As part of requests for either reexamination or accelerated examination, the submitter must include particular references to the relevant portions of cited prior art. The Peer-to-Patent project also plans to include a pin-cite approach to give the Examiner a genuine clue as to why particular references were cited. [A pin-cite is a law-school term for a citation to the location of the information within a document. In patent-lingo, this might be: Column 5, lines 12-55]
This leads to a question of whether pin-cite references are helpful to examiners, and whether they would lead to greater patent accuracy. Theoretically, a pin-cite should help ensure that the Examiner browses the most relevant portion of the cited art. In addition, the pin-cites may reduce the amount of time that the Examiner uses to pinpoint relevant portions — freeing up time for a more in-depth analysis or for a broader search strategy.
If these projects are successful, you can expect that the pin-cites will be required IDS practice within a few years.
Query:
- Do (will) pin cites help the examiners and lead to a higher quality examination of patent applications?
- Do any Examiners regularly request such information from the applicant? Under Star Fruits, an Examiner would certainly be within the law to require further information regarding the cited art. E.g., “For each pending claim, please identify relevant portions of each reference cited by the applicant.”
- As an applicant, how would you respond to such a request?
“Combine that with most Examiners who don’t understand the law they’re applying, and many Examiners who don’t understand English well enough to make coherent rejections or understand applicants’ responses, and the system is really broken.”
That’s what you get when you hire anybody off the street.
In all seriousness, I now tell clients that they will very likely have to appeal to get any reasonable protection. Any prosecution before the Examiner is now just to set up the appeal, i.e., get in all my arguments for and evidence of patentability. Its sad, but the current PTO leadership has created the most adversarial relationship with practitioners that I have ever seen. Combine that with most Examiners who don’t understand the law they’re applying, and many Examiners who don’t understand English well enough to make coherent rejections or understand applicants’ responses, and the system is really broken.
Let me step in here with Mary, Mr. 6. You are saying that it is mean for an attorney to recommend to his client to pursue an appeal when he thinks they have a good case, but it is not mean for an examiner to issue a bogus rejection with an incomplete response because he is saving the applicant money by forcing him to give up?
Or are you just yanking our tails?
(and I agree that the “newly created BPAI 112 2nd” is a very generous Christmas present to the examiners.)
I should add, I just used a newly created BPAI 112 2nd 🙂 This is going to be like shooting kittens in a barrel. Such cute applicants :).
Mary mary mary, I never said he “should”, I said it was an option. Why waste breath writing things into things I say? It’s a bad habit, and probably has permeated your professional work, I see this rampant amongst your peers. I suggest tending to that immediately. In any case, you’re the one telling him to spend money and hold out hope for an allowance for the period of time it takes an appeal to go through, not the examiner. The examiner is telling him not to spend money. Be honest, who’s the mean one here?
And Mary, what is easy for the examiner?
Einstein — be safe.
Mary,
Because 6 said so and this is the way to drive innovation in this country. Um, wait,…does sloppy examination and reject-reject-reject drive innovation?
Oh, never mind. Because 6 said so and he’s buying me another drink.
6, The client and I have already decided that the claims are patentable over the prior art, that the claims present commercially valuable patent protection, and that the examiner’s rejections are deficient. We have pointed out these deficiencies to the examiner in our Remarks and he has ignored our remarks. Why should the applicant abandon the application?
“Gee, 6, did the attorney’s reply consist simply of “The Examiner’s rejections have been considered but are not pursuasive”? ”
If it had I might not be considering eating some workflow points just to hold his reply nonresponsive a few hours before it goes abandoned. He likely just missed it so I suppose I’ll just send an advisory that says that the case still wouldn’t be in condition for allowance because all rejections have not been addressed. Also, how many afterfinal amendments are apps allowed to make? This is ridiculous, I don’t have time to consider more than one afterfinal, and send out advisory after advisory, unless I specifically tell him to file another one to put it in condition for allowance. These things take time.
Mary, what is easy for the examiner?
“When the examiner does not respond to Applicant’s arguments, Applicant must go to the time and expense of filing an appeal (or a petition to force the examiner to do his job.)”
Says whom? You’re simply not exploring all options. The 800lb gorilla in the room is at least one of your other options. ABANDONMENT. Oh, and the lesser known option, take the PTO to a district court.
“Clearly the best way to improve patent quality is to reject everything, right?”
Now you’re catching on.
“Funny you should mention that, I just had an attorney argue all rejections but one. Come on, how do you ignore the best rejection?” — 6, it is easy for the examiner, he just repeats the rejections and issues a final.
When the examiner does not respond to Applicant’s arguments, Applicant must go to the time and expense of filing an appeal (or a petition to force the examiner to do his job.)
Gee, 6, did the attorney’s reply consist simply of “The Examiner’s rejections have been considered but are not pursuasive”? Admit it, Examiners don’t even read responses anymore, they simply reiterate their previous rejections and hope the applicant runs out of money, patience, or both, and goes away. Clearly the best way to improve patent quality is to reject everything, right?
“123 — I agree; also, I find it frustrating when an examiner does not respond to each of my arguments”
Funny you should mention that, I just had an attorney argue all rejections but one. Come on, how do you ignore the best rejection?
“If I thought a reference precluded the patentability of a claim, I wouldn’t submit the claim.” I agree, 123
Thanks, Curious. Another point on citing prior art: If I thought a reference precluded the patentability of a claim, I wouldn’t submit the claim. In that light, I never know of any prior art that is relevant to the patentability of the claims I submit. I know, I know: the standard is what a “reasonable Examiner” would find relevant. Unfortunately, “reasonable Examiner” is an oxymoron, kind of like “efficient bureaucracy”.
123 — I agree; also, I find it frustrating when an examiner does not respond to each of my arguments
I have no sympathy with Examiners’ arguments that they don’t have the time to read both the application and the cited references. Simply put, that’s not my problem. Frankly, patent quality would increase and prosecution time would decrease if Examiners would take the time to understand the claimed inventions and issue legitimate first Office Actions instead of issuing factually incorrect and legally inadequate Actions that pin-cite to completely irrelevant sections of irrelevant prior art. I would be less annoyed if, after I explain to them how the prior art is irrelevant, they would drop the ridiculous rejections, but instead they copy-and-paste their original rejections and force me to appeal just to see if my clients are serious. Then they moot the appeal by reopening prosecution and issuing a decent Office Action. Any other prosecutors experiencing this?
Right on Jeff.
As to :
“Thus I was forced, in an IDS, to flood the examiner with 28 (most-likely) irrelevant references because of fear that during litigation an attorney of an infringer could look up the academic publication and then “data mine” the 28 references and find relevant material in some review article.”
I do that all the time, 102b’s pop up in my face so badly I can barely get rid of them. To be clear though, I’m usually data mining a reference that was cited in a reference that was close, but not spot on, to what I was looking for. I like citations to articles that specifically say in the title of the article what it is I’m looking for. For example, “Bicycles made of Ti alloys” when I’m looking for a bike frame made of Ti. I should tell you guys about the search I did the other night. The girl down the hall was having a problem with a certain claim. The issue was that combining one of a plethora of available references showing y was not possible since the available primary references used x and all references said y combined with x fails to work. Now, overlooking the fact that such a teaching is not a teaching away and thus should not prohibit her from making the 103 even though she was letting it, I proceeded to consult the interwebz. In any event, two googles later, 8 hours of work by her was overshadowed. 102b emerged from NPL as usual and she was happy. The article’s title: “Using x in the field of z”, spot on good man. No subclass search gives results as in your face as a google.
Also LOL necro
Complying with the AE search document guidelines does not necessarily mean compromising your client’s position.
The feedback that I’ve gotten from many clients when preparing AE search reports is that we should err on the side of inclusion, and provide detailed pinpoint citations for each element of the proposed claims.
This serves a two-fold purpose. First, the patent attorney has a chance to review a claim in light of the proposed prior art, and can modify the claim to overcome any potential problem art before the examiner gets a stab at it. At the same time, all relevant prior art can be cited in an IDS. This reduces at least some of the art that the examiner can use against you, as you have already attempted to work your claim around it.
Second, a purpose of the AE process is to efficiently and relatively quickly get your client’s patent application to allow. Thus, by doing much of the prior art review, and claim revisions up front before filing, you can potentially save your client the prosecution costs of having to argue multiple rejections.
This is just some of the feedback I’ve received from patent attorneys that we’ve conducted AE searches for.
Jeffrey Holden
Search Manager
Envision IP, Inc.
jeff.holden@envisionip.com
http://www.envisionip.com
Toll Free | (800) 218-1298
Fax | (641) 795-5351
In my litigation experience, an inequitable conduct defense was reflexively asserted. I can guarantee that if the patentee pin-cited a section and we saw a different cite that was at least as relevant, we’d pounce.
Also, there needn’t be one fatal misdirecting pin-citation. We’ve prevailed by catching the patentee in a web of missteps and questionable acts, no one of which could strike the mortal blow. With this possible new rule, the applicant would be pin-citing within several references, I’d have a nice box of building blocks handed to me in every case.
I share the sentiments above in wanting to make the Examiner’s lot easier. But I won’t compromise my client’s position in the process.
Zeke, it is true that litigation counsel [good ones, at least] will allege inequitable conduct if they find a reference that they believe that the applicant knew about and should have cited, but did not. Since a finding of inequitable conduct depends on the mental state of the inventor [did he intend to leave it out? why?] and the mental state is unknown to the defendant’s attorney at the beginning of the case, the claim is made. Since a finding of inequitable conduct makes the entire patent unenforceable, as SF notes [it is supposed to be a punishment for intentionally defrauding the patent office], a defendant’s attorney would be doing his client a disservice by not raising the defense if he had it.
BTW, in my experience, most courts [not all] the judge decides the issue of inequitable conduct, not the jury.
And yes, please keep in mind that anything you say in prosecution will be used against you by the defense attorney [pretty much all we have to work with is the patent and the prosecution history], so be very careful with any comments you make.
An interesting example of pinpoint cite failure is found in the USPTO citing the wrong page of Lemley and Moore’s article in BULR to justify changing the rules on continuing applications:
link to uspto.gov
In turn, Lemley and Moore’s pinpoint “cite” to Clarke within BULR is also notable.
Query: what happens to patent applicants who cite the wrong page, or cite to non-existent statements?
MaxDrei: The relative ease with which inequitable conduct can be alleged and understood may be one reason for its overuse. The primary reason is that inequitable conduct renders an entire patent unenforceable — even if the alleged inequitable conduct related to merely one claim. That makes inequitable conduct an extremely appealing route — especially where there are several asserted (or potentially assertable) claims.
Zeke, I think you know the answer already. I’m looking in from outside USA but it seems to me that your average jury member fancies his ability to discern the difference between equitable conduct and that which is (despicable)inequitable. But ask him to rule on whether the subject matter of a claim is 1) infringed or 2) novel or 3) obvious and he’s straight away flummoxed. So, OF COURSE, every litigator will run “inequitable conduct” in preference to any (dare I say it) CORE issues of (guess what) infringement and validity. Is the equitable tail here wagging the doggy substance of the matter?
Is it fair to say that litigation counsel will argue inequitable conduct regardless of what happened during prosecution?
Small correction to my previous post – anything you say or do during prosecution can and will be used against you during future litigation.
MaxDrei wrote “There is no requirement in EPO for Applicant to bring forward the most relevant art, and to pin cite.”
Therefore, you are not penalized for not disclosing a particularly relevant patent. I also don’t believe you are penalized in Europe for submitting a pin-cite where another passage in the same or a different document may turn out to be more relevant (at least arguably).
Here in the states, anything you say or do can and will be used against you during prosecution. I submit my IDS with no comments about the relevance of particular patents/documents.
If it came up in a search, I submit it if it is in any way related to the subject matter of my claims, even if I don’t think it relates to the specific invention being claimed because I am afraid of future litigators claiming that I committed inequitable conduct by not including it. I work in the electrical/mechanical/software arts, so its rare that I submit an IDS with more than ten patents/documents. If I have more than 20 I do risk weeding out the ones that were completely redundant or irrelevant so I won’t be accused of burying a particularly relevant document.
I also do not pin-cite for fear of being accused of misleading the Examiner. It’s rare that I have read every sentence of a reference I am submitting. For example, one thing I am afraid of is that there will be a couple throwaway paragraphs that aren’t the thrust of a reference, but that are much closer to what the client is trying to claim. God forbid, I point out some other section of the reference other than those paragraphs and some future litigator rakes me over the coals for having mislead the Examiner.
Also, most often cost/benefit analysis argues against substantial searching and review pre-filing, especially in-house.
Nobody wants to get invalid patents. I do believe you will get a stronger patent if the Examiner has reviewed the most relevant art. In the past, when I believed a document disclosed something close to what I was claiming, I have made the Examiner aware of it, sometimes in the very carefully worded background text of the application or during prosecution. Sometimes, the Examiner has used one almost completely irrelevant patent as his primary reference and I have noted that one of the secondary 103 references is actually much closer to the claimed invention. I very tactfully make the Examiner aware of this, often through a telephone interview.
“The MPEP already requires “pin-citing” of NPL (non-patent literature). See 37 CFR 1.98(b)…..each publication must be identified by publisher, author (if any), title, relevant pages of the publication, and date and place of publication.”
I was specifically instructed not to point to any area within the reference, but the cite the reference as a whole, which is for us is typically a journal article of reasonable length (4-10 pages) (AU 1600).
I would also note that an ISR does pin-cite, however the categorization of the reference is often incorrect, resulting from a mis-interpretation of the invention, claims, and/or art.
“Thus I was forced, in an IDS, to flood the examiner with 28 (most-likely) irrelevant references because of fear that during litigation an attorney of an infringer could look up the academic publication and then “data mine” the 28 references and find relevant material in some review article.”
Let me get this straight. You are not certain that the references are irrelevant to patentability but you would assume that they ARE irrelevant but for the likelihood that “an attorney of an infringer” would actually do the work which your client refuses to do or refuses to pay you to do.
And this is “idiotic.” I think I agree with your conclusion but for different reasons.
The MPEP already requires “pin-citing” of NPL (non-patent literature). See 37 CFR 1.98(b)…..each publication must be identified by publisher, author (if any), title, relevant pages of the publication, and date and place of publication.
MAX DREI –
I just saw your most recent comment about IDSing references in the EPO (my post was in response to your earlier comment) – this clears things up.
A follow-up to my last post:
recently I drafted a patent application for a local university.
The professor emailed me a preprint of an unpublished paper – the preprint had cited 30 references (academics LOVE citing references in scientific publications), most of which were quite irrelevant.
Because of the inequitable conduct rules, I was forced to IDS all 30 references, even if only one or 2 are really relevant (of course I listed the most relevant ones first – with no comment, though).
When I asked the professor which of the references are relevant, he said the first 2 are very relevant and that he hadn’t read most of the other 28 references (this is VERY common in academia – often they cite work of others as a courtesy and also to make it easier for the reader).
Thus I was forced, in an IDS, to flood the examiner with 28 (most-likely) irrelevant references because of fear that during litigation an attorney of an infringer could look up the academic publication and then “data mine” the 28 references and find relevant material in some review article.
This is just plain idiotic !!!
I am posting this from the point of view of a US patent agent who lives outside of the United States.
There should be a way where:
a) a PIN-cited section enjoys an even higher presumption of validitiy relative to the rest of the reference (especially if the PIN-cited section is short relative to the entire reference – this is just plain common sense);
b) there is no inequitable charge possible for neglecting to PIN-cite a section of a reference, or PIN-citing the ‘wrong’ section (maybe legislation could be passed for this) as long as the whole reference is IDS-ed. This will make it easier for honest prosecutors to get the ‘best prior art’ in front of the examiners without fear of Monday morning quarterback retribution from litigators of infringers who, of course, will have much more time to read the entire 500 page reference (only 5 pages are really relevant) to “data-mine” for something that may also be relevant and then use in litigation to invalidate a patent for inequitable conduct.
Don’t forget the litigator of an infringing company will have a MUCH LARGER time budget to go through the 500 page reference than the prosecutor or the inventor.
Under my modest proposal, the prosecutors would STILL have a motivation to cite the most relevant section (and 99% of the time we do know what the most relevant section is – the problem is the other 1% of the time) because by pin-citing the relevant section, it would be clear as day that the relevant section was cited “strongly” during Examination – this would give a hightened presumption of validity – it would be more difficult in court to argue against the patent that the overworked Examiner did not “really” get to see the relevant sections.
RIGHT NOW the trade-off is as follows: while I (a prosecutor) would REALLY like to pin-cite the relevant sections PRECISELY for this reason, I am afraid to pin-cite at all because a litigator (and we all know that litigation is VERY unpredictable) could start asking “why did you pin-cite section A and not section B, etc etc” Because I do not want my client to lose out, I pin-cite NOTHING – I just comply with the minimum requirements of the IDS. A pity – I also want to save time for overworked Examiners because I want them to do a better job examining my applications. I also want the Examiner to hit the best prior art “head on” as much as possible.
TO MAX DREI – your comment about the USA vs. the ‘rest of the world’ puzzled me – you are a European patent attorney -to the best of my knowledge (correct me if I am mistaken), in Europe there is no requirement to IDS references – this post related to IDSs (and the issue of inequitable conduct that is always implicit in IDS-related issues). OF COURSE common sense would dictate also pin-citing references – the hestitation to do this is fear of retribution under US law as I discussed in my post. Correct me if I am wrong – of course I am not a European patent attorney.
Dennis, it is quite difficult to compare civil law ROW with common law, adversarial USA. There is no requirement in EPO for Applicant to bring forward the most relevant art, and to pin cite. It’s just that, if Applicant wants a patent that is effective, after issue, it makes sense to show the EPO Exr the closest approach of the prior art. That’s what we do when drafting a patent application: voluntarily set the claimed subject matter in the context of the best prior art starting point. We just keep doing more of the same, in the interests of the client, through PTO prosecution.
The requirement for pin cites is already in the rules. Look at 37 CFR 1.104(c)(2): “In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable.”
I have found (particularly in the computer arts but elsewhere as well), the phrase “as nearly as practicable” has varying meaning. In certain instances, I have found that “as nearly as practicable” can mean 4 columns in a patent.
There may be certain art units in which pin cites are always used. However, in the art units I have been dealing with over the past couple of years, pin cites are few and far between (typically found in actions by new examiners who haven’t learned how to cut corners to make production).
A question and a comment. First, I would be interested in hearing from attorneys on whether the office actions they receive routinely have pin cites. In my area, biotech, I think most examiners treat claims individually and pin cite precisely where the limitation at issue is being met. Certainly I do and require my junior examiners to pin cite. Is this common or is this relatively rare?
Second, I agree with the 10yr examiner (and I’ve been doing it longer) that misleading tactics will be remembered, as will an attorney who cites the closest prior art and writes claims that are reasonable. I had one case where there were two near prior art references, one was submitted in English, the other was submitted in a foreign language. The foreign language document had an English equivalent which showed that it was a 102, whereas the other document was a 103. When these are embedded in about 100 references, it was quite annoying that I had to find the 102 document in my search, when a pin cite of the foreign language document would have led to it.
Would someone care to provide information regarding disclosure rules in the various jurisdictions. In what countries are no prior-art disclosures required? Where are pin cites required?
“With clear, succinct ideas of why Applicant thinks their specific device/computer/invention/ method is patentable over the very thick prior art, we will get to patentability much faster.”
Or at least we will get to the point of knowing if there is anything patentable in the disclosure sooner, rather than later.
My hats off to you, Examiner, for asking applicants what you are entitled to ask them.
this is why the MPEP now has section 1.105 requests for prior art. Not that I ever get meaningful responses to these requests. I take that back- I’ve had exactly one attorney respond to each ground of request with what I asked for: Inventor publications, use of product in marketplace, and specific improvements of the elected claims over the cited art.
With clear, succinct ideas of why Applicant thinks their specific device/computer/invention/ method is patentable over the very thick prior art, we will get to patentability much faster.
Want to lead me away from a relevant portion of the art? I’ll remember you, and your tactics.
The implanted patent screvenor’s fear has been that detailed or specific discussions of art cited to the PTO in an application IDS and/or in the specification background can lead to litigation accusations that allegedly even more relevant sections of that cited art were deliberately misleadingly not so disclosed, even if that was purely accidental, or only visible with hindsight in the creative minds of opposing counsel.
My commment above was made with the underlying assumption that one does not cite whole textbooks, encyclopedias, atlases or the Bible without narrowing the relevant portion down to a manageable set of pages. Rarely, if ever, have I cited an individual patent or article that was much more than twenty pages long, usually they are quite a bit shorter. But I do see the virtues of pin citing and understand that an examiner’s lot is not an easy one. Couldn’t this be voluntary, and include some sort of disclaimer? Maybe something to the effect that the prosecutor is drawing the examiner’s attention to sections of the reference believed to be particularly relevant without implying anything about the possible relevance of the remainder of the reference?
There’s a very simple reason pin cites are so crucial in an examiner’s action, and why they are much less important, and would likely raise more cost than benefit, in an applicant’s Information Disclosure Statement.
When an examienr dicusses a reference, it’s in the context of a contention by the examiner that there is a particularized element-by-element correspondence between the claim and particular teachings of the reference(s), and (for obviousness) a particular “motivation to combine” that is supported by substantial evidence, and “reasonable expectation of success” also supported by substantial evidence. The law requires the PTO to come forward with and specifically identify that evidence, to give an applicant a fair opportunity to rebut.
In contrast, when an applicant provides a reference in an Information Disclosure Statement, the applicant has (presumably, and most often actually) drafted or amended the claims so that the refernece is no longer dead-on relevant. So an applicant’s pin cites would be a non sequitur in most cases. (The exception is a very large reference – it’s relevant to narrow attention down to something analogous to a section or chapter in a book.) References in an applicant’s IDS are generally about as relevant as “A” references in an EP/PCT search report, which often do NOT have pin cites.
The reasons that pin cites in applicants’ disclosures are likely to raise far more cost than benefit were discussed in many of the public comments to the 2006 IDS Proposed Rule, at –
link to uspto.gov
Several of the above comments reflect a context bias – most appear to come from folks in jurisdictions where applicants are not required to disclose references. In these jurisdictions, in all contexts where references are discussed, OF COURSE you need pin cites.
If the responsibility for prosecuting/granting a patent is going to be thrust more and more upon the applicant… what do we need the patent office for?
How about a simple unreviewed invention registration system, so we can skip the duplication of effort and just go straight to litigation for the patents that have enough economic impact that folks are willing to fight over their scope/validity? Essentially, all the registration would do is establish priority dates.
Thats where this is heading.
If we skip the prosecution before the patent grant (its repeated during the litigation, anyway), we have avoided wasting all the effort/expense that goes into the 99.99% of patents that are never litigated. Would it end up with even more load upon the federal courts, less incentive for small fry to try and defend their patent grant? Of course. So much for encouraging innovation…..
In the alternative, if the patent grant under the existing framework is to mean anything… I’m in the “do you own job, patent office” camp. Increase application fees (or just use all the fees that are collected to actually prosecute patents!) to the point where Examiners (as many as are needed) give a solid/timely review to each application. Then patents as issued will have value, without requiring litigation.
Keep in mind that examiners have something like 4 hours to read an entire application, including every claim, search through every reference on earth, and apply them. Pointing out elements you concede might be a good way to highlight the allowable subject matter, and streamline prosecution for everyone involved. Or if an element could be read as a claimed element, pre-empt the rejection by starting with arguments against its interpretation as such. This saves you from having to make that same argument after a non-final rejection, giving you more actual chances to argue effectively during prosecution. I can’t tell you how many times an IDS comes in with 100 references, on average containing at least 25 pages. Now, I’m a quick read, but 4 hours is not enough time to read, consider and compare 2500 pages.
For those who wish to submit references to be “considered as a whole in that it wholly fails to teach or suggest each element of my claims”. I would save it. I don’t have time to read up on what the applicant chooses to present as the state of the art. IDS’s are for relevent art only. If there is none, then that’s what you should submit. Otherwise you are essentially saying, “Please read the dictionary and the Bible, and M-R of the encyclopedia, and then treat my claims”
Pin cites are everywhere you look, outside USA. See any PCT search report. Of course they make examination quicker and better. How could they do otherwise? The rest of the world can’t be wrong yet again, can it? No wonder USPTO Exrs have latched onto the idea to ask for them. Of course I would tell the Exr. I WANT him/her to consider the most relevant parts of the doc, don’t I, at a time of my choosing, and helped by my spin on the reference? Would I fear an “inequitable conduct” attack. Yes, see StepBack, but no more than in the case of any other response. As yielding the pin cite is the only honest and reasonable course of action, then the question whether or not to give it is a “no brainer”, isn’t it? In a common law jurisdiction, it pays to be honest and reasonable, right? Don’t get me wrong. The only thing that keeps international patent players from cheating is English common law equity, so may it play an ever-present, fearsome (and therefore only very occasionally decisive) role in the adjudication of patent disputes.
Regarding having to offer pin cites in IDS references: I think this would be a fair requirement for lengthy references containing portions that are irrelevent to the application. It seems pretty fair for the applicant, who provides and is most familiar with the reference, to point out the relevent sections and reduce the burden on the examiner of having to wade through the lengthy irrelevent parts of the reference, which the Examiner might not use for a rejection anyway. What would be great is if the PTO would provide an easy rule as to what references qualified as “lengthy.”
That being said, a request like “[f]or each pending claim, please identify relevant portions of each reference cited by the applicant” seems too much aid for the Examiner, especially if the “relevent portions” must be identified by line. The requested level of specificity effectively requires the Applicant to examine his own claims and really opens up the door to inequitable conduct.
Further, many references I submit are wholly lacking an element in the claims (hence I included that element in the claims). It is difficult to point to a specific part of the reference to prove a negative. Rather, I want the reference considered as a whole in that it wholly fails to teach or suggest each element of my claims.
Lastly, what if I provide a lengthy foreign reference unnavailable in English and a short statement of its relevence (37 CFR 1.98(a)(2)-(3))? How do I to point out the relevent portions? Do I have to translate it now?
Mathew Powers, a well known IP litigator here in the San Francisco area once gave a lecture for patent prosecutors where he said –I’m paraphrasing– You prosecutors are screwed. No matter what you do, we litigators will play a heads we win/tails you lose game. If you supply a mountain of references in your IDS we will accuse of playing hide the snowball in an avalanche. If you supply only a short list, we will accuse you of having withheld the most important reference. Either way you lose.
I’m not so sure of that.
I’m sorely tempted to include in my IDS filings a statement like: “It is of across understood that in future litigation, should such happen, an adverse attorney may play a game of heads I win/tails you lose by accusing Applicant of either supplying too much information or too little information on the basis of pure hindsight and Monday morning quarterbacking. This IDS is to be received with an understanding that Applicant is trying to comply in a reasonable way with bureaucratic demands that are often impossible to meet because no one can know all that is contained in all the textbooks, newspapers, magazines, etc. ever in their possession or in a local library.”
Let’s be sure to read that one out loud to the judge and jury as well Mr. Litigator. Then they can make an “informed” decision.
“E.g., “For each pending claim, please identify relevant portions of each reference cited by the applicant.” ”
I am confused about that. If I believed that my pending claim is different from prior art, how could I identify relevant portions of cited reference?
I think I would like to use pin-cite to help examiner to read prior art detailedly and know that the elements on our claim are quite different from the prior art.
crs — As a litigator, I would certainly use this argument as a basis for a claim of inequitable conduct, arguing that the applicant was leading the examiner away from the elevant portion of the claim. I would also ascribe some significance, in a Markman or some other motion in which the prosecution history was relevant, to the particular portions of the prior art cited by the applicant [if helpful].
Thus, I would advise prosecutors to be careful in using these pin cites, as they can and will be used against them.
When I first came into the patent world, I was astonished by the way “references” are handled here. A vague arm-wave in the direction of a document is somehow considered a citation adequate enough. Nevermind this might entail the poor person you are giving your “reference” to having to try and wade through a hundred – or more – pages of text to locate what you are talking about.
Eg. crs says ‘E.g., “For each pending claim, please identify relevant portions of each reference cited by the applicant.” ”
If I had any guts I’d respond to such a request by asking the examiner to do his own job. But I don’t like to ruffle examiners unecessarily.’
IMO, this attitude is just plain wrong on so many levels. The examiner should be requiring a chapter and verse citation. Anything less is IMO unreasonable.
What other field is so vague? With my historian’s hat on, I expect to see a page refernce at the minium (to a modern work), and line reference to an ancient one. I do not expect to see some blanket assertion that it can be found in “book X” with no more.
With my chemist’s hat on, I can see that some chemistry refences LOOK fairly vague – citing a single document – but the document will be only 2 or sometimes 4 pages long, and the bit you need is always in the same section: “results”.
Compare this with most prior art patent references – other patents. These are usually more like 50 pages long, and relevant information is speard throughout them.
Regards,
Luke Ueda-Sarson
What is a pin-cite? I have never heard of this.
“E.g., “For each pending claim, please identify relevant portions of each reference cited by the applicant.” ”
If I had any guts I’d respond to such a request by asking the examiner to do his own job. But I don’t like to ruffle examiners unecessarily.
And what fertile fields for faux fraud. In other words, anybody who doesn’t like your patent will have a field day mining your references for the material you didn’t cite and trying to demonstrate that you should have known you should have…
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