affidavits cannot be used to overcome a reference claiming the same invention because an interference must be declared. You respond by observing that the patent office has NO JURISDICTION to either declare or adjudicate an interference between two patents and that he has no LEGAL grounds for maintaining the rejection given the proofs of prior invention.

    Who wins on appeal?

  13. PIMPIN’ RIG this

    PIMPIN’ RIG this
    PIMPIN’ RIGth is
    PIMPIN’ RIGht is
    PIMPIN’ is RIGht
    PIMPIN’ is Right
    PING is Right
    ping is Right

    The code O 6 is revealed.

  14. There is no question the owner of interfering patent has a right of action against the owner of the other patent that interferes. Today the right of action is provided by statute. But historically the right of action was in equity. The case law even historically required that the second patent actually issue. I haven’t read the cases as to why the courts refused to enjoin the Commissioner from issuing the interfering patent, but I believe it has to do with ripeness. However, given all the developments in law since, I believe I could get a TRO against the Commissioner from issuing a patent that clearly interfered with my own, where the remedy I sought was the consideration by the Commissioner of whether the there were grounds for interference in fact. If he decided that in his opinion, given knowledge of my patent and the claims of the pending application, that there was no interference in fact, his opinion would be entitled to deference. The problem we have here, is that the Commissioner has blocked the examiner from receiving the information about the potential interference at all, under a rule that clearly does not apply or should not apply to these facts.

    As to your second question about how there could be an interference between two patents were one is prior art to the other, I think the answer is that there can be interference, but the second filed patent will quickly be declared invalid in the interference.

    Given all of the above, it is a wonder that the patent office does not provide a procedure for third parties to file a protest against the issuance of a patent that contains interfering claims and would rather learn about it by having a lawsuit filed against the Director.

  15. So please explain to me

    Careful IANAE, all ya gonna get is a conclusory statement of Ned’s position and an invitation to read cases.

    Cause thats how Ned does his esplaining.

    Yeah, the way that Ned (mis)reads cases all that amounts to his Ned’s version of the handwaivy thingie with no real explanation.

  16. I don’t really see the problem here, regardless of whether the Accession (company) contact was an attorney or not.

    Someone mailed potentially relevant prior art to the examiner of a published application.

    The Examiner had every right to ignore it, and there was nothing the “someone” could do if the examiner did ignore it. Given the apparent relevance of the submitted art, the examiner decided not to ignore it. Issuance of a ‘bad’ patent was potentially avoided.

    Certainly, the MPEP counsels examiners to ignore third-party submissions (and examiners aren’t likely to improve their productivity by considering third party submissions, especially the potentially large ones that “the big boys” can submit).

    Given that patent examination is ex parte (i.e., NOT an inter partes procedure), no OED or state bar rule appears to have been broken. (In fact, the OED rule most potentially relevant to the discussion so far regarding “impropriety” appears to be 10.23(c)(12):

    § 10.23 Misconduct.
    (c) Conduct which constitutes a violation of paragraphs (a) and (b) of this section includes, but is not limited to:
    (12) Knowingly filing, or causing to be filed, a frivolous complaint alleging a violation by a practitioner of the Patent and Trademark Office Code of Professional Responsibility.

    Other than potentially representing his/her client poorly (e.g., examiner considers art, issues patent anyway; potentially greater burden to prove invalidity of issued patent), what did Accession’s counsel do wrong?

    The rules already provide that third party don’t have a _right_ to have their submissions considered, and examiner’s don’t _have_ to consider their submissions (outside narrowly delineated circumstances). What’s the harm here?

  17. Your silly assumptions and proposals have been so thoroughly refuted by MM, IANAE, broje, etc. that I’m not going to waste any more time than it takes me to finish this post.

  18. Ned: The PTO has no legal authority or right to issue a second patent on the same invention.

    I think you’ve solved both your problems right there. It’s a cloud on the second patent, not the first, because the second one would be the improperly issued one. Also, it sounds like a pretty good basis for invalidating the second patent later on if it ever becomes problematic.

    And really, this is all a flimsy rationalization because it turned out the whole sordid affair was resolved by the simple expedient of canceling claim 17. It’s clearly a case of a vindictive patentee griefing a third party who didn’t want to pay him royalties.

  19. If you assume the issuance of an interfering patent is a harm to the patent owner per se,

    But I don’t assume that. Because I don’t see the harm, and I don’t see the interference.

    So please explain to me (1) what the actual harm is, or on what basis it’s reasonable to consider it a harm per se, and (2) how two patents can interfere if one is prior art against the other.

    And even if I did assume that, I’m curious as to why any “harm” of this type would entitle anybody to a remedy. Lots of patents get issued that are immediately problematic for lots of other people in one way or another, and none of those people are entitled to any sort of “fundamental” right to prevent it from happening. Even if the patents happen to be invalid.

  20. The attorney should not have interefered with Radio Systems statutory right to a patent unless.

    unless…

    …just what is the get-out-of-jail-free card to be played? Just what is the ends-justify-the-means rationale to be so liberally applied here?

    See my post above – rules and consequences…

  21. Ned-O-gram,

    Review your last statement and apply it to yourself.

    Awfully funny just who needs to “Got to school

  22. Ya gotta love this – I poke Sunshine with my pointy stick and if he dont answer I get the last best word and if he do answers he shows how d_umb he is and I still get the last best word.

    Life is good.

  23. You’re not allowed to assume things you know aren’t true.

    You are also not allowed to assume things you don’t know aren’t true.

    Any ASSumptions are not allowed.

  24. What should be done. That is easy. The USPTO should be happy that they are not sued under the Federal Tort Claims Act for gross negligence that amounts to an intentional act that would have caused serious damage to Acession’s business. In return they should thank the attorney for his efforts in protecting the integrity of the patent system. However, Accession could be sued by Radio Systems for violating its statutory rights granted under Title 35. I love these simple fact patterns. The attorney should not have interefered with Radio Systems statutory right to a patent unless.

  25. should have allowed the patent he knew was invalid

    Go back to counting Justices – something ya can do with both hands.

    IF the examiner did what he was supposed ta do he woulda truly ignored the reference – thus, that references would not have been examined and whether or not that reference impacted patentability would be moot.

    You are assuming de facto that the supplied reference makes the patent invalid.

    Bad ASSumption.

  26. Two patents on the same invention? See the Senate (or was it the House) report on interfering patents in the legislative history of the Patent Act of 1836 reprinted in Chisum.

    Also, the existence of a patent of another issued by the PTO to the same invention is a cloud on title.

    Irreparable? Until and unless the other patent is voided, one’s own patent is impaired by the cloud. The PTO has no legal authority or right to issue a second patent on the same invention. It harms the exclusive right of the first patentee, is unauthorized by any statute, and is ultra vires by any measure.

  27. And then the examiner should have allowed the patent he knew was invalid to issue. Just another day in the big city.

  28. The damage is done and is substantially irreparable if the interfering patent issues.

    What damage to the owner of the first patent has in fact occurred and why is it “substantially irreparable”?

  29. Casual, I’m not so sure whether the issue is whether the to-be-issued application was invalid, which is a matter of general public interest, or whether the patent owner was objecting to the issuance of an interfering patent, which is an entirely different kettle of fish.

    The facts here suggest the problem was of the interfering patents variety. This justified the approach to the PTO.

    If the issue was only prior art, the interference may not have been justified.

  30. Now remedies wanted on assumed per se basis? And the assumption of an actual interference is on whose word…?

    I dunno Ned, seems ta smack O certain due process, er um, (D)ue (P)rocess issues.

  31. If you assume the issuance of an interfering patent is a harm to the patent owner per se, then the patent owner has a right to stop it before it happens. This is fundamental.

  32. IIRC, the examiner will not invoke an interference until he is willing to allow the claims.

    From the point of view of the patent holder, I would suggest still that his interests in intervening are not ripe until the interfering claims are allowed.

  33. IANAE, about the relevant dates in this case, I might tend to agree with you that the ’141 patent may have been a statutory bar. But the OP by Dennis does not have these additional facts. I am not sure that the Federal Circuit’s summary of the facts is sufficient to resolve the issue of whether the 141 was a statutory bar.

  34. to address concerns that 3rd parties would do this after applications started being published on a routine basis

    See my observation above.

  35. The patent owner should not be left without a remedy until the damage occurs

    Um, I dont know – ya mean that there are remedies before damage occurs? So if I think I might be damaged I canget a remedy?

  36. Yeah baby ! my main man is back in the saddle.

    The posse has been quite lost without ya, IANAE.

    Hmmm, maybe that was the reason for the long hiatus – tryin to lose the posse hanger-oners…

  37. But the PTO has a great deal of discretion in promulgating administrative rules for registering and sanctioning practitioners, doesn’t it?

    Absolutely. 35 U.S.C. 122 (which says NOTHING to practitioners or to the general public) gives the Director power to develop procedures to prevent pre-grant oppositions/protests. The PTO used this authority to develop specific rules that tell PTO staff how to behave. They could have issued rules that expressly proscribe certain contacts, under penalty of sanction, but they did not.

    And surely you must agree that the PTO would have a remedy if the practitioner called all day every day, refusing the take the Examiner’s “no” for an answer. What is there to prevent the PTO from sanctioning the practitioner for calling in the first place?

    There are already rules of conduct addressing behaviors that are intended merely to harass, delay, etc. In fact, 35 USC 122(c) was passed to allow the PTO to address concerns that 3rd parties would do this after applications started being published on a routine basis. But one out-of-school phone call that the examiner was supposed to ignore in the first place doesn’t rise to the level of harassment. Certainly that call was intended to delay issuance, but it was not merely to delay.

    Once again, I’m not excusing or forgiving Mr. Watov’s conduct – it’s not my place to do so. I’m simply arguing that the PTO has no real basis for a sanction. If they consider that to be a problem, they’re already empowered to fix it, as far as I can tell.

  38. The second filer in reexamination would have to seek a remedy in the courts or would have to file a reissue application and seek an interference. Reexamination does not provide an adequate remedy all around.

    But Accession was the first filer. Accession’s patent was prior art. So your argument is that Accession was justified in breaking the rules because otherwise Radio Systems would be without remedy because they’d have a choice of two remedies? Very magnanimous of Accession, but not very plausible.

    Ned: The patent owner needs a remedy through PTO procedures to request an interference after a pending patent application has been allowed.

    Why?

    Let’s crazy up the facts a little, and suppose that Radio Systems’ patent was subject to non-publication. So Accession first finds out about it after it issues, and Accession’s patent has also issued by then, leaving no progeny. Even on those facts, does Accession have a problem? Would the problem depend on Accession being the junior filer with a strong case for prior inventorship? Or are you simply not pleased with the available remedies because they involve a lot of court time? Because I note that the two parties are currently in litigation over Accession’s approach to the situation.

  39. “None of these support the PTO’s assertion that there is a “statutory prohibition” on a phone call from an attorney. I would not take the aggressive approach that Mr. Watov did, but I don’t think there’s a very strong basis for a sanction.”

    That is a point I have been thinking about. But the PTO has a great deal of discretion in promulgating administrative rules for registering and sanctioning practitioners, doesn’t it? And surely you must agree that the PTO would have a remedy if the practitioner called all day every day, refusing the take the Examiner’s “no” for an answer. What is there to prevent the PTO from sanctioning the practitioner for calling in the first place? But I doubt the PTO will want to sanction a practitioner for calling once, especially where it appears that the Examiner not only failed to rebuff the contact and notify the practioner of the prohibition as instructed, but allegedly responded int he prohibited manner. I would think the PTO would want to save its sanctions for practitioners who ignore the warning once it has been given.

  40. Ned: But, consider this: the potential for issuing interfering claims becomes “ripe” only after the PTO issues a notice of allowance. Up until that time, there can be no interference declared.

    I think you have that backward. The time for an interference is before allowance, when at least one of the two applications still has prosecution open. Preferably within a year of the publication of Accession’s patent/application (which it wasn’t), when there would still have been time to copy a claim to provoke the desired interference. But certainly during the 10 months or so when the claims were sitting in the public record awaiting a first action.

    I’m also not really sure what good an interference would have done. Accession’s patent was published long before Radio Systems’ priority date. Shouldn’t Accession be satisfied with their own patent being prior art? What more could an interference do, besides give Radio Systems a chance to improve its date?

    Besides, the examiner only thought Accession’s patent was good enough to kill claim 17 (which it anticipated). If the reference can’t anticipate the remaining claims, it’s worthless in an interference.

    And you still haven’t explained what the harm would be to Accession, unless you mean the loss of a chance to provoke an interference, which they had plenty of time to do before allowance, and which was no real advantage to them anyway. It sounds like Accession was simply looking for a sneaky way to grief a competitor who declined to take a license on their terms, and was polite/naive enough to give them a serial number before the patent was a fait accompli.

  41. The patent owner already has a remedy to submit the patent under 1.99.

    Even if the patent owner was not vigilant, and did not submit within 2 months of publication, who is to say what the Office would consider sufficient explanation for why it could not be submitted earlier? For example, what if the allowed claims are different from the published claims? There is a republication procedure that would allow the applicant to republish after amending claims, and wouldn’t that reopen the window for submission under 1.99? Should the patentee be deprived of the opportunity to submit the art under 1.99 simply becasue the applicant chose not to pay for republication? Given that the electronic file wrapper is public, is it not reasonable for the office to accept any 1.99 submission within two months of an amendment by the applicant?

    What, in your mind, is sufficient reason for why a reference could not be submitted within two months of publication?

  42. After the interfering application issues, there is no really acceptable remedy. If the patent owner is a second filer, there is no basis to request a reexamination. If he is the first filer, invoking a reexamination is simple. However, the patentee under reexamination now has no adequate remedy. The PTO could not accept his 131 affidavit because the claims are interfering. The second filer in reexamination would have to seek a remedy in the courts or would have to file a reissue application and seek an interference. Reexamination does not provide an adequate remedy all around.

    The available alternatives are on the whole ridiculous. The patent owner needs a remedy through PTO procedures to request an interference after a pending patent application has been allowed.

  43. Welcome back IANAE. I missed jousting with you.

    You may have a point there about timing. But, consider this: the potential for issuing interfering claims becomes “ripe” only after the PTO issues a notice of allowance. Up until that time, there can be no interference declared.

    Think about filing for a TRO in court. The judge would say that you are arguing hypthetical cases unless and until the PTO states on the record its intention to allow the claims.

  44. So, you suggest the “proper” remedy is to sue in the DC district court and seek a TRO against the director?

    Really?

    Remember, I recommeded that the PTO adopt a procedure to handle this situation.

  45. Ned: The patent owner should not be left without a remedy until the damage occurs.

    He’s not “without remedy”, he’s out of time for his remedy. An interference could have been provoked as soon as the most recent claims were filed, which must have been months before allowance. With a little insight, an interference could have been provoked as soon as the application was published.

    My client shouldn’t be without remedy if he thinks of a really clever argument seven months after the mailing date of a rejection. And he’s not, really, he’s just too late. Should have acted earlier. The system has no sympathy for him, and rightly so.

    Ned: What was the alternative that could have prevented the application from issuing?

    That’s a pretty loaded question, the way you posed it. One obvious alternative is to do nothing and let the patent issue. What would the actual harm be? Would the fact of the patent issuing somehow invalidate Accession’s patent in a way that the published application with the public file wrapper and the exact same claims pending could not have done? Would he infringe this newly-issued patent? Well, it’s either valid or not, and there’s more than one way to skin that cat even post-grant. Has he been threatened with litigation once the patent issues? What is this “immediate palpable damage” you’re on about?

    And even if (arguendo) there’s no lawful remedy, is that any reason to break the rules? You’re not entitled to a remedy merely because a competitor is about to get a patent. Even if that patent would cost you money.

  46. Said, all this goes to show is that the PTO really needs to provide a remedy for the owner of an interfering patent to prevent the issuance of an interfering application after notice of allowance. The damage is done and is substantially irreparable if the interfering patent issues.

  47. Malcolm, I assume the statements of the attorney quoted in the opening post are correct. The claims of the application interfered with the claims in the patent; as well there appeared to be a problem of inventorship which also could be resolved in an interference and not ex parte.

    The issuance of an interfering patent has long been recognized as a harm to to the owner of the issued patent to the same invention. The law provide a court procedure for interferences in court between two issued patents. But there is no obvious way get the two patents back into the PTO where the interference should be conducted in the first place.

    Reexaminations are no remedy because the PTO had no ability to conduct interferences between issued patents. If the patent owner is a junior party, he has no basis for a reexamination in the first place. If the applicant is the junior party, he cannot request an interference with the issued patent to save his patent. He simply goes down in flames.

    Rule 99 does not allow the PTO to consider “prior art” after NOA. Now, if there were wiggle room here to require its consideration, and if the “prior art” could include later-filed applications or considerations of inventorship, then I would agree that such is preferable.

    But there is an obvious hole in PTO procedures regarding interfering patents and applications where the patent owner has no obvious remedy.

  48. Assuming for the sake of THIS argument that the issuance of an interfering patent harms the patent owner, what alternative does the patent owner have, really?

    Last time I checked, the Federal courts were still open.

  49. Yeah, sure. See you in court on this one. The attorney was trying to prevent immediate palpable damage to his client by the PTO issuing an interfereing patent. Thee PTO rule did not provide an adequate remedy. He acted as best he could under the circumstances to protect his client.

  50. TINLA, the PTO has no authority to declare an interference between issued patents. The damage would have been done.

    The patent owner would have been left with a 291 action. But that remedy assumes damage. The patent owner should not be left without a remedy until the damage occurs. That is nonsense.

  51. What, correct me if I am wrong:

    1) Rule 99 requires a submission prior to NOA; but the need for an interference presents itself after a NOA. Prior to that, the issue is not “ripe.”

    2) A reexamination is no remedy if the now issued patent has an earlier filing date.

    3) A reexamination is no remedy for the now issued patent if he cannot swear behind the other patent claiming the same invention if the patent reference has an earlier filing date.

    4) The PTO cannot declare an interference between two issued patents.

    Assuming for the sake of THIS argument that the issuance of an interfering patent harms the patent owner, what alternative does the patent owner have, really?

    Explain.

  52. Contacting a Group Director to inform the Group Director that an issued patent recites a claimed invention that violates the laws of physics is different from what the Accession attorney did in this case which was to interfere with the prosecution of a competitor’s patent application in a manner that directly and unambiguously violated rule 122(c).

    Rambling: I agree with Ned Heller and Paul Cole: the attorney in this case did the right thing.

    All three of you are off on some warped “end justifies the means” trip. Ned still hasn’t explained how Accession’s rights in its own patents would in any way have been impacted by the issuance of Radio Corp.’s patent.

    And as an aside, the Blacklight Power case is a rather dramatic joke given the USPTO’s issuance of patents on homeopathic treatments, which equally lack a scientific basis and which contradict all of the well-controlled scientific studies demonstrating that homeopath practitioners are quacks, at best, or frauds.

  53. 1. Initial contact: I don’t thing the following raises any issues: “On August 20, 2009, Accession’s counsel left a voice message with the PTO examiner for the [Radio Corp] SmartDoor application, alerting the examiner to the existence of Accession’s ’141 patent.” Accession’s counsel only used publically available information and it wasn’t a submission requiring the Examiner to act.

    2. PTO examiner and Accession’s counsel conversation. Yea, they both are screwed. PTO examiner can’t prove he did not communicate confidential info and, if he communicated confidential info, Accession’s counsel received it. PTO examiner’s impressions are confidential unless put in a public document.

  54. So much for the golden future, I can’t even start I’ve had every promise broken, there’s anger in my heart
    you don’t know what it’s like, you don’t have a clue if you did you’d find yourselves doing the same thing too

  55. the attorney in this case did the right thing

    So much for the golden future, I can’t even start I’ve had every promise broken, there’s anger in my heart
    you don’t know what it’s like, you don’t have a clue if you did you’d find yourselves doing the same thing too

  56. Blacklight Power v Rogan: link to scholar.google.com. PTO sua sponte withdrew application after issue fee was paid b/c the claims appeared to violate the laws of physics. And how did the PTO become aware of this? All that the CAFC decision says is that the Group Director was “prompted by an outside inquiry” that came after a related application issued as a patent. Haven’t look on PACER to see if the pleadings shed more light re how this came up, but I agree with Ned Heller and Paul Cole: the attorney in this case did the right thing.

  57. “But the situation is quite different in a proceeding that’s ex parte by nature and is not supposed to be adversarial. Either the art is relevant or it’s not – the PTO gets the last word on that.”

    To which David Stein replied (upthread)

    (1) Yes, it’s supposed to be ex parte… because no adversarial party is involved. Accession’s intercession, by definition, makes it inter partes. And, not coincidentally, it had exactly that effect on the Examiner.

    (2) You could easily make the same argument about counsel for a party in a trial contacting the judge ex parte to discuss an aspect of a case – e.g., the admissibility of a piece of evidence. Judges are supposed to rule on procedural matters in a totally objective and disinterested manner, right? And yet, these types of contact are strictly forbidden with high penalties.

    I didn’t want this comment to be lost in the shuffle so I’m copying down it down here. The excusers/apologists in this thread are missing the point badly.

  58. “But the situation is quite different in a proceeding that’s ex parte by nature and is not supposed to be adversarial. Either the art is relevant or it’s not – the PTO gets the last word on that.”

    (1) Yes, it’s supposed to be ex parte… because no adversarial party is involved. Accession’s intercession, by definition, makes it inter partes. And, not coincidentally, it had exactly that effect on the Examiner.

    (2) You could easily make the same argument about counsel for a party in a trial contacting the judge ex parte to discuss an aspect of a case – e.g., the admissibility of a piece of evidence. Judges are supposed to rule on procedural matters in a totally objective and disinterested manner, right? And yet, these types of contact are strictly forbidden with high penalties.

  59. I be saying ya haven’t accounted for it.

    I not be saying it applies in the instant case.

    I will also say that it be a bit of handwaiving on your part to state that it is seldom used (that be a pretty vacuous assertion)

    Whether it soon wonr be available or not – aint no tellin yet – that egg aint done yet hatched.

  60. I’m aware of the issue of the possible burying the examiner in art….The office can address that by ignoring it….under the assumption that the office knows how to find art and if its out there and relevant it will be found by the office….but if the office takes that position, then it should remove the duty to disclose….and stop whining that it doesn’t know how to search for software….

  61. True enough. Best to just skip anything pingaling writes that is more than twenty words or so. I assume everyone knows why pingaling talks like a Thingfish so I won’t bother explaining again.

  62. That is seldom used…and I think it is no longer available or soon wont be available. Are you saying you know it to have been used in this case?

  63. Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to any third-party inquiry or other submission in a published pending application; (2) not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in 37 CFR 1.99 and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and (3) decline to accept oral or telephone comments or submissions about published applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate.

    See my observation herein (the one that stumbles the simple minded).

  64. the rule of No Harmus, no Foulus

    See above.

    If ya have no consequence, get rid of the rule/law.

    If the rule/law has meaning, ya gotta have a consequence to breaking such.

    As my old third grandfather Teddy used to say:

    Speak softly and carry a big stick

  65. Who said anything about telling a secretary. It WOULD be ok for a non-attorney inventor, say Mr. Sullivan, to make the call. It just wouldn’t be ok for him to ask his lawyer to make the call.

    Any such rule is silly on its face and should be done away with.

    The PTO complains that it doesn’t know where to look to search for software, for example, but at the same time they have rules that say third parties are not allowed to tell them about relevant documents. That’s just insane.

  66. A patent owner has Rule 99 and the ex parte reexam procedure for dealing with pending apps and pending apps that issue as patents. Shouldn’t a patent owner use those less costly procedures before getting an interference? Should the resources of the already swamped BPAI be called into action before it is even determined that the pending app would be allowable but for the patent owner’s patent?

    Your proposal is not well thought out.

  67. TINLA Patent prosecution is not an adversary proceeding. it is supposed to be between an applicant and the Office. An interference cannot be declared until the patent issues. That would have been the proper procedure,

    Yup.

    The Accession attorney behaved badly. He should be punished, not rewarded.

  68. 35 U.S.C. 122(c) provides that the Office “shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.” Accordingly, the Office prohibits third parties from submitting any protests under 37 CFR 1.291 or initiating any public use proceedings under 37 CFR 1.292 (without the express written consent of the applicant) after publication of an application. These are the only forms of third party protest or pre-issuance opposition to a pending application permitted by the rules of practice. For more information on protest see MPEP § 1901; for public use proceedings see MPEP § 720. Third parties may submit patents or publications for consideration in a pending published application, with no further comment or explanation, pursuant to 37 CFR 1.99. See MPEP § 1134.01.

    Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to any third-party inquiry or other submission in a published pending application; (2) not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in 37 CFR 1.99 and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and (3) decline to accept oral or telephone comments or submissions about published applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate. See Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.99, by registered practitioners in published applications in which the applicant has not provided an express written consent to protest, or pre-issuance opposition, to the Office of Enrollment and Discipline for appropriate action.

  69. bja, we quoted the relevant section fromt he MPEP above a day before you posted this question:

    1134 Third Party Inquiries and Correspondence in a Published Application [R-2]

    35 U.S.C. 122 Confidential status of applications; publication of patent applications.

    35 U.S.C. 122(c) provides that the Office “shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.” Accordingly, the Office prohibits third parties from submitting any protests under 37 CFR 1.291 or initiating any public use proceedings under 37 CFR 1.292 (without the express written consent of the applicant) after publication of an application. These are the only forms of third party protest or pre-issuance opposition to a pending application permitted by the rules of practice. For more information on protest see MPEP § 1901; for public use proceedings see MPEP § 720. Third parties may submit patents or publications for consideration in a pending published application, with no further comment or explanation, pursuant to 37 CFR 1.99. See MPEP § 1134.01.

    Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to any third-party inquiry or other submission in a published pending application; (2) not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in 37 CFR 1.99 and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and (3) decline to accept oral or telephone comments or submissions about published applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate. See Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.99, by registered practitioners in published applications in which the applicant has not provided an express written consent to protest, or pre-issuance opposition, to the Office of Enrollment and Discipline for appropriate action.

  70. I didn’t say that. But a lawyer can’t get a non-lawyer to do what the lawyer is prohibited from doing. So Mr. Watov can’t tell his secretary, “Hey, call up the examiner of US 11/971,553 and tell him he should reject the claims over our client’s patent/published app.”

    This is pretty elementary stuff. You can’t get around the rules by directing/telling/asking a non-lawyer to do it.

  71. Once again the rule of No Harmus, no Foulus should prevail.

    There is no harm here because if the examiner had done his job, she would have found the art in question and the outcome would have been the same.

  72. Looking glass – Have a glance at subsection (b). In a nut shell it says after the application has been pending 18 months, all restrictions are removed and the entire contents of the application and correspondence related thereto becomes public record.

    See for example, the Patent Application Information Retrieval system (PAIR)

    link to portal.uspto.gov

  73. Dennis, you say that ex parte contact is expressly prohibited, yet you don’t cite a rule, and people here are just stabbing at a prohibition.

    If it’s really expressly prohibited, to what rule are you referring?

    I know the prohibition on secret information applies to examiners (forgive the non-cite), but where is it expressly prohibited to contact an examiner to provide an examiner with additional information?

  74. Patent prosecution is not an adversary proceeding. it is supposed to be between an applicant and the Office. An interference cannot be declared until the patent issues. That would have been the proper procedure, but contacting the Examiner to prevent issuance of the patent circumvented that procedure.

  75. Dennis doesn’t consider his blog to be above that sort of nonsense, there’s not much more you can do.

    Lolz from my main man who taught me evrything I need ta know about carpet bombing anybody inta submission.

    Kudos to teh master!

  76. It would be interesting to know the dates and reasons for the last ten USPTO-administered sanctions against attorneys/agents.

    Saddle up boys, it be time for a good ‘ol windmill hunt.

  77. Also, changes to the rules to allow prior art to be cited any time is for congress to implement, not Accession.

  78. Clearly Accession attorney’s motivation was to hamper issuance at all cost, contrary to the rules of practice that provide certain time limits for submitting prior art and certain procedures for initiating an interference. Accession’s attorney apparent disregard for the rules of practice cannot be ignored. OED should therefore get involved and sanction the attorney. Disbarring should be limited to repeated offenses.

  79. it’s impossible to read throughout the comment.

    You could just not read the comment. It works great for me.

    As long as Dennis doesn’t consider his blog to be above that sort of nonsense, there’s not much more you can do.

  80. please stop with the poor grammar. It’s okay for one terse statement, but it’s impossible to read throughout the comment.

  81. This is why 37 CFR 1.99 needs to be modified so anyone can bring art to the attention of the Exminer at any time.

  82. Well, if you follow the rule of Aristocrat v. IGT, 543 F.3d 657 (Fed. Cir. 2008), for these situations, “What happens at the PTO, stays at the PTO”.

  83. But the situation is quite different in a proceeding that’s ex parte by nature and is not supposed to be adversarial

    Cy,

    Not so sure that ya got the message here – since the guidance is that ex parte should only happen at the applicant’s control, this IS viewed as adversarial and the comment DOES apply.

    However, even if this does apply, there be serious problems here, as this be a shallow and ultimately false protection. Let’s say the opposing counsel and examiner did what I think is supposed to have been done – not even look at the suggested reference until the applicant allows it. Let’s say the applicant, for whatever reason, says “No, you do not have my permission to look at the reference.” What now? As has been shown here – there are so many ways around this that the guidance is clearly a sham. But for arguement’s sake, let’s say that the reference is ignored by all for the moment. At a later time, after the application has passed to issue and the patent holder goes to enforce the patent, there be a cloud on that patent – the reference the applicant said not to look at. In effect, the reference will be, must be looked at, for no other reason than to dispell inequitable conduct – a question of did the applicant bury a reference is fair game throughout the life of the patent.

    The underlying problem is the move to forced publication. The intent of the guidance is to somehow afford protection to the applicant because forced publication done breach that veil of confidentiality and the Office did not want those with lots of money to be able to game the system in comparison to those who dont have money (yup – sport O kings). Those with lots of money can bombard the Office with their searches. Those without money cannot do the same and ya going to be dammm sure that those with lots of money wont be applying that same scrutiny to their own applications.

    Its an issue of fundamental fairness – but the answer arrived at just dont work.

    Once again, why buy the cow when you can get teh milk for free?

  84. There seems to be nothing wrong with this case:
    10.93- states: “[...](b) In an adversary proceeding, including any inter partes proceeding before the Office, a practitioner shall not communicate, or cause another to communicate, as to the merits of the cause with a judge, official, or Office employee before whom the proceeding is pending, except:[...](3) Orally upon adequate notice to opposing counsel or to the adverse party if the adverse party is not represented by a practitioner.”

    Both the examiner and the adverse party where contacted by phone, which sounds like 100% fulfilment of the rules, so where’s the problem?

  85. Paulie,

    Ya be daft again – “The situation is, of course, different if the reference does not raise a clear case of invalidity. Under those circumstances it is arguable that the examiner can and should ignore it.

    Um, no.

    IF the examiner has done examined the reference (to see that it does not raise a cleas case of invalidity), at that point “ignore it” is not an option – Ya cant “ignore” somethin you have examined – “ignore” means not look at it at all. You cant do that if ya have examined it.

    If the reference has been examined, it is listed with all the other references “considered”. What I think ya trying ta say is that the examined reference simply dont affect patentability.

  86. OK, now we’re just getting confused. There are certainly strict rules against ex parte contact in an inter partes proceeding. That makes perfect sense – that’s one party in an adversarial proceeding seeking to gain an unfair advantage. Model Rule 3.5 is about exactly that situation. The PTO also has strict rules about that for inter partes re-examinations.

    But the situation is quite different in a proceeding that’s ex parte by nature and is not supposed to be adversarial. Either the art is relevant or it’s not – the PTO gets the last word on that. As I pointed out above, there’s not even a rule that clearly prohibits this type of contact. So it’s a bit much to be calling for disbarment.

  87. are you making fun of the way I talk? lulzvolcano

    Med Check !!!

    Sunshine, we be through this very thing before (it makes you so mad you swear). I know ya have memory lapses but it be real simple.

    I make fun of what you say, not how you say it.

    Content versus style.

    Ya do know that there is a difference between the two, right?

  88. Thank you Mr. Cole for some perspective.

    Aside from all of the legal posturing and displays of intellectual property intellectual prowess exhibited above, no one has provided a satisfactory approach for the patent holding party to alert the USPTO that the claimed invention in a published patent application is invalid in light of their patent and that the application doesn’t identify the granted patent as prior art.

    Is anyone dealing with the reality that with the explosion of digital artifacts being created each year that it is becoming increasingly unrealistic for anyone to expect the patent examiner to be aware of every last piece of prior art and to be aware when a larger, more well funded firm might take a chance in not bringing up a relevant piece of prior art so that when they get their patent they can steamroll a smaller competitor.

    Someone at Accession was watching the world of patents and trying to protect their hard won patent grant.

  89. Paul, I will not address the situation you describe as it does not pertain here.

    The PTO was about to issue an interfering patent. The attorney called both the examiner and notified the applicant of his call. The good faith of the party involved here was not at issue. He had a legal right to complain, both to the Director and to the courts if need be. What the Director was about to do directly, materially and immediately adversely affected the patent rights of his client.

    As I said before, we have procedures for filing protests and for public use proceedings. We need one additional procedure, one where a patent owner can request an interference with an allowed application.

    It was because of the lack of formal procedures that the attorney had to call the examiner. There was no alternative.

  90. I wonder sometimes whether distance lends a better perspective.

    Obtaining patents is not some kind of private game played between the applicant and the examiner. They give rise to rights which are objectively valid or invalid depending inter alia on the state of the art.

    So if A is about to be granted a patent, and B notifies the USPTO about the existence of reference C which the examiner is unaware of but which is a clear 35 USC 102 anticipation of the claimed subject matter, has B done any harm to A? The answer, clearly is no: instead he has done A a service by saving A from paying an issue fee on a patent with claims which need amendment (if such amendment is possible).

    The public interest is that invalid patents should not issue. Even A’s interests are that he should not receive an invalid patent as he may enter into business relationships based on a false view of the world, and possibly spend good money litigating a worthless patent.

    The main issue is whether the patent is good or bad. If the reference is an anticipation, then the way in which the examiner learns of it is second order.

    The situation is, of course, different if the reference does not raise a clear case of invalidity. Under those circumstances it is arguable that the examiner can and should ignore it.

  91. What’s the problem? The problem is that ex parte conduct (in a particular case) violates deep legal principles of due process.

    Attorneys practicing in most areas of law involving a tribunal are governed by strict rules about contact. For example, here’s Model Rule of Professional Conduct 3.5:
    “A lawyer shall not:
    (a) seek to influence a judge, juror, prospective juror or other official by means prohibited by law;
    (b) communicate ex parte with such a person during the proceeding unless authorized to do so by law or court order…

    Similarly strict rules relate to other forms of inappropriate contact, including (a) contacting an opposing party instead of his or her counsel and (b) contacting a juror in a pending trial. These sorts of prohibitions are enforced with extreme stringency – it’s very easy to get disbarred for participating in that sort of contact.

    Moreover, these rules govern contact with a judge – an extremely highly trained individual who should be able to remain impartial and objective. Examiners have no such training.

    So I would hope that the USPTO’s OED not taking a good, hard look at this situation. I would expect the counsel for Accession to be heavily sanctioned, suspended, or disbarred, and the Examiner to be shipped back for re-training and sanctioned in some manner.

    Unfortunately, the OED might still be too preoccupied with figuring out how to bust practitioners for specious and trivial violations of disclosures under Rule 34 to devote time to this scenario. -_-

    - David Stein

  92. “Which rules are dmb? The rule about a third party not being allowed to call an Examiner to provide information about a pending case? Or the time restrictions on 1.99(e)? Both? ”

    Both and then some more, don’t even get me started. I mean, this application was apparently published so it isn’t like it is some sort of huge secrit what is going on with it. If someone happens to put some numbers in public pair, looks over a case, sees a glaring omission in the cited prior art, then by all means, put up a poster board in front of the PTO that says “HELLO EXAMINER 6 I FOUND A REFERENCE YOU MIGHT BE INTERESTED IN WHY NOT HAVE A CHAT?” Or they could just call. It isn’t exactly like I’m currently overwhelmed by people wanting to hand me 102b’s for my cases.

    I get that there is this special mystical nonsense about Ex parte proceedings overall but I just don’t see how prohibiting that billboard or a phone call is good policy. Supposedly even the patent applicant is served because we get more art on the record and supposedly they want the PO to have the best art.

    Sure, their attorneytard might be mad, and certain unscrupulous applicants might be mad too, but meh, who gives a sht? I mean this is like one case in a million.

  93. 6 I would excuse him because I think the rules are kind of dmb

    Which rules are dmb? The rule about a third party not being allowed to call an Examiner to provide information about a pending case? Or the time restrictions on 1.99(e)? Both?

  94. I don’t really understand the details but I think they were trying to declare an interference. Seemed to me like there was no interference in this situation though, idk.

    Tell you what I do know though. I have a PIMPIN’ RIG this dude just delivered to me and I’m going to fire it up in a few minutes.

  95. Idk about that, I would excuse him because I think the rules are kind of dmb. But I still think that it was rather brazen of him to do it with it being pretty commonly known to be “against the rules”.

  96. a rightful demand of another patent owner that the patent office not do an illegal act that would directly adversely affect the rights of the patent owner

    How would Accession’s existing patent rights be “directly adversely” affected by the USPTO issuing a competitor’s patent?

  97. rambling, you among everyone else here have failed to identify the real issue.

    The patent claims as allowed interfered with an issued patent. The owner of that patent insisted to the PTO his patent was interfering. This is not a case of malicious interference by a potential infringer of ongoing prosecution, but a rightful demand of another patent owner that the patent office not do an illegal act that would directly adversely affect the rights of the patent owner.

    If the PTO did not allow him to be heard, I assume the patent owner could have been granted a TRO against the director until the issue of interference or not was resolved. But all this demonstrates is that we need in addition to public protests and public use proceedings a procedure whereby a patent holder can demand an interference with an allowed patent application as a matter of right.

  98. Do you really have clients that would make such a demand, after you explained that it was possibly unethical, and gave them a $5-$6K alternative (ex parte reexamination)?

    No, I don’t, though I’m certain they exist.

  99. there were other ways he could have gone about this – like using a fictitious name…

    What?

    Don’t ask what should be done to Watov for allegedly breaking the rules.

    Allegedly?

    Ask why the rules need to be broken at all.

    We all know why Watov broke the rules. He didn’t want a patent that he thought was invalid to issue. What’s interesting is that the folks defending/excusing Watov here are the same folks who never saw an issued patent they didn’t want to fluff.

  100. What if you’re client demanded that you do so?

    Then I’d get another client. My clients get to choose strategies and choose from tactical choices that I give them. They don’t get to dictate every communication I make, and they definitely don’t get to make ethics decisions for me. That’s the difference between a professional and an employee.

    Do you really have clients that would make such a demand, after you explained that it was possibly unethical, and gave them a $5-$6K alternative (ex parte reexamination)?

  101. Lordy lordy lordy. So Watov did something dumb when there were other ways he could have gone about this – like using a fictitious name, or faxing to the examiner from Kinko’s. But a lack of tactical savvy doesn’t mean he’s evil or should have the OED breathing down his back. If the OED wants to be useful, it can start investigating unlicensed people from abroad who are de facto filing on behalf of others and prosecuting apps before the USPTO.

    There was a case a few years ago in which someone got a patent that was based on a principle that defies physics. A competitor noticed that there was a continuation in the pipeline in which a notice of allowance had been issued, notified the PTO, and the PTO withdrew the notice of allowance (even though, AIR, the issue fee had been paid). CAFC said the PTO was right: the Director has an obligation not to issue patents that he knows claim things that violate the laws of physics, regardless of how the information came to his attention. (Another reader can help with the cite.)

    The real issue here is that there’s still is no way for a third party to bring prior art to an examiner’s attention in a meaningful way. Sure, you can inform the applicant’s attorney and hope he IDSes it to avoid an i.c. assertion later, but that’s not the same as explaining it to the examiner. Don’t ask what should be done to Watov for allegedly breaking the rules. Ask why the rules need to be broken at all.

  102. what, I replied to you, but it was entered a few notes below.

    I believe a patent owner has a right to demand an interference with a pending application when in his opinion its claims are interfering. I think we need a procedure to formalize this.

  103. Examiners rarely ever file complaints to the OED directly, except for the most blatant violation of ethics.

    When is the last time it happened (if ever?)?

    I would not take the aggressive approach that Mr. Watov did,

    What if you’re client demanded that you do so?

    I don’t think there’s a very strong basis for a sanction.

    It would be interesting to know the dates and reasons for the last ten USPTO-administered sanctions against attorneys/agents.

  104. The phone calls are at least improper as giving appearance of impropriety.

    The 3rd party attorney’s mentioning of the ’141 patent seem to indicate that he was not sure whether the Examiner was aware of that as prior art. (Thus far, he was not aware of any confidential information about the application). But still, the phone call directly to the Examiner is improper, since the information, being not written, is not considered official communication.

    The Examiner’s mistake is to return the phone call and disclose to the 3rd party attorney that he’s considering the ’141 patent as prior art. That is clearly unpublished confidential information about the application.

    As far as OED sanctions, any member of the public can complain to the OED regarding any attorney/agent misconduct, in written form.

    Examiners rarely ever file complaints to the OED directly, except for the most blatant violation of ethics.

    (And I’m sure that Examiner got a talking to by his supervisor, but I doubt that phone call is a terminatible offense).

  105. So, have a non-patent attorney the examiner of a reference, and no wrong doing occurs. But if a patent attorney notifies an examiner of a publicly available case about a publicly available reference, it’s punishable by death.

    If only I could find the disconnect here….

    The examiner should not have returned a call from a non-party. The examiner should have considered the reference brought to his attention. No action should be taken against any party. The purpose of the PTO is to issue VALID patents. Informing an examiner of a reference merely helps that process.

  106. Hmmm…

    A lot of gnashing of teeth here, but I’m not sure it is entirely justified. First, the application was published, so there don’t appear to be any confidentiality issues – nothing suggests the examiner told Mr. Watov anything that wasn’t already available to him. Second, 37 CFR 10.93 and MPEP 713.06, cited above by what’s the view, are about ex parte communications in the context of inter partes proceedings, and clearly don’t apply here.

    Finally, the PTO cites 35 USC 122, 37 CFR 1.99, 37 CFR 1.291, and 37 CFR 1.292. If you read these carefully, these all either expressly direct the PTO to do something (e.g. 35 USC 122(d)) or specify the conditions under which submissions should be entered by PTO personnel. None of these support the PTO’s assertion that there is a “statutory prohibition” on a phone call from an attorney. I would not take the aggressive approach that Mr. Watov did, but I don’t think there’s a very strong basis for a sanction.

    A safer (but more costly) approach would have been to queue up a re-exam request to be filed the day after the patent issued. Of course, this raises the question of to exactly what extent we should discourage pre-issuance submissions.

  107. Congress shall make no law . . . abridging the freedom . . . to petition the Government for a redress of grievances.

  108. Lolz at 6 – um, they have. Also check out the Law above.

    I see ya still practicing those reading comprehension skills O yours.

  109. Even if that happens, it’s hard to imagine much effort will be spent on disciplining a retirement age patent attorney. Patent Buddy even indicates that he is no longer at Watov and Kipnes. I doubt he’s losing much sleep over it.

  110. Lolz at Sunshine’s “Word.”

    Making your posse member feel all nice and fuzzy – how special.

    (Yeah ya cannotice that Iza not need ta drop ta the level of cahrgin anythin “se_xual” about it -like certain other posters cant help themselves ta do.)

  111. or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate.

    Lolz – I got that bookmarked.

    I guess the moral of the story is that the Exmainer is permitted to independently reopen prosecution, and there is no down side to having a non-patent attorney contact the Examiner. Why not do it?

    Lolz on the actual slippery slope (O ethics)(as opposed to Chowder Boy’s What Me Worry rendition O something that just doesn’t meet his importance level.

    Hey Chowder, I noticed that ya still havnt provided any answer o substance to what all the good proficient practicioners are ta do if the Court comes back with a C&C only for art “considered” by the Office.

    Yeah, it gonna be mighty embarassin for you to come out and agree with me. Lolz at your pompASSity.

  112. PTO records seem to indicate that Mr. Watov has been a registered practitioner since 1971. I suspect OED will be speaking to him about his improper contact.

  113. Careful broje, you’ll have all the slippery slopers and chicken littles flocking here and clucking like mad that the sky is falling and we should all run for our lives.

  114. I did not review the file wrapper. Do note that the MPEP also states the following:

    “Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to any third-party inquiry or other submission in a published pending application; (2) not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in 37 CFR 1.99 and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and (3) decline to accept oral or telephone comments or submissions about published applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate. See Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.99, by registered practitioners in published applications in which the applicant has not provided an express written consent to protest, or pre-issuance opposition, to the Office of Enrollment and Discipline for appropriate action.

    The provisions of 35 U.S.C. 122(c) and 37 CFR 1.99, 1.291, and 1.292 limit a third party’s ability to protest, oppose the grant of, or have information entered and considered in an application pending before the Office. However, these provisions do not limit the Office’s authority to independently re-open the prosecution of a pending application on the Office’s own initiative and consider information deemed relevant to the patentability of any claim in the application. See Blacklight Power, Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002).< "

    So I guess the Office should check and see if the Examiner merely complied with the instructions regarding calling the party’s attention to the statutory refusal, and then independently re-opened prosecution on his own initiative as permitted. If the third party lawyer was PTO registered, then it is apparently optional to report them.

    I guess the moral of the story is that the Exmainer is permitted to independently reopen prosecution, and there is no down side to having a non-patent attorney contact the Examiner. Why not do it? You can also do a 1.99, and even if prong (e) is still not deemed satisfied, there is nothing stopping the Exmaienr from reopening prosecution “independently.”

  115. The Office may

    may

    or may not.

    This seems to say it all.

    or seems not

    Let’s string Mr. Watov up.

    W

    T

    F

  116. Meanwhile, in Japan, I understand that Examiners routinely chat on the phone with 3rd party callers, and nothing of their conversations is noted on the publicly accessible file wrapper.

    Thanks for the tip. ;)

  117. Fascinating to read this thread. Thanks Dennis.

    As usual, Europe’s view of what is ethical is about half way in between the American view and the Japanese view.

    Thus, the EPO requires no fee before entering a written 3rd party submission on the file, but will not give it much attention until the third party (can be anonymous) explains its relevance to the pending claim. Further, the EPC itself requires that the EPO serves on the Applicant’s attorney a copy of the 3rd party written submission on patentability. If the 3rd party were to telephone, the Examiner would decline to take the call.

    Meanwhile, in Japan, I understand that Examiners routinely chat on the phone with 3rd party callers, and nothing of their conversations is noted on the publicly accessible file wrapper.

  118. So now a violation of policy is some kind of big “to do”? Meh, policy.

    If they’re going to make something like this all that big of a to do and punishable as a big to do, then they could at least take the time to make it a rule.

  119. And the facts given above do not indicate that the examiner had any substantive conversation

    cf

    As a result of that conversation

    AND

    Not really sure what the problem is. The MPEP is not law

    cf

    35 U.S.C. 122Confidential status of applications; publication of patent applications.
    (a)CONFIDENTIALITY.— Except as provided
    in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.

    W W

    T T

    F F

  120. “The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.99, by registered practitioners in published applications in which the applicant has not provided an express written consent to protest, or pre-issuance opposition, to the Office of Enrollment and Discipline for appropriate action.”

    This seems to say it all. Let’s string Mr. Watov up.

  121. … of course, “could not have been submitted earlier” may already provide a lot of room for submissions made on first actual notice of a pending application.

  122. “Is it possible that the Examiner complied with the provisions of the MPEP…”

    Do you see any Rule 99 submission in the file wrapper?

  123. What should happen here?

    Maybe there should be a revision to 37 CFR 1.99, permitting formal submissions of prior art at any time prior to mailing of a Notice of Allowance.

    I suspect I wouldn’t like that much in my practice … but it seems like a reasonable response to the situation presented in the case.

  124. View, good catch. That’s why you get the big bucks and I’m the flunky! Hindsight is always 20/20 though; you knew the file wrapper listed him, therefore it is obvious to look there. Question: Why would the linked court case never name Mr. Watov if it is public record that he is the counsel in question?

  125. Is it possible that the Examiner complied with the provisions of the MPEP by, while refusing to discuss the matter or consider the art not yet submitted under 1.99, informing the third party of the need to submit the art under 1.99. Is it possible that the third party did just that, including serving it upon the applicant and explaining why the art could not have been submitted within 2 months of publication, thus permitting the art to be considered by the Examiner in withdrawing the application from issue upon the initiative of the USPTO?

    1134 Third Party Inquiries and Correspondence in a Published Application [R-2]

    35 U.S.C. 122 Confidential status of applications; publication of patent applications.

    35 U.S.C. 122(c) provides that the Office “shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.” Accordingly, the Office prohibits third parties from submitting any protests under 37 CFR 1.291 or initiating any public use proceedings under 37 CFR 1.292 (without the express written consent of the applicant) after publication of an application. These are the only forms of third party protest or pre-issuance opposition to a pending application permitted by the rules of practice. For more information on protest see MPEP § 1901; for public use proceedings see MPEP § 720. Third parties may submit patents or publications for consideration in a pending published application, with no further comment or explanation, pursuant to 37 CFR 1.99. See MPEP § 1134.01.

    Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to any third-party inquiry or other submission in a published pending application; (2) not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in 37 CFR 1.99 and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and (3) decline to accept oral or telephone comments or submissions about published applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate. See Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.99, by registered practitioners in published applications in which the applicant has not provided an express written consent to protest, or pre-issuance opposition, to the Office of Enrollment and Discipline for appropriate action.

    § 1.99 Third-party submission in published application.

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

    (b) A submission under this section must identify the application to which it is directed by application number and include:

    (1) The fee set forth in § 1.17(p);

    (2) A list of the patents or publications submitted for consideration by the Office, including the date of publication of each patent or publication;

    (3) A copy of each listed patent or publication in written form or at least the pertinent portions; and

    (4) An English language translation of all the necessary and pertinent parts of any non-English language patent or publication in written form relied upon.

    (c) The submission under this section must be served upon the applicant in accordance with § 1.248.

    (d) A submission under this section shall not include any explanation of the patents or publications, or any other information. The Office will not enter such explanation or information if included in a submission under this section. A submission under this section is also limited to ten total patents or publications.

    (e) A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier. Any submission under this section not filed within this period is permitted only when the patents or publications could not have been submitted to the Office earlier, and must also be accompanied by the processing fee set forth in § 1.17(i). A submission by a member of the public to a pending published application that does not comply with the requirements of this section will not be entered.

    (f) A member of the public may include a self-addressed postcard with a submission to receive an acknowledgment by the Office that the submission has been received. A member of the public filing a submission under this section will not receive any communications from the Office relating to the submission other than the return of a self-addressed postcard. In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a submission under this section.

  126. One could simply have had a patent attorney or agent file an IDS and SB/08 listing the reference in question in the relevant case. That would be a win-win — the reference would be in the record so the Examiner could review it if s/he wanted to, and no improper ex parte contact with the Examiner would have occurred. I’ve seen this done in other cases, and seen the Examiner issue a rejection based on one of the disclosed references.

  127. There is no PTO rule exactly on point, although 10.93(b) comes closest.

    However, I’m having a hard time believing that contacting a government official (e.g. a patent examiner) that decides ex parte matters on behalf of a client that is not a party to the matter doesn’t violate some rule of professional conduct.

    I agree, OED should be involved.

  128. “Of course, third-party contact with an examiner is expressly prohibited under the Manual of Patent Examining Procedure unless expressly authorized by the applicant. Further violating procedure, the USPTO Examiner then returned the telephone call and based upon the information learned issued a “Notice of Withdrawal from Issue.” ”

    For serious? Jezus.

    “What should happen here? ”

    We could all just sht our pants and call it a day.

    “I think we should all review Mr. Watov’s clients’ applications and start calling the examiners of those applications with suggested rejections.”

    I mean, seriously?

    Now, I mean to be clear, what has been seen cannot then be unseen, so if you send the examiner an email that he reads then you will probably have put a certain relevant number into their brains one way or another and at that point…

    “Both the attorney who initiated the contact and the Examiner should be sanctioned by the Patent Office for violation of the rules.”

    Which rule is at play here MM?

  129. it sounds like the folks on the other side may not have been too forthcoming with known prior art,

    Sometimes known as inequitable conduct. At least at the time these events occurred, there could be harsh penalties for applicants who behaved in a less than “forthcoming” manner with the USPTO. Perhaps Accession was concerned that the CAFC might do something stooopit in the fuuture, like make it extremely difficult for defendants to prove IC.

  130. If the examiner saw fit to withdraw the notice of allowance based only on the fact that someone had brought another prior art reference to his attention

    The moment it became clear that a third party was making an unathorized ex parte communication, the Examiner should have ignored the call except to the extent necessary to issue a warning to the third party to cease such improper communications with the Office.

  131. PS DIP,

    Why don’t you go read the Interview Summary issued in 11/971,553. It very clearly states that the examiner spoke to Mr. Watov.

    Is your post indicative of your searching ability? I mean, good heavens, I gave you the serial number. Can you not find that information out for yourself?

  132. third-party contact with an examiner is expressly prohibited under the Manual of Patent Examining Procedure unless expressly authorized by the applicant. Further violating procedure, the USPTO Examiner then returned the telephone call and based upon the information learned issued a “Notice of Withdrawal from Issue.”

    Both the attorney who initiated the contact and the Examiner should be sanctioned by the Patent Office for violation of the rules.

  133. What’s the view – DC does not say that Watov was the counsel that made all the phone calls. Watov merely prosecuted Accessions patent. Counsel may not have even been a patent attorney.

    What is very curious is that Radio System had lengthy communications in 2007 and 2009 (several months worth both times over licensing etc.) and yet never submitted the ’141 patent (or pending applicaiton) as prior art in their own cases. While the Accession counsel may have been pushing the communications envelope, it sounds like the folks on the other side may not have been too forthcoming with known prior art, especially art relevant enough to cause an application to be withdrawn from issuance.

  134. U.S. Application 11/971,553, now U.S. Patent 7,798,103. Same examiner that issued the “stick” patent.

    I think we should all review Mr. Watov’s clients’ applications and start calling the examiners of those applications with suggested rejections.

  135. Not really sure what the problem is. The MPEP is not law. And the facts given above do not indicate that the examiner had any substantive conversation with Accession’s counsel – only that the call was returned, which might just have been something like: “I just wanted to acknowledge receiving your call as a matter of courtesy, but of course I can’t discuss the case with you.”

    If the examiner saw fit to withdraw the notice of allowance based only on the fact that someone had brought another prior art reference to his attention, I can’t really discern a problem in that, unless the withdrawal was clearly unwarranted based on the disclosure in the reference. That is, assuming the examiner is an impartial arbiter of fact, as we are supposed to assume.

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