What are the odds that the PTO’s new limited disclosure rules and the Federal Circuit’s Therasense and Excergen decisions will turn this trend around? How will patent prosecutors alter their disclosure protocol based upon these changes in law & procedure?
More information on the data: The chart above shows the average number of references cited by both Applicants and Examiners as shown on the face of issued patents. The chart is based upon all original utility applications published during a given time period. For 2011, numbers are through 7/20/2011. The chart is “stacked,” thus, the average 42 citations per patent in 2011 includes, on average, 7.5 citations by the examiner and 34.5 citations by the applicant. In 2010 I created a similar chart that showed a potential downward trend for 2010. This new data rejects that trend – although it is somewhat different because I have now excluded design patents from the data set.
As the table shows below, the median number of cited references is also growing, but at a much more manageable level and pace.
|
Year |
Median Number of References Cited |
|
2005 |
13 |
|
2006 |
14 |
|
2007 |
14 |
|
2008 |
14 |
|
2009 |
15 |
|
2010 |
16 |
|
2011 |
17 |
Good Information… Thanks for sharing.
Great Information to read, Please share ur opinions.
“As it currently stands, it is really just a way for big companies to abuse small companies.‘
or not. Let’s ask i4i.
Sorry, that was pared and not paired.
The US patent system is a total joke. This post points out a few problems, but it would be difficult to list all of the significant the problems with the US patent system including (1) poorly chosen titles (2) patents with too many figures that are not relevant to the issued claims (because of divisional applications, amendments,etc) (3) too easy to get a patent on things that have been done in the past (4) too easy to get a patent on stuff that is obvious (5) too difficult to figure out what claims mean because terms aren’t defined, etc, etc, etc. Honestly, we should rethink the whole idea of patents. At the least, the patent system should be paired back significantly. As it currently stands, it is really just a way for big companies to abuse small companies.
“Your use of “whatever” is constrained to only those things that are legal.”
Lulz, and you think that the executive branch is unable to raise the issue of what is legal. But they are.
You forget, the executive branch can make any rules it wants to, including “illegal” substantive ones. Remember, were it not for Tafas and GSK you’d have “illegal” rules in place right now. It is up to others to bring suit to stop them. When they wind up in court they can surely raise whatever issues they wish to. In other words, they can feel free to disagree with the judiciary as well as old judicial decisions and the judiciary will always hear them out. Indeed, they do so all the time. Also, perhaps nobody will have the balls to challenge them in court like Tafas and GSK did last time. If you believe that such is not the case, then go ahead and cite me a case where res judicata applied to them in a quasi-legal agency action setting. Surely there must be plenty on file. Oh wait, there isn’t? Hmmm, I wonder why? Because all agencies and the executive branch is always a good little boy, agreeing with all of the judiciary’s opinions? Lulz. Yeah. Right.
I don’t know what you seem to find so hard to understand about this process.
“No one, and that includes administrative agencies, has carte blanche to do illegal things.”
You’re absolutely right. They don’t. But they do have “carte blanche” to disagree with previous judicial decisions about what is illegal. Indeed, they do this ALL THE TIME. They’re doing it right now in many fields, especially those regarding illegal search and seizure. It’s up to the citizens etc. to hold them to account in court every time they do it. And each time the court always hears the gov’s position.
Look guys, here’s the thing, I’m no advocate for this position, indeed, it seems like the gov has too much power in this respect. But this is how it is, unfortunately. And to some extent I see why it is necessary.
For instance, what if a court decides something is “illegal” and then 40 years down the road congress is still dragging its feet and the backlog is 16 years long? Does the office still lack the ability to disagree with the judiciary and put a limit on claims? Of course they don’t lack such an ability, and they have the ability to have the court rehear the issue. Likewise, director Kappos being a wus does not stop future directors from making such a case in court. Which is a further reason why the courts cannot properly stop the gov. from raising issues, you have one administration come in, get a bad decision and then not appeal it. The next administration can most certainly act how it feels the law requires it to, and in accordance with what it feels is good for the country, and then go to court and argue thus.
The fact that it can does not mean it would do that all the time.
This becomes worse in other contexts other than the rather trivial PTO agency. There are other more important agencies where the ability of the executive to challenge a court’s old holdings may have more severe consequences. And it is for that reason that the courts decline to stop the executive from arguing issues anew.
All Applications must now include a required form declaring under penalty of perjury:
“After an extensive search Applicant has found no reference which singly, or in combination with any number of other references in any field, would cause even Examiner 6 to reject any of the claims included in the filed Application, or which may be proposed in the future.”
With the filing of this “Butt-For Declaration” the Examiner can simply allow the Application as filed.
This will reduce the pendency of newly filed applications and allow the Patent Office to work on the backlog mountain.
Then the Patent Office can fire all of the Examiners.
“Those cases address the extent to which res judicata applies to actions taken by the administrative agency itself.”
Yeah, kind of like, oh, I don’t know, rulemaking?
Oh yeah, kind like that.
But Leo, I encourage you to show me a decision that states otherwise. Or even some scholarship. There has been quite a bit on the topic. And none of it I have found indicates otherwise. I would be all to happy to concede the topic if such were addressed in articles that specifically address such things.
“The only thing stopping you from a career in the law is a decent grounding in the law. You could probably even get that at a second-tier school.”
Yeah I know, but I’d also have to give up my roguish ways. I’m not sure I could live with that. At least until I’m like 40. Also, I don’t handle stress very well. Being from a small town where there is like 0 stress poorly prepared me for the stress of the field of law. I’m messing around with this small business and I just started. It’s already stressing me out. Of course, I do have a full time job at the same time.
“A bedrock principle of law is that the court’s decision has meaning on the parties involved.”
Yeah, I’m aware, I’ve literally read all about it. Several times in fact.
The issue was touched on in a few of the decisions cited in that first decision I cited. The USSC has noted on several times that even though it usually would preclude such a thing because of that bedrock principle and judicial economy etc, there is a more fundamental question at hand than the struggle between the two parties in a given suit. Specifically the fundamental question is whether the courts have the ability to tell the executive branch that they cannot raise an issue it wishes to raise in the public’s interest that has been previously decided. If the court were to preclude admin agencies (e.g. the executive branch) from arguing whatever they want to, then you have a fundamental conflict between two branches of government. And that is an conflict that the USSC refused to take part in.
Bottom line, the president (or governors in some of those decisions from state supreme courts) can always have his say in court. That does not assure that the court will hold for him.
“The concept of vacatur serves to wipe out any meaning from the decision on the parties involved. ”
Vacatur does even more than that, it completely erases the decision such that it would carry no weight in the future in courtrooms in the future if cited.
In any event, take it up with your courts guys. Alright, that’s what I had to say, I’m 100% confident that you will not find any court that held otherwise because I conducted a rather exhaustive search. But you’re welcome to try. Indeed, I encourage you to. I would love nothing more for you to cite me a decision showing otherwise.
Something you might find kind of strange is that outlines of administrative agencies (and there are a lot of them online) usually talk about judicial review of agency quasi-judicial actions right before they talk about review of agency quasi-legislative actions. In the former, they often mention res judicata and whether or not it should apply. In the later they for some reason always leave that subject out. I wonder why that could be? Could it be because if it did apply in such a context then the two branches would be in conflict? I think that is why.
“Plainly put, if the decision in the Tafas case has no effect on the Office as you claim, there would have been no need to attempt vacatur.”
I’m not sure what you don’t understand about this.
1. The DC opinion can still influence how a future court might hold even if it doesn’t flat out stop the office from raising the issue.
2. Vacatur would have prevented 1.
3. The office prefers 2. to happen.
Even if a decision is not binding on what issues the office can reopen that does not mean that it will not influence how a future court will hold down the line. Especially if the decision lasts for decades before the office attempts any new truly controversial rulemaking where someone seeking an injunction tries to cite Tafas.
And I wouldn’t say that it means all that little. It meant a lot, there was an injunction on a major rules package. That’s a lot, not a little.
Likewise, it may be very influential on how another court will rule on the same issues if they are raised again by the office. On the other hand, even the completely nullified CAFC opinion might hold more sway with a court by way of an attorney convincingly arguing what was said in the CAFC opinion. You never know, these are courts we’re talking about. They pretty much do as they please.
Ned, give MJS the benefit of the doubt for a cynical joke, since of course no one who has any clue as to how patent application examination actually works [which, unfortunately, does exclude some academics] could possibly think that the examiners have time to read even 100 cited references for buried gems of material relevance to something in a claim, much less 1000+ cited references.
The latter can, of course, be effective for hiding truely material references within an unreadable big laundry pile of others, hoping they will not get considered, yet obtain an IC “whitewash” of the entire pile. But even Thereasense would not protect someone nailed for doing that deliberately. Especially since such IDS “cited” but well-buried material prior art does not preclude reexaminations based on that same prior art, and if claims get cancelled as a result, even “but for” is met.
6, those cases have nothing to do with whether the PTO is bound by the District Court’s decisions. Those cases address the extent to which res judicata applies to actions taken by the administrative agency itself.
The only thing stopping you from a career in the law is a decent grounding in the law. You could probably even get that at a second-tier school.
I must have had some kind of tag in my post.
What is missing is that I am pointing out that your reply above regarding vacatur does not make sense.
A bedrock principle of law is that the court’s decision has meaning on the parties involved. The concept of vacatur serves to wipe out any meaning from the decision on the parties involved. Because vacatur was denied, the Office is bound by the decision.
You seem to want to say otherwise, and I cannot understand your reasoning.
^,
Your eeasoning above regarding vacatur:
“If they were not bound, there would have been no reason to attempt vacatur.”
Sure there is, have you actually read the DC opinion? It’s full of nonsensical holdings that can affect how other courts might decide issues of law and decide future cases.
is circular. There is a reason for attempting vacatur or there is not. The decision has res judicata effects – on the party – or it does not. The two go together, and your answer here reflects that, even thought you try to hold the opposite.
Plainly put, if the decision in the Tafas case has no effect on the Office as you claim, there would have been no need to attempt vacatur.
And please, I am not a tard. I am just trying to unedrstand how you arrive at the idea that the Taffas decision means so little.
6,
You are missing the point here.
It is not whether the Office is barred from taking action – it is the type of action that the Office is barred from taking.
Your statement of “The office can reopen whatever issues it wants to when exercising its quasi-legislative powers.” – taken in the context here of legal actions after a court decision – is false.
Your use of “whatever” is constrained to only those things that are legal. No one, and that includes administrative agencies, has carte blanche to do illegal things.
This is not a difficult concept, even if you have not been to law school.
“The case was on more than just that specific rules package – it was on the extent of the Office rules making capability.”
Yeah, and is the office bound by res judicata in that matter? Nope.
“No one is saying that the case stands for the Office is precluded from making rules in order to “take appropriate action” or that this being so bound “deprive[s] the public of the protection of a statute”.”
You are. Specifically, you believe that the mistaken action of Director Kappos in the past should preclude it from taking action in the future. And specifically this is not a case of “depriving the public of the protection of a statute” so don’t think that I’m alleging that.
“It stands for the Office cannot overreach its authority. It stands for a check on the fourth branch of the government. It stands for the notion that the Office cannot shirk its responsibility for the examination of applications.”
Whether or not it stands for that doesn’t matter though. The office can reopen whatever issues it wants to when exercising its quasi-legislative powers.
How about this, how about you tell me what the cases I cited “stand for”.
“There indeed may be more than one way to skin a cat, but if skinning a cat has been ruled illegal, than it does not matter which way you try to do it, skinning a cat is still illegal.”
However, the office can reopen that issue when trying to skin cats.
“The nonsense you are spouting on res judicata for administrative agencies is simply you not understanding what it means to take law out of context – I have noticed that you have a real problem with things out of context and this is just one more example.”
Lulz, well why don’t you go ahead and show me what in the law leads you to believe that res judicata would apply. I made some citations, surely it must be easy for you to do so.
I suppose courts specifically talking about admin agencies exercising their non-quasi-judicial powers is “out of context” from this situation because office rulemaking is totally a quasi-judicial power. Right. Try again tard.
But in any case, if you don’t like it, talk to your courts, not me.
Dennis, thanks for tracking these reference citation numbers, which in about 18 months [if one looks at published applications] should start disposing of various academic and/or paranoid delusions that the Therasense change in the Fed. Cir. and PTO tests for inequitable conduct, per se, is going to make big changes in these citation numbers.
Furthermore, that and the true impact of Therasense in general could already be helpfully factually demonstrated by good legal research showing how small a number and percentage of prior final [sustained] decisions of inequitable conduct would have clearly come out differently under the Therasense IC test. [I’m not willing to do the work, but I would take a wager that it is not a large number or large percentage.]
from taking appropriate action
likely are bound by that injunction on that specific rules package.
Try re-reading the actual case 6.
They are more than likely bound.
The case was on more than just that specific rules package – it was on the extent of the Office rules making capability.
No one is saying that the case stands for the Office is precluded from making rules in order to “take appropriate action” or that this being so bound “deprive[s] the public of the protection of a statute”.
It stands for the Office cannot overreach its authority. It stands for a check on the fourth branch of the government. It stands for the notion that the Office cannot shirk its responsibility for the examination of applications.
There indeed may be more than one way to skin a cat, but if skinning a cat has been ruled illegal, than it does not matter which way you try to do it, skinning a cat is still illegal.
The nonsense you are spouting on res judicata for administrative agencies is simply you not understanding what it means to take law out of context – I have noticed that you have a real problem with things out of context and this is just one more example.
“The losing party is not bound by law to obey the court’s decision because they are an administrative agency?”
Did I say that? No. I did not. They likely are bound by that injunction on that specific rules package.
“So they are not bound …”
Did I say that? No, I did not. They likely are bound by that injunction on that specific rules package.
The issue is whether or not res judicata applies to agency actions other than its quasi-judicial powers.
And the answer can be found on all levels of caselawl:
“See also Maxwell Co. v. NLRB, 414 F.2d 477, 479 (6th Cir.1969) (holding that the principle of res judicata has no application to administrative agencies’ exercise of powers other than their quasi-judicial powers).”
Lulz.
link to ftp.resource.org
“Whatever may be the effect of quasi-judicial determinations of administrative agencies (Cf. Arizona Grocery Co. v. Atchison, etc., R. Co., 284 U.S. 370, 389, 52 S.Ct. 183, 76 L.Ed. 348), it is well settled that the principle of res adjudicata has no application to their exercise of other powers. 30 Am.Jur. p. 930”
Lulz.
link to scholar.google.com
“An administrative agency, charged with the protection of the public interest, is certainly not precluded from taking appropriate action to that end because of mistaken action on its part in the past. Cf. ”
lulz.
“Nor can the principles of equitable estoppel be applied to deprive the public of the protection of a statute because of mistaken action or lack of action on the part of public officials. United States v. San Francisco, 310 U.S. 16, 32, 60 S.Ct. 749, 84 L.Ed. 1050; Utah Power & Light Co. v. United States, 243 U.S. 389, 409, 37 S.Ct. 387, 61 L.Ed. 791; United States v. City of Greenville, 4 Cir., 118 F.2d 963, 966.” National Labor Relations Board v. Baltimore Transit Co., 140 F.2d 51, 54-55 (4th Cir.), cert. denied, 321 U.S. 795, 64 S.Ct. 848, 88 L.Ed. 1084. See Talavera v. Pederson, 334 F.2d 52, 57 (6th Cir.).”
Lulz.
And what does the USSC say?
“”An administrative agency, charged with the protection of the public interest, is certainly not precluded from taking 164*164 appropriate action to that end because of mistaken action on its part in the past…. Nor can the principles of equitable estoppel be applied to deprive the public of the protection of a statute because of mistaken action or lack of action on the part of public officials.” National Labor Relations Board v. Baltimore Transit Co., 140 F.2d 51, 55 (4th Cir.), cert. denied, 321 U.S. 795, 64 S. Ct. 848, 88 L. Ed. 1084. As the court in Commissioner of Internal Revenue v. Newport Industries, Inc., 121 F.2d 655, 657 (7th Cir.), expressed it: “Our thought in the matter is that the Commissioner has the power in a tax case to undo what he has done in order to eliminate error …. It is the general rule that within the period of limitations the Commissioner may re-open his own administrative rulings and findings.” See also Burnet v. Porter, 283 U.S. 230, 51 S. Ct. 416, 75 L. Ed. 996; Stanford University Book Store v. Helvering, 83 F.2d 710 (D.C. Cir.); “Res Judicata in Administrative Law,” 49 Yale L.J. 1250, 1265; note, 73 A.L.R.2d 939, 943-948 and Later Case Service, p. 61.”
link to scholar.google.com
And finally, some scholarship:
“Res Judicata in Administrative Law,” 49 Yale L.J. 1250, 1265; note, 73 A.L.R.2d 939, 943-948 and Later Case Service, p. 61
lulz lulz lulz.
It’s your failure to look into the lawl that stops you from understanding your own lawl. The only thing “stopping” me from a career in lawl is not wanting to go to the same second rate school that produced you lol.
The losing party is not bound by law to obey the court’s decision because they are an administrative agency?
W
T
F
So they are not bound but they sought vacatur anyway because the court decision is full of nonsensical holdings that can affect how other courts might decide issues of law and decide future cases?
W
T
F
There is more than just 6’s failure on the LSAT’s that keep him from a career in law.
“No, 6 – The Patent Office was a party to the decision and that decision is binding on the Patent Office.”
You might want to check ur admin lawl. The office, just like the rest of gov agencies are entrusted with implementing rules for the public good and have the ability to keep on a tryin’.
Sure, courts might frown on them bringing the exact same rules, but there’s a million ways to skin a cat.
“If they were not bound, there would have been no reason to attempt vacatur.”
Sure there is, have you actually read the DC opinion? It’s full of nonsensical holdings that can affect how other courts might decide issues of law and decide future cases.
Just because the decision isn’t binding precedent or binding on the office’s ability to make procedural rules doesn’t mean it isn’t citable “precedent” more generally.
“The real reason why Kappos pulled the plug and retreated, even taking the res judicata shot was precisely so that other administrative agencies would not be affected by the ill-conceived legal maneuverings of the Patent Office.”
I lulzed. The “real reason” is because he’s a wus and he just didn’t think that was a good way to solve the office’s problems (for the money it was costing?). Have you actually listened to him on these subjects? He’s held many a talk on your interwebs and he’s fairly open about his reasoning.
“So you mean the part where a district court opinion, and indeed, apparently no decisions have any res judicita effect on admin agencies?”
No, 6 – The Patent Office was a party to the decision and that decision is binding on the Patent Office. If they were not bound, there would have been no reason to attempt vacatur.
The real reason why Kappos pulled the plug and retreated, even taking the res judicata shot was precisely so that other administrative agencies would not be affected by the ill-conceived legal maneuverings of the Patent Office.
“and is binding on the PTO.”
From where I’m standing, when I looked into it all the caselaw says that it isn’t.
So you mean the part where a district court opinion, and indeed, apparently no decisions have any res judicita effect on admin agencies?
I was thinking of subclasses too, but in a different way. Special K could someday decide to continue the examiner irritation theme by giving applicants an option to simply list subclasses on an IDS form. Not even the references in those subclasses, just the numbers of the subclasses that applicant thinks might be most pertinent. That will be great fun because some of the class definitions are lousy and some of the patents and PGPubs are poorly classified anyway. Then of course the examiner will be “required” to go through all the references in those subclasses (some of which are quite beefy with thousands of references).
Guys I was kidding lol. Although yeah I agree with Ned that perhaps a submitting more than a few completely irrelevant references should simply be a “fee”. Whether it be for the applicant or the attorney is up to the office.
“then we have 10 hours per 40 references or 15 minutes per reference.”
Lulz, and where is the time to think about your inevitable after non-final and after-final amendments?
Nice math there Paul.
Huh?
I like the trend. What is 40 references in a corpus of what, 1000+ references, that should be searched for in a given application? The more information pushed to an Examiner, the better, even if much of that information is irrelevant.
Nice heading there hard.
While not entirely agreeing with you, Hard, I will concede the point you are making for the purpose of seeking a solution acceptable to the broader group, IP practioners, which you represent to a degree on this issue.
What about this?
The PTO does a preliminary examination and identifies the classes and subclasses for the application (with appropriate cross references to international classes). It notifies the applicant.
Thereafter, the rules could state that the only art that can be submitted is art in those classes and subclasses, unless the art is unclassified.
The PTO can change its classification at any time, allowing different, potentially more relevant, art to be submitted. But if classified art is submitted outside the listed classification, the examiners will be directed not to consider it.
How’s this for an idea?
Beatings around here will continue until morale improves…
Yeah I’ve heard that about the Office (especially pre-Kappos).
How did that work for you? Can you say record turnover and the creation of the mess we are now in?
Nice 6. Really nice.
“Hard, I think the whole point here really is to stop the submission of irrelevant art so that the examiners do not have to waste their time.”
Yes, Ned, I know that is what you think the whole point is here.
However, you are missing the point as to why I am having you read this part of the Federal Register. Key in on the soft-pedaling of “provide…to assist“, “would not implicate…and therefore would not be required“, and “ways to encourage“. All of this subtle language is expressly because the Office cannot require the applicant to do the job of the examiner – and you need to face this little fact – determining whether or not a piece of art is the job of the examiner (wasting their time or not). Determining if and to what degree something is relevant is an examination task, and the Office cannot make applicants do this task. This is why the point of Tafas was made upthread.
So while I “get” that you would love to have the applicant “help out” – you cannot do something that violates the law. Wheat and chaff separation – by law – is something the examiner does and is something the applicant cannot be made to do. The Office knows this. The Office therefore must softpedal this as something “not required” and as an “incentive.”
It really is as simple as that.
Paul, all we have to do is charge for each reference submitted with a potential refund if a reference is used by the examiner in an office action.
Submissions of irrelevant references would be permitted, but costly.
Since the cost of the examiners time to review the references is funded by the submitter, the examiners could be allotted extra time to actually review the references.
Also, I think the Office of Discipline should get involved and fine practitioners for submitting large number of irrelevant references regardless. Whether a reference is irrelevant would be determined by the examiner.
We pretend that the references are relevant and the examiners pretend to read them.
If an examiner’s allotted time is 20 hours per application, and he or she spends half that on studying the application, conducting a search and the office actions and responses (and such important internal tasks as classification) then we have 10 hours per 40 references or 15 minutes per reference. So the best we can expect is a skim read of 38 references and perhaps serious consideration to two or three of them.
Excellent proposal, there 6. We need the Office of Discipline to keep a scorecard. If a reviewing examiner finds a reference irrelevant, he checks that box on the IDS scorecard kept by the Office of Disciple. The practitioner is then charged a fine by the Office of Disciple proportional to the number of irrelevant references (for wasting the examiner’s time.) We could give the practitioner some leeway for errors, such as by allowing him or her a limited number of errors per case.
The fine of course would be subjet to appeal. But it could get very expensive for practitioners to submit large numbers of unreviewed and irrelevant references.
Almost like filing a frivilous lawsuit or motion in court.
I did read the Federal Register. I even gave a pincite.
Impressive. Most impressive.
6, you should check out a prior thread where A New Light crossed swords on Tafas. At the time, I was unaware that the Federal Circuit decision had been vacated. When I cited it for support for a point was making, A New Light blew a fuse. He or she won’t talk to me anymore. So be it.
But the way it stands, the disctrict court decision stands and is binding on the PTO.
Hard, I think the whole point here really is to stop the submission of irrelevant art so that the examiners do not have to waste their time. Close art does help the examiner search, but how is he able to separate the wheat from the chaff in an IDS that sits there on his desk, where the wheat and chaff are mixed in a manner that actually requires him to read the references, or to search them with conventional search tools, which might be hard to do with certain kinds of references.
“Additionally, the Office is considering further actions that may provide an incentive for applicants to assist the Office by explaining/
clarifying the relationship of prior art to the claimed invention. While this form of information would not implicate the standard of materiality as that term has been defined in Therasense, and therefore would not be required under the proposed changes to Sec. 1.56, the Office believes it is worthwhile to explore ways to encourage applicants to submit information, beyond that required under the Therasense materiality standard, that would be helpful and useful in advancing examination.”
Would it be inequitable conduct to get false lashes, or only if you call attention to them in a sworn affidavit?
I did read the Federal Register. I even gave a pincite.
What is this “other proposal” that you are talking about?
6,
The part that vacatur was sought for (and denied).
You didn’t read the other proposal? It discusses the institution of lashes and the incentive is to not get lashes.
“and yes, I mean the part of Tafas that is actually good law.”
Which is… what? None of it?
I wonder how much of this is continuation applications, applications with foreign counterparts, and patent families. I suspect much of it can be attributed to art from related cases.
Ned,
Also read the Federal Register, Volume 76, No. 140. Pay close attention to how carefully the Office words the consideration of further actions at the bottom of column three, page 43632, top of column one, page 43633.
“discretion is entirely within the statutory authority of the director.”
I think that entirely depends on what you mean by “explanation.”
See Tafas – and yes, I mean the part of Tafas that is actually good law.
You might have a real problem if an Office instruction “not to consider” anything has a substantive effect on an applicant’s rights.
Hard, “mandatory” explanations of prior art? Sure they can. They cans simply instruct the examining corps not to consider art that is submitted without explanation. That discretion is entirely within the statutory authority of the director.
Since the Office admits that they cannot make applicants search or make mandatory the explanation or clarification of prior art on IDS’s to the claimed invention (that is, making the applicant examine the application), I am curious as to what types of “incentives” the Office will advance so that submissions will only contain more relevant references. A repudiation of KSR? A promise not to string key-word search 103 rejections?
I just don’t see how any timing or financial incentive that the Office can offer can beat the cheap insurance of massive IDS’s.
I’m not changing my approach at all – disclose everything cited in applicant’s other applications. If it takes 7 SB08 forms, so be it.
Can you split the data into two sub-sets, to show the average for a “domestic” origin of the application, and that for foreign-originating cases? I am wondering about the extent to which aliens indulge in these huge IDS lists.
“What are the odds that the PTO’s new limited disclosure rules and the Federal Circuit’s Therasense and Excergen decisions will turn this trend around?”
Probably 0. They can slow it, and perhaps briefly turn it around, but they will not stop the baseline reason for more refs being cited: more refs in existence and known about.
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