The chart above shows the average number of prior art references cited per patent, grouped by issue year. The chart is "stacked" with references cited by the examiner at the bottom and references cited by the applicant on-top.
The chart above shows the average number of prior art references cited per patent, grouped by issue year. The chart is "stacked" with references cited by the examiner at the bottom and references cited by the applicant on-top.
“operation of 1.56(b), there should be nothing to submit in an IDS prior to an office action, no?”
“disclosing a reference in an IDS is an admission under 1.56 that one or more claims is unpatentable, no?”
Another one confusing “material” – the phrase “inconsistent with an applicant’s position on patentability” does not mean that the material will deny the patent, but rather, only that the material needs to be looked at because it may be a factor.
The specific rules under an IDS have also been posted – try reading the (g) and (h) portions of the rule.
I don’t believe that anyone has pointed out the conflict that inheres in 37 CFR 1.56.
Specifically, 1.56(a) levies a duty to disclose information material to patentability. But 1.56(b) defines materiality as information that (1) establishes a prima facie case of unpatentability, or (2) refutes or is inconsistent with an applicant’s position on patentability.
So, if an attorney has submitted claims that it believes are patentable over the prior art, then by operation of 1.56(b), there should be nothing to submit in an IDS prior to an office action, no? (Put in reverse, disclosing a reference in an IDS is an admission under 1.56 that one or more claims is unpatentable, no? If not, then the reference is by definition not material.)
6 said:
“Now, if you want to chat further you’re going to have to answer my question that I’ve been asking you a few times now. How do you know if a reference is material if you haven’t read it? ”
I don’t want to chat further, but I’ll answer your question:
The test is whether an examiner might cite the reference in a 103 rejections. By that test, any reference is material. Examiners cite any document they can find that uses similar words to those used in my application.
So, If an inventor mentions a document it passes the test and gets cited.
If another examiner, for example on prosecuting the European or Japanese version of the application cites a document, it passes the test and gets cited.
If another examiner prosecuting a related application cites a document, it passes the test and gets cited.
I can easily deem all those documents as material under the –would an examiner cite this in a 103 rejection– test without ever looking at any of them.
You wanna raise the bar? Stop issuing nonsense 103 rejections.
“Good thing for us he doesn’t have to do any of that thinky-work.”
Fixed
Apparently that is too complicated for you to comprehend.
I hear 35 USC 103 is similarly complicated.
Sounds like 6 has a pretty tough job. Good thing for NWPA he doesn’t have to do any of that thinky-work.
So, the summary of the thread:
6, MM, and sods, have come up with no citation that there is any obligation on the applicant to weed an IDS. All of the citations indicate the obligation is on the examiner.
6, MM, and sods have disparaged my practice and my character based either on no knowledge or absurd conclusions based on me not doing their weeding of the IDSs.
6 has illustrated that he does not understand the relationship between the MPEP and 35 U.S.C.
I’d say once again, 6, MM, and sods have illustrated that they know very little to nothing about patent law and their opinion is about as useful as their prediction of Bilski was.
6, your posts are full of cheap shots and ridiculous logic.
Nothing requires that a reference cited in an IDS be material, the requirement is that a material reference be in an IDS. That is the way the system is set up. Apparently that is too complicated for you to comprehend.
That’s a good idea actually. Might just save me some time, thanks DIP.
“Second, No pity from me on this one! I have to manually type them in every time using EAST in the PSF!”
That’s kind of the point though, these kinds of things should and could easily be, automated. Just because your place of business doesn’t bother doesn’t mean that mine shouldn’t. We have 6000 people using this thing.
6,
Two things for you. First, cut and paste the raw data into a word processor or notepad program and do a find and replace on all the , and / characters. Replace ’em with nothing. Ctrl-H command if it isn’t in the pull down menu.
(Or just leave the commas in and pop ’em into the BRS window and put a left and right paranthesis around all of ’em and then use the .pn. command. – I’m pretty sure this works…)
Second, No pity from me on this one! I have to manually type them in every time using EAST in the PSF!
DIP
Not to mention that deleting the “,” ‘s often leads to a mistaken hitting of the delete key and erasing one of the numbers, thus making you go back to replace that number from the IDS.
On the whole, if the IDS isn’t over 50 references or so and you’re decent with a keypad, you may as well just type them in manually.
“After a non-patent reference is scanned in, it can be OCR’d quite accurately in most cases.”
OCRing has one big ol’ problem, as well as the secondary problem of the OCR being done to include all the fin “,” ‘s that people just have to put in. You know that EAST doesn’t like that sht if you use ISR, so you have to delete them all by hand (may as well have just typed the whole number out if you’re good with a keypad). And EAST doesn’t like the commas in normal search mode because it will bring up all the references that include that patent number (i.e. all the patents that cite to each of the references you want to look at). But the worst thing which I mentioned above is that despite the fact that it is “quite accurate” it isn’t fool proof so you still end up having to check off each reference individually if you really do a good job. If you don’t do a good job you may as well just say you looked at them and have barely perused their titles/Fig on the front.
If people would stop fin putting “,” ‘s and “/” ‘s in USpubs then it would make OCRing much easier. They should change the formating requirements for IDS’s. Or, as a buddy of mine keeps reminding me, simply make IDS’s be digitally submitted.
“The difference between your client and me is that your client is an expert in a field and I am not.”
The real problem underlying NWPA’s practice.
I perused your posts for an answer to my question NWPA, but since there doesn’t seem to be one, I suppose it is just too hard to answer. Ping, I note, did not answer my question and your reference to him doesn’t answer the question any more than complete silence.
“The applicant should not have to write a thesis on the subject to get a patent.”
Citing appropriate references is hardly writing a thesis.
“The difference between your client and me is that your client is an expert in a field and I am not.”
The real problem underlying NWPA’s practice.
I perused your posts for an answer to my question NWPA, but since there doesn’t seem to be one, I suppose it is just too hard to answer. Ping, I note, did not answer my question and your reference to him doesn’t answer the question any more than complete silence.
“The applicant should not have to write a thesis on the subject to get a patent.”
Citing appropriate references is hardly writing a thesis.
Watch out for my AHEM CHq CHq clear my throat commentary. I can go clear across a room… BULLS EYE
Sarah, I have no idea what you are talking about. It sounds like you are disturbed, but without facts it is hard to make any sense of what you are saying.
I should say that if the inventor said here is 3 references those are the only ones that are material, I’d say fine, and submit the 3 references. I’d probably document the process we went through.
After taking every liberty I can imagine from me, including Water for a year, so my poor Husband 60 plus could tote it so we could live. Why was the liberty of voting not taken from me? From the very Forum that decided my fate, without my knowledge or consent?
For fear of losing that right too vote, I’ll pass on further comment. Because obviously the free speech I am entitled to has also been denied.
A valid question(s) that begs an answer.
How can a Case be heard in a Court without all the facts?
And how can a decision be made to chain a person for 15 years, for no other reason but to hide the Crimes commited against her?
Do any of you have any Idea how many Jobs I lost because of the third set? Ask them!
>> If, as you say, the PTO Examiners know the art
I said they should know their art unit. And, the PTO would be a better place if the art units had people like your friend as researchers to help the examiners.
Interesting case MaxDrei. Here is what I would do.
I would write the claims and get a good idea what the application was going to look like.
I would explain to the client the duty of disclosure and materiality with respect to the claims, and then ask the client to providde me a list of the references the client believes is material. I would give the client guidance on the meaning of cumulative. If the client came back and said, well what about if I chose the most relevant 50 references. I would say, that may be a good start. Chose the 50 and then look outside that group to see if you think any of the others are not cumulative. Include them if they aren’t cumulative or chose a paper that surveys the field to make them cumulative. And, chose later papers that include the art of the earlier papers.
I would likely refine this advice so that the client could give me his/her list. I would likely not read them and file an IDS. I may look through them to make sure that I think the claims are good.
In effect, I would ask my client to create a search report for the patent application. I’d probably in this case let the IDS go north of 100 if the client didn’t want to spend time on it.
The difference between your client and me is that your client is an expert in a field and I am not. That is the key to understanding these IDS wars. An expert can prune fairly and quickly. An attorney cannot. The PTO needs to be the expert to examine applications. They cannot and should not rely on the applicants.
The applicants duty is really related to not what is known in the field as Kappo would have forced, but a safeguard against special knowledge that may be hard for the examiner to find or know. The applicant should not have to write a thesis on the subject to get a patent.
NWPA writes:
“The fact is that there is always a way to game the system except for submitting every reference that comes to your attention. If the examiners knew their art units as well as they should, this would not be a problem”
I have a client that watches A publications in its field of interest. This it has been doing for as long as I can remember (in excess of 15 years, ie, 180 months). Every month it has a pile of about 50 abstracts to look through (it is a field in which many competitors file assiduously).
Night, your advice please. With the new app it will file next week, should it hand the PTO Examiner a list of 9000 references (even though we think we know the art quite well)? If, as you say, the PTO Examiners know the art, what is the point, except to protect against accusations of IC?
Or perhaps it should better terminate its watching search? Only thing it, it is the watching search that allows me to draft the new apps knowing already what is the closest art, acknowledging it, and setting the invention in the context of the closest art.
What do you think?
Interesting. The incivility you show toward others is unbecoming. Patents are suppose to set out the metes and bounds of the invention in such a manner that a person of ordinary skill in the art can make and use the invention.
ping said something is affecting both sides.
Publication of 100% of all US applications coupled with skyrocketing numbers of applications is my guess.
The fact is that in MM’s little hypo an attorney got a search perfomred and didn’t like the search results, and then performed another search and didn’t disclose a material reference in the first search result. Doesn’t sound good to me.
Consider that attorneys could get large search results to mask not disclosing material references.
The fact is that there is always a way to game the system except for submitting every reference that comes to your attention. If the examiners knew their art units as well as they should, this would not be a problem.
>>Fricken $tupid post there Mooney!
There I fixed it for you Ned.
Sheesh, MM, just weed and keep your lips pressed together.
link to patentlyo.com
Fricken excellent post there Mooney!
Wait, you’re saying that changing the merits of the charge won’t preclude people deliberately bringing meritless charges?
I don’t think he’s saying that the result would not obtian, but that there is a proper way to preclude meritless IC charges, and that changing the law on IC is not the proper way. No doubt, Malcolm thinks that the “proper way” is the one that is most punitive to patent applicants. Perhaps jail time?
Let’s see a hypo that is more realistic.
1. Get a disclosure from big corp.
2. Write some initial claims.
3. Perform a search.
4. Get back 40 references.
5. Amend and finalize the claims while taking a close look at 7 of the 40 references and skimming 33 of references. You have zoomed in on two or three things the prior art doesn’t show and feel good.
6. Write application.
7. File IDS with all 40 references for the following reasons:
(a) you have no proactive duty to weed. Your client should not have to pay you to weed.
(b) The person you paid to do a search thought they were material so you include them, because you aren’t sure if there may be something in one of them that SOMEONE with a litigation budget may be able to make an arugment that the references is material to patentability.
(c) fairness to the examiner as they were in the search so maybe he/she can find something in them that you didn’t see.
In fact, there is no reason not to include them and every reason to include them. The only reason I’ve read from this blog is that somehow they know that I would do a better job on the application if I weeded for them.
You see, the way to think about this is that I am submitting those references that I became aware of in the course of preparing an application. Quite reaonable to submit them all. It would be a different story if I intentionally inflated the number of references by say performing a search myself and adding a few 100 references just to make it harder for the examiner. That would be wrong.
Malcolm: Lionel, do you think that the proper way to preclude meritless IC charges such as this one is to change the law regarding what constitutes IC? If so, you’re wrong.
Wait, you’re saying that changing the merits of the charge won’t preclude people deliberately bringing meritless charges?
Seems a little far-fetched.
Lionel Everyone you download and don’t submit could be used to support an IC claim in court.
Likewise if you hire a search firm and they return to you X number of references per your instructions, any you do not submit could be used in an IC claim in court.
If you don’t read every reference in your possession entirely, you are risking the possibility of missing material information if you do not submit it.
Let me make this more clear for you Lionel. Let’s say I do a search and it’s too broad. It yields 1200 references. I don’t even look at it because it’s too many docs to wade through. But the results are there. I do a narrower search which yields 600 references. Based on the titles and/or abstracts and/or “relevance” determined by the computer, I pick 30 to look more closely. Ultimately, I submit 20.
During discovery, the plaintiffs attorneys do a crappy job and all the searches are revealed to the defense. Some unfortunate 1st year is given the task of reading all 1200 references in the first search and lo and behold finds a reference obtained only by that search which is non-cumulative and material relative to the 20 references I disclosed. Based on all of the facts above (obtained via a deposition of yours truly and answers to interrogatories), the defense mounts an IC charge which is dismissed on summary judgment.
Lionel, do you think that I was wrong not to disclose the 1200 references because it would have prevented the IC charge? If so, you’re mistaken. Lionel, do you think that the proper way to preclude meritless IC charges such as this one is to change the law regarding what constitutes IC? If so, you’re wrong.
Perhaps you need to get involved in some litigation again to remember how the game works.
Does the PTO have a tool to search references cited in an IDS?
In theory, yes. After a non-patent reference is scanned in, it can be OCR’d quite accurately in most cases. Many widely used document-storage databases can search stored OCR’d documents just as they search typical text (e.g., MS Word) documents.
“Capability to perform a limited keyword search on submitted references (and perhaps other references already identified as pertinent) would be helpful.”
Further, I’d liek to see a tool that llows keyword searching of references citing to and cited by a particular reference or set of references. This tool would also help applicants performing prefiling patent searches and other searches. Google patents helpfully serves up list and links to each patent cited in and cited by a particular patent, and the ability to keyword serch them individually, but I’d like to be able to search them as a group so I can avoid clicking on and searching the ones that aren’t relevant. Ability to keyword search file histories would also be nice.
Who’d a thunk I’m a character assasinator. Never in my whole life did i ever dream this would happen
“I wonder if an implication that anybody is an examiner, coming from anybody, counts as “character assassination”.
Fixed.
IANAE: look back at your posts and the way you characterize my behavior and my practices. Sheesh. As if you are the injuried party.
NWPA:
(1) I wonder if an implication that I am an examiner, coming from you, counts as “character assassination”.
(2) Thank you for your expert legal opinion. I’m surprised you bothered to give it, considering that I don’t expect to be billed. That’s time you could have spent weeding.
(3) Same to you.
Ned Said: Does the PTO have a tool to search references cited in an IDS?
DDC replies: Ned, I have offered this suggestion to folks before, and I think that it is a good one. It is usually a waste of time to fully read-through every reference submitted by the applicants. However, it is also probably folly to entirely ignore those references. Capability to perform a limited keyword search on submitted references (and perhaps other references already identified as pertinent) would be helpful.
IANAE:
(1) We don’t have to do the weeding. You do. You have no cite that says otherwise. The MPEP instructs you to do the weeding.
(2) You don’t know what you are talking about regarding drafting patent applications.
(3) Shhhh. Weed and be happy you have a job on the backs of our clients.
Does the PTO have a tool to search references cited in an IDS?
But everyhting we do as attorneys is a balancing of risks.
Attorneys don’t balance risks, they avoid risks. Specifically, the risk their client will not pay for these hours spent reviewing the IDS art so the examiner can do a better examination and get the client a better patent, and the associated risk that the attorney will see his time written off and fall short of his billable target or bonus threshold, or that the attorney may be held responsible for the client taking his business elsewhere because no other firm has ever billed him for that particular service.
Incremental differences in patent quality generally present negligible risk for the attorney. Even though that’s what the client usually thinks he’s paying “very well” for.
Fear is what drives IDS practice. Fear of losing clients and fear of exposing oneself to this “plague” of inequitable conduct litigation. Fear is a risk-avoidance mechanism. Balancing risks takes rational thought.
IANAE: there are so many cheap shots in there that I am not going to respond.
Only many years later, in the highly unlikely event that one of their patents gets litigated, in the even more highly unlikely event that one of them that was otherwise valid and infringed is held unenforceable, and in the also unlikely event that the rest of your profession isn’t wrong in its legal judgment in exactly the same way.
That’s a lot of “ifs.” But everyhting we do as attorneys is a balancing of risks. There’s a reason why practically all of my colleagues agree that the calculus weighs rather heavily on the side of “better safe than sorry,” amd cross site everything between related cases, including USPTO Office actions. I’ve seen more than one IDS filed by others with 1000+ references.
Lionel: No patent examiner (who is not taking ab huge loss on his hours) reads everything submitted in its entirety. Does not and will not happen.
I think your statement is equally true after my little amendment.
NWPA: I said it before that there is difference between knowing what isn’t there and knowing what is there.
You also said before that it was too hard for you to know how someone else might combine references under 103. Aren’t you really saying that an examiner or litigator might find a way to argue that your claims are invalid based on what you “knew” wasn’t there?
NWPA: I am paid for my legal judgment. My judgement is that me weeding the references is unnecessary work.
In your excellent legal judgment, exercising your excellent legal judgment to get your clients a better examination of the patents you used all your excellent legal judgment to draft is a waste of your excellent legal judgment?
NWPA: I could be sued by my clients if that legal judgment is wrong.
Only many years later, in the highly unlikely event that one of their patents gets litigated, in the even more highly unlikely event that one of them that was otherwise valid and infringed is held unenforceable, and in the also unlikely event that the rest of your profession isn’t wrong in its legal judgment in exactly the same way.
In the meantime, your clients will happily keep paying their bills as long as they don’t see line items like “reading 600 prior art references instead of telling my secretary to make a list of them for free, 29.7 hours”.
Your “legal opinion” is nothing more than “my clients probably won’t pay for this, and I probably won’t get sued for not doing it”, which is actually more of a business judgment. A sound one, but still.
>>6, I am an attorney. I am paid for my legal >>judgment. My judgement is that me weeding the >>references is unnecessary work. That is my >>legal opinion
And, 6, you should think about this for at least a week before responding. Think about what it means to be an attorney. That is my legal judgment. I could be sued by my clients if that legal judgment is wrong.
Now go weed and shhh.
>>And the illegality of making applicants do a >>search was settled in Tafas.
>>That be reality
What do you have to say to that 6? And, if you want me to keep chatting with you, then you answer why you think that I can only put a reference down on an IDS if I KNOW that it is material.
So, again, you sods, the PTO has never said it is our job to weed. It is your job to weed. Get over it. And don’t try to tell me how to do my job. I have excellent reviews from in-house counsel from many of the top tech. firms in this country. I know how to write a patent application and am paid very well for it.
6, I am an attorney. I am paid for my legal judgment. My judgement is that me weeding the references is unnecessary work. That is my legal opinion. Nothing you or anyone else has written on here changes that. That is reality.
What “did” wrote about 37 C.F.R. § 11.18(b) would change my opinion if what he said was accurate, but it is not. That statement was regarding whether we read papers that we signed. It was in response to partners saying that they had not read the paper and merely signed it.
6, if your job is not defined by 35 U.S.C. then why was the rule package not implemeeted? You have no clue and seem to dislike the fact that the law defines your job.
Any more nonsense you guys want to throw on the wall for me to wash off?
An observation for thought: Both the applicant and the office have retreated in the number of references cited. Most of the comments so far have dealt with only one side of this retreat. But obviously something is affecting both sides.
Perhaps with Kappos in charge, the patent world is edging away from the high levels of CYA and getting down to business of actually examining applications for patentability rather than the game of “no”.
Ned said: >>he doesn’t have a clue as to what is in the >>references except that someone thinks they may >>be relevant for some reason.
Ned I have a clue. I said it before that there is difference between knowing what isn’t there and knowing what is there. I.e. I figure out what the inventor did and then figure out a way to claim it and then look through the reference to see if there is a similar structure. It works well.
6 said: “How do you know if a reference is material”
Read what ping wrote 6. What I know is that it might be material, since it was cited in a search report. Someone thought it was material and since I hired the searcher it is reasonable for me to include it in the IDS.
Sorry the job of weeding is yours.
>>Did said: TO Discipline Director Harry Moatz >>repeated
Sorry, did, but that statement is meant for papers that are signed by us. Not references. I have never seen an opinion anywhere that said I had to read a reference filed in an IDS. If I did, then it would be necessary work and I would start doing it.
“Section 11.18(b)(2) is added to provide that a party submitting a paper certifies to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that the paper is not being presented for any improper purpose, that other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the establishment of new law, that allegations and factual contentions have evidentiary support, and that denials of factual contentions are warranted on the evidence or are reasonably based on a lack of information or belief.”
Sorry Chief – nowhere does it actually say what you think it days.
And the illegality of making applicants do a search was settled in Tafas.
That be reality.
“Reality determines that”
“How do you know if a reference is material”
Big fishbowl of red herrings.
What does 1.97(g) and 1.97(h) actually say?
(g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.
(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).
That be reality.
Harry Moatz has no idea of the magnitude of his statement. No patent attorney (who is not taking ab huge loss on his hours) reads everything submitted in its entirety. Does not and will not happen.
at the end of the first paragraph in my last post add “responsible for those.”
Malcolm,
If all you do is receive a list of titles in an online search, you are responsible for none of those until you look at them. However, if you are in physical possession of 600 references you better take the time to carefully review each one because you will be
Everyone you download and don’t submit could be used to support an IC claim in court.
Likewise if you hire a search firm and they return to you X number of references per your instructions, any you do not submit could be used in an IC claim in court.
If you don’t read every reference in your possession entirely, you are risking the possibility of missing material information if you do not submit it. And defense counsel will certainly spend the time to pore over the references to find any material ones you may have missed.
Did you really say that, so we have 20 or so related cases accumulating references. Someone files an IDS in a related case with 300+ references. I now have to file that IDS in my related case.
What the F am I to do?
I did, in fact, read the references. But it took me days. Do most attorneys have that luxury?
Night is a typical patent attorney. He cannot bill his client for the reading the references, but he does have to disclose them all because he doesn’t have a clue as to what is in the references except that someone thinks they may be relevant for some reason.
Now tell me, as I think I saw this somewhere, does the patent office have some automated tool to search references cited in an IDS? In a sense, this is reading them by quickly focusing in on the critical passages. I don’t have such a tool, but it would be a good investment.
TINLA, thanks for the link. It opens:
“TO Discipline Director Harry Moatz repeated his statements regarding a practitioner’s duty to make reasonably inquiry prior to submitting any papers to the USPTO. “Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper.” The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). ”
Now, given the requirements of the real world, this is impossible — which is why IDSs are becoming so large. As illustrated by Night Writer, modern searches are producing large numbers of references. The prosecuting attorney cannot read them all to exclude those completely irrelevant or cumulative. He has to disclose them all without reading them.
The world of IC and ethics is in conflict. One cannot comply with the irreconcilable orders of two masters, particularly where one is a vague and indefinite master and the other is one who pays the bills.
Posted by: Ned Heller | Jul 14, 2010 at 01:33 PM
There you go chief. Ned saying it’s impossible for patent attorneys to practice as required by CFR. IMO, too many practitioners refusing to comply with CFR is a huge contributor to the backlog @ PTO. Congress and PTO have plenty of blame as well, but a good sized piece of the pie is practitioners who take the attitude that (for whatever reason) they can’t be bothered with following the rules.
“Should I be doing work that I believe is not necessary (and in fact may be harmful) and billing them for it? ”
I’m pondering. Yes. Because it isn’t up to you what is necessary. Reality determines that sir, not you.
“Can you explain the relationship 6 and then tell us again that your job is not defined by the law.”
Sure, the relationship is that of a guidance document, the MPEP, and a collection of laws, or “the law”. That is the relationship of two separate and distinct entities.
Again, my “job” is defined by my PAP, and perhaps by my boss, nothing else. If you’d like to see my PAP, I can show it to you sometime I suppose, but it is no different than anyone else’s, I’m sure you’ve seen one before.
All clear?
“Funny my character feels very much alive.”
And you guys wonder how I get attorneys to admit things I want them to admit.
Now, if you want to chat further you’re going to have to answer my question that I’ve been asking you a few times now. How do you know if a reference is material if you haven’t read it?
NWPA and his detractors, there is no reason for ad hominem attacks on character.
I’m sure NWPA is a typical patent attorney conscious of clients and their bills.
6 and MM are government workers that feel underpaid and overqualified and thus are comfortable to work in accordance with their pay.
Now the IDS issue would go away if you get rid of IC absent a clear showing of ACTUAL INTENT, which is what is required in a finding of IC. Courts that opined on the possibility of “implying” intent without actually ruling on it have muddled the water for filing IDS.
Completely agree with NWPA regarding 103, it is impossible to find some types of combination without having a litigation budget allocated to filing a patent. Unless your client invents something truly revolutionary, like eternal life, there is no economic incentive to spend that type of money per application.
One thing to help IDS submissions for the reviewers, would be to indicate how a relevant piece of art came to the filer’s attention (e.g. self search or 3rd party information). This would at least serve to que examiners into what art may be important to read.
“follow the rules in the CFR”
cite please.
Ned Heller said
Now, given the requirements of the real world, this is impossible — which is why IDSs are becoming so large. As illustrated by Night Writer, modern searches are producing large numbers of references. The prosecuting attorney cannot read them all to exclude those completely irrelevant or cumulative. He has to disclose them all without reading them.
So it’s “impossible” for you as a patent attorney to follow the rules in the CFR. Wow.
I’m sure that too is the examiner’s fault, in your opinion.
“there was no character assassination”
Should he amend the charge to attempted character assassination?
Check US 7,730,945 for the number of prior art citations
Funny my character feels very much alive.
I guess that proves there was no character assassination after all.
Congratulations on your full recovery. You really are quite a character.
“I blame the examiner corps themselves”
LOL – right after blaming yourself, blame the worthless POPA who should know better.
Funny my character feels very much alive. I need a shower after interacting with you, MM, and Max, but other than that I am as fit as a fiddle.
You certainly are worked up about this.
Ponder this: I am an attorney representing clients. Should I be doing work that I believe is not necessary (and in fact may be harmful) and billing them for it?
Ponder this: I used in “accordance” with. The relationship between the MPEP and 35 U.S.C. is actually much stronger. Can you explain the relationship 6 and then tell us again that your job is not defined by the law.
“6, you must follow the MPEP by executive order. ”
So quote me some MPEP ya sorry arse.
“The MPEP must be in accordance with the law. So, your job is defined by the law. ”
Being in accordance with is not really the same as being defined by. But nice try at making a logical fallacy there.
Your character is dead NWPA. Have fun with that.
“On a practical level, 6, if you would dodge work you don’t have to do, then why do you think we should do work we don’t have to do?”
If you’ll be so kind as to answer the question I’ve put to you twice now you’ll notice that I’ve not been asking about any work you “don’t have to do”.
Besides my note about my dodging work was a simple “if I dodged work … then I wouldn’t feel bad about it” kind of a sentiment, I personally do not.
” And in reality, by and large, we won’t be paid for it either.”
Your failure to bill your client for work you do isn’t my business, that’s yours. I would. If they don’t like my prices then there would always be Eugene Quinn and the rest of your ilk to fall back on. Eventually I’d say I could separate the wheat applicants from the chaff.
“The one useful item out of your rant is that I think your pay per application should depend on how those IDSs. Not sure how to structure it, but it would be fair.”
If we were going to break it down like that we may as well break it down by search time, review time, etc. on forever.
Regarding pay, the thing is, I blame the examiner corps themselves for not having gone on strike with the implementation of any “production” system way back when. I suppose they probably would have if it hadn’t been implemented in increments.
The legacy systems that our country is burdened with sicken me.
Quite telling that you wish to impugn my ability to write a patent application based on whether or not I am willing to do your work in weeding out prior art. Let’s see–I am an attorney who has written many patent applications for many of the top technology companies in the country. And you have never written an application.
And, I told you to stop calling people tards. It makes you sound like you are 14.
6 ranted: >>The director’s duties are defined by the lawl, >>not mine. Tard.
6, you must follow the MPEP by executive order. The MPEP must be in accordance with the law. So, your job is defined by the law.
Wow, you PTO types really want us to do your job. Sorry, it is not our job, but your job. See above.
On a practical level, 6, if you would dodge work you don’t have to do, then why do you think we should do work we don’t have to do? And in reality, by and large, we won’t be paid for it either.
The one useful item out of your rant is that I think your pay per application should depend on how those IDSs. Not sure how to structure it, but it would be fair.
” You astound me with your ignorance and arrogance. That is their job defined by the law.”
Whereas you astound me with your ignorance and arrogance. Perhaps you can show me where the law defines our job as some such nonsense as you imply? Go ahead, quote it for me.
“How, prey tell, do you know something is >>material if you haven’t read it?
6, I hope you are pulling my chain. But, I’ll go through the motions.”
I’ll repeat the question for your dum b arse since apparently you couldn’t hear me the first time.
How, prey tell, do you know something is material if you haven’t read it?
This is in response to your stating:
“Applicants and attorneys should tell the examiner when we know that something is material”
Now go ahead, answer the question, how do you know something is material if you haven’t read it?
“MM and 6 you are shameful examples of government workers trying to dodge work.”
I don’t think you understand something tardface. My “job” is defined by my PAP, not some lawl. No matter what you might think. The director’s duties are defined by the lawl, not mine. Tard. Learn to read. As to “dodging” work, looking through an extra 500 references that I have to painstakingly verify each one of (without being paid extra like you are) sure, I’ll happily say that I’m “dodging” work that was never accounted for in mah pay check. I’ll “dodge” that kind of work all day long all day strong at any job. You want me to work? Pay me. It’s the same as at pretty much any job. Kind of like at your job. Kind of like, at everyone’s job.
“what I do is reasonable. ”
You should have said: “what I do is rtarded”.
“I know my job. I’d pit my applications against yours anytime. ”
You’ve demonstrate on this website practically ad infinitum that you know nothing. And I’d pit your applications against some of the attorneys whom I know do a good job anytime.
“You know it is easy to get angry when you make rational arguments that are based on law and are rejoined with character assassinations.”
Maybe if your character didn’t go out of his way to be a douche then he wouldn’t get assassinated.
“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)”
Yeah they should just strike that from the law and watch the backlog fall a couple thousand. Simple change, nobody gets hurt by it either.
“I usually only need to know what the prior art does not contain, not what it contains.”
Prey tell how you determine the former without knowing the later.
“The fact that my character comes under attack on this issue is pretty clear proof that the USPTO is a bunch of lazy sods.”
Nah, it’s just pretty clear proof that your character is so weak that it is easily assailed. Indeed, assassinated outright! I consider your character dead, if you ever had any character to begin with.
The two of you can sod off.
I have noticed that lots of things are really complicated. No substitute for the hard work of just learning how it is. Take spelling. Even that old favourite “exaggerate”.
If you choose not to submit a reference because it is cumulative you are taking a serious risk that buried in one of those references in a throw-away paragraph is something very material to your application.
OK, Lionel. Let’s say that I do a search, I get 600 hits, I cite 20 of them because I believe they are the most relevant documents (I actually selected 30 but after reading ten of them, I decided they were irrelvant) but among the 580 references that do not appear to be relevant there is a “throw away paragraph” that is “very material” to the application.
May I ask you: so what? Where is the IC?
NWPA 103 can be subjective and creative. How do I know how someone else may decide to combine references or use a reference for motivation. Way too complicated.
Yes, it’s way too complicated for you. I agree.
So, from the fact that I do not weed out applications for materiality, you conclude “you have apparently scrupulously avoided reading any prior art to your own applications.”
You certainly know your logic.
I’d pit my applications against yours anytime.
You’ve never read any of my applications that you know of, I’ve never read any of yours that I know of, and you have apparently scrupulously avoided reading any prior art to your own applications. And validity is so confusing, especially under 103. Yet you say yours are better than mine. Reminds me of a story.
Percy: You know, they do say that the Infanta’s eyes are more beautiful than the famous Stone of Galveston.
Edmund: Mm! … What?
Percy: The famous Stone of Galveston, My Lord.
Edmund: And what’s that, exactly?
Percy: Well, it’s a famous blue stone, and it comes … from Galveston.
Edmund: I see. And what about it?
Percy: Well, My Lord, the Infanta’s eyes are bluer than it, for a start.
Edmund: I see. And have you ever seen this stone?
Percy: (nods) No, not as such, My Lord, but I know a couple of people who have, and they say it’s very very blue indeed.
Edmund: And have these people seen the Infanta’s eyes?
Percy: No, I shouldn’t think so, My Lord.
Edmund: And neither have you, presumably.
Percy: No, My Lord.
Edmund: So, what you’re telling me, Percy, is that something you have never seen is slightly less blue than something else you have never seen.
Percy: (finally begins to grasp) Yes, My Lord.
“your job is to draft claims that are allowable over that reference, which seems to imply knowing what 103 rejections might be raised.”
Of course, what is missing from this view is that Applicants are only required to supply that which they may know (and contrary to the Nedism, are not required to search and/or examine their application.
Any view to the contrary, including somehow mystically knowing what BUI (broadest unreasonable interpretation) art will be forthcoming from the Office, is simply wrong.
>>From the way you post, Patent prosecution is hard. Let’s go shopping.
I know my job. I’d pit my applications against yours anytime.
The fact is what I am giving the examiner is what has been made aware to me during the writing of the application. That is reasonable. Try as you might to exagerate or mischaracterize my practice, what I do is reasonable.
What a twisted person you must be.
Exactly. Only a twisted person of dubious character like Max would ever resort to attacking someone else’s character.
Also, I heard a rumor that Max weighs the same as a duck.
IANAE: that is their job.
Yes, that is their job. But it’s also your job to disclose material references of which you are aware. That job is meant to keep you honest, but also to direct the examiner’s attention to what you (the applicant) think is relevant.
It’s not your job to submit an IDS with that low a signal/noise ratio, and you’re doing both your client and the PTO a disservice if – as you claim – you truly want better quality examination and allowance of only what ought to be allowed.
You also do our entire profession a disservice when you throw your hands in the air and complain that it’s too hard to figure out how a person may combine references. That actually is your job. Once you become aware of a reference that might go in an IDS, your job is to draft claims that are allowable over that reference, which seems to imply knowing what 103 rejections might be raised.
From the way you post, I wonder if you consider any part of the process to be your job. Perhaps you would rather mail the inventor’s completed disclosure form to the examiner, have him read it in its entirety, search the art, suggest what claims might be allowable (broad enough claims to suit your client, of course), and allow the case by examiner’s amendment.
Patent prosecution is hard. Let’s go shopping.
Max, you are a study in twisted bizarre logic. I take comfort in the fact that your character attacks are probably indicative of your own character and motivations. What a twisted person you must be.
You know it is easy to get angry when you make rational arguments that are based on law and are rejoined with character assassinations.
Why don’t you try to help our country and world return to an age of reason by playing fair and using logic and not ad hominem arguments. Have some respect for fair play and not just try to get what you want at the cost of losing civility.
Attaboy IANAE, don’t you agree ping? There’s your answer Night.
I earn my living from the patent system. My motive in using this blog is to condition attitudes so that readers are motivated to improve on the good and drive out the bad. The more the public thinks that the patent system is a “good thing” the more I can charge, for an hour of my time. IDS behaviour is not a shining example of optimal working of the patent system. What to do about it? Criticise it here. Ping, I am not “anti-patent”. Quite the contrary. Can you see it now?