How does the USPTO Investigate Allegations of Misconduct?

by Dennis Crouch

In this post, I discuss the process that the PTO follows in investigating allegations of attorney or agent misconduct. In addition, I review two recent disciplinary decisions. Both involve the submission of information disclosure statement. In one case, the attorney improperly submitted documents subject to a litigation protective order. In the other case, the attorney improperly submitted prior art documents without properly reading and reviewing the documents.

In the recent proposed rule on the statute of limitations for USPTO disciplinary proceedings, new Office of Enrollment and Discipline director William Covey provided a nice summary of the process that his office uses to investigate allegations of improper conduct by registered patent practitioners.

Generally speaking, there are four steps taken by the OED Director prior to the filing of a Sec. 11.32 disciplinary complaint against a practitioner:

  1. Preliminary screening of the allegations made against the practitioner, see Sec. 11.22(d);
  2. requesting of information from the practitioner about his or her alleged conduct, see Sec. 11.22(f)(1)(ii);
  3. conducting a thorough investigation after providing the practitioner an opportunity to respond to the allegations, see Sec. 11.22(a); and
  4. submitting the investigated case to the Committee on Discipline for a determination of whether there is probable cause to bring charges against the practitioner, see Sec. 11.32.

The first step is the preliminary screening of allegations to evaluate whether they merit providing the practitioner the opportunity to address them. Allegations are often incomplete and do not provide the OED Director with a full picture of what may have transpired. In other words, mere allegations do not necessarily provide the OED Director with a reasonable basis for automatically seeking information from the practitioner regarding a possible ethical violation; therefore, the OED Director always conducts an initial review of the allegations. Moreover, the OED Director recognizes that issuing a request for information to the practitioner–the second step–typically triggers anxiety for the practitioner, may interfere with the practitioner's practice, and may cause the practitioner to incur legal expenses in responding to investigative inquiries by OED. For this reason also, OED does not contact the practitioner automatically upon receipt of information alleging a practitioner committed an ethical violation. In short, the OED Director seeks the practitioner's side of the story, if at all, only after the OED Director preliminarily screens the information and determines that possible grounds for discipline exist. See 37 CFR 11.22(d).

During the preliminary screening process, an OED staff attorney reviews the allegations to determine whether they implicate any of the Disciplinary Rules of the USPTO Code of Professional Responsibility. To this end, the attorney may seek out additional evidence (review Office records, request additional information from the person making the allegations or from third persons, etc.) to ensure that the matter is disciplinary in nature and the allegations are supported by objective evidence.

The OED's preliminary screening may obviate the need to seek information from the practitioner because the screening often reveals that the allegations do not present a basis for filing a Sec. 11.32 disciplinary action against the practitioner. Under such circumstances, the OED Director closes the case without contacting the practitioner. Hence, the preliminary screening helps ensure that a practitioner is not subjected to a premature request for information or its attendant stress, turmoil, and cost. The screening also ensures that the Office does not expend its limited resources seeking information from a practitioner unnecessarily.

After the preliminary screening, if the OED Director determines that the allegations establish possible grounds for discipline, the OED Director seeks the practitioner's side of the story–the second step prior to filing a Sec. 11.32 action. Specifically, the OED Director requests information or evidence from the practitioner pursuant to Sec. 11.22(f)(1)(ii). The practitioner will then have an opportunity to respond to the allegations levied against him or her. Typically, the OED Director does not and cannot have sufficient information to complete a thorough investigation–the third step–before the practitioner has had the opportunity to present his or her side of the story.

Based on current caseload and staffing levels, the OED Director has set a goal to complete the preliminary screening and issue a Sec. 11.22(f)(1)(ii) request, when warranted, to the practitioner under investigation within 60 calendar days of the initial receipt by the OED Director of information suggesting possible misconduct. OED will allow the practitioner 30 calendar days to provide a complete, written response and, as discussed below, may grant a reasonable request for an extension of time to respond.

A complete response to an initial Sec. 11.22(f) request frequently raises factual issues that require further investigation before the OED Director can determine whether actual grounds for discipline exist. Hence, after the OED Director receives the practitioner's response to the Sec. 11.22(f)(1)(ii) request, the OED Director moves to the third step: conducting a thorough investigation of the allegations to uncover all relevant incriminating and exculpating evidence. The third step is time-consuming because it involves the OED Director undertaking a thorough fact-finding (e.g., reviewing issues raised for the first time by the practitioner, obtaining information from any person who may be reasonably expected to provide information or evidence in connection with the investigation pursuant to Sec. 11.22(f)(iii) and from non-grieving clients pursuant to Sec. 11.22(f)(2)) and performing legal analyses of issues. It is in the interests of the public as well as the practitioner under investigation that OED conduct a thorough investigation prior to determining whether the matter should be submitted to the Committee on Discipline pursuant to Sec. 11.32. Hence, such additional follow-up investigative and legal work can take several months to complete.

After completing an investigation of the allegations against a practitioner, the OED Director has the authority to close the investigation without pursuing disciplinary action, issue a warning to the practitioner, enter into a proposed settlement agreement with the practitioner, or convene the Committee on Discipline to determine whether there is probable cause to file a Sec. 11.32 action against the practitioner. See 37 CFR 11.22(h). Based on current caseload and staffing levels, the OED Director has set a goal to submit a matter to the Committee on Discipline for a probable cause determination–the fourth step–within 10 months of the initial receipt by the OED Director of the allegations that a practitioner engaged in misconduct.

Over the past year, the USPTO OED has issued 38 Disciplinary Orders.  Most of the disciplinary problems come from mishandling of client funds, failure to communicate with clients, unauthorized practice of trademark law (for patent agents), and criminal convictions. However, two recent disciplinary orders relate directly to patent practice decisions relating to difficult issues that regularly arise for patent practitioners. Neither case involves any morality judgment, but both resulted in the (stipulated) finding of a violation of the USPTO's code of conduct.  

Conflict created by Parallel Litigation and Reexamination: One recent order involves a "public reprimand" of John Janka. Janka was put a tough position because his client's patent was being simultaneously litigated and reexamined (inter partes). Janka prepared and caused-to-be-filed an IDS in the reexamination that contained material subject to a protective order in the litigation. In addition, Janka sent the confidential documents to another patent practitioner (and asked him to file the IDS) without first obtaining guidance from the district court regarding the protective order. The district court later ruled that these actions violated the protective order. As part of a settlement, Janka agreed with the USPTO that these actions show a violation of 37 C.F.R. § 10.77(b) (handling a legal matter without preparation adequate in the circumstances).

This is a tough case because Janka is obviously under conflicting duties—to both obey the district court's protective order and to disclose material information to the USPTO. The best course of action in this situation would have been to ask the court to lift the protective order regarding the material information. If the court refuses, the patent attorney may have to withdraw from the case. (As an aside, the patentee won both the litigation and the reexamination).

Submitting IDS without reading documents: In a related OED settlement, William Bollman agreed to a 24-month probationary period. Bollman – himself a very experienced patent prosecutor – was the attorney who actually filed the IDS for Mr. Janka.  Bollman admitted that he did not actually read, review, or inspect the six boxes of documents that he received from Janka and filed at the PTO. The order includes the following statement: 

Pursuant to 37 C.F.R. § 11.18(b)(2)(i)[], a registered practitioner who presents a paper to the Office [implicitly] certifies to the best of his or her knowledge, information, and belief formed after an inquiry reasonable under the circumstances that, inter alia, the paper is not being presented for any improper purpose. A practitioner who submits an information disclosure statement without inspecting the submitted documents -i.e., merely acts as a conduit for another person – is considered to have made a false certification to the Office.

This rule follows former OED director Harry Moatz's 2008 statements regarding the submission of papers without proper inspection by the patent law professional responsible for the filing. 

Have you submitted an IDS without reading and reviewing the submitted documents?

The text of of the rule is provided below.

37 C.F.R. § 11.18(b). By presenting to the Office … any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and

(2) To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances,

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;

(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

193 thoughts on “How does the USPTO Investigate Allegations of Misconduct?

  1. 12:45 non-responsive because IPB took his ball and went home alert (NBIPBTHBAWHA)

    But thank you so much for sharing your stunning views at 12:06. I was feeling glum and the thought of you matching wits against Boundy just made me smile.

  2. is automatically triggered.

    Poppycock.

    I don’t care what your independent professional judgment is – you submit because the question is not whether the reference matters in your judgment, but rather, in the judgment of a hypothetical average examiner. So, point blank, your “Once that awareness is achieved, there is a duty to NOT submit that which is NOT material to patentability.” is simply wrong. Your judgment cannot supercede the judgment of the one who has actual responsibility for examination.

    Also, as previously posted, your version becomes a defacto statement that cannot fit with the rules (37 CFR 1.98(h) in particular).

    Any type of screening by your standards invokes a level of examination (by the applicant’s representative) that is not only not required, but raises an unneccesary risk.

    This is quite apart from any level of competent representation. Do not confuse the two.

  3. Boundy–

    Nobody on this board, at least, has suggested that an attorney must read the references in their entirety.

    You must agree however, as a matter of logic, that in the case where an IDS is submitted, the attorney must be aware of the contents of a reference to a degree that will enable that attorney to, in his or her independent professional judgment, determine that an examiner might reasonably consider the reference material to patentability.

    It is that determination, predicated on that awareness, that triggers the duty to disclose.

    The question then becomes if there is any duty on the attorney to achieve any such awareness–because if there is, the other duty, to NOT submit information NOT material to patentability in furtherance of the duty to not cause any unnecessary delay or needless increase in the cost of the proceeding to which it pertains, is automatically triggered.

    IMO the attorney has a duty to the client to achieve awareness of the contents of any and all references to which he/she may be exposed during the course of a proceeding; such a duty could arise as part of the duty to competently represent.

    Once that awareness is achieved, there is a duty to NOT submit that which is NOT material to patentability.

    “Third, what the heck were these guys thinking??

    Bollman–not much; it was a opportunity to make a couple of bucks relatively easily

    Janka–who knows; one theory of his behavior is that he simply intended to use Bollman as a patsy, because Janka felt that he was in a no-win scenario, and sought to offload the potential grief onto Bollman–and Bollman fell for it. Didn’t quite work out how Janka had planned. Of course this is pure conjecture.

  4. This case is totally weird.

    First, how did Janka get the confidential information? Almost always, an attorney prosecuting a patent application is Chinese walled from the accused infringer’s confidential information. Indeed, many motions to disqualify patentee’s counsel arise where a prosecution attorney comes into possession of confidential information — the accused infringer didn’t give the patentee fuel to retailor its patents around the accused product!

    Second, what confidential information would be within the duty to disclose? Almost by definition, confidential information cannot be material to patentability. I’m not saying it’s impossible, but it’s weird.

    Third, what the heck were these guys thinking? A specific court order trumps a general rule any day of the week.

    Fourth, there is no rule that an attorney must read references before submitting them. The signature certification extends only to the IDS itself. An attorney submitting an IDS cannot falsely characterize the submitted documents in that IDS. But there’s no duty to “read” the references. When former-OED-director Harry Moatz said that in a talk at PLI in 2007, in Q&A I noted that the duty to “read” had been removed from the rules in 1997, and that the analogy to civil litigation that he tried to make was total baloney (there’s no duty to read all the documents you produce in a civil litigation!) He was left basically speechless — he gave no intelligible answer to my question.

  5. Anon: About your fixation with IANAE’s position in this thread. I think you may have confused some IANAE posts with IBP’s. I tried going back through the thread to try to figure out what you think he’s on the fence about. But really he didn’t take any positions other than:
    1) Examiners don’t have to read the whole reference to consider it;
    2) Examiners in fact don’t consider most references cited in an IDS;
    3) Submitting references is, in his view, not something that results in delay or additional cost in light of 2).

    You then associated him with some confusing positions and asserted:
    “In essence, you are still on the fence, but now you have taken one leg and pushed it off into the “not read and read entirely side of the fence” – and no, your generalization of ridiculous to require reading is not accurate – and your other leg wants to go in the “but applicants still must read and read entirely everything on an IDS” side of the fence. That will make for a most painful result.”

    The “I read everything I submit” position is IBP’s, not IANAE’s. IBP’s position is extremely conservative because from my impression of him anyways, he is extremely risk averse professionally, so he reads everything he submits. But that is irrelevant to the current issue, which is that you have mis-assigned IANAE’s position and then proceeded to attack him.

    Now, I’m hoping that you won’t move from here to an unnecessary attack on the character of those posters along the lines of “oh who can tell the difference anyways”. I’ll leave open the path of indignation at my assertion that you might do that though =).

    BTW, no, I have nothing substantive to add, you are all way above me in patent practice knowledge. I just like people to actually understand each others’ position; makes for better learning.

    First attempt to post eaten. In an attempt to channel 6 for amusement: pro tip broskies, press back on your browser when your post gets eaten to get the text back so you can copy it.

  6. I’m sure my position is perfectly clear to everyone here but you.

    Perfectly clear to me. Keep up the good work, IANAE.

    By the way, what was the question again?

  7. LOLZ

    First the good professor thinks the questions are rhetorical. Then he thinks the questions are not understandable. Then he does not even see the questions.

    Next he wont even remember the thread.

    Back to the tower with you IANAE, you have already said that you will not answer the questions.

    And yes, your postion is perfectly clear – split on the fence, grabbing your gonads. Hey, people told you to jump to one side or the other, but you must have thought that those people were only speaking rhetorically.

  8. I asked you to explain your position.

    You haven’t.

    I’m sure my position is perfectly clear to everyone here but you. Tell me what you’re not quite getting, and I’ll explain. I’ll even type really slowly.

  9. And they used you. And You just let them! So much for Leave it to Beaver type functional. And they say I’m brainless ROFLMAO! so no matter how you try to play it… You will not get my IP.. Unless of course “Billions” is in the asking price! Chop chop time to start those value added Lottery Tickets!

  10. No amount of effort will produce an answer

    You misunderstand Anon, what the tower creature means is that he will not produce an answer, no matter the effort you put forth.

    Like Inviting, the professor just does not like the direction you lead the conversation and refuse to finish the wlking down the logic path. They don’t wnat to get caught taking a position they don’t believe in, no matter how logical the conclusion. Time to stick their fingers in their ears and chant “na-na-na-na.”

  11. You’re asking me to explain why I agree with a ridiculous statement I’ve never agreed with.

    No. Clearly no. Stop makiing up excuses, especially such ones as that that are completely unreasonable.

    I asked you to explain your position.

    You haven’t.

    I have never asked you to explain why you agree with a ridiculous statement. The questions are in black and white on this thread. Playing stxpxd seems to ba a habit with you, an attempted easy out for you to avoid answering some rather simple and straight forward questions.

    You have spent an inordinate amount of time evading answering the very simple questions. Why? (that’s not rhetorical). What are you afraid of? (that’s not rhetorical either).

    No amount of effort will produce an answer

    Try just a little to answer the actual questions. Use just a fraction of the energy you have spent in not answering the questions. (hint: it’s really easy).

    And judging by your recent posts, you wouldn’t bother reading it anyway.

    Judging by whose standards? This is yet another cop-out. Clearly if I have waded through the schlock you have posted instead of answering the simple questions, there is every reason to believe that I would actually read the questions that I have put to you.

    You have gone from rheotrical to I wouldn’t read anyway. Why don’t you simply just try to answer the questions already and stop giving excuses for not answering the questions? (that’s not a rhetorical question).

    What are you so afraid of?

  12. simply answer the questions put to you. It will take a far less amount of effort on your part,

    You’re asking me to explain why I agree with a ridiculous statement I’ve never agreed with. No amount of effort will produce an answer. And judging by your recent posts, you wouldn’t bother reading it anyway.

  13. Nice – but trite and already tried by Malcolm and suitably defeated witht e response tha tI don’t have a wife.

    You might try to stop trying so hard to be clever and simply answer the questions put to you. It will take a far less amount of effort on your part, (with much better results for you, as your attemtps at beign clever aren;t even coming close), you wont’ appear to be such a douche and you might feel better by actually joining a substantive discussion.

  14. you still have not answered my straight forward questions.

    I apologize, but I can’t remember the exact date I stopped beating my wife.

  15. and you’re no match for my lack of brains.

    Fixed.

    When it is you that can’t figure things out – especially when I have pointed out the questions to you, you don’t get the more brainy side of the argument.

    And I see what you have done here – you still have not answered my straight forward questions.

    Another rhetorical question for you: You sure like playing dumx, don’t you?

  16. my asking for your position on a matter

    You’re asking why I think the quote should apply. I don’t think it should apply, so haven’t a clue why it should apply. If you know why it should apply, I’d love to hear it.

    Until then, I think we’re at an impasse. I can’t compete with you physically, and you’re no match for my brains.

  17. Give up? Let’s see some effort from you before you give up.

    Really, IANAE, now you try to pawn off answering because you want to believe that my asking for your position on a matter is somehow a rhetorical question (one which, by the way, you still have not answered).

    For rhetorical questions, try these: Why do you have such a difficult time being straight forward? Are you that afraid of where the conversation will lead? Do you feel that playing the smart-axx makes you smart, rather than just an axx?

  18. lol – oops.

    How about:

    You vastly over-estimate your ability to understand who you are talking to.

  19. but that nobody has yet pointed

    snort, chuckle, um yeah sure, let’s go with that.

  20. Telling–

    One can never “be sure” that a particular reference isn’t material.

    One should, however, be reasonably able to assess the likelihood that it will be considered material by a reasonable examiner…and that is the test, after all.

    Certainty is not required. I wish patent attorneys as a class were more “attorney” and less “engineer”, then we wouldn’t get kicked around so much. A court sneezes at a patent attorney, and the attorney folds like a cheap lawn chair. I’d like to see more good and hard-fought defenses against IC charges.

    We are professionals who can exercise independent professional judgment. We are a self-governing profession, meaning that it has been acknowledged that we are the best arbiters of our own conduct, and the best-positioned to judge whether or not we have satisfactorily discharged our professional duties to not only our clients, but to the courts and to the public in general.

    Erring on the side of citing versus not citing may certainly be a reasonable route to take in close cases, but there is a point at which something is clearly not material.

    My arguments in this thread are far from bulletproof–they have a critical weakness of which I am aware, but that nobody has yet pointed out…perhaps because it isn’t sufficiently interesting to do so, because everyone’s willing to bear the burden of disclosure of non-material references.

    Fair enough. I was hoping someone would arrive at the same difficult point as did I, but independently, so that I could get a different perspective on the critical weakness in the argument.

    Not to worry, it’s not that important. Plus, we got to see anon stumbling through the thread like a drunkard, which is sometimes amusing, to a point.

  21. why should the Moatz quote apply to someone not responsible for examination

    Okay, I give up. Tell me why. I have absolutely no idea.

  22. Sorry IANAE, once again yoru misrepresentation needs to be nipped.

    It was you that went off the rails instead of answering a simple follow-up question of “why should the Moatz quote apply to someone not responsible for examination when you feel so strongly that for those who are responsible for examination, the requirement of reading would be ridiculous? as posted at Jan 18, 2012 at 01:15 PM.

    I merely greeted your off-the rails response of 1:24 PM with my chiding at 1:40 PM.

    By the way, you still have not answered the questions, even as I clearly keep on asking them – what is your position?

    Lot’s of talk from you – so very little (straightforward) answers.

  23. Why have you not answered my questions?

    Any in particular? You seem to ask quite a lot of them, and it’s hard to tell whether they’re rhetorical.

    I barely even remember what we’re talking about anymore. Last I remember, I made the completely unremarkable assertion that it’s possible to know whether a reference is material without reading every single word, and then you kinda went off the rails.

  24. What exactly?

    Where is your other foot? Why have you not answered my questions?

    What exactly is unclear to you that you have not fully even stated your position?

    I see that you see that I see that you see – but you still have not answered.

  25. Either you are new around here or you are completely stupd

    Neither 6 – I have been here long enough to see the devastating (to your ideals) effect of the Tafas case play out.

    Thus your post is a pipedream and a willfully blind attempt to ignore reality (of what the Office may do – Congress, on the other hand has free reign – see my posts on the Golan decision).

    I don’t mind, though, your explanatory comments about why you would like the law to change (it’s nice even to see someone attempting to back up thier words rather than get in a huff and merely puff with the heavy lifting of nothingness).

  26. sockie: I am not tiptoeing around, but rather, I am taking things one logical step at a time.

    All this is leading up to sockie’s grand conclusion: insane people have an unfair advantage because they don’t have to worry about inequitable conduct.

  27. Yeah, right.

    I re-iterate what I said maybe a month or two ago regarding your comments, troll:

    I couldn’t care less what your opinion is about anything, especially about my efforts to contribute to this board, simply because those opinions are YOURS.

    Enjoy interacting among your various pseudonyms.

  28. IBP,

    I do not understand why you are reacting so defensively to my line of questions. I am not tiptoeing around, but rather, I am taking things one logical step at a time. You comment “If you’ve got a point to make, make it, present supporting evidence, consider countervailing evidence, and acknowledge possible weaknesses” – but that is exactly what I am doing. I am making my points (one step at a time), I presented supporting evidence (discussions of Moatz and the actual rules), I considered countervailing evidence (or rather, the lack of such that go directly to the points that I raised) and I am perfectly williing to acknowledge possible weaknesses – but none have been presented. Does the one step at a time method really offend you? Do you really think it reasonable that you are so easily offended?

    Your (over)reaction is clearly out of proportion to my comments. It is you that is acting juvinile.

    I have to wonder why you seem so overly upset that I am pushing IANAE to take a clear position. Why should that bother you so?

  29. LOLZ at you being juvenile in how you are reacting to Anon, Inviting.

    It is clear that you are jealous of Anon’s one-liner efficiency when you do all that “heavy-lifting” and have nothing to show for it.

  30. Inviting – you sound bitter. Perhaps you should look at what Anon is actually saying (I am sure you are a big boy and can connect the dots).

    Methinks you are upset because the conversation is not going where you want it to go.

    You are skipping the best part of Anon’s “ringmaster” game: putting the teacher into a box and exposing the teacher’s duplicity.

    I for one will never get bored with that crrp. You should learn to enjoy it too.

    And stop complaining about doing the “heavy lifting” when what you are lifting is not material to the discussion (more of where you getting all mad is coming from). Anon has made some clear points that simply sink your position (for example, Tafas and where the responsiblity of examination lies, the actual meaning of the 37 CFR § 1.97(h) rule and why that also sinks your position.

    Your post merely comes across as a temper tantrum. You don’t like where Anon’s logic leaves you and you are strikiing out because you have nothing substantive to show for your own (perceived) heavy lifting. I know it svcks to think that you lilfted all that stuff for nothing, but that is the way it is. Perhaps next time, you think first and lift second.

  31. The Teacher gets schooled twice today.

    I LOVE IT.

    Now back to your tower IANAE, as being forthright is not within your capabilities.

  32. Malcolm will not engage in a real discussion and will not answer questions

    No, but he will piss and moan when he feels his questions have not been answered.

    And you will get the bonus of him projecting and calling you a hypocrite (and maybe even a coward). Who knows he may even get back to his table pounding tirades.

  33. anon–

    I haven’t encountered your preferred mode of interaction since law school. How juvenile.

  34. Yes, they do.

    Your attempted one-line negation is worthless, and I’m not going to waste my time addressing it.

  35. anon–

    Your attempts to play the ringmaster are getting really old.

    I call BS on YOU. If you’ve got a point to make, make it, present supporting evidence, consider countervailing evidence, and acknowledge possible weaknesses.

    Don’t just give us your one-liner carp–it’s boring. You’re just dicking around, trying desperately to be the puppetmaster by attempting to frame the limits of the discussion on a rolling basis.

    Even though you can ask a good question on occasion (I’m sure without exactly knowing why it is any good), nobody wants to play with you any longer.

  36. anon–

    You’re just tiptoeing around while letting me do the heavy lifting.

    If you do not expand on your point, I will not consider it.

  37. ““Peruse” is not the same as the Moatz directive to read and to read in its entirety, is it? I will take it then that you do not think that any such reading is required.”

    It is not currently reqed no. The official word is I am supposed to review docs on IDSs just like I review any other document I find in searching. I can flip flip flip them or I can peruse them or I can read them in depth. My discretion.

    “Since it is an established fact (see Tafas) that the Office cannot foist its responsibilities of examination off on applicants, this means that the evaluation of materials is the sole responsibility of the examiner. ”

    Legal judgements and things accompanying them which may be, easily in this case, overturned are not “facts” brosensky.

    In any event, the office, or the congress may at either of their discretion “foist” its responsibilities of “examination” off on applicants at their will. As long as the office also does an examination it is quite fine to draft IDS submission rules as they see fit so far as I’m aware.

    “All that is required is a review – a vastly different requirement and one that I would put to you is far less embracing than the examiner’s “consideration” requirement.”

    Well, if you feel as if a “review” is required then that’s more than many attorneys do so kudos to you.

    “So how do you consider something that you do not read?”

    That is a connundrum. But generally you can look at pictures too. If the device is totally different from a device claim before you then there it’s usually pretty clear that the ref is not that relevant. That’s how we do it. But of course, it may be different for attorneys.

    “Do you believe that “perusing” is enough to grant the patent right over the material that you have so perused? ”

    I don’t just believe it bro, that is what is known as a “fact”.

    “Are you aware that it is this very action that gives the patent right its Clear and Convincing status?”

    Yes, and I’m not really a fan of that standard but, meh, I understand there is a need for some finality so whatev.

    “Are you comfortable in doing such a lackluster job?”

    Very. The other 5.9k examiners just flip flip flip them or, some people say (Lemley), wholly ignore them, so I feel like I’m going above and beyond.

    “Bottom line: it is your responsibility to vet the application, not the applicant or his representative. ”

    So … change that responsibility?

    You’re overthinking this bro. Think simple.

    “That is why a disparity between level of effort is fully reasonable.”

    I agree, under the current regime it is “fully reasonable”. One must change the regime before it is not “fully reasonable”. The reasons to change the regime are distinct from this “fully reasonable” disparity.

    “You do realize of course that “initiation” has nothing to do with actual examination, and that that examination remains solely your responsibility, correct?”

    Either you are new around here or you are completely stupd. As I have said above, and said on here many many times, it being “my” responsibility is the problem. The applicant needs to take more responsibility and/or have it “foisted” upon him. It being “my responsibility” has nothing to do with applicants initiating time wasting procedures by submitting irrelevant documents.

    “You do realize that the Office is merely getting what it has asked for with its requirement to submit information, do you not? ”

    Mhmm, and that is why I’m currently advocating for a change in “what it asks for”.

    “Your animosity towards those whom ”

    Listen bro, I’m past it being animosity. That stage passed a few years ago. Now I’m to the stage of simply advocating to change the system sans animosity.

    “(ROW does not seem to have any troubles without such a requirement, do they?). ”

    Yeah they do, it is just under-reported.

    “Don’t like it? Get your union to do something about it.”

    How about I advocate against it whilst my union does something about it? How’s about that?

    “Lastly, your comments about “single standard” are pure BS when you consider the points above.”

    Mmmm, not really. But I suppose it is easier to simply call bs than accept on some truth ain’t it?

  38. “how you would prefer to see this handled. Would an IDS accompanied by a letter stating it was all junk by an infringer gaming the system satisfy your requirements?”

    Sure you could do that. But I presume that this is reexam so it isn’t really all that much of a harrassing act to bury the examiner in refs. In reexam there’s typically “real money” etc. at stake, I mean, not hypothetical money as with 90% of applications, real money being argued over, even injunctions and other serious stuffs.

    But if you’d like to highlight anything that is even remotely relevant and tell the examiner that the rest appears to be bunk that is nice of you.

    “The litigation was in Europe, the US case is a prosecution of an application related to the litigated patent.

    Oooooo. Well in that case just cite whatever you feel is relevant. Cite the rest if the rules req it of course but otherwise I don’t think you have any obligation to cite them. Of course you can under our current regime if you so please. You can also send in a letter stating that they all seem like bunk to you, but someone in a litigation felt differently and your client requests that the office peruse them. And of course all attorneys of everywhere will tell you to file them.

    And of course this is not legal advice for any specific application, only in general prosecution.

  39. MPEP 724.02.

    Still begs the question as to why trade secret material would be material prior art at all.

    If the information is public domain, why should the examiner be under any obligation not to use it in rejecting the claim if appropriate.

  40. How does USPTO investigate allegations of Examiner misconduct? Any one utilize Patent Ombudsman program – what was your experience?

  41. Ned,

    Please contnue reading MPEP 724, as there is additional “maaterial parts” that describe how the courts and the Office can both be satisfied.

    Continuing kudos to Red Monkey.

  42. anon, I would like to add to my prior post that trade secret information of a third party should ordinarily not be material to patentability because trade secrets are not prior art.

    This would leave information that is not trade secret — public domain information. So how is public domain information the properly the subject of a protective order in the first place? I don’t think it is.

    So, if the IDS includes only public domain materials, where is the harm?

    If, however, the IDS includes confidential trade secret information, not only is there harm due to the public disclosure, but the information by definition is not material.

    I would suggest, then, that if trade secret information was disclosed in an IDS, that the responsible parties should be sanctioned and disciplined. But, if only public domain materials were disclosed, perhaps there should be no sanctions or disciplinary proceedings at all.

  43. anon, thanks. MPEP 724 says in material part,

      It is incumbent upon patent applicants, therefore, to bring “material” information to the attention of the Office. It matters not whether the “material” information can be classified as a trade secret, or as proprietary material, or whether it is subject to a protective order. The obligation is the same; it must be disclosed if “material to patentability”….

    I would think this should be a complete defense to any patent attorney or agent in disciplinary proceedings involving violation of a protective order. In other words, if the protective order does not exclude access of the material to patent attorneys or agents currently prosecuting cases where the information is material to patentability, then the protective order should be construed to have an implied authorization to the patent attorney or agent to make the disclosures required of him by “law.”

    A violation would then occur only if the material submitted in the IDS was not in fact material.

    Here the patent attorney involved got into trouble by not even reading the materials to determine materiality.

  44. I see what you are doing there – you still have not answered my question – and you still have not decided what you are going to do about your fence situation (that’s OK, gravity will help you).

    I also see what you are doing with your “if you’re going to argue my case for me” comment – that’s the old “just declare victory” and mov eon tactic.

    Sorry – I call BS on you. Let’s see you take a direct and straight forward position – a simple and clear affirmation one way or the other – that’s the only option being presented to you (snide and evasive comments are the equivalent of the split fence condition, so unless you enjoy that sort of pain (which you might), let’s see you step up to the plate.

  45. sockie: (I cringe at the fetal position that will result if you try to maintain feet on both sides of the fence)

    If I didn’t know better, I’d guess that this was a parody of our beloved sockie. But I do know better. LOL!

    Man, this blog has the dumbest trxlls.

  46. (I cringe at the fetal position that will result if you try to maintain feet on both sides of the fence)

    I cringe at the mixed metaphor.

    You’re really desperate to have this argument, aren’t you? Well, go ahead then. You don’t seem to need me for it at all. Just one thing – if you’re going to argue my case for me, make sure you win it.

  47. IANAE,

    I see what you did there – you did not answer the question and stopped in the tracks of where the logic leads.

    And yes, I did think that you would support Moatz and his views. Are you saying that you do not (I see that you did not quite come out and say that either)?

    In essence, you are still on the fence, but now you have taken one leg and pushed it off into the “not read and read entirely side of the fence” – and no, your generalization of ridiculous to require reading is not accurate – and your other leg wants to go in the “but applicants still must read and read entirely everything on an IDS” side of the fence. That will make for a most painful result.

    Your move – jump to one side of the fence or the other (or split the difference in a most painful manner). Let’s see you take a direct and straight forward position (I cringe at the fetal position that will result if you try to maintain feet on both sides of the fence).

  48. you feel so strongly that for those who are responsible for examination, the requirement of reading would be ridiculous

    I see what you did there. Most amusing. You’ve turned “read (and read entirely) the reference” into “it’s ridiculous to require reading”.

    Also, I’m not here to defend Moatz or his views. Why did you think I would? Because you think I’m anti-patent?

  49. Thank you IANAE – I note the strong resonance.

    Now a follow up – why should the Moatz quote apply to someone not responsible for examination when you feel so strongly that for those who are responsible for examination, the requirement of reading would be ridiculous?

    (and yes, the “why” would also be enlightening).

  50. Thanks IBP,

    The short answer to your question is “no”, but that answer makes no difference to the analysis.

    While it is indeed true that the question is only preliiminary to the analysis, on the contrary, the answer makes all the difference – it is quite the point here.

    The second question is now before you: How can “the examiner [ ] be aware of both the existence and the contents of all supplied references” without actually reading the reference? Osmosis? Smell? A sixth sense?

    As for the tangeant of “examination essentially ceases once a PF case is made” -let’s save that for another day. It has a nice tie into what makes for a short of long examination – piecemeal and all that – but will only distract from the immediate point at hand.

  51. Of all people, MM, you are not one to indicate what is or what is not rude.

    And please stop with your self-referencing this blog has comments – that’s so very old and so very not funny.

  52. MM,

    I note a lackof actual response tot he questions at hand.

    You do not need to be afraid – your answers cannot be any worse than the usual insubstantial remarks you make.

  53. Your doubt is correct, mark. There is nothing to apologize for.

    On second thought, incredulous, it was a little rude to suggest that the applicant did not hold a reasonable belief in the patentability of their invention. Wouldn’t it have been kinder to merely suggest that they were insane?

    LOL!

    Man, this blog has the dumbest trxlls.

  54. The applicant who signs the oath is not required to be sane, is he?

    Shorter sockie: it’s not a lie if you are insane.

    Thanks, sockie. Really thoughtful stuff there.

    Like a lot of sockie’s comments, this one reads a lot better if you listen to this while you read:

    link to youtube.com

  55. anon’s answer is a little frightening, but I think she just likes to argue.

    It’s a little worse than that, LB, but I LOL’d all the same.

  56. “The duty to NOT submit information that is NOT material applies to all applications.”

    Here is the rub. From my experience, I’ve seen 102 rejections based upon references that weren’t even close. I’ve seen 103 rejections (to address certain limitations) that required impossible claim constructions and non-existent facts. Moreover, these actions aren’t just from a few Examiners. Almost all rejections I receive include some portion that elicits a response comparable to “come on, do you really think that?”

    When dealing with the average Examiner, I can never be sure that a particular reference isn’t material. As such, in my view, you should always err on the side of citing versus not citing.

  57. continued…

    Sometimes when an app comes in, the examiner knows essentially immediately that an initial PF invalidity case can be made based upon information not supplied in the examination.

    However, IMO a final PF finding of invalidity upon which a rejection is made MUST include a consideration of supplied references.

    Even though references don’t have to be entirely read by an examiner, IMHO the presumption of regularity of official acts requires that the examiner be AWARE of both the existence of the reference, and of its contents, and here is why: no rational applicant will submit a reference that they believe will contribute to a finding of invalidity by the PTO.

    Once an examiner has made an initial PF finding, say on the basis of references other than those supplied by the applicant, the presumption of regularity IMHO requires that the examiner “consider” the supplied references–that is, that they be aware of the general propositions for which they stand, to be able to determine if they negate the PF finding initially made. This requirement is reasonable, as one of the reasons that applicants supply references is for their ability to forestall a PF finding of invalidity, or to rebut an initial PF finding of invalidity that is made on the basis of other information adduced by an examiner during examination.

    Thus, since the PTO must put at least some time and resources into achieving such awareness in the case where an initial PF finding is made by an examiner, supplying nformation that no examiner would reasonably consider material to any condition of patentability will unnecessarily cause delay, and needlessly increase the cost of prosecution–hence the duty to NOT submit information that is NOT material.

    The discussion could end here, a presumption that all examinations will involve an initial PF finding of invalidity could be invoked to make the scenario, and therefore the duty, apply to any and all examinations before the PTO.

    What about a case where no initial PF finding is actually made by an examiner? In such a case, there would be no need to consider supplied references for countervailing evidence–but is there some other need to consider the supplied references? Yes, because the trained and competent practitioner is representing to the PTO that the information supplied could reasonably be considered to be material to patentability, and this includes the situation in which the information could be used not to forestall or rebut a PF finding of invalidity, but instead to SUPPORT a PF finding of invalidity.

    So, any time an application is made, a practitioner must presume, based upon the presumption of regularity of official acts, that the references will actually be considered by an examiner, and that the PTO will therefore expend time and resources in said consideration. The duty to NOT submit information that is NOT material applies to all applications.

  58. Response broken into parts for practical posting reasons:

    anon–

    The short answer to your question is “no”, but that answer makes no difference to the analysis.

    You have asked a question that is only preliminary to the analysis.

    Ultimately, although it may not be necessary that the examiner entirely read every supplied reference, the examiner does have to be aware of both the existence and the contents of all supplied references.

    A specific answer to your question necessitates a determination of what constitutes a legally-sufficient examination.

    The PTO has a duty to examine applications–not just for internal cogency, but for satisfaction of the patentability criteria of utility, novelty, and non-obviousness.

    In order to examine for patentability, a disclosure must be compared to information coming from outside that disclosure. The disclosure is examined from a negative perspective–that is, the PTO does not examine “for” patentability, it examines “for” unpatentability.

    Currently, as I understand it, examination essentially ceases once a final PF case of invalidity is made. Such a PF case of invalidity can be made on a single ground of invalidity, although there may in fact be others. This is an efficient way for the PTO to discharge its duty to examine. Other grounds of rejection may be presented, if they are “easy” for an examiner to include in the OA, and if they don’t take much time as a result.

  59. IBP, I was just responding to the apparent suggestion by How Many Socks that the responsibility for a frivolous filing can be placed entirely on the client, even if the client is insane. I’m with you on this one.

    anon’s answer is a little frightening, but I think she just likes to argue.

  60. “Assume, of course, that we are talking about someone with rudimentary knowledge of US patent law, of course, who has managed to prepare and file an application with the USPTO because they want the government to grant them a 20 year monopoly on the right to make, sell and use the claimed invention.”

    Somebody with a rudimentary knowledge of US patent law understands that the issuance of a patent is not a “grant of a monopoly.” Then again, we know that you, Examiner Mooney, don’t have a rudimentary knowledge of US patent law.

  61. Does “consideration” necessarily imply that the examiner must read (and read entirely) the reference?

    What? No, of course not. What a ridiculous idea.

  62. “The applicant who signs the oath is not required to be sane, is he?”

    I must assume that the person who wrote this is not an attorney, and therefore knows little to nothing about laws pertaining to diminished capacity.

  63. > You’re asking whether you should review them yourself for the litigation or send them to the office en masse in a reexam?

    No; I had already read through that pile to be able to reply in the litigation that the cited documents were junk and also why I felt it was harassment tactics by the infringer.

    From the discussions above I get the feeling that documents cited in litigation should be filed in IDS, yet burying the Examiner in junk is harassment and a big no-no. I am therefore in a contradictory situation.

    So question I aske then is simply: how you would prefer to see this handled. Would an IDS accompanied by a letter stating it was all junk by an infringer gaming the system satisfy your requirements?

    The litigation was in Europe, the US case is a prosecution of an application related to the litigated patent.

  64. Leopold,

    Perhaps.

    Do we know if the representative explained the chances of success to her client? Was the representative, for the sake of argument, having explained the chances, then hired regardless? Is it ethical to only take on “sure things”? What would happen tothe legal system if all such “losers” were shunned? A bit OT, but apply this to the criminal system. Do you see how your question quickly becomes inappropriate? (not that the question itself is totally inappropriate – just that we are not privy to the necessary circumstances to cast such an innuendo).

  65. Thanks for being the only one to actually try to put forth an answer 6 – it is appreciated.

    However,…

    “Peruse” is not the same as the Moatz directive to read and to read in its entirety, is it? I will take it then that you do not think that any such reading is required.

    Since it is an established fact (see Tafas) that the Office cannot foist its responsibilities of examination off on applicants, this means that the evaluation of materials is the sole responsibility of the examiner. True, applicants and their representatives have a duty to share what they know, but that duty does not include any type of searching out of material, and ostensibly, this reaches to the “read and read in its entirety” the contents of an IDS. All that is required is a review – a vastly different requirement and one that I would put to you is far less embracing than the examiner’s “consideration” requirement.

    So how do you consider something that you do not read?

    Do you believe that “perusing” is enough to grant the patent right over the material that you have so perused? Are you aware that it is this very action that gives the patent right its Clear and Convincing status? Are you comfortable in doing such a lackluster job? Bottom line: it is your responsibility to vet the application, not the applicant or his representative. That is why a disparity between level of effort is fully reasonable.

    Let’s discuss your red herring of “initiation” for a moment. You do realize of course that “initiation” has nothing to do with actual examination, and that that examination remains solely your responsibility, correct?

    You do realize that the Office is merely getting what it has asked for with its requirement to submit information, do you not?

    Your animosity towards those whom merely fulfill what the Office asks, neigh demands, is misplaced. As I have posted before, this can be taken care of very very easily by removing the requirement to submit (ROW does not seem to have any troubles without such a requirement, do they?). So in this point, I think we agree that the current requirement “ is no longer the right call to make.

    But the call nonetheless has been made. It is your responsibility to deal with the ramifications of that call. Don’t like it? Get your union to do something about it.

    Lastly, your comments about “single standard” are pure BS when you consider the points above. But at least you presented an answer, no matter how misguided that answer was.

  66. I’m just curious – is it ethical to take money for filing a futile application on behalf of an insane (or even merely deluded) applicant?

  67. The “false” statement was in regards to the due care responsibility that signing his name entails. You are correct that “materiality” is a red herring of sorts, bu the crux of the matter is that some review is absolutely necessary, and the submission without any review resulted in the needless violation of a court order.

    Thanks again to Red Monkey for reminding me of MPEP 724.

  68. HMSiMMW,

    You are barking at a parked car – Malcolm will not engage in a real discussion and will not answer questions put to him, even though he clamors for answers from everyone else.

  69. How about it IANAE,

    Does “consideration” necessarily imply that the examiner must read (and read entirely) the reference?

  70. Alun,

    Red Monkey was kind enough above to highlight the section of the MPEP that applies to such court orders.

    It is possible to meet both the court’s and the Office’s obligations.

    Also as pointed out, a “review” is all that is necessary (and definitely not “reading in its entirity” as the anti-patent bar leftover of Moatz would have it). A review would have noted the seal order and thus applied MPEP 724.

  71. Do you believe that someone who disagrees with you can do so reasonably?

    Yes. Reasonable people disagree on things all the time for very many reasons.

    In this particular instance (which you did not ask), I would not agree that disagreeing with me is reasonable.

    So what?

    The applicant who signs the oath is not required to be sane, is he? The applicant’s representative is not signing the oath, is he? What is your point?

    As for your “assumption,” as loaded as it is, it is meaningless to the question you asked.

    Now if you want to ask if I think that someone who has a rudimentary knowledge of US patent law, who has managed to prepare and file an application with the USPTO because that person wants the governement to grant them a 20 year monopoly on the right to make, sell and use the claimed invention (which is redundant to the rudimentary knowledge point) AND who is an inventor (or claims to be) of such an inane invention as the instant application, then that again is a different question.

    I would not think that person would be reasonable – but again, so what? Where does it say that inventors must be reasonable? All that is required is that the inventor believe in what he professes.

    So again, what is your point?

    (Does this count as a “non-answer”? Do I get to join your non-answer club? Or are you afraid to actually start giviing answers to all those that put question to you?)

    Did you forget which sock you were wearing?

  72. I submit that 37 C.F.R. § 11.18(b)(2)(i)violates both the Sixth Amendment to the United States Constitution and the prohibition against Bills of Attainder. Should you like an exhaustive discussion on the same I would be happy to oblige. Suffice it to say that it has been my long held position that ALL ethical obligations must satsify the conditions of the United States Constitution with respect to the USPTO. Unlike many State Bars, the USPTO is a governmental institution and, therefore, MUST comport with the provisions of the United States Constitution, i.e., its acts and authority are restricted thereby.

  73. incredulous: I’ve often wondered what would happen if an examiner simply allowed a claim like the one quoted above. Would an attorney have the integrity to fix it via rule 312, or just continue to play dumb?

    That’s a great rhetorical question.

    Here’s another great rhetorical question: does every Examiner at the USPTO understand why the following claim is invalid?

    1. A ball that is identical to a ball in the ancient prior art, wherein said ball is manufactured by [novel process comprising X,Y,Z].

    Here’s a much more difficult question: is the percentage of Examiners who don’t know the answer to that question greater than 50%?

  74. “Do you believe that vinegar and baking soda is a novel composition”

    No, I don’t.

    Okay. Do you believe that someone who disagrees with you can do so reasonably? If so, please articulate the reason. Assume, of course, that we are talking about someone with rudimentary knowledge of US patent law, of course, who has managed to prepare and file an application with the USPTO because they want the government to grant them a 20 year monopoly on the right to make, sell and use the claimed invention.

  75. Your doubt is correct, mark. There is nothing to apologize for. Claim 1 of the published application is absurdly broad and had no chance of being allowed, and the applicants / representatives probably did not need the mean old PTO to tell them so. It looks like the claims on appeal have been amended several times. Fine, but in getting to that point, the PTO’s (and presumably the applicants’) resources were apparently wasted in the process of beating back a claim that likely should not have been filed in the first place. That is what is ridiculous.

    It would be impressive if anyone beyond high school has not seen a vinegar / baking soda demo. Sure, it is possible that some applicants have a certain thing in mind concerning what constitutes their invention. Being unfamiliar with principles of claim interpretation they may not recognize that a given claim has a problematic breadth. Isn’t that where a patent attorney should chime in?

    I’ve often wondered what would happen if an examiner simply allowed a claim like the one quoted above. Would an attorney have the integrity to fix it via rule 312, or just continue to play dumb?

  76. Do you believe that vinegar and baking soda is a novel composition

    No, I don’t. What’s your point?

    Did you forget which sock you were wearing?

  77. How Many Socks

    Do you believe that vinegar and baking soda is a novel composition, sockie? Don’t be afraid to answer. Neither answer will surprise anyone who reads this blog. Your non-answer to the inevitable follow-up question will also surprise nobody.

  78. My Postmaster read a return address and sent it to the Assignee in charge… BIGGGGAAA MISTAKKKKA… BLOOD AIN’T GOT NOTHING TO DO WITH IT. LETS JUST SAY IT’S BUSINESS!!!!!!!!!!!!!!!!!!

  79. mmmm, MM replying to one of his “sockie” posts…

    That would be an “oops” there, forgot which sock he was wearing…

  80. trying to get out of reading the documents they by law force examiners to read

    It is your job to examine, is it not? If it were our job to examine, we wouldn’t need you, so be thankful for that and stfu.

    Have a nice day.

  81. It seems like lazy attorneys here are trying to get out of reading the documents they by law force examiners to read. If “technically you don’t have to read them”, why are examiners forced to read those documents? Why waste everybody’s time with documents yanked out of your ‘ace’ holes? I’m guessing you are billing customers for the time it took to read those docs, or do you tell your customers that you are submitting waste of time documents because ‘that’s just how it is’? IDS docs are usually irrelevant and sometimes can be used to reject the whole patent, either way the attorney/agent usually looks like they rushed through their job or do not understand the technology. Is it too much to ask the highest paid attorneys/agents in the US to be awake and aware of what they are by law forcing examiners to read? Examiners should flag your lazy work for making them waste time, that would help weed out those lazy prosecutors who file ridiculous office action after ridiculous office action just to bill their customers.

  82. “Since it is your feeling that it is not ludicrous that the attorney must read every document, how do you feel about Goose and Gander’s point that the examiner must also read every document in order to properly consider the document? ”

    No. 1 I already peruse most docs submitted for relevance. If attorneys were required to send me only relevant already perused/read sht then sure, make examiners read it too. I see no point in requiring it, but if it makes you feel better at night it is a trade off I’m willing to make.

    If you’re asking whether I think examiners should have to read all documents dumped in the current IDS regime then no, obviously not. If that was goose and gander’s point then he is simply making up a fallacy, the one party is the initiating party. That’s the applicant. He is initiating this whole round of ridiculous sht by sending in ridiculous references on IDSs.

    That is also why this “double standard” would be fair if we simply made attorneys read the docs and submit only things at least somewhat relevant. They’re initiating the whole waste of time. It thus isn’t really a “double standard” at all. It is a single standard. Let’s be honest, we all regard the reading of irrelevant references en masse as somewhat of a “punishment” but what our perceptions are shouldn’t really matter. The rules should be about what is good for efficiency of the agency and actually getting relevant art before the examiner and not necessarily in that order. Right now we have a system that is horrible at both of those things in some situations for the benefit of “convenience” for the attorney/applicant.

    You can say well that’s a good trade off, to have mediocre ability to get art in front of the examiner at horrible agency efficiency as long as it isn’t that bad for applicants/attorneys. That is a judgement call the agency has to make of course. I simply feel as if that call was made in a bygone era and is no longer the right call to make.

  83. sockie: As for incredulous, he can apologize to the applicant and attorney of US 2006/0126256 for accusing them of misconduct and lying.

    So you believe that a composition comprising baking soda and vinegar is novel? Or it is your opinion that such a belief is reasonable?

    Which is it, sockie?

  84. I don’t think I really understand your question. You’re asking whether you should review them yourself for the litigation or send them to the office en masse in a reexam? I’m sorry bro, I’m not your man for these kinds of questions. If I had to guess and totally not give you legal advice I would say that you should go over the 400 docs yourself for the litigation regardless and while you’re there go ahead and weed them before submitting to office. But, the rules might require you to submit anything in an accompanying litigation anyway.

    Reexam is a whole other ball of wax compared to an ex parte first examination. If they cited 400 you may very well need to cite all 400 to the office. I would thus “prefer” that you follow the rules. But if the rules allow you to not submit stuff that is plainly irrelevant then don’t submit it.

  85. Wasn’t replying to you, Examiner Mooney.

    As for incredulous, he can apologize to the applicant and attorney of US 2006/0126256 for accusing them of misconduct and lying.

    Got it, sockie?

  86. When the examiner is reversed, are you going to follow up your ridiculous post with an apology to the applicant and the attorney?

    Exactly what would I be apologizing for, sockie?

  87. I know Bill Bollman. At one time I did overflow work for him, preparing new apps, and I am shocked by this. It is indeed a travesty.

    How can a court make an order that requires us to breach ethics (by not submitting art)? Or am I missing something?

  88. And who is going to be the arbiter of this banning you propose? You?

    That application is under appeal. When the examiner is reversed, are you going to follow up your ridiculous post with an apology to the applicant and the attorney?

    I doubt it.

  89. With this passage, I agree pragmatically:

    “Regardless, you are taking a far greater risk not citing a reference (after reading it) than citing the reference without reading it. I see no benefit to be gained by reading references in the hope that I may be able to exercise my independent judgment in not citing it.”

    In the instant case, if somebody came to me with boxes of references and asked me to file an IDS, my decision would be to decline, unless they had a VERY good reason they couldn’t do it themselves, or cause a subordinate to do it.

    This option was available to Bollman. He was not currently representing the client, and none of the duties of continuing representation, or the complexities of terminating representation, encumbered or circumscribed his decision-making.

    As you acknowledge and as this case demonstrates, there is risk in citing references without reading them.

    Assuming Bollman is rational, in his estimation the possibility of benefits ($ and possibly goodwill) outweighed the risk of the costs (sanction), which is his decision to make, which is why I don’t feel badly for him, especially since the record doesn’t show that he took simple steps to mitigate the exposure to risk.

    If I’m already representing a client, and the time arrives to file an IDS, my actions are determined with reference to the particular situation.

    The next time a courier comes through my door, wheeling hand-trucks of boxes containing references sent by a corporate entity, I’m going to send them to Bollman.

  90. insofar as a practitioner’s duties under 37 CFR 11.18(b)

    ?? 37 CFR 11.18(b) has nothing to do with the legal fiction of “presumption of regularity of official acts.”

    You can’t get there from here.

  91. Like I said elsewhere, it is a helpful legal fiction.

    What it means insofar as a practitioner’s duties under 37 CFR 11.18(b) are concerned is that a practitioner, when deciding how to govern his own actions, must assume that an examiner will properly discharge his or her official duty to examine a patent application to determine satisfaction of the conditions of patentability, which determination includes a consideration of information that may be material to patentability, which information includes that information to be included in an IDS submission.

  92. Whoa there, big fella. I was speaking in the abstract.

    If you prefer:

    “If one’s ability is greater than, or if one reasonably believes it to be greater than, the other attorney’s, the one has an independent duty to exercise one’s superior legal judgment, and not rely on the other attorney’s relatively inferior legal judgment.”

    There was no intimation of the particular legal ability of either myself or anybody else.

  93. If my ability is greater than, or if I reasonably believe it to be greater than, the other attorney’s, then I have an independent duty to exercise my superior legal judgment, and not rely on his or her inferior legal judgment

    You are WAY too full of yourself, and such a high estimation of yourself is unwarranted by what I have read of your posts over the last few months.

  94. Remember … we are talking about an IDS and whether the references to be cited to the USPTO are material. If anybody reasonably (or even marginally) competent tells you that it is material, are you going to risk a charge of inequitable conduct and not cite the references? Maybe somebody is looking at a reference from an angle you didn’t think about. Regardless, you are taking a far greater risk not citing a reference (after reading it) than citing the reference without reading it. I see no benefit to be gained by reading references in the hope that I may be able to exercise my independent judgment in not citing it.

    If I’m a partner, and I’m reviewing my associates work, after some point I have to reasonably believe that my associate has properly characterized the reference, the claimed invention, and the law.

    “You either have to go through the references yourself, or conduct an exhaustive review of the other attorney’s actions and combine it with what you know of that attorney’s character and good faith and prepare and get signed a certification.”
    Exhaustive? The law requires reasonableness … not an investigation to determine whether the person you are working with is worthy of top secret government clearance.

    “or else I will not be properly discharging MY personal duty to represent to the best of my ability”
    See my comments above. If somebody tells you they think the reference is material, you cite it to the USPTO. Any other action is not the best course of action. Granted if somebody gives you 400 references and says that they are all relevant, then it is reasonable to question them as to why all 400 of them are material (and not duplicative of one another).

  95. FYI,

    Located at link to des.uspto.gov

    In pertinent part:

    23. On March 31, 2009, the district court entered an order granting Mobile 365’s motion to hold TCS in contempt of court and ordered TCS to pay Mobile 365 costs and attorney fees in the amount of $322,810.98. [that's some costs and attorney fees]

    24. In part, the district court’s determination that its protective order had been violated was predicated upon Respondent’s filing of the documents in the USPTO. The district court stated: “Further, despite TCS’s and Mr. Bollman’s contentions, this Court is not convinced of Mr. Bollman’s de minimis role and alleged blind filing of documents in the PTO, but rather holds that Mr. Bollman’s continued participation in the prosecution ofTCS’s ongoing patents, after having access to Mobile 365’s confidential documents, is a blatant violation of the Court’s Protective Order.”

    Legal Conclusions

    25. Based on the information contained in paragraphs 3 through 24, above, Respondent acknowledges that his conduct violated:

    a. 37 C.F.R. §§ I 0.23 (a) and (b), via 37 C.F.R. § 1O.23(c)(l5), by signing and filing Information Disclosure Statements in the Office without having reviewed any ofthe documents comprising the statements;

    b. 37 C.F.R. § I 0.23(b)(5) by engaging in conduct that violated a protective order issued by a district court; and

    c. 37 C.F.R. § 10.77(b) for handling a legal matter without preparation adequate under the circumstances by not taking reasonable steps to determine whether documents filed in the Office were subject to a protective order prohibiting their disclosure and/or without taking reasonable steps to file such documents in accordance with customary and acceptable practice (see generally MPEP § 724.02).

    Note: “reading” is merely mentioned in a list of possible actions, while “review” is the word of choice in the Notice of Reprimand and Probation and Legal Conclusions.

    “Review” can mean many things other than “read in its entirety.”

    And that is the rest of the story.

  96. Besides wandering off into personal attacks no one wants to read, some of the above comments have completely confused the requirements of Rule 56 [as to the mimimum one needs to disclose in an IDS] with the very different issue here, which is what else one can cite in an IDS without being accused of professional missconduct for not having read and understand all of it.

  97. Your continued referral to a state of royalty belies your seemingly pleasant demeanor.

    In fact, such is quite uncouth, as a real “Miss Manners” would surely know.

    So with all due respect,

    Bite me.

  98. IBP,

    Sorry, your answer made absolutely no sense to my question (neither here ar 5:35 nor at 5:28).

    Can you provide a direct answer to:

    Does “consideration” necessarily imply that the examiner must read (and read entirely) the reference?

    We can handle the follow on questions after you supply something straight forward.

  99. The presumption of regularity of official acts.

    What does this mean? Do you think it means that the examiner who says he has considered something in truth has not? Is it a white lie of sorts (white as coal)?

  100. Interesting discussion, thanks everyone…I actually have to get back to work, however…hope to catch up on your insights later.

  101. That’s nice Miss Manners – except I was being gracious to Goose and Gander.

    Don’t tell me that you too are afflicted with the “sockies” virus… (that is, unless “you too” are merely a sockie for one of those who claim everyone else is a sockie…)

  102. anon–

    See my comment below at 5:28

    Although only a presumption that is rebuttable when the regularity of official acts is at issue, here it is not the regularity itself that is at issue–it is the scope of the duty that is predicated upon the fact of the presumption that is at issue, which issue does not depend upon whether or not the presumption could successfully be rebutted in any particular case.

  103. And to your final paragraph, that is another part of the argument to switch to a registration system.

    I’ve seen that argument many times – it comes down to a cost/benefit analysis. Frankly, at a less than 2% litigation rate compared to the patent office costs of operations (and taking into account the massive backlog in first actions, final actions, RCE’s, and Appeals – basically everywhere – a registration system should be seriously considered.

    Me though, I would rather just have examination done right the first time. For all applications. Do it in teams if you must (people invent in teams, why examine in the singular?).

  104. Just so you know, it is somewhat ingracious to designate one’s own actions as “gracious.” Unless you are royalty, in which case it is just fine, Your Highness.

  105. Why is it necessary? The presumption of regularity of official acts. It is necessary to support a range of administrative legal conveniences, notwithstanding the use of the conditional “would” in the McKesson opinion.

    I have always considered the mere convenience that is the presumption of regularity to be the single most distasteful legal fiction in regular use–and a fiction like that forecloses any opportunity to be realistic.

  106. when it’s so obviously counterfactual?

    There are many, many things in patent law that are counterfactual. Why let that get in the way now?

    I will open my question to you as well IANAE (see above to IBP and 6 – with a gracious nod to Goose and Gander for introducing the thought).

  107. Since 6 doesn’t seem to want to answer, maybe IBP will offer his thoughts:

    Does “consideration” necessarily imply that the examiner must read (and read entirely) the reference? If not, how does one consider something not read? If so, I would love to see a graph on the necessary words per minute of reading completed for some of the larger IDS’d applications.

    If the Office wants to play hard-ball on this “must-read” position, they should be careful of what they are asking for.

  108. Sorry IBP,

    Your reasoning here does not fly. The Office rule guarding against ANY indications of materialness apply in all directions and thus represents a full blanket immunity against any type of “materiality” position on the contents of an IDS.

    One cannot have it otherwise. To so attempt would destroy the meaning of the rule.

  109. The correlation also relies upon the necessary presumption that the examiner actually considers the information.

    Why is that presumption “necessary” when it’s so obviously counterfactual?

    If we’re going to get as technical as evaluating “not-not-materiality” on the applicant’s side, shouldn’t we at least be vaguely realistic about the factual consequences of disclosure when considering whether it’s really any personal inconvenience for the examiner to press Ctrl-V a few extra times?

  110. The correlation also relies upon the necessary presumption that the examiner actually considers the information.

    And to your final paragraph, that is another part of the argument to switch to a registration system.

  111. From McKesson, information is material “where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent”.

    I understand the materiality point. What I don’t get is the correlation between submitting extraneous art and increased delay/cost.

    Also, what greater waste of the examiner’s time than having him examine a patent that he can’t possibly know is doomed to be held unenforceable in court?

  112. IMO, the attorney’s evaluation of the information must assume that the information will, in fact, be considered by the examiner.

    From McKesson, information is material “where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent”.

    This presumes that the examiner actually considers the information–therefore, in assessing the reasonableness of his/her inquiry, an attorney cannot reasonably rely on any other assumption regarding the examiner’s actions.

  113. Let’s–

    I don’t think that it is against the Office rule–see my comment at 3:45

    For the purposes of ethics and rules of practice, a representation that information IS material to patentability, is NOT the corollary of a representation that information is not NOT material to patentability.

  114. I am afraid that does not answer the question.

    My problem is that the infringing part cited unreasonable art during litigation. I had to review the pile and every single one of them were irrelevant, some were junk, nevertheless the cited documents are there and the litigation did take place.

    If it helps: there were more than 20 but less than 400 documents. Is there an acceptable number for junk?

    So how, in the view of the USPTO’s finest, should one proceed?

  115. Telling–

    Like I said, if I knew them well enough, I would prepare and have them sign a very specific certification, including a statement of good standing–and that would only be if I knew them well.

    If I knew them well and they didn’t want to certify, I’d call them on it.

    If I didn’t know them well, relying on general legal qualifications is IMHO insufficient to successfully discharge my duty of representation to the client–after all, it will ultimately be the client who will bear the burden of any inadequacy on my part.

    There is more gray area here than you seem to acknowledge. As you know, not all attorneys are expected to be equally competent, either. If my ability is greater than, or if I reasonably believe it to be greater than, the other attorney’s, then I have an independent duty to exercise my superior legal judgment, and not rely on his or her inferior legal judgment, or else I will not be properly discharging MY personal duty to represent to the best of my ability.

    To do otherwise would be a violation of Canon 5, the exercise of “independent professional judgment on behalf of a client”, because I would in effect be substituting ANOTHER’S professional judgment for my own.

    You either have to go through the references yourself, or conduct an exhaustive review of the other attorney’s actions and combine it with what you know of that attorney’s character and good faith and prepare and get signed a certification.

    That is, you either have to independently and to your level of competence professionally judge either the references, or the other attorney, or a combination of both, to successfully discharge your duty to the client.

  116. Also, your number 2) point is expressly against the Office rule, as has been noted.

    That rule is there for a reason, no?

  117. Inviting Body Punches,

    I think that you are missing the point of what constitutes the “reasonable inquiry.”

    See the points made by various posters including Paul Morgan, Material Girl, Telling it like it is and Judith IP.

  118. 1) a reasonable inquiry has been undertaken,

    Does the reasonable inquiry have to be case-specific, or can one simply take notice of the fact that examiners pretty much spend precisely as much time on IDS art as it takes to label each page of the IDS with “all references considered except where lined out”?

  119. The very act of filing an IDS is therefore a representation that 1) a reasonable inquiry has been undertaken, and 2) the material contained therein is not NOT material to patentability, and that therefore the submission of the IDS will not cause any unnecessary delay or needless increase in the cost of the proceeding to which it pertains.

  120. There is no conflict with 1.97(h).

    There is no specific representation that anything in the IDS is, or is considered to be, material to patentability–only that upon knowledge, information and belief, formed after a reasonable inquiry, the IDS contains only that which is material to patentability under 1.56

    There may be no duty to submit information that is not material to patentability, but there IS a duty to NOT submit that same information after it is determined pursuant to a reasonable inquiry, as any violation of such duty would cause unnecessary delay or needless increase in the cost of a proceeding.

    Like it or not, there is a duty to first reasonably inquire, and another duty to filter based on the reasonable inquiry.

  121. Now you can see why I was looking for a more glib way

    Funny, I did not think you needed a reason to look for a more glib way of expressing anything, IANAE.

    ;-)

  122. The Rule applies to unfounded or improper “statements” “allegations” or “representations” and a normal IDS contains none of those.

    Isn’t this reflected by Material Girl’s citation of 37 CFR § 1.97(h)? One cannot simply ignore that rule in this analysis.

  123. After all, doesn’t Bollman have to be listed as a practitioner associated with the application/proceeding in the USPTO?

    No. The mere act of filing is taken as a statement by the filer that that person has a right to file.

  124. But I, and I alone, will decide what I do individually. If the client doesn’t like it, they can find somebody else.

    +1

  125. 6,

    Since it is your feeling that it is not ludicrous that the attorney must read every document, how do you feel about Goose and Gander’s point that the examiner must also read every document in order to properly consider the document? How would any examiner meet his quota? Why, if you feel that this should not apply to examiners, would such a double standard be fair?

  126. AFAIK, an IDS is filed “for”, or “on behalf of”, an applicant or a party to a re-examination–NOT for another attorney.

    What preposition would you recommend? How would you correct an attorney who asks you to “please file this IDS for me”? For that matter, how would you correct a paralegal who offers to “file that IDS for you”?

  127. I thought it was clear enough, but I was pointing out the irony that Mr. “presumably he didn’t know and why would he bother to check” did not himself bother to check an easily accessible place where he could have reasonably expected to find the relevant information.

    Now you can see why I was looking for a more glib way of expressing that point.

  128. That may be your practice.

    However, in the normal practice of law, it is reasonable to rely upon your fellow attorneys/professionals for information and/or analysis and/or their professional judgment. Therefore, to the extent that one of these atorneys has made the determination that certain art is material, then under a ‘reasonableness’ standard, you don’t have to read the art.

    You are certainly free to exercise your professional judgment to review those references if that is what ‘floats your boat.’ However, it is also reasonable that you can rely upon someone else’s professional judgment.

  129. This would be a nice defense to an IC charge: “I think the suggestion that every attorney should read every document filed in an IDS is ludicrous.”

    Oh, well then…

  130. “What would you prefer then, ”

    I would prefer that attorneys take reasonable steps to “cite” art that is at least somewhat related to the application at hand. We get way too much completely irrelevant sht. If they want to cite 20 irrelevant sht documents then fine, but 400 or 700 with 4 relevant documents is pushing it.

  131. “I think the suggestion that every attorney should read every document filed in an IDS is ludicrous.”

    On the other hand, I do not.

    But then, I’m the one that has to deal with your big ol’ pile of sht that you and yours usually can’t even be bothered to correctly put down in an IDS.

    Although this case is about something different than just having to review every document, so that is sort of not that relevant atm.

  132. “Score one more point for not looking into things too closely.”

    No. This is not necessarily implied by the quote from the OED decision.

  133. Come on, the guy is an ATTORNEY.

    Asking if the patent is involved in any proceedings, disputes, negotiations, dealings, and so on is not something complex, it is one of the first, basic questions asked.

    If it is in litigation, the very next question to be asked is if the litigation in any way affects the proposed action, which of course involves a review of the record.

    Easy.

    Come on. Even if he lacked actual knowledge, it would have been through willful blindness evidenced by not having asked the most basic questions, right after things like “who is the client”, and “Janka, what is your precise current relationship to the client”, and “what is the client contact information”, and “Janka, are you aware of any other attorneys representing the client in either this particular, or any related matters”.

    I mean, come on.

    He knew, and if he didn’t, he should have known.

  134. Cannot the act of submitting any paper, including an IDS, be considered a representation to the PTO that

    “To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the paper being presented will not cause unnecessary delay or needless increase in the cost of any proceeding before the Office”?

  135. BTW, Dennis evidences this corporate mentality when he writes that:

    “Bollman – himself a very experienced patent prosecutor – was the attorney who actually filed the IDS for Mr. Janka.”

    AFAIK, an IDS is filed “for”, or “on behalf of”, an applicant or a party to a re-examination–NOT for another attorney.

  136. Presumably, he wasn’t told of the protective order so why would he randomly inquire?

    According to the OED decision, “Respondent was not a signatory on the protective order, but Respondent knew about it at all relevant times.”

    Score one more point for not looking into things too closely.

  137. Re “Moatz’s interpretation of what 37 C.F.R. § 11.18(b)(1)&(2) requires [reading and understanding every patent cited in an IDS] was bizarre.”
    That was certainly the impression of every patent attorney I ever talked to who heard him say that. Also the language of 37 CFR §11.18(b)(1)&(2) clearly does not even apply to a mere IDS list. The Rule applies to unfounded or improper “statements” “allegations” or “representations” and a normal IDS contains none of those.

  138. hmmm…IDK.

    Short version:

    I don’t know what the precise arrangement was between Bollman and Janka, or what evidence was adduced as proof thereof–but on the facts above, I have no sympathy whatsoever for Bollman.

    And Bollman, in his personal judgment, probably doesn’t care about either my appraisal, or the rather trivial disciplinary action.

    It was worth it, because he got paid.

    $$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$

    Long version:

    With consolidation among law firms, the increasing size of GP firms, and proliferating in-house legal departments, IMHO the dominant paradigm for characterization of attorneys has become that of a corporate employee.

    Corporate employees are expected to obey their corporate masters. The quid pro quo for not exercising personal judgment is the protection afforded under the theory of vicarious liability.

    The problem with attorneys is that they owe independent duties of professional judgment to both the client, and to the state, which duties are totally independent of, and can be in complete conflict with, their duties to whatever business entity they use for commercial purposes.

    The days of the independent professional are long gone, my friends. Those of us who still run our practices according to the seemingly long-forgotten professional principles are not making the big bucks…but on the flipside, we don’t have to worry about the OED, either.

    Yes, I read and understand everything I choose to submit.

    If a client wants me to do, or forego, something that in my professional judgment I should not do or should do respectively, I will explain to the client how and why I will act, and why I will use solely my independent professional judgment to guide my actions, as I am in the best position to decide.

    If it is difficult for me to decide, I will ask around–other attorneys, and my state ethics board.

    But I, and I alone, will decide what I do individually. If the client doesn’t like it, they can find somebody else.

    In this case, if another attorney came to me with boxes of docs to be filed for an IDS, I would ask why. There is no good reason, other than that they are a solo with no support, and are swamped with some other business.

    In that case I would either tell them that I would have to read through everything, including the full application, prosecution history, and the history of any and all associated proceedings, before filing the IDS…either that, or if I knew them well enough, I would prepare and have them sign a very specific certification, including a statement of good standing–and that would only be if I knew them well.

    After all, doesn’t Bollman have to be listed as a practitioner associated with the application/proceeding in the USPTO?

    Other than that, I would decline the business opportunity.

    Situations like that are why and how the corporate setting, and larger law firm setting, presents great difficulties to an attorney whose primary goal is to make money. Imagine some junior associate asking one of the senior partners to sign a certification, or some guy new to the bar asking some seasoned chief patent counsel to sign the same…

    Not that the request would never be granted, but the question would never be asked, because the corporate normative values are allowed to take precedence over the independent professional values. It is attorneys themselves who permit this to happen.

    Should the OED and state ethics review boards accommodate the corporate normative values in their decision-making, in an attempt to better reflect the “realities” of current legal practice? Should corporate legal departments and law firms adjust their expectations to accommodate independent professional duties? Something in-between?

    IMHO there should be a clear answer to this: every licensed attorney should be expected to exercise independent professional judgment. If that means less $, then either less money should be satisfactory, or legal means should be found to get more $ from legal activities, like charging more.

    Lawyers–and doctors–are kind of chumps in this regard. Lawyers and doctors all now obey corporate masters–and then bemoan the “injustice” of inevitable malpractice judgments and disciplinary sanctions.

    The typical response is that it would be impossible to successfully deliver legal or medical services without the support of the institutional structure. I have never found this argument compelling.

    Insurers need insured parties to pay premiums, hospitals need doctors to operate the MRI machines and use the surgical theaters, large law firms need associates to develop document lists, and corporate legal divisions need in-house lawyers to manage outside counsel, and to translate their activities for the benefit of the board.

    The intrinsic NEED for professional services would not disappear.

    People are generally afraid, however–risk-averse.

    Whatever. They take their chances.

    I know people who make phenomenal amounts of money precisely by not exercising independent professional judgment.

    In their personal judgment, it is worth it. For them as individuals, that may be true–for society in general, it is not.

    I don’t know what the precise arrangement was between Bollman and Janka, or what evidence was adduced as proof thereof–but on the facts above, I have no sympathy whatsoever for Bollman.

    And Bollman, in his personal judgment, probably doesn’t care about either my appraisal, or the rather trivial disciplinary action.

    It was worth it, because he got paid.

  139. I’m an electrical practitioner and not a chemical guy, but looking at the spec of that application, it seems like there may be something in there worthy of patent protection.

    Not sure why they went with those atrocious claims though (mind you, i’ve never heard of any mouth care product that’s vinegar and baking soda, as that sounds fairly disgusting, but i’ll assume something so simple is old in the art).

  140. When did Harry Moatz step down as Director of OED? Moatz’s interpretation of what 37 C.F.R. § 11.18(b)(1)&(2) require was bizarre

  141. I was involved in a litigation in Europe where the infringing party brought up several dozens of documents they cited without pointing out exactly where in the text basis for their statements could be found. In my view these were more of a harassment, driving up the cost. In the end they accepted a settlement.

    What would you prefer then, to have these dumped over the Examiner? IDS and it is a harassment; don’t and it is witholding material documents?

  142. What was the false statement?

    See post above regarding 37 CFR § 1.97(h). There is no grounds for a false statement per the Office’s own rules.

  143. Materiality itself is a red herring:

    § 1.97 Filing of information disclosure statement.
    (h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).

  144. Yes, it must be brought to their attention, but isn’t there some peculiar procedure you use to keep the materials themselves under seal when they are under protective order?

  145. Perhaps the OEP should read the agency’s own directives:

    2001.06(c) Information From Related Litigation [R-2]

    Where the subject matter for which a patent is being sought is or has been involved in litigation, the existence of such litigation and ANY other material information arising therefrom MUST be brought to the attention of the U.S. Patent and Trademark Office. (emphasis added)

  146. The rule says filing an IDS (among other things) carries the presumption of having undertaken certain tasks. What would happen if you explicitly rebutted that presumption by saying, in the IDS itself:

    “Dear examiner, I have not reviewed every single one of these in detail. They were provided to me by someone who thinks they might be relevant. He is pretty smart, smarter than me even, so I’m giving him the benefit of the doubt.”

  147. I think the suggestion that every attorney should read every document filed in an IDS is ludicrous.

    That said, I don’t see why we wouldn’t expect a patent attorney who is asked by another to file an IDS to at least do a minimal investigation, e.g. ask why. I certainly would. And while I don’t read every page of every document, I do flip through the pages, so anything stamped “confidential” or “under protective order” would certainly be caught and questioned.

  148. Yes sir re-Bob. That there’s one of the most awful, evil things this planet has ever seen.

    The Horrors.

  149. If the PTO really cared about misconduct maybe it would start banning people (applicants and sufficiently involved attorneys) who submit things like:

    1. A foaming oral care composition comprising two parts: a vinegar part, and a baking soda part.

    No, it is not an illusion – US 2006/0216256A1. Why make people acknowledge 18 USC 1001 if you’re never actually going to enforce it? Has anyone ever been fined or imprisoned for lying on a declaration?

  150. “In a related OED settlement, William Bollman agreed to a 24-month probationary period.”
    A slap on the wrist. If the USPTO attempted a more harsher penalty, Bollman would have fought and won, which is why the USPTO only went for the slap on the wrist.

    I cannot speak for Bollman, but if I was in shoes, unless someone was willing to help pay the attorney fees, I would have accepted the slap on the wrist and moved on. Fighting something that has no real effect on your practice isn’t worth the time, money, or aggravation. If he asked for help, I suspect someone (AIPLA? or some similar group) might have attempted to help him out.

    “A practitioner who submits an information disclosure statement without inspecting the submitted documents … is considered to have made a false certification to the Office.”
    I remember when this statement was made. It was total BS then and total BS now.

    The rule requires “an inquiry reasonable under the circumstances.” If a professional search firm says “X reference is relevant,” then I’ll believe them (and I won’t necessarily read the reference). If a foreign patent office cites X reference in a counterpart application,” then I’ll believe them. If a patent attorney handling the case in a litigation says these references were cited by opposing counsel, then I’ll believe that someone practicing patent law considered them relevant and cite them. Similarly, if my associate said that she read them and thought it was relevant, I will cite it.

    What is REASONABLE under the circumstances is to rely upon the opinions of patent professionals as to the relevance of a particular cited reference.

    Regardless, unless the USPTO wants to lose face in court, the best thing they can do is resort to wrist slapping. Will wrist slapping prevent allegedly bad behavior? Doubtful.

  151. PTO practitioners file lists of potential prior art in an IDS all the time simply because that art showed up in a prior art search and they would risk inequitable conduct allegations for not doing so if the patent is ever litigated. There is no valid legal basis for equating not ALSO reading and understanding all of that art with grounds for an attorney disciplinary proceeding, and it should be legally challenged. It is unreasonable on several grounds, including the fact that patent attorneys cannot possibly be technical experts on all the varied technical subjects they must deal with, it would add greatly to patent application costs for no good reason, and using threats of disciplinary actions as a tool to reduce prior art submissions to reduce work for the PTO is a clear misuse or abuse of such proceedings. Let us hope these particular proceedings were based on far more than that.

  152. he effectively admitted to making a false certification to the Office.

    What was the false statement?

  153. Drive 65 mph in a 55 mph zone and you probably will be OK. Drive 105 mph and you will draw the attention of law enforcement.

    Former Director Harry wanted to cut down on practitioners dumping art on the PTO. He believed that the practitioners should take a look at what they were filing to see if there was a reasonable basis for presenting the “paper” to the Office. The Bollman investigation appears to have been initiated on that basis. By filing “six boxes” of documents he caught OED’s attention. By admitting that he merely acted as a conduit for another person, he effectively admitted to making a false certification to the Office.

    Seems like Bollman thought he was doing 55 mph but he was driving a lot faster and wasn’t watching the speedometer.

    Too bad radar detectors are illegal in VA and DC.

  154. I wonder if Mr. Moatz’s view of “reasonable inquiry” is in any way related to the requirement of an Examiner to read the very same submitted references in order for the Examiner to say that the Examiner has “considered” the reference (how can you consider somethign you haven’t read?).

  155. The Question is "Is involvement in a related court case cause for a reasonable suspicion of materiality without more?" says:

    To be clear, I understood that.

    The inquiry reasonable under the circumstances was that the documents were used in a related court case. That is reasonable enough.

  156. Agreed that discipline imposed on Mr. Bollman is a travesty. Presumably, he wasn’t told of the protective order so why would he randomly inquire? In any case, it makes absolutely no sense to impose discipline when an attorney is following rule 56. How can there be a situation in which discipline is imposed on someone either way (whether they file the IDS or not)?

    Mr. Covey should be ashamed of himself.

  157. To be clear, the sanctions were not for violating Rule 56. Under Federal Circuit precedent, there is no violation of the duty of disclosure because the documents were actually filed.

    Here, the (stipulated) finding was that papers were presented to the USPTO without “an inquiry reasonable under the circumstances.”

  158. “In the other case, the attorney improperly submitted prior art documents without properly reading and reviewing the documents.”

    Je sus this guy is going up the river for doing what every attorney does in every other case? What, is that like the “speeding ticket” of the patent attorney world? Everyone does it but only a few get caught?

    “This finding against Bollman is a travesty.”

    Either that or perhaps you and the rest of your ilk should join him except for bad enforcement.

    “requesting of information from the practitioner about his or her alleged conduct, see Sec. 11.22(f)(1)(ii);”

    Cite David Boundy’s proposition about the paperwork reduction act and then plead the 5th. Lulz.

    “the practitioner has had the opportunity to present his or her side of the story.”

    You know what they should say? I’ll tell you what they should say: I concur with Leopold that this rule of law does not require actual reading of documents to be submitted. If the documents are presented in a relevant court case, that is material enough. This finding against Bollman is a travesty

    Just so I can lol.

  159. The Question is "Is involvement in a related court case cause for a reasonable suspicion of materiality without more?" says:

    37 CFR § 1.56 requires submission of items known to be material.

    I concur with Leopold that this rule of law does not require actual reading of documents to be submitted. If the documents are presented in a relevant court case, that is material enough. This finding against Bollman is a travesty.

  160. Note that the rule does not actually state that the practitioner must “read” the documents, and it doesn’t appear that the Bollman matter stands for any such rule. Rather, the rule requires that there be “an inquiry reasonable under the circumstances.” This obviously requires knowing what the documents are and how they relate to the patent at issue, but it could be quite reasonable to not read some or all of them, depending on the circumstances.

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