IDS Rules Moving Forward

The White House has now approved the PTO’s proposed changes to the Information Disclosure Statement Requirements “and other related matters.”  The final rules have not been made public, however, the rules are expected to:

  • impose a requirement for the personal review of, and to provide information about, certain citations;
  • permit only timely IDS submissions;
  • only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted
  • permit third parties to submit prior art up until the mailing of a notice of allowance after application publication;
  • no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE);
  • permit certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and
  • revise the protest rule for dealing with unsolicited information received from third parties.

The continuation rules were finally published about six-weeks after OMB approval. If the PTO follows a similar schedule, expect a notice in later January 2008 regarding additional implementation of IDS requirements. 

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117 thoughts on “IDS Rules Moving Forward

  1. any update on these rules? Have they been implemented? if not, when are they expected to be implemented.

  2. Anonymous (the one communicating with JohnG) is right on the money.
    Within six months of coming into the patent office I, and others that came into the patent office after the big hiring done in the late 90’s, were easily able to tell the ship was sinking. Every single change made at the PTO since then has been 3 steps backwards, maybe 1 step forward if lucky (such as in the telework and day 2 initiative changes).

    Classifiers abolished? The only good thing about this is that some of them were unskilled idiots who couldn’t tell whether something was a machine or the computer to control it, so they would send machines to the computer/electrical engineers with familiarity in controls, and they would send computer control programs to mechanical engineers who searched machines exclusively. The bad thing was they didn’t abolish this system to replace it with a better one. They just abolished it.

    Hours per BD (For those not familiar with internal PTO lingo, this is the number of hours an Examiner gets for the entire case.) This hasn’t been changed since the last time Congress took a look at it in the late 1970s. I can guarantee you that in every technological discipline on the fact of the earth, it takes more than ten times as much time for an Examiner to look through the relevant art and make a descision resulting in a high-quality examination in 2007 as it did in the 1970s. Automated search systems only go so far. Hell, I don’t even know if those help out all that much, with all the additional burdens placed on examiners these days, with pre-appeal briefs, supervisors reluctant to approve non-examining time for interviews and quality restrictions, to name a few.

    The bottom line is the patent system isn’t going to get better in terms of quality or speed until Congress bases the system on doing a quality job upfront. Sure, it’s written in the MPEP that the first office action should be a complete review of the prior art with a decision that can either support Final or Allowance upon amendment. That section has absolutely no bite to it’s bark when most Examiners can review only about 10% of the prior art they need to in order to do that quality job, given their individual time per art. The other problem with this is that any increase in hours per BD is going to mean larger backlog (although, hypothetically the backlog should get better given a much better quality job done on the first action due to the fact that final decisions – abandonment/allowance, will be coming sooner). This means a much larger workforce.

    If I were offered Commissioner of the USPTO, I’d turn it down. Congress isn’t going to approve the things that will make the USPTO into what the various parties involved in the patent process want it to be. The ship is now below water.

  3. “I think that all of the funds were spent preparing those confusing claims and continuation rules.”

    Like I stated, “if caring, knowledgeable individuals had managed the funds.” If I were to run that place in good faith, I would like to have the funds I would need.

  4. anonymous,

    Thanks again. I agree that there are several pieces to this puzzle, and that the present punishing and humiliating level of review is not one of them.

    Mr. Dudas gloats over his low allowance rate. This is sad because the means by which he has achieved this “goal” is a major cause of ballooning backlog.

    My first SPE used to say with a smile that he dreamed of the day he would have only primary examiners working for him. What he was hinting at was that his job would be relatively easy because he trusted his primaries to perform as professionals.

    Now, long-time examiners can’t wait to retire. They are upset like never before. As you alluded to above, alienating your highest producers is terribly misguided. It appears the PTO’s lack of respect for career examining professionals comes from viewing the patent examiner position as a temporary one.

    Regarding funds from Congress, I believe having a “blank check” would have been a good thing if caring, knowledgeable individuals had managed the funds. Unfortunately, the PTO has squandered opportunities, as evident from the catastrophic expansion of the backlog.

    The money should have been spent on reinvigorating classification and increasing examiner specialization within an adequately classified collection.

    After that, the examiner performance plan should have been revised to give close scrutiny to “actions per disposal.”

    Also, all current cyclic and subjective review practices should be immediately abolished and replaced with a reasonable review mechanism, such as a review of a sampled number of allowed cases (like the 4-5% in the past).

    And they must start treating career examiners as professionals. The younger ones might stick around.

  5. johng,

    that is why in a labor negotiation with POPA, the single most important authority the Office desire is the ability to fire someone quickly and efficiently. They would come up with impossible quality goal like two patentablity errors then you go (link to popa.org), not to improve quality, but to instill fear into the examiner corp (i know someone who got slapped with patentability error on a non-antecedent basis on a dependent claim). I also heard this from someone that whoever wanted to be SPE is that he/she must learn to fire some low producer. There is also a lot more of number massaging from the management like having someone new hire in probation wont count as a personal in production (basically the SPE get the count percentage from this new examiner for free, btw, i dont know whether this is a fact), etc. The point is that it is not in the interest of the management to have a low attrition rate. The office must have some new examiners in order to balance out the impossible production goal that is set for primary examiners. Personally , I think it is a waste of money because it is expensive to hire someone new and you are gambling on the fact whether that new examiner will provide better production than the one that he/she replaces and whether he/she will stay (it takes about 5 years for he/she to get to the production level as a primary). The climate of fear also make the primary examiner less likely to stay beyond his/her year of retiring. Personally, I believe the previous “reform” was done in haste and the bar should have thought out more clearly when endorsing the PTO with a blank check from Congress for improving quality and hiring new examiners. Instead of using money to provide more hours for searching, training, office action writing (i can use a lot more time writing up office action), the office put more money on the review process. The trouble with this approach, especially in the examination process, is that the more reviewers look at a case, the more mistakes they going to find. That is just the nature of this job. I give you an example, if an examiner allows a broad claim, the SPE reviewes the case as second pair of eyes don’t want to allow it, he/she will send emails to a bunch of other SPEs to look for a way to knock down that broad claim. See, the examiner has no chance against so many other reviewers looking at the case for that single claim. The office takes this as an opportunity to claim for more “review resources” to put in this endless circle of reviews. At the end, you see the effect of equating less allowed patents with improve quality as recently announced by Dudas. Now, I hope you see all the pieces fit together .

  6. anonymous,

    Thanks. I know exactly what is going on at the PTO at that level. I remember two SPEs who badgered their primary examiners to no end. One examiner was an older primary that had been there over 20 years and was harassed by that SPE for about 10 years (still to this day I believe). It drives people working there nuts! They just want to do 100% and be left alone (one actually practiced the “lights out” routine – I think they teach them these things in SPE school, LOL!)

    What you said here is the key:

    “Because a primary at 93 percent production rate is already producing twice as many cases ,may be a lot more, than a new examiner making 110 percent, not to account for the training and other expenses on the new examiner.”

    PTO management cant see the forest for the trees. They have stunted their mental capacities from simply being around one another for too long. It is like a festering virus or disease.

  7. johng,

    may be you don’t see the implication of this. Basically, the SPE has more incentive to fire someone doing, say at 93 percent production rate, then get someone new examiner making 110 percent. He/she will likely get the bonus because everyone in his/her art unit making high production. But, this does not make economic sense. Because a primary at 93 percent production rate is already producing twice as many cases ,may be a lot more, than a new examiner making 110 percent, not to account for the training and other expenses on the new examiner. I admit there is a salary gap, but this gap (~20-30k) is very small compared to the difference in numbers of cases being produced. On paper, everyone in the art unit is doing great production, but it is hiding the fact that two or three new examiners is doing the same production for a primary examiner just left the office, even if the primary is doing low production. That is why I don’t trust the propaganda machine from USPTO management.

  8. johng,

    In PTO, the performance rating of SPE base on a plurality of factors, one of the big factor is the percentage of production. I heard that the bonus for SPE or for him to get an “outstanding” rating is when the examiners in his/her art unit producing at or above 110 percent. That is why 110 percent is the implied benchmark for the production in all art unit. Many junior examiners during job interview, the SPE specifically will tell them that they MUST produce at least 110 percent . Anyone produces below 110 usually get harassed by the SPE in one form or another. SPEs have a lot of power over hiring/firing of fellow junior examiner. He also has power over everyday conduct, i.e., he can knock on your door every 5 minutes to check whether you are working, he can order a review of your “online” habits, or order a time clock at the gate, or looking over your office actions with a magnifying glass and will break you unless you quit. Basically, he can make your life hell if you don’t do at the level of production for him to get an outstanding. That is why at the one hand you got high production level while having high attrition rate.

  9. The PTO is so screwed up they don’t realize that their own guidelines tell practitioner’s when in doubt, submit. Sure I read everything. I always have and have been chastized by clients and partners alike about reviewing references. I even search before I file, because I feel it is my ethical duty to have a modicum of indication of what is out in the public domain. Still I get chastized by partners and clients. Nonetheless, I try to assist the examiners in their endeavours. My job is to define an invention and get a strong patent. I want the closest reference applied.
    Yet even on this blog people argue that they have no duty to search.
    Now comes this current management team of the USPTO and they say search by don’t cite. I swear I could just slap one of those people for being IGNORANT. That’s right IGNORANT.

    Look at this quote from MPEP 2004
    10. When in doubt, it is desirable and safest to submit information. Even though the attorney, agent, or applicant doesn’t consider it necessarily material, someone else may see it differently and embarrassing questions can be avoided. The court in U.S. Industries v. Norton Co., 210 USPQ 94, 107 (N.D. N.Y. 1980) stated “In short, the question of relevancy in close cases, should be left to the examiner and not the applicant.” See also LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).
    When in doubt submit Q.E.D. So quit WHINING examiners and the PTO in general. You made this mess DEAL WITH IT.

  10. That was me anonymous. While the phenomena regarding new examiners may be true, the fact that most examiners exceed their production requirements predates the big hiring era.

    I remember years ago an examiner, Mark T., a good guy who used to work in Group 2800, wrote a program that would OCR an IDS 1449 form and place all the patents into a APS (the searching system before East/West) search query. As was, and probably still is the way things are at the PTO, his good ideas were never considered worthy of consideration.

    The classification mess is a huge problem that has purposely been ignored by PTO management. I’d bet now it is so bad that it would be impossible to fix for huge amount of patents granted over the past ten years.

  11. anon,

    “This makes no sense! The vast majority of examiners are producing well over their required production. Yet they claim there is not have enough time. Seems to me that they must be doing something wrong if they can’t review a measly 100 cited documents in an IDS using some of that surplus time they have on their hands.”

    Don’t believe the propaganda coming out of the mouth of Dudas and Doll. They usually give their numbers a good massage. The reason for the propaganda of over production because of the number of new examiners just arrived. They don’t have production quotas as high as those are more senior and, the SPE/primary sign for the office actions so they don’t worry too much about quality. The reason for the IDS because the PTO eliminated the Classification Unit in order to pay for the TQAS implementation. The classification all areas in the PTO is a mess.

  12. Looking in from EPO land, the USPTO is using Rule 56 in a Reductio ad Absurdum approach, to bring home to US patent people outside the PTO that a whole new start is needed, to solve the problems of US patent law. Problem is, any new start has to be within the confines of English common law. No good looking to harmonise then with ROW, because ROW doesn’t run any more on pure English common law. England these days is under the umbrella of continental European civil law (China, Japan, etc also run on the world’s default legal system: civil law). EPO features(like post-issue PTO opposition) work perfectly well in the EPO’s civil law jurisdiction but didn’t work in pre-1978 England and won’t work in post-2007 USA.

  13. Rule 1.56 was more necessary when the ridiculous “strict TSM” test had to be met before an obvious patent could be tanked. With that test now lying in an ash heap, Examiners should have no difficulty finding art to tank an obvious patent.

    That said: bring on the opposition procedure in the US. Please, please bring it on.

  14. The USPTO says it has a problem with all of the references sent in by applicants and reduce the number of references sent in by applicants.

    The patent bar doesnot want to have to write detailed comment on the references they send in.

    So getting rid of Rule 1.56 gives both the USPTO and the patent bar something that they want. Plus getting rid of 1.56 furthers “patent harmonization” which the USPTO alleges it is in favor of. In fact, if the USPTO is so in favor of patent harmonization, why isn’t it out there begging Congress to abolish Rule 1.56.

    Why does the USPTO need references to be cited by applicants when no other major Patent Office in the world need the applicant to provide references? Is it the USPTO’s position that US examiners are less qualified than the examiners in other countries? Is it the USPTO’s position that its management needs this extra help from applicants because of how poorly the USPTO is run? For all of the problems caused by Rule 1.56, why does the USPTO need this rule?

  15. Lionel (and others) … although he is tempting to respond to, I find that best course of action is to just ignore MM.

    He is an attention seeker, plain and simple. He rarely adds anything to a discussion. Instead, his posts are just intended to incite. He is the classic example of a message board troll.

    link to en.wikipedia.org

    My suggestion to all is just ignore him. Eventually, this blog will allow for a technology-implemented ignore function … something I consider to be extremely useful and patentable subject matter if properly claimed (yet certain other, e.g., MM, would disagree) … but I digress. Until then, do what I do … read the posts and when you happen upon a post with questionable relevancy and/or imbued with excessive snarkiness, say to yourself “I bet MM wrote this.” When you get to the bottom of the post and realize you are correct (and with posts meeting that criteria, you will usually be correct), just laugh to yourself at just how predictable MM has become and hope the next post will be worth reading so as to make up for the post you just read.

  16. “What’s laughable is a concern troll who gets called on the worthlessness of his/her rambling unintelligible professional conduct lectures then responds by dissembling and launching a flurry of strawman one-liners.”

    Not commenting on your overall post, but really Malcolm? The signal to noise ratio in your responses is probably one of the lowest on this board. And often when you are not simply sniping, you make assertions or broad generalizations that you never back up.

    Now, the rest of your post actually has some content, but what is that like one in ten?

    Perhaps you simply need to learn some basic communication skills.

  17. “If a rule is unconstitutional, but not yet adjudicated as so, do you have an ethical duty to follow it?”

    Sigh. No. See my Dec 13, 2007 at 12:50 PM post above.

    “Suppose the PTO enacted a rule requiring a copy of all communication between applicant and attorney. Would it be unethical to withold those communications from the PTO? If you did supply them, would it be unethical to have done so in the view of your state bar?”

    Way to change the topic from the IDS rules to yet another incredibly absurd straw man!

  18. anon says, “McKesson stands for the fact that you had better have a darn good reason not to cite a reference in a related case 1 when you had to amend and argue around the reference in related case 2 and the cliamns in related case 1 are broader and very close to the claims in related case 2. That is all McKesson stands for.”

    That is not all and indeed was only one of the justifications of an inequitable conduct finding in McKesson. The more troublesome finding related not to the reference itself, but to the notice of allowance in the related case. The court held that the applicant had a duty to tell the Examiner (who happened to be the same person) of the notice of allowance itself that he had issued in the related case, not just the reference. For me, that is the troublesome part of the case. The portion you mention was old law in my opinion. To me, the case “overturned” the belief by many that cross-referencing related cases and submitting the same art would avoid inequitable conduct. The case went further and said that the practitioner had an ongoing duty to keep the Examiner of case A informed as to the progress of examination in case B.

  19. hmmm to make matters more interesting there have been several admissions by the parties passing these rules that they believed the same were questionable as to the statutory authority to pass the same. Now we are also faced with one loss by the USPTO concerning the ESD which is not that much different from the IDS. Could this be a concerted effort to knowingly undermine the attorney-client relationship?

  20. Anonymous says, “You have the ethical duty to comply with rules. Period.”
    This is oversimplified to the point of being incorrect. If a rule is unconstitutional, but not yet adjudicated as so, do you have an ethical duty to follow it? What if the rule is Federal, and explicitly contradicts the ethical requirements imposed by the state bar of which you are a member? Suppose the PTO enacted a rule requiring a copy of all communication between applicant and attorney. Would it be unethical to withold those communications from the PTO? If you did supply them, would it be unethical to have done so in the view of your state bar?

  21. MORE EVIDENCE THAT THE USPTO JUST DOESN’T UNDERSTAND THEIR JOB
    Bob Spar responds as follows:
    Gene, you and I have just have really different perspectives about things, and the IDS final rule is just the latest (final rule) change to prove the point. You look at things primarily from the point of view of a patent practitioner, and how it will (adversely) affect that practitioner, or the inventor or corporation that the practitioner is representing. This is a reasonable perspective to take – but it is not the only proper perspective to have, and it certainly ignores: 1) the Office’s perspective, or 2) the public’s perspective (which is the bigger picture) which competes with patentees, and tries to market, or use, products which do not infringe other’s patents.

    YOU HAVE ONE JOB AT THE USPTO . . . TO PROMOTE THE PROGRESS OF THE USEFUL ARTS NOT TO ASSIST THE PUBLIC WITH MARKETING OR USING PRODUCTS WHICH DO NOT INFRINGE OTHER’S PATENTS.

    In fact the assertion that the USPTO is concerned with assisting the public with the marketing or using of products without infringing patents is inimical to your job Spar. You have just indicated an animus to the job which I presume you swore an oath to carry-out.

  22. I think “me” is confused about the definition of the word “personal”. But that is par for the course.

  23. “Oh, and the idea that since litigation costs alot means it is difficult is laughable.”

    You know what’s laughable, other than your ability to come up with a pseudonym that doesn’t betray your elementary school education?

    What’s laughable is a concern troll who gets called on the worthlessness of his/her rambling unintelligible professional conduct lectures then responds by dissembling and launching a flurry of strawman one-liners.

    Again, McKesson doesn’t make it significantly “easier” to invalidate patents as inequitably obtained. What makes it “easier” to invalidate patents generally is prosecutors who continue to behave as if McKesson is the Most Important Federal Circuit Case ever.

    It’s not. Far from it.

    You know what defendants like to see in a patent file history if they want to create the stench of inequitable conduct? Lots of juicy declarations. And yet there is a still a large class of prosecutors who robotically file declarations. There’s a disconnect. And there’s a reason for the disconnect but I surely don’t want to offend Mr. Pritchard by suggesting what those reasons might be.

  24. “Your disdain for the people and system that keeps you employed and your failure to realize that is appaling.”

    Thank you, Herr Pitchford. I’ll remember to simply shut up and salute next time rather than risk offending you by mentioning the plainly observable habits of some of my colleagues.

  25. “please learn the difference between “can not” (e.g. capable of, but not doing so) and “cannot” (e.g. incapable of).”

    Ha ha. What.

    Is this distinction only usable in written dialog, or do they have different pronunciations too?

    Talk about ad-lib lawyerly word games.

  26. Mooney, you don’t have any prosecutors working in your office do you?

    Your disdain for the people and system that keeps you employed and your failure to realize that is appaling.

  27. McKesson stands for the fact that you had better have a darn good reason not to cite a reference in a related case 1 when you had to amend and argue around the reference in related case 2 and the cliamns in related case 1 are broader and very close to the claims in related case 2. That is all McKesson stands for. Look at it this way, were there no inequitable conduct found in McKesson rule 1.56 would have been eviscerated. My complaint about McKesson is that the Federal Circuit, in my opinion, did not sit in good behaviour because they failed to say what the law is, as required by Marbury v. Madison. I believe that the McKesson decision must be amended to address what the law is or the authors of the opinion must be impeached for not performing their core function: saying what the law is. How can it be stated that judges are sitting in good behavious when they are not doing what the Great Chief Justice charged them with.

  28. Mooney – please learn the difference between “can not” (e.g. capable of, but not doing so) and “cannot” (e.g. incapable of).

  29. Oh, and the idea that since litigation costs alot means it is difficult is laughable. Try prosecution Mooney…I have done both.

  30. Hmmm, maybe it is easier after McKesson as McKesson created precedent, go figure, a litigator who doesn’t know how to use case law.

  31. “Florida courts have extended the same protection to a broad variety of sanctions that are not criminal. In Florida the right to avoid self-incrimination extends to civil and administrative proceedings that degrade an individual’s professional standing, professional reputation, or livelihood. Actions against a professional license specifically afford the protection.”

    The right is much broader in both state and federal court.

    “Order requiring defendants to file accounting was modified to the extent that it required them to produce evidence that could be used against them in violation of Fifth Amendment rights they asserted before S.E.C. initiated contempt proceedings.”

  32. “if I interpret McKesson narrowly I can easily invalidate my clients patent by comitting inequitable conduct.”

    And now you’ve just revealed yourself to be a shallow-thinking rube.

    Sorry, friend, but in fact you CAN NOT invalidate YOUR client’s patent “easily” under McKesson. Do you think it was “easy” to invalidate McKesson’s patent?

    I suggest you ask the defendants in the McKesson case how much time and money it took to invalidate that patent.

    Again: many prosecutors need to get a clue. They simply do not know how the world works. They weep and moan and fret about a factually convulated case like McKesson, then jump up and down for a joy when they get broad facially invalid claims for a client that could be easily tanked during re-exam in less than six months by a mediocre first year.

    Go figure.

  33. “Glad you are not a criminal lawyer – you would have been disbarred years ago!”

    “OK, Anonymous, if you think this is the sytem, then have a great career.”

    Criminal law is a straw man. The criminal system cannot require self-incrimination. Since you brought up law school, did yours have a con law requirement?

    What we’re talking about is complying with rules. If the rules comply with the law and the constitution (didn’t think I’d have to bring that up), then you must comply if you want the benefit of a patent. Again, complain about the burden of the rules. Complain about the policy of the rules. But if the rules are valid under statutory and constitution law, your ethical duty changes. Get over it.

  34. Malcolm-

    Let me step back and explain the beginners here – if I interpret McKesson narrowly I can easily invalidate my clients patent by comitting inequitable conduct. If I interpret McKesson broadly I can easily invalidate my clients patent by making admissions.

    Go back to the litigator threads Mooney – see you there.

  35. Malcolm-

    You seem to have forgotten that that isprecisely what this thread is about, so what else would I comment on?

    You also love this as a litigator as you can invalidate any case under these contrary rules.

    Third – I disagree with you on almost everything, so don’t act like this is the only thing I hate. Guess you missed the threads on KSR, Festo, the new rules…get over yourself Mooney and think before you post.

  36. Judge: “The jury has found your client innocent”

    Anonymous: “but Judge, my ethical requirement to the bar requires me to tell you that he did do it, and you are wrong”

    OK, Anonymous, if you think this is the sytem, then have a great career.

  37. “How can I ethically comply with the PTO in light of McKesson and advance the interest of my client? McKesson requires I say everything I know”

    LOL. Why don’t you interpret McKesson narrowly just like you interpret your preambles?

    Folks should get over McKesson. I know that’s hard for many prosecutors who, in ever other respect, tend to practice as if the Federal Circuit never issued a single opinion.

    Why is that? Why is it that only inequitable conduct cases tend to cause prosecutors to run around like chicken littles, but other cases that should also affect the manner in which claims are presented, prosecuted and argued are ignored for the most part?

  38. Wow – was their an ethics requirement at your law school? did you ever take legal ethics? These are exactly the scenarios you are currently taught to explicitly avoid. I guess in the old days, folks just made up the rules…

    An ethical conflict between the Office’s requirement and my duties to my client and the judiciary does exist – no matter how much you piss and moan. Glad you are not a criminal lawyer – you would have been disbarred years ago!

  39. “The insane catch-22 in an ethics trap in that it requires you to read each piece of art broadly and make admissions against interest to comply with the PTO, but this is antithetical to you ethical requirement to your client to read these narrowly and argue against them and overcome them to gain the greatest claim breadth.”

    … and pointing out the side effects of your client’s drug may prevent the drug from being approved. Sometimes, compliance with rules will limit your client’s rights. Get over it.

    “The Office is requiring statements about things that I may not believe are limitations in my claim (e.g. preambles).”

    Then admit that the prior art includes what is recited in the preamble. Again, if this admission is required by the rules, then you have an ethical duty to make the admission, even if it limits your client’s enforcement ability down the road.

    You have the ethical duty to comply with rules. Period. You’re just pissed that the rules are changing to the detriment of your clients. Whine all you want about why the rules are bad policy and burdensome, but don’t act as if there is some ethical issue when there isn’t.

  40. “I can see the PTO’s point of view that they are bogged down when a large stack of references are cited”
    I don’t give a rats a$$ about the PTO gettin bogged down. I am sick and tired of being taxed more and more an getting less and less from my government. I refuse less. Those people at the USPTO better get their butts in gear. As a tax payer I will not stand for government agents who push their reponsibility onto the public. That is why I don’t agree with home detention or parole for convicts. You convict them you pay for the incarceration. Same thing with patents. You agree to take money for a search do you God D job. I am sick to death of government employees not doing their jobs.
    I don’t want to hear belly ache from the USPTO. Do you job. I submit that 1.56 is a taking by the USPTO. There is absolutely no reason why an applicant should have to present to the USPTO information that a reasonable person could obtain with minimal diligence. This is not 1960. Turn on a computer and type in words. Presto you get results.
    An applicant pays for a search. There is no reason why an applicant should have a patent invalidated, because the exmainer did not do his job by find information available to the public, known by the applicant and not disclosed.
    Rule 1.56 is being used to undermine the zealousness of an attorney representing a client. The courts are doing this, the executive agency is doing this. There is nothing less than the complete destruction of the attorney class at stake here.
    Why should a practitioner go gang busters and advance the clients’ interests when the practitioner knows the better the patent he obtains for his client the more likely the only alternative for a politically active and well funded infringer would be to pound on the applicant’s representative.
    The Courts MUST recongize that they are systematically destroying the attorney client relationship by the Dayco and McKesson decsisions. Worst yet, they are destroying the relationship when it is needed most . . . navigating the procedural quagmire of the United States government.
    If the public only knew what the Executive Branch and Judicial Branch of government have done in this context.
    I feel soon this will move into other areas of law. We have already seen it in the 1980s with the forefeiture statutes that effectively made it imposssible for accused drug dealers from being able to pay for an attorney.
    MAKE NO MISTAKE ABOUT IT . . . THE TARGET OF THESE RULES IS THE ATTORNEY CLIENT RELATIONSHIP. The government agencies do not like it, because its constituents do not want to pay for infringing patents.

    but then the Applicant doesn’t want to get burned later by a fraud charge because he did not appreciate the relevance of lines 14-20, in col. 6 of the 43rd reference in his stack of references

    maybe the PTO should just charge (e.g., $20) for every reference cited beyond a certain number (e.g, 10).

  41. Anon-

    You can sign all my ESDs. Particualrly the ones that might have implicit or inherent disclosure problems (which, lets face it, are impossible to deal with). We don’t even have a standard of law to apply for inherency in the unpredicatable arts (e.g. biotech) so there is absolutely no way to get it right.

  42. Anon-

    You miss my point and pretty clearly did not look at the ESD example provided by the Office. My ethical duty is to my client, and to the Office and the judicial system. The Office is requiring statements about things that I may not believe are limitations in my claim (e.g. preambles). The Office is requiring a near perfect search of all art, in any language, in any part of the world, done at any time – the search is not possible thus how can I comply? Yet, I must comply to ethically advance the interest of my client. How can a patent office that knows the rules make us do this?

    How can I ethically comply with the PTO in light of McKesson and advance the interest of my client? McKesson requires I say everything I know (which seems to be your point) but the Office is going much farther in the search and IDS requirements – and then limiting the amount of art you can submit. How can that be if they want these rules to stand? The Fed Cir has to overturn the rules, or drop McKesson and the long line of cases leading to it.

    The insane catch-22 in an ethics trap in that it requires you to read each piece of art broadly and make admissions against interest to comply with the PTO, but this is antithetical to you ethical requirement to your client to read these narrowly and argue against them and overcome them to gain the greatest claim breadth.

    Who would have ever come up with this sytem? Someone who never practiced…

  43. Colleagues:
    What we have are evangelicals running the USPTO. (Look to word up . . . not only christians can be evangelicals . . . even the Nazis were considered evangelicals.)
    I submit this . . . we have a government agency telling us what it means to read a document. I can think of no other government on the planet that tells its people, any people, how to read. I am beginning to questio the psychiatric profile of the management of the USPTO. We have agents of the USPTO admitting on video that they believe that they must act independent of Congress to effectuate changes and run the risk that such changes may run afoul of their authority. Are we witnessing meglomania at the upper levels of management of the USPTO?

  44. “How can we do the searches and an ESD (as was in the rules) and still follow our ethical guidelines as lawyers? Also, in their examples we were supposd to admit that preambles were limiting and find art with inherent disclosure.”

    Absurd. If the USPTO *requires* an honest admission, then your “ethical duty” is to make that admission. Making admissions in the absence of a rule may be a violation of an ethical duty. Likewise, failing to make admissions when a rule dictates that such admissions be made may be violation.

    Try another example. Is there an “ethical duty” to not disclose to the FDA the side-effects of your drug? No. Why? Because FDA rules require that disclosure. Similarly, if the USPTO rules dictate that you must admit the content of the prior art, it isn’t an ethical violation to make those admissions. Compliance with rules is not an ethical violation — even if compliance with the rules would cause one to make an admission against the client’s interests.

  45. Me, we can’t (absent some “third party” system that we haven’t thought of yet where the applicant pays someone else to perform the dirty work, so that “intent” for inequitable is harder to prove). And of course, the USPTO knows this.

    All these changes are merely meant to reduce future application filings (to say 200,000 applications per year). This will extend the reigns of IBM, MS, HP, etc. at top of the portfolio patent “numbers” charts (as compared to how short their reign would be with the status quo with 400,000+ filings/year at their current rate of technological progress) long after those companies can no longer compete with Asian companies and start-ups on the pure technology front (IBM has already largely exited hardware and computing technologies to rely on “services” and in many instance can no longer compete today, and HP is a mere shadow of what it was, living today on selling Canon products).

    The longer IBM, MS, and HP can retain their [past] numerical patent advantage (obtained in the 90s and early 00s when patents were issuing like candy) over the present and future patent portfolios of Asian and start-up companies, the longer the portfolio cross licensing fees go toward those behomoths of yesteryear… and the longer it continues to trickle down into Republican coffers.

    Well, that’s my theory anyway….

  46. If they want good searches, just get the EPO to do them as some cost to us. Makes the EPO money, and gets around the issues.

    These rules won’t stand if litigated anyway though…

  47. real anon –

    How can we do the searches and an ESD (as was in the rules) and still follow our ethical guidelines as lawyers? Also, in their examples we were supposd to admit that preambles were limiting and find art with inherent disclosure. How can that be? How can anyone do that? How is this harmonization when the EPO and JPO don’t require any of this?

  48. “So we don’t have a duty to search (“see no evil”) – but now have an “enhanced” duty to disclose?”

    The enhanced duty to disclose is only the first step in the USPTO plan. The real meat, and what the USPTO is trying to pave the way for, will be the required searches, analyses, and patentability determinations in the Applicant Quality Submissions.

  49. patent prosecution malpractice rates are going to sky rocket. can anyone even begin to image how this would work in the reexamination/litigation environment – here you would have 100’s of reference being dumped by the def onto the patent holder, and of course whatever was not represented to pto as matieral – would of course become paramount.

  50. So we don’t have a duty to search (“see no evil”) – but now have an “enhanced” duty to disclose?
    Are they still contemplating limiting the number of references you disclose (20)? In biotech that may barely scratch the surface…

  51. My comments from another blog on the new IDS Rules:

    What’s maddening is that the proposed new IDS Rules reflect nothing of how much art is “too much” or “too big”, “how” and “when” that art might turn up, etc. Instead, these Rules provide a “rigid formula” (sound like something from SCOTUS in KSR Interntional?) for compliance that has nothing to do with patent prosecution reality. Frankly, the PTO hierarchy doesn’t care whether it does or not these Rules address reality, they’ve got their political agenda to “reduce the backlog” (or make it look like they’re reducing the backlong).

    Unfortunately, the only choices for bringing sanity to this situation is to either have Congress legislate change or to bring suit once again to point out why the PTO and the OMB have once again violated not only their own Rules but also the APA, as well as the RFA. I have very little confidence that Congress will do anything that will bring sanity to the IDS Rules (and the Patent Reform Legislation understand consideration suggests they would make it more insane). That leaves suit (and I would suggest suing both the PTO and OMB, not just OM). The GSK/Tafas suits suggest that the only governmental groups listening to this bad situation with the current ill-advised PTO Rule making are the courts.

    We can only hope that someone in the private sector like GSK and Tafas decide that their ox is going to be sufficiently gored to pony up the courage (and money) to halt this continuing Rule making nonsense from the PTO. (And if they do, give them all the support, including Amicus support, that they could use.) In fact, resistance against these ill-advised and improperly enacted PTO Rules will be the true test of whether we are a nation of laws and reason in the patent area (as we should be), or whether we’re simply a nation dominated by the politics of the moment and who can “buy more” to political clout in Congress and executive branch. I hate to portray the current situation as “dire” in the patent examination process but it’s getting pretty close if these new IDS Rules, as well as the new appeal and Markush group Rules, are implemented. And heaven truly help us if the currently stalled Claim-Continuation Rules are ever implemented.

    Given the current “ugly climate” regarding the IDS Rules and “inequitable conduct”, it would be best if we simply completely did away with the “duty of disclosure” obligation along with “inequitable conduct” as a basis for patent invalidity/unenforceability, at least with regard to citations of art. In that way, we would at least be “harmonizing” with the rest of the world that has no “duty of disclosure” requirement. Even Australia has now dropped it’s requirement to cite to their office art cited in other patent offices. In fact, going to a patent registration would be far better than the insanity of these new IDS Rules which will only punish the “meritorious many” and rarely the “egregious few”.

  52. what it accomplishes is removing inequitable conduct which has now just become a trap for the overworked rather than a legitimate charge of fraud. The cost of compliance in large bio portfolios is going to get ridiculous. Things have already become more expensive since McKesson. The Examiner can search for the relevant art. Third parties can if you want.
    And what exactly does “being different” accomplish?

  53. what it accomplishes is removing inequitable conduct which has now just become a trap for the overworked rather than a legitimate charge of fraud. The cost of compliance in large bio portfolios is going to get ridiculous. Things have already become more expensive since McKesson. The Examiner can search for the relevant art. Third parties can if you want.
    And what exactly does “being different” accomplish?

  54. anon – great comments! (and, who might i ask was the former cia analyst making the rounds yesterday … as for the politics involved how could anyone be surprised? i mean the internet is a bunch of pipes and truthiness, credit to colbert, seems to work fine with elected officials)

    as for rule 56, if you want to quickly build a portfoli, or in one interpretation filing defensive patents with little or no cites, … there is essentially no reason not to cross-reference, imho … this is an area larger entities can share the pain … citation by different examiners based on a common applicant or inventor is prudent if you follow a typical examiner search … and follow 1.78 in light of mckesson to be safe …

    for those who are *for* harmonization :: once again why? what exactly does that accomplish?

    and those appeals rules are next up …

  55. “Seems to me that they must be doing something wrong if they can’t review a measly 100 cited documents in an IDS using some of that surplus time they have on their hands.”

    What … and screw their over-production bonuses?

  56. This makes no sense! The vast majority of examiners are producing well over their required production. Yet they claim there is not have enough time. Seems to me that they must be doing something wrong if they can’t review a measly 100 cited documents in an IDS using some of that surplus time they have on their hands.

    Occasionally receiving 100-200 documents is NOT an extraordinary burden. Examiners are expert searchers and will review up to a thousand or more documents when producing a first action. It is an isolated instance when a huge amount of art is cited in an IDS, but this, by far, is not the norm!!

    Hogwash!

    And have a rotten X-mas PTO!

  57. I can see the PTO’s point of view that they are bogged down when a large stack of references are cited

    but then the Applicant doesn’t want to get burned later by a fraud charge because he did not appreciate the relevance of lines 14-20, in col. 6 of the 43rd reference in his stack of references

    maybe the PTO should just charge (e.g., $20) for every reference cited beyond a certain number (e.g, 10).

  58. That is why what I read on this blog earlier makes sense. Have the applicant cite any reference he desired. However, the examiner need not consider any reference, except those that were commented on by the Applicant. The problem with the new IDS rules is that they are counter to Article I, seciton 8, clause 8. The very concept of the term “patent” is that something be easily viewed. Here these rules have the unconstitutional effect of forcing applicants to bury teachings. It is not on the duty of the USPTO, but of the Congress to promote the progress of the useful arts. How can this be accomplished by having applicants bury teachings? It appears that the USPTO has failed to grasp the reason it grants patents. It is not to facilitate a company’s protection of its intellectual property. It is not the produce high quality patents. It is not to generate a funding source for Congress. It is not to rule a cash cow for sellers of computer hardware. It is not to pad the resumes of political hacks. It is not to make money for businesses. It is not to promote business. It is not to promote international trade. It is not to achieve international patent harmony. YOU PEOPLE AT THE USPTO HAVE ONE JOB AND ONE JOB ONLY . . . TO PROMOTE THE PROGRESS OF THE USEFUL ARTS. If you don’t like your job then GET THE F*(K OUT OF THERE AND LEAVE US TO OUR WORK. We managed to win how many wars overcome how many screwed up administrations with our advancement of the useful arts.

  59. In defense of the USPTO, I have never seen a patent application that cited more than 20 material references. I have seen applications that cited over 100 references that were not material.

    The problem is how to determine when a reference is material and what is the consequence of getting it right versus getting it wrong.

    Having said all that, I agree with harmonization and getting rid of the affirmative duty of disclosure.

  60. I would not have considered it before, but I agree with the Rule 56 dumpers.

    If we are going to harmonize, let’s harmonize.

  61. After McKesson the PTO should just dropping 1.56 completely. Lets progress to the EPO and JPO standard. The duty of disclosure has become preposterous.

  62. “I thought Bush was supposed to be a Republican who supports strong protections for personal property. I’m considered one of his “base” constituents, but his stance on patent rights has me pretty disappointed.”

    Roy,

    You’re not alone in your disappointment with this administration on patent issues and the current make up of the PTO hierarchy; I am too. But the Republicans are not alone in using the PTO as a “political patronage dumping ground”, as witnessed by the appointment of Lehman. And now there’s the recent decision in the Peterlin case that makes 35 USC 3(b) look like futile gesture to insure that patent/trademark experienced people get into the Director/Deputy Director slots. Once more, I stand by my position that the Director and Deputy Director of the PTO need to be patent/trademark saavy or the management of the PTO will continue to spiral downhill.

  63. “By the way, the filing of a narrowing amendment is vague and indefinite. What is a narrowing amendment.”

    Ever read Festo…not quite sure the courts or the PTO agrees with you on that one…

  64. “To the neophytes out there . . . when amending my claims I don’t narrow them in view of the prior art . . . I define the invention in view of the prior art. The distinction is of such mangitude that it should not be necessary to describe the same.”

    Great idea – if you know each and every prior art reference when filing. What world do you live in? I promise it is not biotech…

  65. Shall we take guesses as to which company Dudas starts working for once King George has abdicated his throne? I am bettin BIG BLUE.

  66. All you have to do is discuss the relevant teachings of a late filed reference in a declaration filed pursuant to 37 CFR 1.132 and attach the same as an exhibit. Presto, it has been brought to the attention of the examiner.

    What these rules really allow is a competitor to file third party submissions with the USPTO and keep the best one for last. The procedural process of the patent aplication is tracked on public PAIR. After a notice of allowance is sent the competitior brings the reference to the attention of the prosecuting attorney. They must either file a continuation or admit to unpatentability of the claim and file a narrowing amendment.

    By the way, the filing of a narrowing amendment is vague and indefinite. What is a narrowing amendment. What is you simply need to redefine the invention. The phrase narrowing amendment is void for vagueness in my opinion. Ya know what . . . these rules are goin down as well.

    I respectfully question the competence of the individuals responsible for drafting these rules.

    To the neophytes out there . . . when amending my claims I don’t narrow them in view of the prior art . . . I define the invention in view of the prior art. The distinction is of such mangitude that it should not be necessary to describe the same.

    Narrowing amendment . . . what rookie came up with that criteria.

  67. “Routine cross citation was a bad practice to begin with.”

    Isn’t this in full contradiction to McKesson?

  68. “I disagree that abandonment will be the result. Applicants want their applications to issue. Instead, the likely outcome is the practice of routine cross citation will end.”

    On new patent families, routine cross citation might not commence, but ending routine cross citation in existing families will give defendants easy inequitable conduct issues.

    “Routine cross citation was a bad practice to begin with.”

    … unless you wanted a cheap way to insulate your clients from many inequitable conduct issues.

    “Furthermore, applicants paying their attorneys to review references cited to the USPTO seems like a good idea. One should be in favor of this.”

    Reviewing is different from “describing,” which was what I said. The problem is the incredibly large cost of writing up an analysis, such as an ESD or the analysis that will be required for over 20 references (or whatever the limit the USPTO ultimately chooses). No one said anything about reviewing the references.

  69. Me said:
    Also, how am I supposed to know all the relevant art prior to exam? The claims will change curing prosecution, sometimes in very unexpected ways, thus there will be new relevant art later!
    ——

    Of course, you’ll just have to re-review all of the references you’ve ever looked at in a case every time you amend the claims. Quick and Easy.

  70. SF wrote:
    “… and it will likely kill off many patent families in which cross citation was the norm and, as a result, scores of references were cited in each member of the family. If an applicant has to pay their attorney tens of thousands of dollars to describe each of those references, the applicant may just decide to let the applications go abandoned.”

    I disagree that abandonment will be the result. Applicants want their applications to issue. Instead, the likely outcome is the practice of routine cross citation will end.

    Routine cross citation was a bad practice to begin with.

    Furthermore, applicants paying their attorneys to review references cited to the USPTO seems like a good idea. One should be in favor of this.

  71. Again, the PTO management shows little knowledge or understanding of their business and the impact of their so called “administrative rules” on the substantive rights of inventors under current U.S. law. These seemingly insignificant IDS rules can substantially impair an inventors right to obtain patent protection, e.g., a foreign search report received after a notice of allowance where references should be of record or amendments required via an RCE for validity and enforcability. PTO management has to be purged so that the current problems can be solved in a manner that continues to protect inventor rights under the law. Inventors, owners, and members of the patent bar need to write to their DC elected officials to purge the PTO management offices.

  72. Also, how am I supposed to know all the relevant art prior to exam? The claims will change curing prosecution, sometimes in very unexpected ways, thus there will be new relevant art later!

  73. Harmonization? If they want harmonization lets go to the EPO system where they assume their folks are good and can do their job, and thus there is no duty to disclose known art!

    Come on – I thought Dudas was on the harmonization bandwagon?

  74. I thought Bush was supposed to be a Republican who supports strong protections for personal property. I’m considered one of his “base” constituents, but his stance on patent rights has me pretty disappointed.

  75. MM

    I have also filed a design patent application for that method with the clever use of phantom lines in the drawings.

  76. >

    my application for that method has been on file for some time now (non-publication requested); initial OA is expected in the next four-eight years

  77. “can we pull out the five or so which off the top of our/applicant’s head(s) seem to be most relevant, cite them when we file the application, wait until we get a Notice of Allowance, then file an RCE with a token new dependent claim and then spend the time to study the 150 references in view of the allowed claims and make the most pertinent of record?”

    Only if you’ve taken a license to the business method patent covering that strategy.

  78. Uhm, why can’t I ask a third party to do third-party submissions for me? Sort of blindly delegate control to some searcher somewhere

  79. so we have a stack of 150 or so references in our files

    can we pull out the five or so which off the top of our/applicant’s head(s) seem to be most relevant, cite them when we file the application, wait until we get a Notice of Allowance, then file an RCE with a token new dependent claim and then spend the time to study the 150 references in view of the allowed claims and make the most pertinent of record?

  80. * impose a requirement for the personal review of, and to provide information about, certain citations;

    Not good.

    * permit only timely IDS submissions;

    I’m only OK with this if RCEs are unlimited.

    * only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted

    Seems unnecessarily narrow.

    * permit third parties to submit prior art up until the mailing of a notice of allowance after application publication;

    No issue with this at all.

    * no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE);

    Not material – you can write a new argument or add a new claim/amend in about 10 minutes.

    * permit certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and

    Sounds like an attempt at an improvement.

    * revise the protest rule for dealing with unsolicited information received from third parties.

    No idea what the “protest” rule was, and, frankly, don’t give a sh1t either.

  81. Hey maybe Microsoft will sue for an injunction this time. Wouldn’t that be a laugh. Big Pharma stops continuations and High Tech. sues for enjoing the IDS rules. Seems you can only please some of the people some of the time. All the rest of the time you will get sued.

  82. I know . . . let’s just shut down the PTO, fire everybody, including Dudas and Doll, extinguish pensions and all go to Disnelyland and start serving peanuts.

  83. “I’d wager software’s gonna get hit”

    Good tip Anon @2:52. I checked the comments to the proposed IDS rules (link to uspto.gov) and here is what Microsoft said:

    “the rules as currently proposed could cost Microsoft an additional $20,000,000-$30,000,000 to prosecute our patent applications.”

  84. Well, well, it appears that the peition practice under 37 CFR 1.132 will escalate dramatically. The SB08 is only one manner by which to bring prior art to the attention of the Examiner. By the way, instead of admitting to the non-patentability of a claimed invention, I would simply not pay the issue fee and file a Continuation. You remember those continuations, don’t ya.

  85. I disagree with respect to the 1.105 showing. That would be tantamount to a defacto fee increase which is precluded by statute. The USPTO CANNOT require an applicant to carry-out its core function. That would be, once again, a takin pure and simple. We had to pay for the filing of the application. This is not to say that the USPTO could refund all fees paid to applicant, thereby rendering the taking moot and then requiring the information pursuant to 1.105. However, that would give rise to a Due Process argument. I leave with this question, When does a government agent’s action do sufficient damage to the operations of a government entity that the aforementioned actions transmutate from a political action to a criminal action?

  86. “Read J. Newman’s dissent in Star Fruits. Once again, she got it right.”

    [Insert obligatory anti-Newman comment here, Mooney.]

  87. Wow….you think clients don’t always give you as much information as you’d like now…just wait until these rules pass.

    Seems counterintuitive to the purpose of the patent system to get as much technical info. before the public as quickly as possible…

  88. the continuation and ids rules clearly affect small entities across the board …

    is anyone clear on the level of detail required? (“cited by other” suffice? “cited in isr for wipo appln ABC” adequate?) — in view of mckesson? “materiality” (1.56) versus explanation of materiality of a particular reference?

    tj how are you equating 1.105 request with esd/ids rule changes?

    make a grave for the unknown soldier …

    write your senators …

  89. In addition to the continuation rules, biotech will be hit hard by these changes too. Almost all biotech patent applications are over 25 pages, and the literature for most areas of medical interest is extensive.

    Obviously the following is the most costly proposed change:
    “impose a requirement for the personal review of, and to provide information about, certain citations;”

    The cost for an IDS for a biotech patent application will easily reach into the tens of thousands of dollars. As SF stated, many companies will have little choice but to abandon applications.

  90. TJ observed, “If the PTO really wants to declare war on the patent bar, such an amendment would be just as effective as curtailing continuations.”

    … and it will likely kill off many patent families in which cross citation was the norm and, as a result, scores of references were cited in each member of the family. If an applicant has to pay their attorney tens of thousands of dollars to describe each of those references, the applicant may just decide to let the applications go abandoned.

  91. @Mark Nowotarski: I’d wager software’s gonna get hit, as there’s so much art out there that’s poorly cataloged it’s not unlikely to stumble upon some new art at any point during prosecution.

  92. Not so sure TJ. Why is patent reform explicitly giving that right if the PTO already has it?

    As for the IDS rules – how can these stand when McKesson (Fed Cir)requires completely different standard?

  93. Not so sure TJ. Why is patent reform explicitly giving that right if the PTO already has it?

    As for the IDS rules – how can these stand when McKesson (Fed Cir)requires completely different standard?

  94. For those who are complaining about PTO rulemaking, keep in mind that the PTO probably has the power to impose an ESD requirement for all applications (or just amend 1.105 to explicitly allow RFIs that ask “state the most material cited reference and why the application is allowable over the same”); certainly under the Star Fruits standard that would appear to be permissible. If the PTO really wants to declare war on the patent bar, such an amendment would be just as effective as curtailing continuations.

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