Technologies most affected by the new IDS rule changes

73 thoughts on “Technologies most affected by the new IDS rule changes”

1. 73

   If the USPTO requires only the most pertinent citations be made in the IDS, then this should relieve practitioners from having to make a “data dump.” However, as mentioned, Rule 1.56 looms over patent practitioners.

   However, if such a rule is implemented the courts and Congress need to take steps towards protecting patent practitioners from frivolous Rule 1.56 claims. In other words, the mens rea for a violation of Rule 1.56 should be raised to intent to deceive.

   Ben at link to windycityip.com
2. 72

   [reads yet another pointless Mooney post and reacts with abject boredom]
3. 71

   [reads yet another pointless Mooney post and reacts with abject boredom]
4. 70

   Oh, I forgot to extend my holiday cheer to the PTO managers, especially the rule-writers:

   Have a jelly-belly, pig-in-the-mud, hic-cupin, burpin and rotten new year! ha ha ha
5. 69

   LL, that was me. That statement certainly was not directed to examiners, but to management. Among many other things, it is lazy to tell someone to re-open and not supply a teaching or whatever.

   I would like to see all managers examining. All management duties can be performed by Wall Mart managers. Not saying anything bad about Wall Mart people either, but the stuff SPEs, Directors etc. do can be performed by high school dropouts.

   JohnG
6. 68

   Is Malcom Mooney a Judge on the Federal Circuit?
7. 67

   JD,

   I do agree with you that there needs to be more incentive to get it right the 1st time by both examiners & applicants. There is too much BS that goes back & forth on too many cases before anything ever gets accomplished. We’ve gone over that b4 & think we generally agree.

   And there does need to be a better evaluation system for examiners based on quality 1st rather than quantity. (I’d like to see a better evaluation for lawyers, too, but that won’t happen soon 🙂 )

   Unfortunately, like you & many other know, on the PAP (performance appraisal plan), production has a weight of about 40-45% (depending on grade) of the total rating. To get a bonus, you can be less than outstanding in one or more catagories, other than production, and still be rated as outstanding. But, if your production level is less than outstanding (110%), no outstanding rating & no bonus. The system encourages the production over all else. It is back-asswards, as my father says.

   Like others have suggested, using actions/displosal (with a few tweaks) would be a good addition. Other things would be the inclusion (with a corresponding increase in production) of a count for finals, but a NEGATIVE count (or -0.5?) for things like reopenings after final, 2nd+ action non-finals, etc. This would also go to help encourage quality over quantity. Changes in the weighting in the PAP and better evaluations of real “quality” would also help a lot.

   Of course, you need to get the 10th floor as well as POPA to agree (lots of luck there). Management tried to get put in an award a couple years ago for quality (based on 0 or 1 errors in a year, for example – maybe not a great evaluator, but that’s another discussion). POPA wanted nothing to do with it.

   Hope you have a Merry Christmas (or whatever holiday you do or do not celebrate 😉 ) and a great 2008.

   thanks,

   LL
8. 66

   Oops. Sorry JD, it was JohnG.

   JohnG, would you please respond to my questions, above, about your comment of “You are also right about the current production system. It would work if people had not gotten so gd lazy.”

   thanks,

   LL
9. 65

   LL,

   I didn’t post that comment.

   And I agree the current production system should be scrapped. But I also agree that actions/disposal should be a factor in examiner ratings as that would truly put the emphasis on getting it right the first time. PTO (mis)management spent 129 pages in the Federal Register explaining how the new rules would force applicants and practitioners to get it right the first time, and said nothing about how they were going to get examiners to get it right the first time. That was but one of many problems with the new rules (which are too numerous to list here, or anywhere).

   I would also say to all of my friends in the examining corps: Be careful what you wish for. Many examiners are experts in gaming the production system, and not much else. If we truly had an examiner evaluation system that rated examiners on the strength of their factual determinations (hello, substantial evidence, ever heard of it?) and soundness of their legal conclusions (which would applicant prefer, arbitrary and capricious or abuse of discretion? take your pick), then I would submit to you that the PTO would save a lot of money in bonuses not being paid out. Especially if the evaluations were done by people with actual legal training, which doesn’t include most (99+%)of the hack SPE’s, SPRE’s, TC Directors, QAS’s, RQAS’s, TQAS’s, OPQA’s, etc. over there.

   Happy holidays and a wonderful new year to all.

   JD
10. 64

    JD,

    Would you please explain your comment of “You are also right about the current production system. It would work if people had not gotten so gd lazy.”

    How in the world “would [it] work” if “people” (examiners?) weren’t “so … lazy”???? The current production system ENCOURAGES examiners to push finals and for RCEs. It has nothing to do with being “lazy”. It has to do with meeting production & keeping your job.

    The examiner’s that go out of their way to try to help the applicant & reduce the number of finals & RCEs (& there ARE many of them out there; just probably not the ones you deal with 🙂 ) are actually HURTING themselves (based on the current production system). While that is the ideal way that the process should work, the production system & PAP are set up to be counter to that. If an examiner does a final & then the RCE, they are closer to making their prodcution (the RCE takes up a lot less time to do than a new case). If they do an examiner’s amendment & allows the case, they then need to do a new case (which takes longer & makes it harder to make production).

    What is needed is the whole production system & PAP (as well as other things) need to get blown up & redone from scratch.

    So, again, in what way would the curret prodcution system work if examiners were not so “lazy”.

    thanks,

    LL
11. 63

    An examiner, not an attorney, so don’t know the answer.

    Question:
    For which can a patent be invalidated in litigation?

    1) When the refernce(s) in question was known to the patentee and is relevant to the invention, but are not such that the claims would be rejectable thereover.

    OR

    2) When the refernce(s) in question was known to the patentee and is relevant to the invention, AND are such that the claims would be rejectable thereover.

    If 2, that makes sense to me & the applicant should be held responsible.

    If 1, I understand why you all are complaining about it. 1 would seem to be unfair to applicant & their representative.
12. 62

    Hey –

    Who is stealing my moniker? I am me on this board!
13. 61

    By the way, I am anectodatal evidence of the effects of inequitable conduct. I have several ideas that I will never disclose due to the interpreation of some of my former patents. One of my ideas cuts my usage of water 50% with no appreciable effect on my standard of living. Yes, Georgia is running dry and the Southwest needs water . . . however, until this system is fixed you will never see it in a patent.
    Ciao
14. 60

    I have studies this system for years, since I was first exposed to Lemelson. Unlike most whom I have met, I admired Lemelson’s gravitas. The law is what the law is. Lemelson merely took advantage of the failure of the Congress to pay particular attention to the patent laws. If you read Federico’s commentary on the 1952 patent act you will note that there are recited therein subtle warnings about Lemelson. If you read the Benson case you will note that the USPTO was warned about its failings concerning properly addressing the patentability of computer technology. Everything we face today can be placed squarely upon the inaction of the Federal Government. I state this, because there are other statutory and Constitution Infirmities with the patent laws. The problem is that no one has really paid attention to the changes in Constitutional law and its impact on existing patent statutes.
    This becomes more frightenin to those who litigate patents when it is realized that most of the statues are premised upon 19th Century case law. I suspect that one with even a modicum of interest can imaging the changes that have been wrought in Constitutional Law since the 19th Century.
    In short, eventually, the courts will be forced to come to terms with this aparrent oversight of the Federal Government, will force the hand of Congress to act.
    Think not that the hiatus of Senatorial action on the patent bill is by happenstance. Rather it is becoming clear that the Senate sees something is amiss. I suspect that soon the 1952 Act will be laid to rest in its entirety to be replaced by a more egalitarian regime of intellectual property protection.
15. 59

    The dearth of analysis in your conclusions, Mr. Mooney, speaks volumes about their tenuousness.
16. 58

    “One cannot deny that inequitable conduct is a tool simply to break a patent that is otherwise defines a patentable.”

    Sure I can. I hereby deny it. Even though I’m not sure what it means.
17. 57

    “The present practice of invalidating patents due to inequitable conduct that otherwise satsifies the staturoy requirements for patent protection is unconstitutional.”

    Bold, creative and utterly wrong.
18. 56

    “McKesson and Dayco Products are examples of this. One cannot deny that inequitable conduct is a tool simply to break a patent that is otherwise defines a patentable. Sadly, the tool is premised upon human error.”

    That’s false and misleading. Did you simply make an error yourself? Or was it intentional? When taken in the context of your post, the latter explanation seems more likely. Dennis, please initiate the banning procedures. Thank you.
19. 55

    I’m a scientist trying to make sense of these rule changes.

    1. Is the Glaxo injunction against all the new rule changes or just the continuation rules?

    2. If the injunction is lifted when will these changes appear in the MPEP? I know there were to be some changes to Markush structure limitations. Have these already been incorporated?
20. 54

    Bloom:
    You view is one of an exploiter. Sure it might be good for the few parties interested in freely exploiting that which was disclosed in the hopes of monopoly. However, the effect upon future disclosures cannot be overlooked. When the process becomes sufficiently unstable as to the outcome where is the incentive in disclosure. In fact this is exactly why the Federal Circuit was created-to ensure uniform interpretation of the patent laws. However, the Federal Circuit appeared to have done its job too well. As a result, in recent years it has consistently failed to define the test for inequitable conduct. In fact, I submit that the Federal Circuit has tunred-its-back on its raison d’etre. Now it operates to return uncertainty in the patent laws. McKesson and Dayco Products are examples of this. One cannot deny that inequitable conduct is a tool simply to break a patent that is otherwise defines a patentable. Sadly, the tool is premised upon human error. This is an unAmerican situation. Again we find ourselves at the exact same point our ancestors did when they took up arms against King George. The rights of individuals are hurting the profit margins of business and those rights must be trampled to sustain the profit margin-or so it seems to be the ideology of the USPTO. Only now the twist is that the profit margin is suddenly intimiately tied to national security-this is the rubbish being published by economists. Intelligensia, of course, is aware that these assertions are pure fiction. The only solice we have is that the masses pay not much attention to the mess and thus cannot be confused by any media propaganda in support of the business objectives.
21. 53

    To me – My apologies – On re-reading your post, I see that you do appear to assume that innovators are deterred from seeking patents because of inequitable conduct concerns. However, even if that were so, I think you’d have to look at the overall “chilling” effect versus the overall benefits of the entire patent scheme. (That’s assuming you found a court willing to undertake this analysis at all.) I suspect that you’d be hard pressed to demonstrate that the fairly unlikely event of invalidation for inequitable conduct has any significant impact on innovation and disclosure…
22. 52

    To me – I think you’re off in the weeds here. The granting of a patent “promotes the progress of the useful arts” by encouraging the disclosure of the patented technology. Once it is disclosed, others can build on it, design around it, etc. – progress.

    The 20-year monopoly is the price that the public pays in return. This monopoly is NOT a constitutional right. In theory, the patent system AS A WHOLE presumably promotes technological progress. That’s the only constitutional requirement (if it’s truly a requirement at all.) But, invalidating a patent actually gives the public the unfettered benefits of the disclosed technology early, so the public wins. Presumably, technology is promoted even more, since there are added incentives to improve the formerly patented idea.

    Invalidating the patent helps the public, while hurting only the inventor, who presumably “cheated.” Unless you assume that innovators are deterred by the possibility of an inequitable conduct finding from seeking a patent at all, then invalidating a patent procured by a cheater has only positive effects on “progress.”

    If you want to see how sympathetic the Supreme Court is to constitutional arguments based on the Copyright/Patent Clause, see Eldred v. Ashcroft.

    That said, the prospect of inequitable conduct creates all kinds of inefficient behavior. It would be much more efficient (theoretically) if the USPTO simply did its assigned job.
23. 51

    There is a fundamental problem with invalidating a patent that was garnered as a result of inequitable conduct if the claims defined thereby are otherwise new, useful and nonobvious over the prior art. It does not satisfies the conditions of Article 1, section 8, clause 8. Congress only has the power to promote the useful arts. The present practice of invalidating patents due to inequitable conduct that otherwise satsifies the staturoy requirements for patent protection is unconstitutional. Congress has only the power to promote the useful arts. This is not to say that a practitioner should not be disciplined or jailed for fraud on the patent office. However, it makes no sense to invalidate a patent.
    In short, the fact that no clear standard has been set forth by which to measure inequitable conduct and that the procedural nuances are becoming sufficiently complex that a chilling effect has been presented for the filing of patents. A client may seriously consider tradesecret protection, because of the greater certainty in protection. Congress lacks the power to pass any law contrary to the expressed limited power granted to Congress pursuant to Article I, section 8, clause 8. I would submit that the statute in the Atomic Energy Act barring patents on nuclear weapons also runs afoul of the Constitution.
    National Security must be premised upon preserving the rights of the people and not the power of the few servants who serve the government.
    For me this is the underlying issue. Policital interests do not like the cost that patents cause them. Therefore, they seek extraconstitutional powers of Congress to destroy patent property.
24. 50

    “Hence, I eschew hard, fast rules in this area and approach matters on a case by case basis. I would share my methodology but for the fact it is the subject of a currently pending, unpublished business method application, unique algorithms of which are likewise contained in yet another pending matter. A related case is also pending pertaining to a transitory signal.”

    [sniffs red meat and reacts with abject boredom]
25. 49

    EG

    The old “fraud squad” days. Thanks for the memories.

    (Your recollection of the “bargain” between the PTO and the patent bar is correct.)
26. 48

    Michael,

    How you remember the genesis of Rule 56 jives with my recollection. The original 1977 version you mention came in when I started as a patent attorney. I even remember the 1992 Rule 56 change that Harry Manbeck, then Commissioner, ushered in (somewhere I’ve got my marked up copy the final rule, with comments). The bargain that Harry got then was that we would disclose all in a timely fashion, for which the applicant/representative wouldn’t have to “characterize” the relevance of each referenc (as we did under the 1977 Rule). It wasn’t a perfect bargain, but the PTO and patent bar could live with it. That bargain has lasted for 15 years but looks it’s about to die if these new IDS Rules go into effect.

    The problem with the “duty of disclosure” standard (or “duty of candor and good faith” depending on how you see it) is that it is a court/judge-made rule, and, as was described by the Federal Circuit in Digital Control v Charles Machine Works case, is now not just one but many standards. In fact, we can’t seem to get a consistent approach to this standard (and what constitutes “inequitable conduct”) from the Federal Circuit. For a standard having this type of impact (and for how much it is misinterpreted or misapplied), we need to either codify it (like was done with obviousness) or else do away with it by statute. I frankly favor the latter because patent infringement actions focus too much energy and money on the IE issue which would be bettered used on the infringement and validity determination. In fact, I suspect only the litigators favor keeping IE around. And the new IDS Rules will certainly give them more fodder for IE allegations.

    Hope this adds to the discussion on these new IDS Rules (and why their “rigidity” is a huge problem).
27. 47

    EG:

    It has always been my understanding that the tentative first steps embodied in the original 1977 rule in 37 CFR took place in the Sup. Ct. decision Precision Instrument Mfg. Co. v. Automotive Co., 324 U.S. 806 (1945). Interestly, assertion of a patent was denied by a District Court on grounds of “unclean hands”; to wit, the patentee apparently perjured himself during an interference proceeding before the PTO. Apparently, the Sup. Ct. was likewise a bit put off by someone obtaining a patent via perjury. Of course, this is a far cry from what has morphed into the current standard.

    As for how it came into being as an affirmative duty of candor apparently was the result of later CAFC decisions, though I do not recall the first of these. The rule in 1977 was to my understanding a codification of case law. Since then each subsequent iteration of Rule 56 has placed an ever increasing burden on the patentee and counsel where it is now to the point that an over-abundance of caution, i.e., note everything…including the periodic table if need be, rules the day.

    There are some of us who are reluctant to follow the crowd for any number or reasons. Importantly, there is nothing in Rule 56 mandating an IDS, but merely a presemption one has played by the rules if a compliant IDS is submitted. Even that presumption, however, is so easily destroyed in litigation that I have to wonder if an IDS is truly the way to go as a general rule of practice.

    Except in some of the more esoteric arts, or in instances such as where CIPs, continuations, etc. are scattered all over the place, I can see good reason why reliance on the personal knowledge of the inventor(s) is oftentimes preferrable. Hence, I eschew hard, fast rules in this area and approach matters on a case by case basis. I would share my methodology but for the fact it is the subject of a currently pending, unpublished business method application, unique algorithms of which are likewise contained in yet another pending matter. A related case is also pending pertaining to a transitory signal.
28. 46

    There’s a difference between an IDS and the duty of disclosure. An IDS is not the only way to _disclose_ a reference. You can disclose references to the PTO without using an IDS.

    Here’s one possible way to deal with the rules should they go into effect (no doubt they will). Suppose you have 50 references that need to be disclosed. Separate out the 15-20 that are most relevant and file in an IDS. The rest, file in whatever form you like but not an IDS (e.g., “Communication to Examiner”, “List of Disclosed references”, etc.). Just a formal listing of references and copies of same. Vwala, the duty of disclosure is met and conduct is equitable.

    So you lose some presumption with the non-IDS references… that’s a judgment call you live with. If there are 20 or more references that you really need a presumption of validity over, then maybe the patent is not that strong to begin with.
29. 45

    No One in Particular, here’s something I posted on PLI last night. The performance review part is implied with the closely following “actions per disposal” suggestion:

    … you are right in most of your analysis. However, even if perfect searching mechanisms were in place (and I agree this goal should be a continuously sought – classification being no. 1!), the fear of allowing applications remains because of the current review gestapo. This is a source of most non-finals and backlog woes.

    I have often stated on several of these blogs that the SPE position should be eliminated altogether. How many of those suckers are there, 500? They are GS-15’s and each would constitute a maximum producing employee. If they don’t like it, tell them to hit the road! Even group directors could examine at least one application a bi-week. In fact, no one should escape examination duties until the backlog disappears.

    Review of junior work should be evenly divided among everyone having signatory authority, and all should be held to a reasonable “actions per disposal” number. This statistic is self-regulating, with the initial “review” being performed by prosecutors and then the examiners reviewing their work in light of the the applicants’ responses.

    There is always an appeal route, and the appeal conferees (including the examiner here) should be held equally responsible for their actions. Every primary should perform this appeal conference duty. The examiner should have a true “appeal” route of his own to the group director if the conferees act in bad faith to avoid performing their duties (for example, failing to provide evidence to support their positions for re-opening). No more hiding in the closets.

    You are also right about the current production system. It would work if people had not gotten so gd lazy.
30. 44

    Dear No One in Particular,

    Hey “No One” you are Some One in my book.

    I couldn’t agree with you more.

    Come 5pm, I will raise my glass to honor your sage comment with a Toast to No One in Particular’s good health, and I suggest other knowledgeable IP people do the same.

    Cheers
31. 43

    Alan,

    I think the reference to dropping Rule 1.56 (which I agree with) isn’t just with reference to to PTO, but understands that this is a court-made rule from SCOTUS (which is why it’s so bad) that can’t be changed by PTO Rule. Getting rid of the “duty of disclosure” obligation would require either SCOTUS to reverse course (unlikely to happen and subject to further problems of misinterpretation and misapplication), or to have Congress deal with this, which is the better route, in my opinion. It’s possible to get Congress to do this, given the current Patent Reform Legislation which does have a provision on dealing with “inequitable conduct.” Unfortunately, how the House bill has dealt with IE isn’t helpful, and getting Congress to roll back Rule 1.56 completely will be a mountain to climb. But it’s worth the try, probably not until the next Congress gets in in 2009 (the current Congress has already mucked up the current Patent Reform Legislation so much, that it would be better to start from scratch).
32. 42

    Hey guys.

    The ship is sinking and you are discussing what color to paint the mast.

    If you want to get the Patent Office back on course I suggest the following:

    1. Get rid of the current Examiner Performance Evaluation System. It completely distorts the patent process. It also rewards bad Examiners and punishes good ones.

    If you cannot come up with a good Performance Evaluation System, Don’t Have One.

    2. New Examiners should not be allowed to examine patent applications until they have taken and passed the MPEP exam (No cheating).

    3. Dump Dudas and his minions.

    A fish rots from the head back.
33. 41

    LL – “On the other hand, if you do not carefully consider all the refs on an IDS (at least to the level as a reference that was initially pulled in an initial subclass search), the examiner is leaving him/herself open to potential easy 2nd guessing. Whether it is by a SPE or OPQA or the public at large if they issue a case with a buried reference that could have been used to KO the claims. Or maybe (effectively) by some judge/jury/lawyer in a litigation case.”

    >> perhaps … but the second guessing in many cases is often times in reverse focused INSTEAD on rejection of applications as a measure of success for the examiner … these rules provide another out & rule 56 is not going anywhere … the office should also aggressively push 707.06 and get examiners to make arguments about what is being claimed :: force the reverse doctrine of equivalents on examiners if you want to wade into potential issues that could arise during litigation … even if that too would be counter to broad interpretation of claim limitations …

    it is not the office’s purpose to limit it’s own body of knowledge (specifically search & classification — some call “truth” progress – even when not arts or sciences) and it is certainly better to write claims for juries especially if every examiner/spe fancies him/herself judge and jury … that being said, the rules will hurt particular innovators / inventors more than a particular art … imho

    p.s. i dont care if ronald katz has 10,000 references, so long as they are material and contribute to an enabling disclosure … as for relevance — what are the forward references? how many ids’ did he pay for?

    what do fees have to do with better patents? can someone point me to a fee-by-fee comparison relating to the quality of the patent (and about “bad patents” — where are those?)
34. 40

    I can’t see what good dropping Rule 1.56 alone would do.

    As long as the CAFC and SC require “an unfailing duty of candor and good faith” litigators would have a field day with references applicants knew about and did not disclose. You would need both courts to change their views and prohibit discovery to find out what art the applicant knew. Probably need to prohibit using the file history in litigation, too.

    What might be interesting is a rule that prohibited an applicant from disclosing any prior art to the PTO. Would the CAFC accept the rule as within the PTO’s authority or reject the rule as contrary to the duty of candor?

    As long as applicants can submit art and can choose what art to submit, litigators will second guess the selection.
35. 39

    “The PTO says the hours (per BD) that an Examiner currently gets is for an “average” case and so takes into account both shorter and long-winded applications.”

    This may be the root cause of their productivity problem. There is not such thing as an “average” patent application just as there is no such thing as an “average” invention. No matter where they set the average and no matter what size they set for a cut off (pages, prior art, continuations etc.) in order to enforce the average, there is always going to be important inventions that require submissions that exceed the cut off.
36. 38

    just drop 1.56. Isn’t it an agency created rule – can the agency just not drop it?
37. 37

    “What if, instead of charging a fee (or in addition to), the PTO actually gave examiners extra time to examine long-winded applications? Anyone think that might help?”

    The PTO says the hours (per BD) that an Examiner currently gets is for an “average” case and so takes into account both shorter and long-winded applications. Following such logic, if they gave an Examiner more time for a long-winded application, they would then take away time for a shorter application.

    The whole quota system needs to be revamped or eliminated, to stop “incentivizing” (to borrow a word) churning. Currently, Examiners are rewarded for stalling (two counts for forcing an RCE and then cutting/pasting the previous action) instead of finally resolving issues.
38. 36

    What if, instead of charging a fee (or in addition to), the PTO actually gave examiners extra time to examine long-winded applications? Anyone think that might help?
39. 35

    Mr. Crouch-

    I gave you a freebie the last time you closed a forum (relating to the GSK case).

    But you’re getting a little crazy now. Deleting a post you don’t agree with, and then shutting down a discussion about an article YOU posted. (MHM diversity post).

    I thought you were an academic now? Aren’t academics supposed to be for open minds and open discussion? Everybody knows the opinions posted in the blog are not yours, so why the paranoia and baby-sitting?

    Annoyed & a little disturbed,
    -J
40. 34

    Mr. Crouch-

    I gave you a freebie the last time you closed a forum (relating to the GSK case).

    But you’re getting a little crazy now. Deleting a post you don’t agree with, and then shutting down a discussion about an article YOU posted. (MHM diversity post).

    I thought you were an academic now? Aren’t academics supposed to be for open minds and open discussion? Everybody knows the opinions posted in the blog are not yours, so why the paranoia and baby-sitting?

    Annoyed & a little disturbed,
    -J
41. 33

    As I reviewed the above comments I was struck by the irony that many applicants are more than willing to PAY to have their agents/attorneys discover and interpret relevant prior art out of potentially billions of references in a typical on-line data base, and yet all of the suggestions posted here focus on requiring applicants to yet again PAY to have that same prior art brought to the attention of the examiner.

    It seems to me that with a properly structured program, the USPTO (or at least the American public) should PAY applicants to bring relevant prior art to the examiner’s attention. If the submissions were required to be in text searchable form, then the issue of “flooding” the patent office becomes moot. Examiner’s already search through billions of references every time they do a computerized search. Adding hundreds, thousands or even millions of references wouldn’t slow down a decent search engine. (See Google for details).
42. 32

    /I just simply amazes me how a President with C-average has managed to turn the tide on competence and education such that that which was once revered is now lothed/

    What amazes me more is the number of people in this country that voted for this (i)diot – twice!
43. 31

    MIT’s open courseware has an interesting class on patents. On page 94 of this reading, Vannevar Bush suggests using computers to aid examiners in their searches. Many of these issues aren’t really that new.

    link to ocw.mit.edu
44. 30

    I think there are certain cases with excessive citations that can impede the examination process. These are sensitive cases with ongoing litigations that are very difficult to figure out what is going especially for cases with endless information from litigation proceedings. The disclosure in these cases are mainly “non-US patent literature”. I believe that the rule change would be beneficial. I also think that foreign literature need to be provided with copy of English translation, even if it is a machine translation before the first action.

    For US patent disclosure, I don’t think there is a problem even with cases 50- 100 citations. This is mainly a technological problem because currently, the OCR engine built within edan is crappy. This can be extremely annoying if applicant decides to provide in handwritten or some weird font or the alignment from one line to another is off when scanning. My suggestion is to deal entirely away with IDS form for US patents- I admit I hate filling out those IDS forms. Instead, applicant to provide a “read-only” DRM file to prevent tampering, in either a east search format or regular txt file that can easily be cut and paste into East, the file to be resided with the electronic folder of the file so that whoever open the case in edan can easily fire up east search to look through the references. The situation is that the office has so many separate applications, may be due to different contractors, and no integration between these applications.

    About increasing the fee, sometimes, equating better or faster service with fee increase can be misleading. Since when the office would pass down increase fee, in term of added time, down to the examiners. what happen if the office invests in something like more reviewers or more managers. The production goal has not been changed since …

    My opinion is only directed to that are filed prior to the first office action.
45. 29

    How about the following approach for legislation?

    – no limit on number of references submitted for Rule 1.56 compliance, but no presumption Examiner has considered them; maybe don’t even both printing them on the patent.

    – optionally, applicant can submit 2-3 page excerpts from up to 20 references, which will create a statutory presumption that Examiner has considered each of the excerpts and other references with equivalent teachings. Hopefully, with such short IDSs, Examiners will actually consider the references. These will be listed on the patent (including identifying the excerpted portion).

    – applicant can submit more than 20 excerpts, for a fee of $50-100 per excess excerpt.

    – public can submit a 2-3 page excerpt from a reference for a high fee, e.g., $250. Such a submission will NOT create a presumption that the Examiner has considered the excerpt, even if the Examiner uses the excerpt in a rejection. The purpose of this is to remove the disincentive that exists today to make third-party submissions. Unless you can re-use the reference in litigation regardless of how it is used during prosecution, third parties will generally want to save their best art for litigation.

    – once a third party has submitted an excerpt, submission of the same excerpt or an equivalent will not create a presumption that the Examiner has considered it. This is necessary to preserve the third party’s rights (no presumption), and to encourage applicants to be the first to submit relevant excerpts.
46. 28

    I find it helpful to see what a Patent Attorney thinks about the prior art. It is also helpful to see what an Examiner thinks about the prior art. I alway cite it and the Examiners never use what I cite, but cite art that they found. They know more about the art than I do.
47. 27

    I don’t think examiners should be fired after one or two bad allowances, or any fixed number. They should be reviewed on a percentage basis, like the TCs. If the error rate goal for the TC is 3%, the examiners should be held to the same standard. As long as you don’t exceed that in, say, the last one or two most recent years (rolling average), you are fine. If you exceed the percentage for too long, you are on a probationary period until you get better, and if not, then you are let go. It’s almost as if they look for ways to get rid of people. Once you have even a little bit of difficulty, they basically want to get rid of you. I never saw anything like it in the private sector. Any thoughts?
48. 26

    hp-

    had the same thought. very simple to cut down on massive IDS’s by making it financially prohibitive. Just charge $10 for every single reference over 20. That 1500 count IDS is now ~$15,000. That should pay for plenty of Examiner face time.

    Why are the drafters making this so complicated?

    -M
49. 25

    hp, hee hee. And give the examiners a cut in the deal. Say 50% of the fee collected. No more complaints from the corps!
50. 24

    The way to cut the number of references submitted and or recover the time/$$ required to have the Examiner “review” them (that is quickly initial the top one in the list and draw a line down the page for each of the others) is to simply apply a fee for whatever is considered extra.

    Like $10 for every 10 references submitted over 20. The PTO would make out like a bandit on fees and everyone could sleep at night.

    The whole “describe the reference for the Examiner” construct is either stupidity or capricious retaliation against the patent prosecutors.

    I don’t know what patent prosecutors have ever done to the PTO that might have generated any desire to retaliate… so it must just be stupidity.
51. 23

    RE: Comment of Alun Palmer, “The nightmare here is trading the liability for inequitable conduct for leaving references out versus the liability for inequitable conduct for writing an opinion (ESD) that misses art buried in column 104, line 53. Flip a coin. Heads, we’re in trouble, tails, same thing. As we’re scr*w*d both ways”

    The examiner is in the same boat on every case they examine. Different “liability”, true, and potentially not as severe, but still they are the ones that get the “blame” or “error” and can (ultimately) loose their job if they miss the “art buried in column 104, line 53”. Not defending missing things or saying one has it easier than the other, just that both examiners & lawyers get “scr*w*d” when something gets missed. And those massive IDSs make it easier to miss things.

    However you are right about the process of searching & that is generally the way I explain it to newer examiners. Make multiple passes. 1st pass weeding out the stuff you clearly do not want (i.e., keeping the stuff that at 1st blush “might” be useful. Then go through them again & separate them into “good”, “ok” and “bad” (for example). Then go through the best ones carefully. Basically it is time management & spending the most time on the most relevant stuff.

    However, as to the stuff in an IDS, while ideally the stuff should all be relevant, it often isn’t. I still suggest to examiners going through the IDS 1st & see what you already have. It can also give you search ideas & synonyms, or maybe a better understanding of the art in general, if nothing else.

    But, like JD said, the level of “consideration” that an examiner is required to give prior art cited in an IDS is no greater than, for example, one reference in a subclass they are searching. Nothing more. An examiner is not required (by MPEP or elsewhere) to read & digest the whole thing. Only to “consider” it. Still, for 1500 refs, that is going to take a while. Heck, it’s going to take a while just to sign them 🙂

    On the other hand, if you do not carefully consider all the refs on an IDS (at least to the level as a reference that was initially pulled in an initial subclass search), the examiner is leaving him/herself open to potential easy 2nd guessing. Whether it is by a SPE or OPQA or the public at large if they issue a case with a buried reference that could have been used to KO the claims. Or maybe (effectively) by some judge/jury/lawyer in a litigation case.

    Like the guy said, “scr*w*d both ways”.

    thanks,

    LL
52. 22

    What about the provision in the proposed IDS rules that would require an explanation for any refs over 25 pages long? Any ideas whether that’s still in?
53. 21

    clearly the rules are not based on any logical premise, they are a dangerous attempt at proving *maturity* to a congress that clearly has its mind set on doing *something* about patents …

    not sure if it is a technology that is affected so much as particular invneotrs or innovators that are affected …

    “materiality” is in the eyes of the beholder … if you’re smart you’ll write claims for juries and encourage your clients to battle the tradename/terminology of the given art at any chance they get – PR, news releases, letters to ediutors … a very good way to message your technology INTO a product or service … if the cat toy was called something else …

    — YOURMOMMA got a squeeze box and daddy never sleeps at night (?) —

    you dont need attorneys to have a patent system — it is arguably one reason why many who favor these ongoing and ill-advised rules (which are never analyzed as a system just the pieces or parts) will find themselves with fewer large clients having been outsourced or simply made irrelevant (that includes practioners and examiners) … in fact, besides festo, the decline of doe (which cause many to be abundantly cautious to include variants of the same terminology or limitations) … examiners who rely primarily on case law or never make a cogent art-based argument are a large part of the resource and quality issue …

    it would be interesting to see more study akin to “linguistics and patent claim construction” (osenga) — asuming arguendo, i mean for argument’s sake …

    so, to strengthen the status quo (which includes poor examination as well as betting the farm against perfectly valid patents being asserted against any given company) the time horizon in which to determine some risk/reward ratio afforded most practitioners and their clients is simply moved further into the future. fear uncertainty and doubt … FUD does work …

    in too many cases, it is simply too easy to let the light shine in and take your chances … cross reference because of the overlapping art of common inventors and poor classification of given applications by the office … ids/rule 1.78 disclosure is just thinking ahead and minimizing bs inequitable conduct assertions during litigation … and maybe interviewing examiners prior to final to get some lines of communicatiuons open on just how the office interprets the lousy office action you receive …

    my wooden nickels, spent when they were hot …
54. 20

    “This is because there is at least some presumption that references in an IDS have some reason to be there…”

    Not necessarily. In fact, I think the opposite may be true.

    If practitioners had a choice, they would sumbit fewer, more “relevant” or “material” references, but they don’t have a choice. They have to err on the side of caution. That results in a data dump.

    And examiners are not required to, and should not, give any more “consideration” to references in an IDS than they do references in the search they conduct.
55. 19

    The nightmare here is trading the liability for inequitable conduct for leaving references out versus the liability for inequitable conduct for writing an opinion (ESD) that misses art buried in column 104, line 53. Flip a coin. Heads, we’re in trouble, tails, same thing. As we’re scr*w*d both ways, we may as well pick the first option, because it’s cheaper.

    But everyone knew that, maybe even the so-and-so who drafted the rules, whoever you are. I understand you may be desperate to reduce backlogs, but you are taking your frustration out on us, and we don’t deserve it.

    Where I would like to make an actual contribution here is with regard to searching. I used to do this for a living for 16 years before I ever prosecuted an application.

    When we had paper stacks I used to write estimates for searches based on 60 patents/hour with an integrity check (i.e. looking for the missing ones, and there were always around 5% missing) or 80/hour without (most people didn’t do a check, which I found indefensible IMHO, but that’s water under the bridge), plus an hour and a half of time to do the estimate itself.

    Searching subclasses by computer using EAST/WEST is quicker, generally, although those who search mechanical art and rely more heavily on pictures say it is slower. I am looking at this from the perspective of electrical art, so I’d say it’s possible to search electrical art on EAST at a rate of at least 100/hour, and probably faster in many cases. Many mechanical art searchers could search faster than that on paper, and probably at least that fast on the computer. OTOH, if you search so fast that your fingers are burning, you are missing art, IME.

    It has to be understood, however, that searching the art is an entirely different process than studying the results of such a search. When you do a search, the vast majority of what you look at is irrelevant, because it is the process of sifting out the relevant ones. Most of the references can be discarded quickly, and those you select meet a threshold that there is something there that MAY be material, not necessarily something that IS material.

    OTOH, when you study the results it takes more time. For a searcher, it make take an hour or two to look through typically anything from half a dozen to around twenty references that they have found, because all they are looking for is a ‘reason cited’, and anything more might constitute an opinion anyway. For an examiner they are looking for something they can use in a rejection, and I’m not sure how long that takes, because I never was one. However, for a patent prosecutor, it will take substantially longer than either of the former, because of the necessity of finding every little crumb that someone might fasten on later as inequitable conduct if it isn’t found.

    The point is that comparing time taken to search references with time taken to study search results or references cited in an IDS is an apples/oranges comparison. Even for the examiner it will take far longer to look through 1,500 patents in an IDS than it takes a searcher (or the same examiner) to look through a large subclass that has that many in it. This is because there is at least some presumption that references in an IDS have some reason to be there, although it should be obvious to anybody that if there are as many as 1,500, then most of them are not relevant at all.

    Why does the ESD threshold have to be twenty? If it were 40, or even 30, the percentage of cases that would be affected would be a fraction of what it actually will be. I can see there should be a limit, but it is too easy to accidentally exceed 20 without trying to, and certainly with no intention of hiding the art. This number is too low, and very obviously the wrong number to have selected. I guess the comment period is closed now, though?
56. 18

    “or $3,000 to $5,000 if an ESD is deemed necessary) ”

    In 1950 dollars?

    JimD, respectfully, I don’t think that’ll ever happen at that price. The search firm today will often charge almost that much just to search all the features of the claim set (i.e. a validity search). And that doesn’t include your pre-ex search that you used previously to draft the claim set (i.e. a patentability search). And that won’t even touch the analysis that the patent attorney writes where the real pitfalls lie and the patent’s validity is placed on the line.
57. 17

    “interesting article”

    Propagandistic garbage, actually.
58. 16

    “the PTO could review 720,000 fewer references”

    That’s because applicants’ attorneys would have looked at those 720,000 references and — with fingers crossed — decided they were not “relevant enough” to submit. Of course, to eliminate the average of eight references, we had to look at that average of 28 references. Given only 10 minutes with each reference, that’s 420,000 hours billed to applicants. At a modest $250/hr, a mere hundred million dollars, which in Washington DC is not even close to being “real money”.

    All those applicants forced to shell out an extra $1,000 or $2,000 per application (or $3,000 to $5,000 if an ESD is deemed necessary) might feel otherwise, but their interests are not on the PTO’s radar.
59. 15

    interesting article

    link to patenthawk.com
60. 14

    In short I think that the world better get on notice. Without patent practitioners there are no patents. Without patents there is no need for the USPTO, there is no patent litigation and the companies have no patent protection. What would happen to the companies if suddenly their engineers had to write the patents. ‘nough said right! Therefore, we are needed just as much as the USPTO and more than a patent litigator. Wisen up people and companies. If things continue as they are U.S. companies will be faced to having to compete with companies that have a labor force earning $1.00 a day and with no means of protecting their market using patents. I know of several very experienced practitioners who are leaving the practice because of the animus that resonates through the industry. I just simply amazes me how a President with C-average has managed to turn the tide on competence and education such that that which was once revered is now lothed.
61. 13

    Well hell if they disbar every practitioner then who will write the patents?
62. 12

    “We are speaking of cited documents here, which you cannot discard at a glance.”

    F1ipping Examiner, you can see several Examiner’s comments on these boards regarding how Examiners treat cited art, just so you know it usually isn’t treated like gold:

    link to patentlyo.com
    link to patentlyo.com

    I believe all I said in my previous post is correct. I was speaking in generalities and making stated assumptions. (I know how many patents I can search in an hour, and have been doing so since the 80s, first for the USPTO and then for industry.)

    If you’re a good searcher or a good Examiner (either one), I believe you must search (on the average) a minimum of 200 references per day of searching. Just let me know if I’m wrong about how much you can search. It’s certainly doable and was even in the days before automation in the shoes (dates me).

    Regarding cited documents, my experience (in checking 300+ asserted patents for validity since the early 90s) is that 4 times out of 5, if applicant cites art, the Examiner will not apply it, even if it is better than other art that the Examiner finds (often it seems like the 1449 is initialed but the documents were never read – I’m currently working on a U.S. patent issued April 2007 where this seems to be the case – or if it was read it certainly wasn’t understood). I understand that there are good examiners, but good examiners (perhaps like good attorneys from your perspective) are in my view the exception rather than the rule.

    “But I need a day.”

    I need 2.5 or 3 to check patent validity.

    “Quantity or quality?”

    That depends fully on the case – some times the technology is so poorly classified and not amenable to “word searches” (e.g. the gear train layout in an automatic transmission, a thin film layer structure relating to the reordering of known layers, or a rack design) that nothing can substitute for quantity.

    “And f1ipping 2000 document a hour if you are doing a simple picture search: just curious, what is the average number of drawings you considered? And how many tenths of a second for every single drawing?”

    “… just curious, what is the average number of drawings you considered? And how many tenths of a second for every single drawing?”

    Picture searching designs (average 3 pages per document) you can go through 2000 patents in just over an hour (e.g. at 0.5 sec flip rate). I do it regularly and time it.

    By the way, where I’m coming from is here:

    link to patentlyo.com
    link to patentlyo.com
63. 11

    Also missing in this type of analysis is the fact that many of the references supplied to the PTO in an IDS are classified in areas the examiner would presumably search, and thus they would be duplicates of references that have or will be considered in the search (depending on whether the IDS is considered before or after the search).
64. 10

    LL — Good comment, I did not have all the info for TC 2600 and thus left it out of these results. The total averages do not change based on the addition of that TC.
    DDC
65. 9

    Flippin’-

    Most attorneys do not send in a phone book of references (see the stats above) thus in the large majority of cases you are not being burdened much by the current rule.
66. 8

    What about the fact that the fewer references cited to an examiner to consider, the larger the universe of uncited prior art to be cited against the patentee in litigation to assert patent invalidity? If it wasn’t in front of the examiner, there’s a much lower burden.
67. 7

    One big problem with Dennis’ “sample”:

    not only are only a relatively small number of arts selected, he has absolutely NOTHING from a whole TC! Nothing from 2600 is listed.
    This will skew the stats one way or the other. There are probably other significant areas not represented, but nothing as egregious as missing a whole TC of patents & applications.

    thanks,

    LL
68. 6

    @ real anonymous:

    We are speaking of cited documents here, which you cannot discard at a glance. As everybody knows, a patent attorney would never cite something irrelevant, that is why it is so important to let him cite all what he wants, be it more than 20 patents.
    I’m curious: how do you evaluate and rank the relevance of a cited document in less than 3′? ( 25 documents/h, 200 a day)

    “2000 patents a day for a searcher, typically”…
    Looking at a fifth to a tenth of that, I regularly find better prior art than the USPTO searcher. But I need a day. In a field of average complexity. How does it come?
    Quantity or quality?

    And flipping 2000 document a hour if you are doing a simple picture search: just curious, what is the average number of drawings you considered? And how many tenths of a second for every single drawing?
69. 5

    These statistics just further affirm the silliness and unrealistic “rigidity” of these new IDS Rules. The situation with these new IDS Rules gets even worse if you consider the 2006 case of Digital Control v. Charles Machine Works, where the Federal Circuit observed (accurately in my view) the following: “However, neither the Supreme Court nor the PTO articulated exactly what constituted a material misrepresentation. Thus, several different standards of materiality emerged from the courts. These standards included: the objective “but for” standard, where the misrepresentation was so material that the patent should not have issued; the subjective “but for” test, where the misrepresentation actually caused the examiner to approve the patent application when he would not otherwise have done so; and the “but it may have” standard, where the misrepresentation may have influenced the patent examiner in the course of prosecution.”

    With Digital Control, you now understand we don’t have just 1 standard for “materiality” but many standards by SCOTUS, the Federal Circuit and the PTO. In fact, Digital Control strongly suggests that PTO Rule 56 is the “minimal” standard, meaning that compliance with Rule 1.56 is the minimum that must be done but doesn’t necessarily mean the applicant is out of the “inequitable conduct” box.

    But one thing that is clear from Dayco Products cited previously, submission to the PTO of what might be considered “material” information is encouraged by the Federal Circuit, while suppressing such information will likely result in patents being held invalid/unenforceable for “inequitable conduct” (IE). Any IDS Rules enacted by the PTO, including these new ones, which tend to discourage such submissions of “information” are likely to be viewed with a jaundiced eye by the Federal Circuit. These statistics suggest that that’s exactly what new IDS Rules will cause.

    The other problem is that these new IDS Rules (at least as proposed by the PTO) will require something more than just “information” if you cite “too many” references or if the reference is “too big”. This “something more” amounts to opinions and judgments by applicants, and especially their representatives, as to why the excess/too big reference(s) is potentially “material”, what portion of the reference is “material”, how it applies to the claims, how the claims distinguish over this reference, etc. This “something more” goes beyond even what the Federal Circuit says is the “duty of disclosure” obligation, namely to submit “material” information (without misrepresenting it) to the PTO. The fact that this “something more” might force applicants and their representatives to a “Hobson’s Choice” as to whether (or not) to submit what is at least arguably “material” information isn’t going to sit well with the Federal Circuit (and especially Judge Newman, bless her heart). This is especially true if that “something more” is viewed as a substantive (not procedural) requirement beyond the authority of the PTO to ask for.

    That being said, I’m with many others who have said what we need to do is completely get rid of Rule 1.56 and mandatory IDSs (they are now if you don’t want a presumptive case of IE). The problem is that the basis for Rule 1.56 comes from a typically ill-framed (judge-made, not statute-mandated) pronouncement from SCOTUS in the Precision Instruments case. In fact, as noted above, there’s now more than 1 court-made standard for “materiality” besides Rule 1.56. Just getting rid of Rule 1.56 doesn’t address the court-made standards still in place, including the one from SCOTUS in Precision Instruments.

    To get rid of the blight of Rule 1.56 and all its court-created relatives, one of two things have to happen: (1) SCOTUS has to reverse course, which is very unlikely (witness KSR International which dredged up the ugly skeletons of Anderson’s-Black Rock and Sakraida and their rhetorical nonsense); or (2) Congress has to slay this “monster” by statute, which will be an uphill battle (witness the problems in trying to reign in what “inequitable conduct” means in the Patent Reform Legislation). Even so, I would put my effort into option (2) where this subject is already on the table, and for which there is a fair amount of push from IPO and other patent-interested organizations.

    By getting rid of PTO and court-made Rule 1.56 and “inequitable conduct” with it, we would at least be harmonized with the rest of the world that has no such requirement. Neither the courts (SCOTUS or the Federal Circuit), nor the PTO want to rationally, reasonably and realistically deal with what constitutes “inequitable conduct”, so why not simply dump it and save all those litigation dollars spent on something other than the merits of whether the patent is infringed and/or whether that patent is valid over the prior art? Even Australia has now said it doesn’t want the applicant to be the messenger for what art is cited in other patent offices. In addition, when asked why they didn’t impose such a requirement in Europe, the EPO said the applicant has the choice of how good (or bad) a patent they will get by not volunteering what the applicant views as the closest references.

    That’s my 2 cents for what it’s worth.
70. 4

    Dennis-

    Also remember that the number of refs and office actions sent in should go up after McKesson and the office screaming “inequitable conduct” from the highest mountaintops. Thus, the public cost in an underestimate.
71. 3

    “Running the numbers — this means that the PTO could review 720,000 fewer references next year.”

    Wow – a typical searcher conducting a validity search often “reviews” 2,000 patents per day (yes, it changes for different arts and a searcher conducting a “picture” search might flip through 2000 patents in just over an hour while in a complex case a searcher might only review 200 patents (or less) in a day, but 2,000 patents per day is a good estimate for what a searcher “reviews” in an average day’s work).

    So lets use the numbers for a complex search: assuming only only 200 references per day

    Doing the math… 720,000/200 = 3600 man-days

    3600 man-days/5000 Examiners = 0.72 man-days saved per Examiner

    0.72*8 hours = 5.7 hours saved per Examiner

    Or, put another way:

    $7,300,000,000 is the estimated cost to the public for the IDS rules

    3600*8 = 28,800 man-hours is the estimated USPTO savings

    Public Cost (or should we say Applicant Cost?) per USPTO hour saved:

    7,300,000,000/28,800 = $253,472 per hour

    [But you already knew the real purpose of these rules isn’t to save USPTO time.]
72. 2

    How do you suppose the PTO will reconcile these rules with the demands of Dayco Products, which requires practitioners to err on the side of disclosure in close cases, and disclosure of all substantive filings in copending cases? It’s a Hobson’s choice between characterizing the relevance of any reference submitted over 20 and setting oneself up for a charge of inequitable conduct for failure to comply with Dayco. . .
73. 1

    Oh, so it will only increase costs significantly in 25% of cases on average and 60% in some art areas. I guess that is why Dudas swore their was no economic impact of these rules…and the OMB believed him.

Comments are closed.