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:
- Preliminary screening of the allegations made against the practitioner, see Sec. 11.22(d);
- requesting of information from the practitioner about his or her alleged conduct, see Sec. 11.22(f)(1)(ii);
- conducting a thorough investigation after providing the practitioner an opportunity to respond to the allegations, see Sec. 11.22(a); and
- 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.
“troll garb@ge alert (TGA)”
Yes, because the rules are arbitrary, right Inviting?
T O O L
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.
12:24 – troll garb@ge alert (TGA)
“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.
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.
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.
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.
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?
We are all one giant Troll – you will be assimilated.
Troll, under just HOW MANY pseudonyms do you post?
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.
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.
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!
“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.”
“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?
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.
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.
you still have not answered my straight forward questions.
I apologize, but I can’t remember the exact date I stopped beating my wife.
“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?
Too late!
Victory is mine.
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.
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?
lol – oops.
How about:
“You vastly over-estimate your ability to understand who you are talking to.”
“You vastly over-estimate who you are talking to.”
Agreed.
You vastly over-estimate who you are talking to.
But thanks for playing.
You vastly over-estimate yourself, anon.
You are unaware of what you don’t know.
“but that nobody has yet pointed ”
snort, chuckle, um yeah sure, let’s go with that.
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.
why should the Moatz quote apply to someone not responsible for examination
Okay, I give up. Tell me why. I have absolutely no idea.
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.
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.
“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.
“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).
I am pushing IANAE to take a clear position.
What exactly is unclear to you about my position?
Try to stay on topic Malcolm.
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.
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.
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?
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.
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.
The Teacher gets schooled twice today.
I LOVE IT.
Now back to your tower IANAE, as being forthright is not within your capabilities.
“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.
anon–
I haven’t encountered your preferred mode of interaction since law school. How juvenile.
Yes, they do.
Your attempted one-line negation is worthless, and I’m not going to waste my time addressing it.
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.
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.
““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?
“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.
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.
How does USPTO investigate allegations of Examiner misconduct? Any one utilize Patent Ombudsman program – what was your experience?
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.
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.
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.
Malcolm,
Your guess, as usual, would be wrong.
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.
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.
(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.
Your comments at 11:10 and 11:11 still don’t get you there.
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).
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?
Ned,
See MPEP 724 (once again, thanks to Red Monkey).
IBP,
Your position presupposes a function of evaluation and examination that simply is not there.
See Tafas.
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).
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.
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.
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.
How can published documents reasonably be considered confidential?
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.
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
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.
“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.
Yes, but can you supply a reason why?
I have tried in my comments of 11:10am and 11:11am
See comments at 11:10 and 11:11am
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.
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.
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.
“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.
Does “consideration” necessarily imply that the examiner must read (and read entirely) the reference?
What? No, of course not. What a ridiculous idea.
“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.
Please tell me either that yours is not a serious inquiry, or that you are not an attorney.
> 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.