USPTO Proposes to Modify Applicants Duty to Disclose, Following Therasense in Limiting the Scope of Materiality

In a four-page Federal Register notice of proposed rulemaking of proposed rulemaking, the US Patent Office has indicated its intent to revise its duty-to-disclose standards based upon the recent Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011). 

In Therasense, the Federal Circuit held that, apart from potentially affirmative egregious misconduct, inequitable conduct in patent prosecution should not be found unless it is proven that the misconduct was a “but for” cause of the patent issuing. Focusing specifically on the failure to disclose prior art, the court wrote: “[w]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”  The office introduces its proposal as follows:

Specifically, the Office is proposing to revise the materiality standard for the duty to disclose to match the materiality standard, as defined in Therasense, for the inequitable conduct doctrine. While Therasense does not require the Office to harmonize the materiality standards underlying the duty of disclosure and the inequitable conduct doctrine, the Office believes that there are important reasons to do so. The materiality standard set forth in Therasense should reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, consequently reducing the incentive to submit information disclosure statements containing marginally relevant information and enabling applicants to be more forthcoming and helpful to the Office. At the same time, it should also continue to prevent fraud on the Office and other egregious forms of misconduct. Additionally, harmonization of the materiality standards is simpler for the patent system as a whole.

The newly proposed Rule 56(b) (37 C.F.R. 1.56(b)) would read as follows:

Sec.  1.56  Duty to disclose information material to patentability.

* * * * *

(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011). Information is material to patentability under Therasense if:

(1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or

(2) The applicant engages in affirmative egregious misconduct before the Office as to the information.

* * * * *

Under the new rule, the mere failure to disclose information will never be considered material to patentability if the pending claim is allowable. A parallel change would be made to the disclosure rules governing reexaminations.

The current Rule 56(b) defines material information as non-cumulative information that either (1) “by itself or in combination with other information…compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard” or (2) is inconsistent with “a position the applicant takes” arguing that the claim is patentable.  The current rule implemented in 1992 and was itself an attempt by the USPTO to limit the scope of materiality. The pre-1992 rule required submission of information whenever there was a “substantial likelihood that a reasonable examiner would consider [the information] important in deciding whether to allow the application to issue a patent.” 

Thus far in 2011, the average issued patent cites 42 prior art references.  This number is highly skewed because of a minority of patents that cite to an excessively large number of prior  art references.  The median patent in 2011 cites 17 references. Only 8% of the 2011 patents cite more than 100 references, but those patents collectively cite more references than the other 92% combined.

The USPTO is also seeking comment on other actions that “may provide an incentive for applicants to assist the Office by explaining/clarifying the relationship of prior art to the claimed invention.”

Written comments regarding the proposed rule change should be submitted to AC58.comments@uspto.gov within the next 60 days (by September 19, 2011).

231 thoughts on “USPTO Proposes to Modify Applicants Duty to Disclose, Following Therasense in Limiting the Scope of Materiality

  1. Hard, on functional at the point of novelty, there are numbers of Supreme Court cases that discuss claims in this way when the issue is definiteness or scope of the claim. The Supremes treat novelty this way, except in new combinations. The Supremes treat Section 101 and 103 issue as a whole.

    We have discussed this issue numbers of times here at Patently O. If you want a few cases, I will give them to you.

  2. Hard, you said, “Clearly, and as the case law suggests, when a term in a claim is common to the art and is not explicitly constrained to a particular meaning by the specification, it is perfectly reasonable to apply “whatever” meaning can be “reasonably” applied. And this of course means that an example in the specification is only an example, and thus, by definition, is not the only constraint on an otherwise term (common, art-specific, or otherwise).”

    I agree that this fairly summarizes the actual practice of the Office.

    But consider this, Hard, if the claim term can be construed in a number of different ways, only one of which reads on the embodiments of the specification, why is the choice that reads on the embodiments tantamount, in you words, to incorporating limitations from the specification into the claims?

  3. It is quite evident that you transitioned to the “Not thinking about it” mode prior to making your comments here.

    If you really are not interested in developing the issue, I suppose your current methodolgy tracks well.

    However, if you ever do want to contribute in a meaningful way, you might want to consider not merely loling everything (especially as this gives the impression that you do not understand anything) amd leave the thinking on prior to reviewing the ideas presented.

    There is an added benefit that you might actually learn something.

  4. Only then can one know how the claims are being construed. It is at this point the duty to disclose art that is material to the claims as construe should arise.

    And Ned, as I pointed out, once that happens, the need for examination – of those supplied references would be required. It is that examination, newly invoked after the initial claim construction is complete that can then change the BRI of the prior completed construction – you have an infinite loop possibility here.

    You need to recognize that such is the case. You need to recognize that your view of examination is not realistic, as the article you put forth also mistakes, examination is not meant to be perfect – errors are to be expected and BRI – as NOW applied – is a tool in managing those errors in a cost and time conscious manner.

    It is at this point the duty to disclose art that is material to the claims as construe should arise.

    True – but not true enough. The duty to disclose material art is present ALWAYS. Surely, you reccognize and agree to this basic concept.

    The Feds… requires application of the duty before the applicant has had a chance to rebut the examiner’s construction

    Ned, Once again I remind you that this was said for the realm of the courts – EXPLICITLY NOT THE REALM OF THE OFFICE. Please, please, please, please take note of this distinction and remember it. Every time you make an argument confusing this, your position weakens.

    As to your two paragraphs (splitting out a non sequitur paragraph of your reminder of the amend/appeal option – You really do not need to understand this at all, as it has nothing to do with the point at hand (please curb your wandering) related to “That is really the question on the table” – I see that you have finally responded to A New Light’s very point of a flaw in the present-rebut-amend philosophy of the Office wholesale and unadultered copying of the court decision (for application in the courts).

    Funny it is that what you claimed earlier as missing the mark badly has been transformed into the very item that is “really the question on the table.”

    I would also offer a recommendation that you mend your relationship by not only apologizing for telling A New Light that he missed the mark badly, but by giving credit where credit is due. Wouldn’t you agree that would be the gentlemanly thing to do?

  5. Hardworking and Ever Trying To Help Ned Communicate More Effectively Without Drawing Out All of Those Horrible Rude People Who Have Nothing Better to Do Than to Be Rude to Poor Ned says:

    I am trying to find out if there are any “rules” of construction to BRI

    Listen Ned, all I am saying is that you are going about it in a rather odd way, continually conflating what happens before the Office and what happens in the courts (pre and post-grant) and now interjecting all sorts of your other beliefs.

    You keep on trying to say that “reasonable” is not “reasonable,” and it gets awfully confusing as to what you are on about.

    When you cite cases and opinions, you need to make sure that the topic is appropriate for the holding you wish to use in your argument. When the court is talking about activity in the court, that’s one thing. It is a completely separate thing when activity before the Office (per se) is being discussed – especially by the Office.

    But circling back to “reasonable.” You still have not explained the gulf you seem to see. Again, please explain.

    You also seem to continually want to be able to import the specification into the claims (as if “the invention” is innately more than the claims. Across many many threads now I have seen this theme (and variations on the theme) brought to your attention. I would have thought that the phrase “Invention, as claimed” mentioned so often to you over the course of many months would have penetrated any desire to not recognize that it is indeed true that the claims are the “game.”

    Clearly, and as the case law suggests, when a term in a claim is common to the art and is not explicitly constrained to a particular meaning by the specification, it is perfectly reasonable to apply “whatever” meaning can be “reasonably” applied. And this of course means that an example in the specification is only an example, and thus, by definition, is not the only constraint on an otherwise term (common, art-specific, or otherwise).

    For the meaning of “reasonable” you have asked others not to twist your words, but you seem more than able to twist them, like a nose of wax, to be in accord with the law and at the same time, horribly misapplied by the law – the difference only guided by what you suggest or by your definite feelings.

    Other than blindly accepting your feelings (not something one of critical mind is liekly to do), what is one to do except to ask you to explain those feelings?

    Further, in the post above you now introduce your crusade against use of functional terms in claims, or, heaven forbid, the notion of functional terms at the point of novelty. I would rather not sidetrack this discussion by reminding you that the Supremes have been adamant in saying that claims must be viewed as a whole, so we will leave that discussion for another day.

    You appear to be snowballing all of your passions into one argument. Listen Ned, I admire your passion. I really do. But I have to tell you, when you start snowballing like this, you just do not make any sense on any issue, let alone the convoluted jumble of all of them together.

    I advise you to take one issue at a time. Slow down and make sure you have the court reasoning appropriately placed on the actual issue the court was discussing, identify those areas that are mere conjecture or driven by belief of how things “should be” and construct your posts accordingly.

    In all kindness, I think this will help you not only make a better and understandable argument, you will come off less of a ranting nutball, case law mangler and personal agenda pusher.

  6. Because applicants get WD for original claims. So, in effect, they are construed to “read upon” themselves since applicant can amend his spec to include an embodiment reciting specifically what is in the claim. Although you still look to the spec for any special interpretations that need to be made of terms.

  7. “It’s funny to me how you can presume anything about the level of knowledge about Einstein from someone who supplies a quote from him.”\

    Lulz, for a minute I thought you were not NAL/ANL. Never mind.

    But just fyi, I “presume” things about you and NAL/AND’s level of “knowledgelol” about everything. Because you have little and you understand less than the commonman. There is literally a 0% chance that you understand anything even remotely related to Einstein’s work and an even smaller chance that you took the time to learn anything about him as a person.

    “A New Light has published his “wonderful understandinglol.”"

    Yes, but you didn’t publish it in “a” paper that got officially peer reviewed.

    Although, sure, I do support peer review here on the site as well.

    “Rather than take an immature, and baseless, mocking of Einstein knowledge, why don’t you try reviewing the idea put forth? ”

    I already did, loled @ it, loled @ the Fed. Circ. for the Theranonsense decision and then moved on with my life without wasting too much of my life thinking about it.

  8. The main issue here is potential inequitable conduct on the part of uspto reguarding corrupt file insertions by employees potential or reality and the possible corrupt lack of congressional action to eliminate the possibility by installing immediate on filing televised novelty examination. apperantly since 1960 with the establishment of the 18+ month secrecy application database. Congress also rejected due date files lockering to insure correct inventorship determination. The potential of having your invention stolen then being prosecuted for it is apperantly to hanious of an injustive even for the judges.

  9. Listen Hard, I am trying to find out if there are any “rules” of construction to BRI. At times, I think the only limit is that BRI means any claim interpretion that is not totally irrational. However, I have a definite feeling that the CCPA had something entirely different in mind at the time it created the rule of construction. I believe it had in mind all the normal rules of construction, save the one that preserves validity by reading limitations into the claims. But, when does that happen in court? It happens when one uses functional terms in claims.

    I suggest that what BRI should me is that the PTO should follow Phillips, without the rule that a narrower construction is authorized to preserve validity. That is what I think the CCPA meant.

    In fact, in a recent case, Rader, citing the Supreme Court, opinine that one must always construe claims in light of the specification. Whether that meant the same rules as defined in Phillips, he did not say. But that is what I think he meant.

  10. Hard, my post gave the policy reasons for determing the duty after claim construction is complete. BRI, the way it operates, it indefinite until the process is complete. Only then can one know how the claims are being construed. It is at this point the duty to disclose art that is material to the claims as construe should arise.

    The Feds said as much in rejecting the current rule 56 because it requires application of the duty before the applicant has had a chance to rebut the examiner’s construction. I even quoted the relevant passages from the case upthread.

    Also, we must understand that often the examiner is quite wrong in his claim construction, but we applicants simply amend rather than appeal. The former gets us a patent now. The latter maybe, in a few years at best.

    Now consider that the reference is material only before amendment but not after. Has the applicant committed IC? That is really the question on the table.

    I suggest not, as the claims as allowed are patentable over the reference.

  11. If USPTO Examiners were to refrain from unreasonable interpretations, much of the heat would go out of this issue, wouldn’t it?

    I agree with you MaxDrei on this point. I would further note that this is not a matter of BRI being the wrong doctrine, but rather a matter of that doctrine being applied incorrectly. I think that Ned confuses the two.

    As for “Why can’t everybody else do it like that?” I only refer you back to the point of US Bound’s post: the law is different and this requires that people do things differently. Harminization is not the answer because the foundational beliefs are not the same.

    I am reminded of The New Seekers by your message and I thank you for that. Alas, perfect harmony must remain a commercial pitch for now.

  12. Hardworking and Wondering What Ned Thinks the Word Reasonable Means and Why It Appears That He Has More Than One Meaning In Play says:

    Ned,

    You keep on saying “why then doesn’t the MPEP require it with the claims as filed unless the is no way this is reasonable.”

    You also keep on acknowledging that BRI means Broadest Reasonable Interpretation.

    Somewhere between the two you have created a gulf around what is “reasonable.”

    Please explain.

  13. Hardworking and Calling Out 6 to Stop His Juvenile Responses and Actually Contribute to Issue Development says:

    It’s funny to me how those who know the least about Einstein are the most fascinated by him.

    It’s funny to me how you can presume anything about the level of knowledge about Einstein from someone who supplies a quote from him.

    This speak more about the lack of your logical thinking than anything else.

    As for published papers and peer review, don’t you thnk that a bit much? After all, all of us (it is hoped) are here on this blog to review and develop the issues put before us by Dennis. So, in a sense, A New Light has published his “wonderful understandinglol.” Rather than take an immature, and baseless, mocking of Einstein knowledge, why don’t you try reviewing the idea put forth? Let’s see you advance an issue instead of engaging in juvenile sidetracks.

  14. Ned,

    With all due respect, your post does not advance the issue put forth by A New Light.

    Just why do you think A New Light’s view misses the mark badly?

    I think the post illuminates a New Light’s issue beautifully. There is a clear distinction between the actions before the Office and the actions before the courts. The very foundations of the BRI standard are based on the benefits that come from the interaction between the applicant and the Office because of the Examiner’s use of BRI. The Office’ rendition of the court’s Therasense standard negates the prinicples of this interaction.

    Whether or not you like BRI as a normal Office tool really is not central to the issue that A New Light shines upon.

    It appears that you are having difficulty maintaining the separation of functions of the Office and the courts. Your comment of “In this regard, I would judge BRI after the claims are allowed” speaks more to only court actions because the Office work is done at the point of allowance (except for minor clerical work, such as the minor work of issuing and determining PTA). At the same time that you appear to want BRI after allowance (and thus in the court’s domain), you critize the court’s decision, as adopting BRI. This circular and contradictory reasoning is confusing.

    I would suggest that your idea of only applying BRI after allowance has a further weakness. Any offering of disclosed references (and keep in mind that Rule 97 is left completely intact here) after allowance will of necessity cause that allowance to at least be put on hold and another round of examination then must be commenced.

    I think that the Bey-Cotropia article (by the way, thank you for the link – very much appreciated), was, although interesting, flawed in many respects. Office examination was never meant to be perfect. There simply is not infinite time and resources available to precisly inspect any one application. This requires a management approach to minimize errors (both Type I and Type II errors). The rejection of the BRI is unsound, because removing that tool without replacing it indicates an expectation of Office examination capability that is not reasonable. The article (and your joining in on this) seems to fail to recognize the reality of the situation.

  15. 6
    I know you said you construe claims to read on the spec.  But, why then doesn't the MPEP require it with the claims as filed unless the is no way this is reasonable?

    Sent from iPhone

  16. “One of my favortie quotes when it comes to law and the guiding principles of simplicity and necessary complexity is by Albert Einstein. Einstein said “Everything should be made as simple as possible, but not one bit simpler.”"

    It’s funny to me how those who know the least about Einstein are the most fascinated by him.

    On another note, it’s too bad that you didn’t have your wonderful understandinglol incorporated into a published paper so that your peers could have easily screened it.

  17. No duty, Bound. But it might nevertheless be in the interest of the applicant, to ensure that the most relevant art has been considered by the Examining Division in the EPO before it issues the EP-B.

    Me, I think the fuss is about what is reasonable and what is unreasonable. Interpretations adopted by EPO Examiners are nearly always reasonable. If USPTO Examiners were to refrain from unreasonable interpretations, much of the heat would go out of this issue, wouldn’t it?

    Me, I think it is barmy, to have the claim mean one think prior to issue, and something different after issue. But I accept that it is a part of any “twin track” system, like the USA and Germany, where validity is tested in one forum and infringement in quite another.

    But then I would think like that, wouldn’t I, because the English judges write opinions that cover both validity and infringement, after having written what the claim means. It’s so simple. Why can’t everybody else do it like that?

  18. Of course I do Ned. As I believe I’ve noted to you on a number of occasions. Also, as I believe I’ve noted to you on a number of occasions this usually comes up when I’m looking at an amended claim trying to determine if they have WD for the claim.

    Other than that, sure I consider it, but usually I pay that specific fact little mind for construing original claims. He gets WD for his original claims. That is, if push comes to shove, he could simply amend the spec to include an embodiment reciting the originally claimed subject matter.

    Thus if he’s drafted a claim that is way outside what appears to be disclosed in his application I simply allow him to have WD for his original claim as it is written and include it as a disclosed embodiment unless there is some extenuating circumstance. That said, if there is something in the spec which leads me to believe that x term should be construed more narrowly than the claim itself would indicate then I interpret it accordingly. Otherwise, whether the claim covers the embodiments in the spec is of little concern to me other than to make a note of it in the action so that whatever clueless attorney is on the other side won’t flip his worthless top because of his misunderstanding of the lawl. I have also been known to make note that I will not hesitate to restrict and force him into an election by original presentation if he attempts to amend the claim in such a way as it then covers the embodiments but would be restrictable from the original claims and/or if he does not acknowledge the error explicitly if it is an error.

    Come to think of it, I’m quite harsh sometimes.

    But in any event, the point to this is that in examination he can amend, in litigation he cannot, thus the courts holding that claims are usually interpreted so that they read on a disclosed embodiment in the spec is largely irrelevant. The entire point to examination is to clear this sht up before it gets to court and costs a million dollars to sort out.

    Could you stop asking me to explain this complicated procedure to you? Please? Could you fcking get a pad and paper and write it down and then place it beside your computer for easy reference?

  19. Do you mean that you don’t have any clue as to what you are talking about?

    That’s pretty much it.

    Your turn.

    Try to make sense.

  20. An original claim cannot help but “cover” the disclosed invention because it “is” the disclosed invention. Now what you might be thinking of is does the disclosed invention have proper support in the specification to meet all the legal requirements. If you are thinking otherwise, as others keep pointing out to you, you are trying to read the specification into the claim.

    You are not allowed to do that.

    A non-original claim also cannot help but “cover” the disclosed invention for all the same legal reasons, plus the prohibition of adding new matter.

    You’ve talked yourself into circles. Little silly circles.

  21. Washed up, “1) BRI is defined as Broadest Reasonable Interpretation. In the MPEP, this is synonomous with “the Director shall cause an examination”. The MPEP also doesn’t cover bathroom breaks, but I am pretty sure those are allowed. Wash up.”

    This says it all.

  22. An applicant should not permit claims to issue that he knows to be unpatentable over non disclosed references. That is his duty.

    That was his duty.

    Still his.

    What is your point?

  23. From Prater:

    “Inasmuch as claim 9, thus interpreted, reads on subject matter for which appellants do not seek coverage, and therefore tacitly admit to be beyond that which “applicant regards as his invention,” we feel that the claim fails to comply with 35 U.S.C. § 112 which requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” (Emphasis added.) This is true notwithstanding appellants’ disclosure of a machine-implemented process. There are quite sound reasons why, in an infringement suit on an issued patent, courts may sometimes “interpret patent claims in the light of the specification” so as to protect only that phase of the claimed invention that constitutes patentable subject matter and thus do justice and equity between the parties.30 However, this court has consistently taken the tack that claims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims, the thought being to reduce the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified.31 In re Sweet, 393 F.2d 837, 55 CCPA 1191, (1968); In re Soderquist, 326 F.2d 1016, 51 CCPA 969 (1964); In re Tibbals, 316 F.2d 955, 50 CCPA 1260 (1963); In re Henatsch, 298 F.2d 955, 49 CCPA 915 (1962); In re Lundberg, 244 F.2d 543, 44 CCPA 909 (1957); In re Kebrich, 201 F.2d 951, 40 CCPA 780 (1953). We are not persuaded by any sound reason why, at any time before the patent is granted, an applicant should have limitations of the specifications read into a claim where no express statement of the limitation is included in the claim.”

    What this implies, does it not, that BRI is the same as that of the courts, but not limited by the other doctrine of claim construction that claims will be limited to structure of the specification in order to preserve validity. That really applies only to functional claim limitations.

    But this is hardly what the PTO actually does, now is it?

    I have repeatedly asked this question and have yet to receive a response from anyone:

    If there are two possible claim interpretaions: one that reads on the embodiments and another that does not, which is reasonable?

    This is a hallmark of proper claim construction, for the Feds have repeatedly held that a construction that does not read on the embodiment is wrong.

    But, that is what the PTO does routinely using BRI, because the PTO has never articulated what BRI is, in fact.

  24. “The case law provides little to no guidance on the contours of the BRI standard.”

    How could someone disagree with that Ned? There are no “contours” of the BRI standard. There is no reason for there to be examples or verbiage in Fed. Circ. case law or the MPEP that demonstrates how examiners are to implement the BRI standard.

    And why is all that? Because everything you need to know about BRI is in the name “BRI”.

    “Given the criticality of claim construction to all other issues during prosecution, is the coomplete absence of any standard, ”

    BRI IS THE STANDARD. Ya jackarse, now you’re proposing a standard for the standard? What’s next? A standard for the standard for the standard for the standard for the standard for the standard …?

    “of any examples or of any limits set forth in the MPEP acceptable from any point of view?”

    Lulz, why do you need examples? Do you have problems being reasonable? Or do you simply have problems with persuading an examiner? I’d just like to take a moment and note that the fault for each of those is not with BRI, but is with you.

    “I think we need Kappos to clarify BRI with a rule, if that is at all possible given that BRI might be court induced. But if it is court-induced, I wonder just what legal authority it is that the courts rely on to administer claim construction in the PTO? They have never cited such authority; and I suggest, there is none.”

    Lulz, why not try reading the cases where BRI spawned?

    BRI it turns out has been with us for a long long time.

    link to openjurist.org

    Application of Prater August 14, 1969 which cites to even earlier cases which cite to an unspecified “line of cases” where it is well settled that no matter what happens in litigation BRI is what is in use in the office since the applicant may amend.

    Indeed, other cases consider BRI axiomatic.

    link to openjurist.org

    Gl fighting an axiom. At this point it would take an En banc Fed. Circ. or the USSC to overturn it. And the CAFC would surely uphold it en banc, all of its members use it regularly. Even Newman. Stare Decisis and all that.

  25. Max, the fuss is about loss of rights. Amendments can cause loss of the equivalents and back damages. It is unfair.

    If the claims are ambiguous, we need to be able to clarify them without loss of right.

  26. Actually MM, the reason that article is so ridiculous is because of its equally ridiculous authors. Although you should be fairly familiar with at least one of them.

    “The BRI standard additionally allows patent examiners to avoid difficult claim interpretation issues”

    Which, funny enough, benefited the very author of this piece only a few short years before publication. And considering that the author in question couldn’t construct her way out of a paper bag much less construct a whole claim, it is a darn good thing they had BRI there to help the author out.

  27. Do you disagree?

    What is the question that you are asking Shilling to agree to or not – your rant is full of them.

    But let’s start (brain un)washing.

    1) BRI is defined as Broadest Reasonable Interpretation. In the MPEP, this is synonomous with “the Director shall cause an examination”. The MPEP also doesn’t cover bathroom breaks, but I am pretty sure those are allowed. Wash up.

    2) You assume there is a divorce from reality. Why? All of the case law you have cited holds otherwise (and in fact you made the express denial above of this fact – if you are going back on your word, you owe a few people apologies). Wash up.

    3) Whether or not best art was ignored, or poor examinations made, have absolutely nothing to do with the topic at hand. Such happen anyway. Why do you seek to conflate here? Wash up.

    4) Complaining about wild and woolly claim constructions means either the applicant did not use the right language (and is not at issue here) or the examiner was wrong (again, which is not at issue here). If the examiner properly uses BRI according to the law, what is your issue? You again have expressly stated above that you do not mean such “wild and wooly” constructions, because such constructions do not take into account the specification and you have expressly denied this. So which is it, were you misleading earlier, or are you misleading now? Wash up.

    5) The article is wrong headed – Do you mean besides the ways Shilling already stated? Aren’t those ways enough? Wash up.

    6) in court…BRI… – once again – you conflate BRI and court actions. Wash up.

    7) How do you explain in re Morris – that is the explanation for the proper use of BRI. What’s your problem with it? (the rest of your questions are held in abeyance until you supply an answer) Wash up.

    8) You have already expressed tha it is your view that no authority to intrepet claims that do not read on any embodiment. Your sentenece here… unless such a construction is impossible… does not make any sense. As to what can be understood, you are in error, trying to read the specification into the claims. This has been previously noted above. Try to pay attention. Wash up.

  28. The Shilling,

    OK

    Can you define BRI. Show me where in the MPEP it is defined?

    If the PTO construes claims in way that is divorced from reality, and then allows the patent, has it examined the claimed invention?

    I know of numbers of specific cases, and I cannot tell you about them for obvious reasons, where the examination went far afield and stayed there, ingoring the best available art. That the claims were declared patentable as construed only determined that something other than the claimed invention was patentable.

    Even in this thread, numbers of posters have said the same thing. How many times over the recent years have posters complained about wild and woolly claim constructions?

    You think this article wrong headed? In what way?

    In court, if a claim construction does not read on any of the embodiments is declared wrong by the Federal Circuit. Such a construction is perverse. Yet, such constructions are common using BRI.

    For example, how does one explain In re Morris? The construction read on the prior art and not on the invention. Was this examination of the claimed invention, or was it just playing games with the applicant to poke fun at him, waste a lot of time and everyone’s money? What was gained by all this?

    The claims are intended to particularly point out (from the specification) the invention. There is no authority, in my view, to provide an interpretation of the claims that do not read on any embodiment unless such a construction is impossible.

    Do you disagree?

  29. The Unreasonableness of the Patent Office’s ‘Broadest Reasonable Interpretation’ Standard

    The article starts out well, but falls to the usual academic problems of being written to suit a pre-defined agenda.

    Cotropia suffers from the taint of Lemley.

    Too many things are assumed, and those assumptions just happen to fit the desired conclusion.

    The obfuscation between what happens in the Office and what happens in the courts – especially in the discussion of “horizontal equity” is painfully blatant.

    Having said this, this is an especially good piece of propaganda, with enough early well-cited foundations, off-point truths and clever half truths to at least sound correct. In the end though, a lot of handwaiving at the critical parts – quite similar to many posts here.

    If you have bought into this claptrap, a serious unbrainwashing is in order.

  30. So what’s all the fuss about?

    I believe the fuss is the tie in of BRI in normal use to the standard of the applicant’s duty to submit material information.

    I didn’t think you had that duty in the EPO, MaxDrei.

  31. The EPO does BRI too, but I am not aware of any problem with it. How about you, fellow readers?

    The EPO does BRI for one very good reason, namely, to kick start a short sharp discussion of novelty and non-obviousness, so as to get the case to issue PDQ and ASAP.

    In the EPO, an Examiner (having had the experience of having her skin cut by the edge of a sheet of paper) might contend that a claim term like, say, “cutting means”, includes within its ambit an edge like the one visible in the D1 reference, so that the claim lacks novelty over D1. If prosecutor points to a definition of “cutting means” in the specification, prosecutor would then be invited to insert that definition in the claim, to imbue the claim with enough clarity to meet the requirements of the EPC. If there is no such definition, well, some other amendment is going to be needed, isn’t it readers, to deliver patentable novelty?

    I imagine the Examiners at the USPTO have the same toolbox.

    So what’s all the fuss about?

  32. C’mon just let it all hang out: “REGISTRATION SYSTEM!! REGISTRATION SYSTEM!!!”

    There goes Malcolm’s job.

    Hellloooo unemployment.

  33. Malcolm, do you disagree with this from the article at p. 309?

    The case law provides little to no guidance on the contours of the BRI standard. It is difficult to find examples or additional verbiage in Federal Circuit case law that demonstrate how examiners are to implement the BRI standard. The Manual of Patent Examining rocedure’s (MPEP) description of claim interpretation during prosecution contains no further instructions specific
    to employing the BRI. The interpretation section, MPEP section 2111, begins by instructing examiners to give pending claims their “broadest reasonable interpretation.” The section goes on to provide no examples, no tests, and no direction to examiners on how to implement or employ this standard.”

    Given the criticality of claim construction to all other issues during prosecution, is the coomplete absence of any standard, of any examples or of any limits set forth in the MPEP acceptable from any point of view?

    I think we need Kappos to clarify BRI with a rule, if that is at all possible given that BRI might be court induced. But if it is court-induced, I wonder just what legal authority it is that the courts rely on to administer claim construction in the PTO? They have never cited such authority; and I suggest, there is none.

  34. A new light, I understand your reasoning, but it does go to illustrate that the majority decision in Therasense potentially is disastrous in that it incorporates in the milieu the hopelessly vague BRI. BRI in reality means nothing more than that the examiner is required to find support for his construction of a term somewhere, in dictionaries, in cases involving entirely different subject matter, anywhere. All it has to be is based some evidence. There is no requirement that the claims as construed have any relationship to the disclosed and claimed invention. You have seen the complaints of everyday practitioners and their clients and know that this is true. In re Morris is a prime example of the phenomena.

    Such unpredictably does not allow one with any predictability to determine in advance of prosecution what his duty actually is. This new “rule” by the Feds and by the PTO is hopelessly vague as a result. How one can base rights and legal or ethical obligations on such unpredictability permits one to question the reasoning power of the proponents of the “rule.”

    I realize the Therasense majority may have had to adopt this rule because of the need for votes. There may not have been the votes to adopt the more common sense proposal of a “but for” test related to validity that would require a finding that a claim was invalid before finding the withheld reference was “but for” material. All this suggests to me is that Supreme Court review is desperately needed here to fix this; either that or legislation.

    A new light, if you really want to increase predictability and reliability of patent rights, you would, I suggest, support the notion that anything we or the Office could do to nudge the result towards the “but for” materiality of invalidity is something we should advocate. What we should not do is try to make it worse, because then the flood of detrius IDS disclosures will only increase, the plague of IC charges in court will not be cured, and potential charges of IC will become a curse for every practitioner who does not go to extremes to disclose every possible piece of prior art that could potentially be relevant.

    In this regard, I would judge BRI after the claims are allowed, because until that time, what is going on in prosecution is a struggle between the applicant and the examiner over claim construction, which iterates though argument and claim amendments. Only after that process is complete, do we have a reasonable understanding of what the claims actually mean. Before then, we only have matters of opinion on both sides.

    It is at this stage the materiality of non disclosed references should be judged. An applicant should not permit claims to issue that he knows to be unpatentable over non disclosed references. That is his duty.

  35. Against my better judgement, I will respond to Ned’s post stating that my thinking on rejection vs. allow misses the mark badly.

    Ned, I am not sure exactly why you think this notion misses badly.

    In your first post above, you yourself indicate that the BRI is problematic in becoming a focal point of the IC debate.

    I see my post here as actually putting substance to that contention.

    As you are aware, one of the supporting arguments for allowing BRI (despite the tendency to promote type II errors) is that the use of BRI still allows the applicant to amend the claims.

    However, a substantial reasoning in the Therasense case against the existing Rule 56 is that such a rule “pulled in” too much material that may be considered irrelevant to a final prosecution (the “allow” state) exactly because the applicant could amend after an initial rejection by an examiner using BRI.

    By forcing an applicant to play the part of an examiner and come up with their own guess at BRI in prejudging claims before any amendments are made (in determining materiality in order to comply with their duty), the give and take is neutered, thus removing one of the pillars supporting BRI in the first place.

    As there are but a few of these pillars supporting the roof of BRI in the first instance, such a removal may very well cause the proverbial roof to crash in.

    Further, BRI is supported and based on the premise that prosecution in the Office is different than action in the courts. By the Office attempting to implement a standard of duty based on a court decision that explicitly was setting a standard for the courts, the Office is abdicating its responsibility to maintain that difference and at the same time integrating a key portion of the duty’s new definition on an aspect (BRI) that requires that very difference to be maintained.

    In addition and as has been noted, the applicant cannot know what the BRI will be for a number of reasons. As you point out, BRI is not rigourously defined. BRI is too dependent on the particular examiner. BRI is not determinable at points of time during the prosecution that the duty of disclosure is in force. There is no development on the record of what BRI is for those cases of allowance on first action.

    I see very serious circular logical errors in this attempt by the Office to “make things simple,” when simplicity should not be the guiding determinant.

    One of my favortie quotes when it comes to law and the guiding principles of simplicity and necessary complexity is by Albert Einstein. Einstein said “Everything should be made as simple as possible, but not one bit simpler.”

    By only focusing on the simplicity of the end result – the allowance factor (a factor much more at home in the timing phase of action before the courts), the Office has gone past that “one bit simpler” border, and hopelessly conflates the timing factor of the application of the BRI standard.

    Upon consideration, I think that rather than miss the mark badly, this interesting issue may be a key focal point for the Office to consider as it provides, in my opinion, insightful substance to the potential pitfalls that you yourself have raised.

  36. This Article explores this special standard and concludes that not only are the previously articulated rationales behind the BRI standard severely lacking, the standard is also contrary to both the patent statutes and the concept of a unitary patent system. The BRI standard additionally allows patent examiners to avoid difficult claim interpretation issues, leads to improper and uncorrectable denials of patent protection, and is incurably ambiguous.

    Was this “peer-reviewed” by the Journal of Patent Tzzzbxggers?

    C’mon just let it all hang out: “REGISTRATION SYSTEM!! REGISTRATION SYSTEM!!!”

    It’ll create jobs, right? Why does the PTO deplore inventors? etc.

    “incurably ambiguous” — sounds like a first year associate who first heard the word “incurably” for the first time last week

    Better dog whistles, please.

  37. But most of the rest of us see the humor in your statements, “anon.”

    LOLOLOLOLOLOL!

    Keep the hits comin’, ping. You are more funny now.

    ROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOLOLROTFLMAFALOLOL!

  38. Ned,

    It is no more insulting to be addressed this way then to have a discussion short changed because the other side sees that they are wrong and refuses to discuss simple and elegant analogies.

    You then later call my postings rude – I only turned rude in response to your rudeness.

    I suggest you reflect on why you in particular seem to draw this so-called rudeness out from people. Your sense of high-and-mighty simply does not play well.

  39. Thanks Ned.

    I am looking forward to a good read, and I hope that I am not disappointed with the scholarship.

  40. link to papers.ssrn.com

    from

    link to kslaw.com

    The Unreasonableness of the Patent Office’s ‘Broadest Reasonable Interpretation’ Standard
    Dawn-Marie Bey
    King & Spalding LLP

    Christopher Anthony Cotropia
    University of Richmond School of Law

    merican Intellectual Property Law Association Quarterly Journal, Vol. 37, No. 3, 2009

    Abstract:
    Although there has been much commentary on patent claim interpretation methodology in general, very little has been written about the unique interpretation approach the Patent Office employs. The courts, starting with the Court of Customs and Patent Appeals and continuing with the Federal Circuit, instruct the Patent Office to give every applied-for claim its ‘broadest reasonable interpretation’ (BRI) during patent examination. This Article explores this special standard and concludes that not only are the previously articulated rationales behind the BRI standard severely lacking, the standard is also contrary to both the patent statutes and the concept of a unitary patent system. The BRI standard additionally allows patent examiners to avoid difficult claim interpretation issues, leads to improper and uncorrectable denials of patent protection, and is incurably ambiguous.

  41. Ned,

    I do not see a problem with the way that you were addressed here.

    You have been corrected on this issue several times. You do appear to keep repeating a conflated view. This are of standards is difficult enough to keep track of without the repeated posts conflating the issue. In fact, even another well known blogger Eric Guttag was corrected recently (and it is interesting to see the difference in response between you and Eric). See link to ipwatchdog.com .

  42. Malcolm,

    Boundy is a respected attorney known for championing the rights of applicants in the face of great odds.

    ping was a foul-mouthed poster, but he was consistently right in his legal views (and considerably more on target than you).

    I do not see the humor you find in this statement.

  43. Ned,

    It is good to see that you agree with me when I said that In re Morris does not stand for “ignore the specification.”

    But I can see why others might think that you were reading more into the case, as you invited me (although it was MPEP Insight that quoted the MPEP) to read more when I clearly did not need to. But by inviting me to read more, when what I had posted was correct does indicate that you somehow disagree with what I had posted. It’s good to see that you now do agree with me.

    Perhaps it was your tone. You do tend to come across as a bit condenscending, and after all, MPEP Insight’s post (above) was accurate as well.

    I would be interested in cites to these recent law review articles tht question the practice of BRI in view of §131. Do these law review articles also take into account the judicial opinions that fully sanction BRI? After all, even the case you presented does believe that the Office use of BRI is justified.

  44. Malcolm, agreed.

    You will note that ping misquoted me, twisting what I said into the opposite of what I said. “Regardless of the specification” is not at all “regardless of whether they read on the specification” when the terms are not used in the specification, etc.

  45. I really like this website because lots of people here foe sharing their ideas and experiences with other people.
    Job

  46. Actually,… it doesn’t imply that at all

    Actually, it does.

    I believe Ned’s point is that the Examiner should certainly be considering the specification for what it teaches but if the specification teaches nothing relevant to the claim terms, then it certainly can be ignored.

    Actually, you have just repeated my point – the one Ned disagreed with.

    Thanks for playing. Now go sit down.

  47. MPEP Dipshight:

    “regardless of the specification” implies that the examiner can ignore what the specification teaches.

    Actually, Dipshight, it doesn’t imply that at all. I believe Ned’s point is that the Examiner should certainly be considering the specification for what it teaches but if the specification teaches nothing relevant to the claim terms, then it certainly can be ignored.

    Consider: if the claim recites “A genetically engineered bacterium comprising a nucleic acid of SEQ ID: 20″ and the specification says nothing about bacteria or nucleic acid sequences but instead describes a computer-implemented method of reminding someone when to cut their toenails, the correct application of BRI (or claim construction by a judge, for that matter) does not require that “bacterium” be construed to include “a computer” and “SEQ ID 20″ be construed to mean a program that calculates the rate of toenail growth.

    Got that? You’re welcome. Someone please let Lourie and Plager know about this basic fact as well because they seem to have their heads deeply up their axxes when it comes to construing claims.

  48. Don’t twist my words, ping. I will not have you setting up strawmen and then knocking down. That is the game you play and I have had to with you.

  49. Ned,

    I am not ping. The tone you hear is the ring of accuracy of the statement.

    Or do you deny that you have already been chided in not recognizing the difference between the Court and the Office? It would be simple enough to revisit the threads where at least two posters told you of this. I know that one of those posters, Dave Boundy, has a better reputation than ping, and is not one to point this difference out to you in any type of gameplaying.

    And even though this difference has been made clear to you multiple times, once again, you put forth a post that ignores the difference.

    The tone? Maybe if you did not play games by posting on things that you have been corrected on, multiple times, you would not be so sensitive to “the tone.”

  50. Ned,

    You overread the case law.

    To wit, your use of “regardless of the specification implies that the examiner can ignore what the specification teaches.

    This is false.

    The key to your overreading is your use of “regardless.” This word has the implication that the specification has some teaching, but that teaching can be ignored. This is not true, as “taking into account” is not optional.

    Stop exaggerating.

    There is truth (but only half the story) in your post in “They found, in the Morris specification, no definition of the term in dispute, and no use of the term in the description of the drawings.”

    What actually is clear from this is that such a term freely admits to BRI since it is not a teaching of the specification and does not merit the use of your characterizing word “regardless.”

    And yet you charge forward with that word, with your characterization. What is clear is that you attempt to stretch this truth beyond the bounds of the teaching of the case and turn it into your philosophy that the specification can be ignored. Your attempt to make the embodiment rule the claim falls short.

  51. “but you have been brought to task”

    Why this snide tone?

    I am not going to respond to you ping. I will not be suckered into another one of your games.

  52. All very fine and good Ned – for the court.

    But you have been brought to task, repeatedly, for forgetting the differences that exist between the realms of the Office and that of the Courts. Forgetting that the actual Therasense case was not about the functioning of Rule 56 in the Office.

    All your quote shows is the inadequacy that the Court felt for Rule 56 for the Court’s purpose. Your quote speaks nothing of the Office’s purposes.

    For the Office’s purposes, Rule 56 was intended to have a lower bar for materiality, expressly because the Office wanted more material to be brought forth. The reason why, and this too has been brought to your attention quite forcibly, is because the Office wants the Examiners to see as much material as possible so that the Examiners can choose to (or choose not to) use the material in their examination. The old rule squarely provides the deciding force to be with the Examiners. The new rule simply does not.

    Understanding that the Rule here under consideration is the Rule for the Office rather than for the Court does indeed make this a subtle and Radical difference.

  53. Anon, yes, but I invite you to actually read In re Morris completely, and not just the excerpt quoted by the PTO. When they say “consistent with the specification,” what they mean is that the terms have to be actually defined in the specification or used in an unambiguous way so that no other meaning is possible. However, unless the specification compels one and only one interpretation of the claim term, the Office is entitled to construe the claims using ordinary meaning, that is, the meaning one of ordinary skill in the art would understand the term to mean – regardless of the specification.

    The issue on appeal in that case was whether the Office could construe the claims so as to not read on the disclosed embodiments because that is what they did in fact when they construed the claim term under consideration to read on the prior art but not read on the disclosed embodiments.

    In that case, the Board at construed “integrally formed as a portion of” to read on a Brown reference which showed a sandwich structure, a foam pad sandwiched between two plates. The invention was a disk drive acoustic noise reduction invention that sought to reduce the acoustic noise from motors, particularly the spindle motor. The prior art was Brown. Brown was described in the background section of the patent. The improvement was a thinned casing surrounding the point where the motor was mounted. This thinned casing was described in the claim as being a “compliance structure” “integrally formed as a portion of.” (From memory only)

    The Board justified its construction that the claim term read on Brown based upon prior cases where “integral” had been construed to cover sandwich structures. Its position was that the examiner did not have to limit his claim construction to at least read on the specification. This was why the Board’s opinion was appealed.

    The Federal Circuit affirmed the Board. They found, in the Morris specification, no definition of the term in dispute, and no use of the term in the description of the drawings.

    So what is clear from the case, is that “broadest reasonable interpretation” permits the Office to construe claims regardless of whether the claims will read on the specification. They are entitled to do this when a claim term is not used in the specification, is not defined in the specification, and is not used in the specification in a way that no other meaning is possible.

  54. Anon, if one compares the old rule to the new, you may have a point. But if one compares the old rule to Therasense, you can see my point. Rule 56 was rejected by the majority for precisely the reasons why present Rule 56 cannot be the standard. It speaks to a prima facie case, which speaks to “rejection.” The Federal Circuit said that this was wrong because it did not allow consideration of the arguments of the applicant which might persuade:

    “37 C.F.R. § 1.56. Rule 56 further provides that a “prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable. . . before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.” Id. (emphasis added). The first prong of Rule 56 is overly broad because information is considered material even if the information would be rendered irrelevant in light of subsequent argument or explanation by the patentee. Under this standard, inequitable conduct could be found based on an applicant’s failure to disclose information that a patent examiner would readily agree was not relevant to the prosecution after considering the patentee’s argument. Likewise, the second prong of Rule 56 broadly encompasses anything that could be considered marginally relevant to patentability. If an applicant were to assert that his invention would have been non-obvious, for example, anything bearing any relation to obviousness could be found material under the second prong of Rule 56. Because Rule 56 sets such a low bar for materiality, adopting this standard would inevitably result in patent prosecutors continuing the existing practice of disclosing too much prior art of marginal relevance and patent litigators continuing to charge inequitable conduct in nearly every case as a litigation strategy.”

  55. I agree with the distinction between the Office and the courts, and that the specification cannot be ignored.

    In fact, In re Morris stands for both of these points.

    From MPEP 2111 Claim Interpretation; Broadest Reasonable Interpretation:

    See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997) (The court held that the PTO is not required, in the course of prosecution, to interpret claims in applications in the same manner as a court would interpret claims in an infringement suit. Rather, the “PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.”).

  56. Well then Michael it only stands to reason charging the Applicant or his Atty. for trying to slack or hide the relevant Art is PERFECT. The USPTO needs the money. And that is a perfect way to get more. And also to give the Examiner the time he spends trying to find where the needle that was hidden in the haystack because of this. And why would anyone want a Patent Application that wasn’t strong in every area is beyond me. The Patent Office Examiners job, should be about trying to help you get the Claims that are strong.

  57. A good argument exists that the polluter is the Office itself.

    The Office is getting what they ask for.

    There is no way around it – with KSR (and how it is applied), with BRI (and how it is applied) and with key word searches made without understanding of the specification, the possibility especially under a preponderance standard that any art of marginal relevance will be used in a rejection is an undeniable 100%. I have quite literally seen thousands of Office Actions that show this very use of marginal art.

    Even the Office taking the Therasense stance still does not entirely clear the broad sweep of how the Office puts rejections together, and thus does not change how applicants must act. The idea that the applicant is the problem misses the true problem.

  58. The inventor and attorney have the largest monitory reason to withhold relevant previous art however a patent search is supposed to turn up revelant material at the time of examination so the falt lies in the office.I know from recient experiance that the search the office does is grosley defective and not worth $25.00 so It cannot be relied on as dependable. If they are going to punishment for non inclusion they need to not charge for a patent search and have the inventor and attorney be responsible for it. Also there should be a responsibility on the part of active patent holders to notify the pto and inventor of violations. Also they need to allow reissuances of patents where inventorship disputes have new evidence of wrongful issuance.

  59. According to In re Morris, all the examiner is required to do is give claim terms their meaning as understood by one of ordinary skill in the art. There is no requirement that the claims be construed read on the disclosed embodiments.

    I am not so sure on this either Ned.

    While not demanding that claims be construed to read on the disclosed embodiments absent some express definitions, examiners still must read the claims in light of the specification. This normal Construction rule still applies, even with the BRI. That is the law.

    This is not to say that such normal construction rules means that how a court treats claims and how the Office treats claims must be the same.

    The court is not the Office.

    The court’s role just is not the same as the Office role. One should expect that the rules (all of them) should be directed to the separate roles that each plays, and that those rules should be tuned to those separate roles.

    In re Morris does not stand for “ignore the specification.” No examiner is correct in doing so.

  60. I am not so sure Ned.

    Look at the old Rule 56 – it discusses a prima facia standard. That is indicative of rejection – not allowance.

    The new, proposed 56 is thus subtlely, but radically different.

    I think A New Light has an angle on something here.

  61. A new light, I think Therasense held that the applicant had to know that his claims were unpatentable over art for there to be duty to disclose. Your thinking on rejection vs. allow, while interesting, misses the mark, and misses it badly.

  62. The purpose of broadest reasonable interpretation is to assure the claims are definite under section 112, paragraph 2. Construing them broadly forces the applicant to provide clarifying limitations if the claims can be construed in ways he did not intend. According to In re Morris, all the examiner is required to do is give claim terms their meaning as understood by one of ordinary skill in the art. There is no requirement that the claims be construed read on the disclosed embodiments. What this means is that the claims, as construed according to BRI, do not necessarily have to cover the alleged invention.

    On the other hand, §131 requires an examination of “the alleged invention.” As pointed out in recent law review articles, the use of broadest reasonable interpretation more often than not results in an examination of claims that have little or nothing to do with the invention actually claimed were one to use normal claim construction rules, which primarily interprets claims in light of the specification.

    If the Office were required to use the construction of the courts, with the caveat that if the claims had more than one reasonable construction they had to be clarified, the the statutory requirements of §131 would clearly be met. The provision that if the claims had more than one reasonable construction they had to be clarified, would substantially address the issue of lack of clarity in the claims. But, by using the construction of the courts, the case law as developed by the courts in interpreting claims could be used by applicants in arguing whether a construction was reasonable or not; but more importantly, the applicant would know with some certainty what the claims covered and whether prior art of which he is aware was material to patentability under the Therasense decision.

    As discussed above in an earlier post, the requirement to use the construction of the courts would permit only one claim construction during trial for consideration both of validity and infringement, and of inequitable conduct. The advantage of this would be enormous in terms of cost savings and predictability.

  63. Charging more is not the answer. That only worsens the already uneven playing field of obtaining patent coverage.

  64. Maybe the Patent Office can set up some kind of Program/Spread Sheet, that will relate each Patent or citing in relationship to what you are trying to Patent like lets say a Jar, a Jar with a Gold Cap, a Jar with a screw top edge,a Jar that has measurements for ounces.
    Then the Applicant puts all those relative phrases in the recapture. And up pops all relative art. I think that would save a lot of time at least in the Patent Office.

  65. A sort of “Polluter Pays” rule, eh Ned? Good principle.

    But is this not all just whistling in the wind? Can the USPTO really do it? Or must it first get authority from the Congress?

  66. Interesting assertion there, from New Light, that:

    “Applicants are trained to overcome rejections – not to formulate and express them”

    To practise before the EPO you have to satisfy the Examiners that you can write an effective opposition to a patent granted by the EPO. It is a tough exam paper. The failure rate is >50%.

    Besides, oppositions are examined by ordinary run of the mill EPO examiners. Every EPO examiner is trained and experienced in considering (and dismissing when appropriate) objections put to them by opponents.

    And at the EPO, none of these people are even attorneys at law. What training is involved then, to become an attorney at law in the USA? Is it fit for purpose? Does it involve developing adequately reasoned opinions, on validity of patent claims? How does one explain to a client what the hourly billing rate is for? Does “judgement” play any part in it at all, even when writing opinions?

  67. The proposed Rule:

    (b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co.,___ F.3d ___ (Fed. Cir. 2011).

    Information is material to patentability under Therasense if:

    (1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or

    (2) The applicant engages in affirmative egregious misconduct before the Office as to the information.

    Notwithstanding my misgivings as outlined above (it is the applicant making the determination of what the applicant feels the Office would do), and even though the standard of evidence to be used is one of preponderance and the standard of broadest reasonable interpretation is to be used, there is one other item that makes me feel that this copycat rule may need additional work.

    The rule calls for the applicant to decide whether the Office would allow the claim. This is quite different from whether the Office would reject the claim. What applicant cannot make a colorable argument that at least in the applicant’s mind (where the judgment will be made) can overcomes a rejection with the reference under consideration?

    Even if the rule provided for some power to decide whether the applicant’s judgement is correct or not, is there even a way to say that the applicant’s thought process in acknowledging that the Office may have made a rejection, but would not have been able to sustain that rejection into a state of not allowing the claim to stand fails in judgment?

    Applicants are trained to overcome rejections – not to formulate and express them. This training to overcome all but guarantees that the applicant’s determination of materiality – in regards to the rule’s critical level of “would not allow” suffers a disproportianate bias towards the applicant.

    So the applicant gets to decide – the applicant is the “judge”. There is no appeal court for the “other side” to challenge the applicant-judge, and the applicant-judge is trained to be biased.

    I think the Office is in trouble in trying to copy so much from the different system of the court.

  68. Yes, but that answer assumes that the parties do not settle, and who knows how long it will take the district court to re-try the case under the new standard.

    Also, I believe it’s still possible (theoretically) for a cert petition to the Supreme Court to be filed in this case.

  69. I do not see if an answer has been posted on this, but I was thinking about this point and some other very good points made today on my way home.

    If it is not the examiners who are called to make this determination, who is? Somebody has to use both the preponderance of evidence standard and the broadest reasonable interpretation standard to determine whether or not an item is material and must be reported to the Office.

    Here’s the problem and what gets me is that the Therasense rule itself, as opposed to the Office adaptation, is a rule for judges. It is the judges who apply the standard of preponderance of the evidence and it is the judges who apply the standard of the broadest reasonable interpretation in order for the judges to determine materiality.

    This Office copycat Therasense rule is a rule for the applicant. From day one – prior to any examiner being assigned, much less involved, it is the applicant who is deciding on his duty. This Office copycat Therasense rule is aimed at the applicant for the applicant to know what the applicant’s duty is.

    So if the examiner is not the one tasked with this determination (and it indeed appears not), then it must be the applicant who is charged with determining the materiality.

    And while the applicant is charged with using both the standard of preponderance of the evidence and the standard of broadest reasonable interpretation, the complete decision on materiality falls to the applicant’s judgement. While the court’s actual Therasense rule provides a structured due process mechanism of review, the Office copycat rule provides for no such mechanism – there is no appeal from the judgement of the applicant.

    The Office attempt to simply copy this rule fails, because there are no independent judges involved, and the rule is not aimed at the examiner, which leaves only the applicant. With only the applicant, the only evidence is what the applicant decides is evidence and the preponderance standard is easily met (if you can make sense of an evidence standard outside of a courtroom and in an applicant’s mind as the applicant is determining materiality). With only the applicant, the broadest reasonable interpretation must be made by the applicant, and who is to say that the applicant’s decision on the broadest reasonable interpretation is wrong? Anyone who makes that decision is second guessing the only person who this Office rule is authorized to decide. The Office rule does not give anyone but the applicant the power to determine materiality.

    This appears to be a fatal flaw.

  70. I do not understand why you link the term “affirmative” to only “statements.”

    I suppose there could be other affirmative actions that would be considered “egregious” but insofar as they relate to “information” presented to the Office (which is required by the role) I think certain types of statements are likely to be the most common examples of “affirmative egregious conduct.”

  71. Anon : I do not understand why you are drawing a distinction between information and a reference

    I’m making the distinction because the court and the PTO are making the distinction: the Office states: “The Court (sic) clarified that ‘neither mere nondisclosure of prior art references to the PTO nor failure to mention prior art references in an affidavit constitutes affirmative egregious misconduct

  72. The interesting question is when the failure to disclose material information (as opposed to the failure to disclose a prior art reference)

    I do not understand why you are drawing a distinction between information and a reference.

    Likewise, I do not understand why you link the term “affirmative” to only “statements.”

  73. As far as affirmative egregious misconduct, the Office states: “The Court (sic) clarified that ‘neither mere nondisclosure of prior art references to the PTO nor failure to mention prior art references in an affidavit constitutes affirmative egregious misconduct.’ ”

    So if the Office is setting the duty to disclose to match the Therasense standard, and the statment above is part of that standard, does this mean that there actually is no duty whatsoever to submit any prior art references at all?

    It seems that “oops, didn’t submit” is not egregious, since nondisclosure cannot rise to the level of misconduct captured by this newly proposed duty.

    This is correct.

    The interesting question is when the failure to disclose material information (as opposed to the failure to disclose a prior art reference), whether in an affidavit or elsewhere, is deemed to be both “affirmative” and “egregious.”

    It does not seem possible that the correct answer is “never.”

    The meaning of the term “egregious” is obviously a personal judgment call at this point. I assume “egregious” behavior does not necessarily need to “shock the conscience,” but who knows?

    With respect to the term “affirmative”, if held to apply only to false statements intentionally made for the purpose of misleading the PTO, seems to me to allow a lot of room for what I believe is objectively deceptive behavior (as suggested in my hypothetical above).

  74. Hard, idea 1) has a great deal of merit. Simply strike Rule 56 in its entirety with the words from the chief noting the effort to harmonize PTO practice with that of the ROW.

  75. Two even more modest proposals to the PTO (and for Ned’s learning pleasure – It would be instructive, Ned, for you to read this thread and (humbly) see all the points that I made that are true – whether or not you were convinced of them):

    (And yes, these are repeats from the previous thread link to patentlyo.com )

    Jul 05, 2011 at 07:24 AM:
    What the Office could do to possibly reach the same effective place without the backlash is to make an announcement that in order to approach the ROW practice (harminization), the requirement to submit known pertinent art is dropped. In the “non-official” comments, Kappos can make an obligatory “welcome” of hoping people continue to submit worthwhile references, but that the obligation to do so is no more.

    Jul 06, 2011 at 05:20 PM
    Since it was the court (rather than the Office) that fashioned the atom-bomb style of IC, the court can also fashion a smaller weapon for dealing with any non-compliance with the Office mandate. – The Office does not even have to change its mandate at all (although I do tend to doubt that Kappos will take that position).

    If Judge O’Malley’s tea leaves are to be read in a certain way, with the rising sun casting a certain light, one can easily fashion the logic that a new court doctrine of lesser-than-atom-bomb “Applicant Misconduct” dawning for those instances which, while failing to rise to the atom-bomb level of IC, may yet still warrant some equitable treatment by the court – perhaps of individual claim elimination or reduced level of damages.

    The court created the doctrine of IC. Why is it so hard to believe that they can create a sister doctrine of AM to go along with it? Your penchant for strict prohibitions are more problematic and simply less likely to happen (especially given the lessons learned from Taffas – you are capable of still learning lessons, are you not? And even if you are not, I am sure that Kappos is.

    Dropping a requirement, or doing nothing are emminently more modest, wouldn’t you agree?

  76. But I wonder which non-lawyer citizen legislator drafted this

    Clearly the point on who makes law is less a point of whether the person is also a lawyer – as such simply is not a requirement to be a Senator or Congressmen, or even a judge (although it certainly helps).

    Must you be so pedantic? Seriously.

  77. Charging more is not the answer. That only worsens the already uneven playing field of obtaining patent coverage.

  78. Hardworking and Noticing the Easy Fact that Being Right Has Nothing to Do With Ned Being Convinced says:

    Unless I agree that you are right, you do not win.

    That’s decidely not how it works Ned.

    I do not need to convince you in order to be right and “win.” In fact, convincing you has very little to do with my consistent winning in our debates.

  79. Actually, on further consideration, all we have to do is charge per reference cited, with that charge refunded if the reference is used in a rejection or cited as equally relevant art.

  80. Hard, considered by you and by A New Light to be substantive. I never agreed, and provided solid reasons why my view was right and yours wrong.

    The problem you have hard is that you think you win every argument. Unless I agree that you are right, you do not win.

    Now, if you have been following my posts for some time, you will note that I will agree with an opposing argument if it is convincing. That cannot be said of many others here.

    So take it to the bank, if you convince me you are right, I will agree with you.

  81. Max, you do raise a nice point about financial incentives. One could charge, let us say, $25 per reference for the cost of reviewing them by the examiner, which the examiner could reduce to zero if he actually uses a cited reference in a rejection and/or lists the references in his OA as being equivalent of the art actually used in the OA to reject the claims.

  82. OT

    Dennis – there is something amiss in the direct reply links – they are not working properly here.

  83. Clearly, if the patent office wants to limit or reduce the disclosure of irrelevant art, it actually has to say that in a rule. In other threads, I have provided several suggestions as to ways to do this. But the simplest ways this: Require the examiner’s not to review any art that is submitted without an explanation as to its relevancy.

    Ned, this dance has already been played out in the comment sections of previous blogs.

    Your suggestion was considered illegal then – just as it is now.

    Besides which, wasn’t it on this very topic that you lost a friend?

  84. Agreed, there Hard. We need the mavens of the AIPLA and ABA to draft a solid proposal, vet it through public comment there first, and then make it a unified proposal of the whole bar.

    Hopefully, the powers that be at the AIPLA and ABA read this thread and take up the suggestion.

  85. Max, the brief filed by Armitage on behalf of the patent attorneys of Lilly, was very instructive and enlightening. He suggested that the 1992 amendment to rule was intended to limit the disclosures submitted to the PTO. Similarly, the patent office here urges that the proposed rule is intended to limit the disclosures submitted to the PTO. However, the proposal will fail because there are no consequences for submitting irrelevant art.

    Clearly, if the patent office wants to limit or reduce the disclosure of irrelevant art, it actually has to say that in a rule. In other threads, I have provided several suggestions as to ways to do this. But the simplest ways this: Require the examiner’s not to review any art that is submitted without an explanation as to its relevancy.

  86. Ned,

    Further, as I indicated, I thought your idea was interesting, and it is one the whole bar might want to get behind.

    I just don’t think it is as “modest” as you might imagine.

    As they say, the devil is in the details and here, the detailed application of your idea can easily spawn a nightmare.

  87. Hardworking and Pointing Out and Obvious Fact That I Know Ned Knows, But May Have Temporarily Forgot says:

    Ned,

    If the prosecution side does not match the litigation side, your supposed benefit evaporates, because if different versions of BRI are used in the two, then your “one set of construction” from your new rule 56 does not really exist.

  88. Good points here – mmmmm, maybe not. The proposed rule is obviously aimed at those submitting art – and technically has no effect on what examiners are to do (which includes the ability to apply BRI in the same structured and well defined approach they currently use).

    However, I do find the admission by the Office in the supplementary information section very intersting:

    As far as affirmative egregious misconduct, the Office states: “The Court (sic) clarified that ‘neither mere nondisclosure of prior art references to the PTO nor failure to mention prior art references in an affidavit constitutes affirmative egregious misconduct.‘ ”

    So if the Office is setting the duty to disclose to match the Therasense standard, and the statment above is part of that standard, does this mean that there actually is no duty whatsoever to submit any prior art references at all?

    It seems that “oops, didn’t submit” is not egregious, since nondisclosure cannot rise to the level of misconduct captured by this newly proposed duty.

    (Yes, I realize that there is still the But For portion and the egregious misconduct only covers an exception, but it was fun to go through the above thought experiment)

  89. Economics, he wrote, nothing more and nothing less.

    I think that economics, of course, factors in, but money standing alone is not a useful indicator. It is the money to benefits acheived that is important. In other words, “value” (benefits include but are not limited to lowered risk). The value of the cheap insurance of massive IDS’s is evident, and is driven only in part by the charges of IC, which Therasense sought to diminish. Art of record that is “considered” (whatever that means) is also still a driver (even with the i4i decision).

  90. Hard, the primary benefit here would be in litigation where there would only be one claim construction. Clearly, this is a proposal the whole bar should get behind.

  91. In rule 56, define BRI as the claim construction used by the courts

    Ned, this would be interesting only if the Office actually then enforced this actual use of BRI with the examiners.

    I am not sure how that would actually happen as you would have to not only identify what this definition of BRI actually means (and what it does not mean), but you would have to train and verifry that the “true BRI” was actually being used in the examination process.

    I am certain that certain examiners would disregard this – just as suredly as they disregard actual precedential law.

  92. I’m not sure where the Office is going with this effort.

    Practitioners don’t hand over info to the Office in fear of the inequitable conduct doctrine, practitioners hand over information to the Office because we ethical and comply with what is required of us by the Office’s rules and ethical regulations.

    The Office seems to be taking the position that the Therasense Court has just removed a criminal law from applying towards practitioners and now the Office is going to “help that along” by over exaggerating the situation, in the same way my 7 year old might when he feels wronged.

    Marginally relevant information
    Even if an IDS contains only “marginally relevant information”, doesn’t the Examiner use that marginally relevant information to better zero in on other patents that might be more relevant?

    I don’t think I’ve ever found the most relevant patent as the very first patent I looked at. What usually happens is that I search for the invention in the prior art, come up with two or three relevant patents, read those or look at the patents they cite, and find something closer to the invention.

    Enabling applicants to be more forthcoming and helpful to the Office
    Does the Office just not understand the duty to a client a practitioner has of loyalty and zealousness towards that client? Forthcoming and helpfulness to the Office only comes after the loyalty and zealousness duties are satisfied. And there isn’t much left for a practitioner to give to the Office after the loyalty and zealousness duties are satisfied. Rather than out of fear of consequences, we comply with what is required of us because it is required of us. It’s just that simple.

  93. Modest proposal to the PTO:

    In rule 56, define BRI as the claim construction used by the courts without the caveat of Philips that if the claim has two possible constructions, the one chosen is the one that preserves validity.

    If this were set forth in the rule, the courts would NOT have to conduct two claim construction during trial, one for validity and one for inequitable conduct. The merits of this proposal are self evident.

    As well, applicants would have clear rule for construing claims to determine materiality, and to argue with an examiner during prosecution that his construction was unreasonable.

    It would also meet the objection raised in law review articles that BRI is inconsistent with the statutes to the extent that it causes the examination of a different invention from the one actually claimed.

  94. I don’t give a rat’s @ss whether the PTO, you or anyone else entertains the thought that I am appealing, just as long as your shilling is called out for what it is: empty worthless obfuscations.

    Back to your tower now for you.

  95. As if examiners are “any person”

    It must take a very broad interpretation indeed for the PTO to entertain the thought that you’re appealing.

  96. what the claim means to any person reading it.

    As if examiners are “any person”

    Even an ivory tower academic like you should recognize the difference.

    Enough obfuscation from you – go back to your tower.

  97. Controlling the words used in the spec and claims has zero to do with whatever the examiner will do with BRI.

    You’re right, only an ivory tower academic like me would ever think that the words in a claim have anything to do with what the claim means to any person reading it. I’m sure people like you who draft and prosecute claims for a living know better.

    your use of those words is (purposefully) misleading.

    Fair enough, but would you consider it affirmative and/or egregious?

  98. Not unless he somehow finds a way to control what words are used in the spec and the claims.

    Please stop with the strawmen.

    Controlling the words used in the spec and claims has zero to do with whatever the examiner will do with BRI.

    And stop with the royal “we” and “our.” You are an academic and your use of those words is (purposefully) misleading.

  99. The applicant does not and cannot control what BRI will be.

    Not unless he somehow finds a way to control what words are used in the spec and the claims.

    But that’s where we come in (at our obscene hourly rate), isn’t it?

  100. Yes seriously. Advocates may argue the law but they do not make the law.

    OK, if you say so. But I wonder which non-lawyer citizen legislator drafted this: link to patentlyo.com . Granted, it’s not law, yet.

  101. anon:

    I completely agree. The fact pattern suggests a huge enablement problem since under the facts, the public doesn’t know which ones work and would be left searching for a needle in a haystack. Even under the (arguably) permissive standard about it being OK to have “some” non-working embodiments within the scope of the claim so long as they do not become “too numerous”, when 99.97% of the embodiments don’t work, there’s an enablement problem.

    My only point was that “extremely laborious and difficult” and “extensive” do not compel the conclusion of non-enablement. It is certainly a factor to be considered, but that’s it. If the “extremely laborious and difficult” and “extensive” experimentation is in fact exactly what would have been expected, and “difficult” is nonetheless “routine”, then there shouldn’t be an issue. But again, not under these facts.

  102. Thanks Ken for your “equity never trumps law” aphorism, which I do not recall knowing before.

    My line was that the equitable tail should not be wagging the legal dog. Same thing really, I suppose.

  103. Crikey, I never thought of the “judicature” as a branch of “government”. I prefer to think of the judicature as a check on the government.

  104. Completely agree. 3 out of 10,000 is a big problem, even under the “it’s OK to have some non-working embodiments within the scope of the claim so long as they don’t become too numerous”, standard.

    My only point was that “extremely laborious and difficult” does not necessarily compel a conclusion of non-enablement.

    The other facts presented certainly appear to, however, particularly since under the facts the public doesn’t know which ones work and would soon find that they were searching for the needle in the haystack.

  105. Nice strawman, IANAE.

    Except no one is saying to “abdicate our responsibility“. The point here is that BRI is done by the Office, not the applicant. The applicant does not and cannot control what BRI will be.

    Time to go back to your classroom.

  106. SCOTUS has already stated that the BUT FOR is the one to use. That has been the whole problem with IC. There is no other area of law in which the combined efforts of the Executive and Legislative branches of the Federal Government, i.e., the granting of a patent, has been overturned on the specious grounds of equity. It is tantamount to the Courts placing themselve in supremacy of the other two branches of government. That has only been found acceptable based upon Marbury v. Madison, i.e., for Constitutional Violations. Otherwise, equity never trumps law-never has and never should.

  107. MaxDrei,

    Since law can only be made by the government (be it the judiciary or the legislature), I think my proffered correction is quite good.

    And Leopold,

    Yes seriously. Advocates may argue the law but they do not make the law.

  108. The purpose of the rule is to force applicants to write claims that can’t later be argued to be far broader than the Examiner thought.

    Right. So a competent patent agent will actually think about what words mean when he drafts his claims, so that the BRI is close to the intuitive scope of the claim that you might get in court later on.

    That could mean defining terms, but it could also be as simple as choosing words that are well understood in the art and don’t have alternative ultra-broad meanings, and properly reciting the relationships between the elements of your claim.

    Drafting claims for other people to interpret is a pretty big part of our job. We can’t abdicate our responsibility for knowing what the claims we draft mean.

  109. MaxDrei, are you once again forgetting that laws made in the US are not made by “lawyers”?

    Seriously?

  110. My judgement “suspect”? Of course it is. Suspect away, to your heart’s content.

    Glad to note that you are able to contemplate PTO management from people who lack a licence to practise as a patent attorney. In my judgement, though, that’s not true of all contributers to these threads. Could it be that, there too, my judgement is not sound?

  111. Oops, there I go again, using “lawyer” instead of “jurist”. I had in mind what happens when advocates appear before judges, and then decisions are handed down, that make the law more complicated than it was up to that point. What does “jurist” mean, in the American language? Does it include judges?

  112. I make my own judgements, of how much weight to give to which contributers, based on what they say and how they argue it. I might well be off, in my judgements

    Not the “only” – I never indicated such and there is no reason to take my comment to such an extreme position – I only indicated to give the comment its due weight.

    You now admitting that you read the threads and still make the mistake of giving so much weight to the comments of MM paint your judgement as suspect – you should have learned long ago to heavily discount MM’s comments.

    I though that would be clear from my comment. Alas, I too live and learn that perhaps I should be more direct on such matters.

  113. on lawyer-manufactured complexity

    MaxDrei, are you once again forgetting that laws made in the US are not made by “lawyers”?

    Should I read your comment as “on government-manufactured complexity” instead?

  114. I read the threads, yes. I make my own judgements, of how much weight to give to which contributers, based on what they say and how they argue it. I might well be off, in my judgements, I accept that. I live and learn.

    The doyen of English patents judges once asserted that, on obviousness or enablement, the named inventor is the last person he wants to hear evidence from. It would be a waste of time and would serve no useful purpose. Likewise, just because somebody 1) works at the USPTO and 2) has never been accused of IC, does not (in my judgement) deprive his comments of all useful weight. Are you going to tell me next that the only persons fit to manage the PTO are those with a licence to practise as a patent attorney?

  115. MaxDrei,

    The influence is noted. You should be aware that MM has professed to never having been through an IC event and anything he has to say on the matter should be accorded due weight.

    You do realize that MM works for the Office?

  116. BioPatAtty,

    Yes, thank you for the correction – I should have typed “undue.”

    However, my question (with the correct “undue” replacing “extensive”) still stands – the fact pattern in the hypo indicates an enablement issue because 3 modest results from 10,000 species in “an extremely laborious and difficult [testing]” is “undue’ by any standard.

  117. Pity the EPO then. Only about 5% of its Examiners have English as their first language, even though most of the applications filed at the EPO are in English.

    Mind you, 1) they do get good training at the EPO, and 2) the law they are employed to administer could not be simpler.

    You might say then that, on lawyer-manufactured complexity, EPC law is pixx poor.

  118. This response by anon is common yet unexplainable.

    You miss the point of my comment. Whether or not a practitioner calls a particular examiner does not bear on the fact the at the rule as proposed requires something the applicant cannot know apriori – how an examiner thinks and how BRI will be applied.

    How in the world will a duty exist that is based on an unknowable construct? Do not forget that this duty exists prior to any indication from the Office of what the BRI will mean – prior to any examiner being assigned to the case.

    What happens in those cases of allowance on first action where the applicant never sees what BRI means?

    My comment had nothing to do with personalities involved – anti-social or otherwise.

  119. “Extensive” does not necessarily = “undue”. “The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.” See In re Wands.

  120. If I open an office action and see an examiner’s name that would indicate the english is at least a second language of his or hers, I’ll call. When I see a 17 letter asian name, I generally don’t bother, because I know how it’s going to go — the examiner’s english will be so pixx poor that the interview will not yield anything useful.

  121. A fine line, I guess, anon, between prudence and timidity. In choosing “timid”, perhaps I was unduly influenced by MM’s blandishments in these threads, that Honest Joe forthright and reasonable behaviour has always been quite enough to see you through against all charges of IC.

  122. Examiners can’t be expected to do all the things that judges and litigators do when construing claims

    Why not?

  123. The testing is extremely laborious and difficult.

    Do you have a separate problem of enablement here?

    The requirement of disclosure is that the invention can be made from the disclosure “when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” AK Steel Corp. v. Sollac, 344 F.3d. 1234, 1244 (Fed. Cir. 2003).

    The fact pattern here indicates that extensive experimentation is required.

  124. I see another problem here.

    Examiners can’t be expected to do all the things that judges and litigators do when construing claims

    Does the proposed rule take the exact opposite stand?

    In Therasense, it was the court that was called out to determine materiality. Since the proposed rule invokes Therasense by name, does this somehow make the determination to the same standard? The notes to the proposed rule also emphasize the desire of the Office to have only a single standard. From this it seems that the examiners must be expected to do all the things that judges and litigators do when construing claims, at least as such is connected to materiality.

  125. The bigger issue with the new “materiality” standard of Therasense if it’s adopted by the USPTO is whether SCOTUS will accept the Therasense standard, or like they’ve been want to do recently in the patent law area, go off on a “frolic and detour” of their own, including espousing (again) the inane (and unrealistic) “uncompromising duty of candor” standard of Precision Automotive. I frankly “cringe” if SCOTUS ever accepts a “materiality” case for review.

  126. I’m a mechanical guy, so I don’t pretend to understand the subtleties of chem practice. But…

    If only three species have utility (because the other 9997 do not work), why is the suggested genus claim necessary? Can’t you get the needed patent coverage (which would be concomitant with the disclosure) by just writing three independent species claims?

    The three species claims would also seem to cover exactly what the inventors discovered [alert: use of constitutional term -- "discoveries"] since the inventors did not discover any other species that worked.

  127. ” In my experience, BRI means that the Examiner can interpret the claims in really odd ways that don’t make sense so that it can use a terrible piece of prior art in his or her office action.”

    As I have said before, every smart inventor knows, and will instruct their attorney as well, to strategically define key terms in the specification to prevent examiners from doing just such things. Many Attorneys will freak out when an Actual Inventor instructs them to define certain terms because they think it limits scope. But if it’s done right, it actually increases scope and helps you beat bad examiners as well.

  128. In another running thread a correspondent called Biotechie explained what drives applicants to file, or not file, provisionals. Economics, he wrote, nothing more and nothing less.

    Now, what do you suppose drives IDS behaviour? From what I gather, it’s economics too, by which I mean:

    1) To compile and submit long lists of prior art is not expensive: it’s cheap.

    2) Positively to decide not to submit the customary long list could be expensive. Opinions vary. Nobody knows just how expensive. So timid applicants pay for voluminous IDS work.

    The PTO can perhaps make it more expensive to submit long lists. But (as I see it) the PTO is powerless to do anything about the cost and risk involved in choosing to not file a ridiculously lengthy IDS.

    The Therasense panel had a stab at it but, on this issue, the CAFC is powerless too, no? What indeed can the USA do, effectively to deter the unwarranted assertions of IC that are the “plague” of patent litigation that is peculiar to the US jurisdiction? Should DC judges undergo backbone-stiffening surgery, and should appeal court judges support upright no-nonsense DC judges who proceed to restrain and discipline vexatious litigants?

    Once a habit has set in, drastic measures might be needed, to break the habit. But if the PTO attacks the head of the snake, while the DC judges simultaneously attack the tail, perhaps it can be effectively scotched, and applicant behaviour permanently changed for the better.

    But meanwhile, I quote Dennis above:

    “The current rule implemented in 1992 and was itself an attempt by the USPTO to limit the scope of materiality”

    Look where the 1992 attempt got us.

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    link to crowdfundinglaw.com

  130. Meh I could go along with this if firms would actually change their behavior. Although I thought all the commenters in the previous thread said they wouldn’t change their behavior necessarily still because of IC as opposed to their behavior then resting on rule 56 alone.

    I would LOL though if the USSC stepped in and decided the issue differently than the Feds.

  131. “The boards here testify that most practitioners cannot understand how Examiners think even after multiple office actions.”

    This response by anon is common yet unexplainable. As an examiner I’m more than happy to answer your questions about my thinking if you call me since it generally results in quicker resolution of the case (which under the new count system is what I’m aiming for). Few practitioners call, and instead they tend to create very damaging prosecution history for their clients rather than picking up the phone and asking. Most of the time I find out that the practitioner didn’t actually understand the invention because they didn’t write the original application and just picked up the application, but the reluctance to call and discuss the case is truly amazing. Few other areas of law have so little communication.

    Maybe it’s just because the practice of patent law draws more anti-social personalities.

  132. There are very easy ways to prevent the application of BRI both during the context of examination and during .

    Typo?

  133. With respect to BRI, I would have thought that In re Donaldson nailed that back in the late 1990s. Although that dealt with paragraph 6 limitations, it made quite clear that you look to the specification and known equivalents. It is definitely a substantive rule and not procedural, because it may operate to deny the applicant their statutory right to a patent.

  134. TAKES A BOW. The BUT FOR TEST as Ned and I had argued in favor of for . . . what . . . over three years. Now watch what happens to the new patent act. It is unconstitutional on its face.

  135. The purpose of the rule is to force applicants to write claims that can’t later be argued to be far broader than the Examiner thought.

    I see one major problem here.

    Claims are written (generally) prior to the Examiner ever being involved, and I know of no one that can predict how an Examiner will think.

    The boards here testify that most practitioners cannot understand how Examiners think even after multiple office actions.

  136. Agreed on the “observation.” Wild constructions are a result of broad and indefinite terminology, or when a claim term is not actually used in the specification, which is often the case. (Today, I mainly prosecute applications written by others where this is sometimes a problem.)

    When a claim term is uncabined by definition or actual use, then it does becomes important whether the examiner is entitled to completely ignore the embodiments in his construction.

    If one reads In re Morris, it appears that he is so entitled, so long as he has support for his construction in extrinsic evidence. So, as it stands, the PTO seems constrained only by the general administrative law requirements that their constructions not be arbitrary and capricious.

    I think we need more from the PTO so that we can predict with some certainty what the BRI of a claim term will be.

  137. I think the best you are going to get from the PTO is that the construction is “reasonable.”

    Examiners can’t be expected to do all the things that judges and litigators do when construing claims, e.g., reading the prosecution histories of every case owned by the applicant to see if the term has been defined differently.

    The purpose of the rule is to force applicants to write claims that can’t later be argued to be far broader than the Examiner thought.

    The issue you (and others, evidently) seem to have is with the “reasonable” requirement. I can tell you that in the 1600 art unit I have never encountered the problem, even with Examiners of unimpressive skill. It’s more often the case (but still rare) that the Examiner notes a problem in the claims that causes the claims to read on inoperative embodiments.

    Everything I’ve seen in certain other art units suggests that the problem lies not with Examiners applying unreasonable constructions to the claims, but with the claims being carelessly drafted or drafted using confusing terms capable of being interpreted very broadly in the apparent hope that they slip past the Examiner and into the promised land of waxy noses, where clear and convincing evidence will be required to tank them.

  138. Here’s an interesting pharma scenario to contemplate under the new rules:

    10,000 species of drugs falling within Genus X are tested for their ability to treat cancer of the eyelid. The testing is extremely laborious and difficult. The tests show that only 3 of the species provide modest results.

    Only the 3 working examples are presented in the specification. No mention is made of the screening or the 9997 failures.

    The first office action is a notice of allowance granting the claim to a “Method of treating cancer of the eyelid by administering effective amount of a Genus X composition”.

    1) Was there AFFIRMATIVE egregious conduct here?

    2) What about the alternate scenario where the Examiner first rejects the claim under 112 saying that the number of species disclosed is not sufficient to show enablement of the genus claim. The applicant argues (without affidavit) that the number of species disclosed is sufficient and cites cases where a limited number was deemed sufficient (applicant fails to mention that in those cases the testing was far easier to do). The claim is allowed. AFFIRMATIVE egregious conduct?

    3) Same as two except the enablement argument is presented in an affidavit submitted by one of the inventors.

    4) Same as (3) except the affidavit adds that testing other compounds in the genus is trivial and easy for anyone of ordinary skill.

  139. Malcolm, check the post by anonymous. The actually practice by the PTO under the rubric of BRI is unpredictable. Most of us simply deal with it rather than appeal by adding limitations to clarify the claims. But if BRI is going to have such a dramatic effect on IC, we really need the PTO to nail down its rules of construction for all to see and to understand.

  140. Just for example, I would like to know whether a construction that does not read on any of the disclosed embodiments is reasonable.

    Aren’t the claims as originally filed part of the disclosure? If so, your point is moot, at least when the claims being interpreted were originally filed.

    And if they aren’t originally filed then they must be disclosed in the specification, in which case they would “read on” the “disclosed embodiments” regardless of how broadly they are interpreted.

    My point here is that all you need to understand is “reasonable.” If you claim “A computer, wherein said comprises a user-input device and a display”, it is reasonable to construe that claim to read on a computer with a touch-sensitive screen. It is also reasonable to construe that claim to cover virtually any computerized apparatus with a screen, as long as the computer in the apparatus accepts input from a user.

    It’s not reasonable to construe the claim to cover an isolated DNA sequence or a stool (depending on how you construe “stool” …).

    Frankly, I don’t think many of us are going to change our procedures for submitting art, except possibly at the margins. Time will tell.

    But I don’t understand being worried about BRI. There are very easy ways to prevent the application of BRI both during the context of examination and during . Defining terms in clear ways that avoid the terms from capturing undesirable art can help a lot. Actually reciting the definitions of those terms in the claims is even better; then you don’t have to worry about the Examiner missing the definition in the specification (although if that happened and you got an inappropriate rejection it seems that you could simply point that out immediately after receiving the OA and demand a new one).

  141. In my experience, BRI means that the Examiner can interpret the claims in really odd ways that don’t make sense so that it can use a terrible piece of prior art in his or her office action.

    I even feel this way when I’m defending against patent infringement in litigation. The prosecution history is often a big waste of time. I often find myself agreeing with the patentee (i.e., “bad guy”) — the patent is not anticipated/rendered obvious by the reference asserted by the Office. Unfortunately, there’s usually a ton of references that do anticipate / render obvious that the Examiner doesn’t look for or at least doesn’t find.

    Heck, I’ve even found myself having similar thoughts when prosecuting. Why is the Examiner wasting his time (and being stubborn by refusing to admit he or she is wrong) over this terrible piece of prior art. There is better art out there to make an obviousness argument (not that I’d agree with that either but it would at least be less ridiculous).

    Of course there are good Examiners — probably a whole bunch of them. Unfortunately, it may just be easier to litigate patents issued by bad examiners.

    Enough of my rant. Patent law is frustrating (although sometimes enjoyable).

  142. Dennis, I do not understand what you mean by this:

    “Under the new rule, the mere failure to disclose information will never be considered material to patentability if the pending claim is allowable. A parallel change would be made to the disclosure rules governing reexaminations.”

    Do you mean failure to disclose is immaterial if the patent office allows the claims over the non disclosed reference which the examiner found on his own? For if you do not mean that, how is one to tell whether the claims are allowable over the the non disclosed reference?

  143. “Broadest reasonable interpretation” is a rule of patent claim construction “used” by the patent office in construing claims during patent prosecution. While there are cases from the CCPA and from the Federal Circuit that discuss the fact that the patent office uses broadest reasonable interpretation, there are very few cases that tell us what this rule of construction actually is, and whether the rule is imposed by law or by the PTO.

    Is the rule substantive or procedural? If it is substantive, the patent office cannot provide or control the parameters of the rule. But all the cases suggest that the rule is one of patent office origin and administration. For this reason, and for the additional reason that the parameters of “broadest reasonable interpretation,” are not well understood but have now become critical to a determination of inequitable conduct in the enforceability of the patent, I suggest that it is high time for the patent office to declare exactly what broadest reasonable interpretation is and what it is not by rule and not by guidelines or instructions to the examiner that are not binding on anybody.

    Just for example, I would like to know whether a construction that does not read on any of the disclosed embodiments is reasonable. I don’t think we know the answer to this question. If we did, it would be easier to determine whether a reference was material because we would at least know that claims could not be construed in such a manner as to be divorced entirely from the specification.

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