Book Review: Patent Ethics: Volume I Prosecution

[This post is an old-one, I’ve moved it to the front because Amazon now has the books in stock.]

Patent Ethics: ProsecutionHricikEthics.jpg

by David Hricik & Mercedes Meyer

ISBN: 0195338359

$225 from Amazon

Professor David Hricik is the country’s leading expert on patent law ethics. Oxford University Press recently published his (and co-author Mercedes Meyer’s) volume on patent prosecution ethics. This is a book that includes specific guidance for both patent attorneys and patent agents. It should be within the reach of every patent prosecutor. Topics include: guidance on client engagement and dis-engagement; the duty of loyalty to the client (perhaps as opposed to the inventor); avoiding conflicts of interest; specific areas of competency in patent prosecution; avoiding pitfalls created by the duty of candor; and issues arising from attorneys who practice both prosecution with litigation. The book also includes two very helpful appendices. The first appendix is an annotated version of the PTO ethics rules where the authors discuss nuances of each rule. The second is a set of sample forms; checklists; and client-memos — a version of which should be used by every patent practitioner in handling client relations.

I suspect that this book will quickly become the leading authority on patent prosecution ethics. Although not at all foolproof, attorneys and agents who rely on the book for guidance will have some cover from charges of malpractice or inequitable conduct.

My only problem with the book is its price: $255! Once you add tax and shipping, the cost approaches $1 per page. Of course, that price would get you only about a 1/2 hour of Professor Hricik’s time. This book is the first volume in a two-part series. The second volume will be published in 2010 and will focus on patent litigation ethics.

142 thoughts on “Book Review: Patent Ethics: Volume I Prosecution

  1. 141

    “And, 6, you think that I have a responsibility to understand a reference beyond the examiner’s understanding. ”

    Everyone has a responsibility to understand everything on the record to the best of their ability imo. In your case, your ability may be substantially lower than the examiner’s ability, so I wouldn’t necessarily agree with what you think I believe.

    “Find the best art and make your arguments. It is not my client’s responsibility to read the art and figure it out for you.”

    It’s funny how you jump from: “You have a responsibility to read the reference in total” to: “it isn’t my client’s responsibility to read the art and figure it out for you”

    Nobody said anything about “figuring it out” for anyone.

    However, the courts have a bit of an issue with people lying on the record. From this they can sometimes find “intent to deceive” iirc. Lying is making false statements on the record.

    When your patent stands rejected under U.S.C 102 you would do well to remember that it is not rejected over some little portions of a reference. It is rejected over the whole reference. If the designations are off, then that is your problem if the designations become correct later on. And it is also your problem if you argue something wasn’t in the reference that blatantly was, but perhaps was not at a designated point.

    103 is a different discussion, but much the same.

    “My clients have paid for many hours of me explaining prior art to examiners.”

    That’s part and parcel what comes with being an old hand in an art and understanding it much better than those younger than yourself likely do. It’s also what comes with having a reference delivered for you, rather than being the one that found the reference and did the original interpretation thereof. It is a lot frakin easier to point out other people’s mistakes than it is to do the analysis wholesale yourself.

    “Focus on your jobs.”

    Cry more.

  2. 140

    Someguy, no apology needed, honestly. But I thank you nevertheless.

    I often comment that communications between inventor and attorney are problematic at the best of times. When those communications are occurring over an international path, the dialogue becomes almost impossible. It is difficult enough in immediate and direct dialogue between an American and a European patent attorney, as we see in these threads.

    I also happen to think (but then I would, wouldn’t I?) that dialogue between Examiner and Applicant should be between the Examiner and the professional representative of the Applicant. What do they say: The lawyer who represents himself has a fool for a client.

  3. 139

    MaxDrei,

    I apologize if my statments appeared to be a strawman attack on your position; it was not my intention. You implicitly asked what is meant by reading and I answered the question and perhaps the response was colored by my most recent request by an assistant examiner for help.

    This person swears up and down she read the specification before asking for help, yet somehow failed to understand the most basic concepts in a simple 20 page spec or even the five sentence abstract. The way she interpreted the disclosed invention was so beyond anything reasonable I had a hard time believing that anyone with an IQ beyond 20 could have made such a mistake had they given any effort to understanding the invention. Imagine if you gave someone a document to read on how to build a fire by rubbing two sticks together and they tell you they don’t understand what it was talking about and it appears to be related to a method of child care–I’m having trouble finding a way to explain how absurd it was without giving away specifics.

    Now, maybe she lied and when called out on it had trouble admitting she lied, but assuming she did go through the spec at all, it was to only engage in a pointless exercise of flip and stare to be able to say she “read” the spec. Unfortunately, this was not the first time I’ve had to deal such a situation with both examiners and attorneys. Fortunately, such situations are extremely rare. Presumably these people were at least reasonably intellegent, so either they did not try at all to understand what they were “reading”, thus doing nothing more than staring and flipping or they were disingenious to the extreme.

    NWPA,

    I understand the “unless” set forth by Congress, but it doesn’t address my point that sometimes one must consider the reference in its entirety to fully understand the position being set forth especially if you don’t have sufficient background knowledge of the technical concepts. I don’t think an examiner has fully done his/her job if he/she hasn’t read the spec and tried to understand the invention prior to searching. Likewise, I think it’s wrong for an attorney to say they’ve done proper service for their client by not fully considering a reference when necessary and hiding behind the excuse that the client refused to pay for the time necessary to do so. It’s similar to the examiner who refuse to fully consider an application and do a complete search and then hide behind the excuse that the Office does not give them enough time to do their job properly.

  4. 138

    …and you might add how it ties into the loss of credibility by excessive strawman use that we were immediately discussing.

  5. 137

    MaxDei,

    You will have to explain your post of 7:30 AM.

    It is unclear what you mean by both “reductio ad Absurdum” debating technique, as well as your stand on the legitimacy of whatever this technique is.

  6. 136

    >>I find it somewhat hypocritical that many of >>these same attorneys then complain about >>examiners who don’t read the specification or >>only does keyword searches without taking time >>to fully understand what the invention is.

    There is one word that was written by Congress that should make all of this make sense to you: “unless”.

    It is your burden not the attorneys.

  7. 134

    MaxDrei,

    and here in the States, the meaning is not so generous, being much closer to your “Distort what the other says, into the shape you need, then burn it down?” Generally, it is a false and shallow argument that purports to outline your opponents position, but has fatal flaws which one then exploits.

    The style backfires when it is used to such excess that one’s credibility is compromised (the prime example on these boards is Malcolm and his many pseudonyms).

  8. 133

    It occurred to me to check out “Strawman” in Wikipedia. With some satisfaction, I found out that the original Strawman is a fellow who stands outside a courtroom with a straw protruding from his shoe to advertise that he is available for hire, to bear false witness. So, that’s alright then. Nothing to do with European patent attorneys.

    From there, the term developed into the still current meaning: a front; a person who allows himself to be used by others.

  9. 132

    Someguy, I argue that there’s a stepless continuum of levels at which one can review a document. You respond:

    “Merely staring at a document and flipping page after page without trying to understand anything is not reading”

    but I fail to see how that response brings to the discussion anything useful. Where in the world, other than in your imagination, is this process of:

    “staring at a document and flipping page after page without trying to understand anything”

    going on. Nobody but you has the time (or the inclination) to spend on such pointless activity, do they?

    Readers, is the comment from Someguy an example of the process of “Erecting a Strawman”? Distort what the other says, into the shape you need, then burn it down? I ask because at the EPO a Strawman is a party to a dispute that is a proxy, a front for the real party of interest. The thought might amuse you, that the ranks of Strawmen of the EPO are predominantly European Patent Attorneys.

  10. 131

    “It all depends what one means by “read”.”

    Read means reviewing the reference and giving honest effort into understanding what it’s saying. Merely staring at a document and flipping page after page without trying to understand anything is not reading.

    If anyone, examiner or attorney, is merely staring at pages without honestly trying to understand what they’re staring at, they should do everyone a favor and find another job.

  11. 130

    It all depends what one means by “read”.

    Following (!) this thread, anybody would think that “reading” a document is a binary operation. Either you have “read” the document, or you haven’t. But is that really the case?

    Could it be that I’m not the only patent attorney that gives the text of a document a degree of attention that is somewhere on a continuum between “a quick glance” and “digested every word, carefully and thoughtfully”?

    In fact, I’m hard put to think of any document I have “read” in the last month in a manner that is right at one end of that continuum, or the other. Every one, I think was somewhere between 5% and 100% “read”.

    And it varies through the document. Some paragraphs I study carefully, while others receive much less attention.

    If other readers are doing what I do, is there in truth anything much in the way of a disagreement between us?

    We wouldn’t be arguing just for the sake of argument, would we?

  12. 129

    “I don’t like it when examiners don’t take the time to read the specification and if necessary do additional research to understand the inventive concepts in an application and likewise, I’m having a hard time finding any sympathy for any attorney who don’t take the time to fully review the references cited.”

    QUOTED FOR TRUTH

  13. 128

    While I understand that time and cost constraints are reasons why attorneys don’t read beyond what is cited by an examiner, I find it somewhat hypocritical that many of these same attorneys then complain about examiners who don’t read the specification or only does keyword searches without taking time to fully understand what the invention is.

    In some instances, especially if you don’t have sufficient background knowledge in the subject matter being prosecuted, reading the entire reference is the only way to fully appreciate the relevance of the reference. Plus, if you still have trouble understanding how the examiner is interpreting the reference, you always have the option of calling the examiner for clarification.

    I don’t like it when examiners don’t take the time to read the specification and if necessary do additional research to understand the concepts in an application and likewise, I’m having a hard time finding any sympathy for any attorney who doesn’t take the time to fully review the references cited.

  14. 127

    While I understand that time and cost constraints are reasons why attorneys don’t read beyond what is cited by an examiner, I find it somewhat hypocritical that many of these same attorneys then complain about examiners who don’t read the specification or only does keyword searches without taking time to fully understand what the invention is.

    In some instances, especially if you don’t have sufficient background knowledge in the subject matter being prosecuted, reading the entire reference is the only way to fully appreciate the relevance of the reference. Plus, if you still have trouble understanding how the examiner is interpreting the reference, you always have the option of calling the examiner for clarification.

    I don’t like it when examiners don’t take the time to read the specification and if necessary do additional research to understand the inventive concepts in an application and likewise, I’m having a hard time finding any sympathy for any attorney who don’t take the time to fully review the references cited.

  15. 126

    >>I don’t really see how you can judge the >>examiner’s understanding of a reference >>without reading it yourself.

    By reading what the examiner wrote and the part of the reference referred to by the examiner.

    I am always honored when NAL comes to my aid. The baboons are thick on this board.

  16. 125

    Deep South,

    And presumbably you know how to read before criticizing whether someone takes the time to read.

    D’oh!

  17. 123

    Yes sir, that straw is genuine deep South straw.

    Deep South,

    Please make sure you actually READ what NWPA has written before flying off the handle (in response no doubt to his flying off the handle).

    NWPA has never said that he does not read the reference at all. He said merely that he reads enough to figure out the examiner’s position. Granted, sometimes (and unfortunately many times) this is a very light reading.

    Btw – are you related to 6? You two share a certain reading comprehension ability.

  18. 122

    Unless you’re practicing clairvoyant law, I don’t really see how you can judge the examiner’s understanding of a reference without reading it yourself.

    I “sumbit” that if you do not read a cited reference because you assume the examiner doesn’t know what he’s doing, merely argue in response, and the rejection is valid, then it is you who is the “lazy %$#&%$ that isn’t doing his job and ripping off [his] clients.” What exactly do your clients pay you the big bucks for NWPA, if not to even read the references cited against their claims? Don’t you think you have a professional obligation to craft the best response to each office action?

  19. 121

    Anon56- if your original intent was to troll NWPA, you did a good job. You gave him the serious poopoopance.

  20. 120

    And, of course, I use my judgment regarding how much of a reference to figure out in order to properly advise my client. Part of my judgment is understanding my client’s goals in prosecution.

    Really ticks me off that anyone would dare to say that I have an ethical duty to understand a reference beyond the examiner’s understanding of the reference. Bums is what you are. Dudas bums. You are not judges. You are examiners. What angers me so much about this is that this attitude is absolutely opposite to what it should be, and strikes to the heart of what the problem with the PTO is.

    MM you are a coward. You run anytime you are forced to face down an attorney who understands the law. Man (or woman) up to your cowardice and craven ways.

  21. 119

    And, I will go further, to say that a examiner that rejects my claims who does not understand the reference they are using to reject my claims should be fired. Kicked out the door. They are abusing the public. They are in effect saying I am too lazy or dumb to figure this out, but it may have something to do with it, so I will put it down and make you pay to figure it out because my job is too hard.

    Entitled to a patent unless….

    Not prove to me your claims are novel and nonobvious over the prior art and you can have a patent.

    What do you think you are being paid to do examiners?

    Obviously, a sensitve issue.

  22. 118

    And if you baboons respond to this try your best to stay on point. And, 6, you think that I have a responsibility to understand a reference beyond the examiner’s understanding. So, the examiner can do a keyword match and put a reference down based on my claims having a word or two that matches words used in a reference, and based on this slim relationship between my claim and the reference, my client is supposed to pay me to figure out the reference.

    I don’t think so. That isn’ the way it should work and that isn’t the law.

    I sumbit that you are a lazy %$#&%$ that isn’t doing his job and ripping off my clients.

  23. 117

    A patent examiner named 6 wrote: >>All I have to say is that NWPA’s position >>explains perfectly why so many attorneys >>respond with nonsense. As much nonsense as >>allegedly comes from the Office.

    A patent examiner named MM wrote:
    >> don’t even want to know which of the regular >>morans here wrote that nonsense.
    >>I think it’s about time that the Federal >>Circuit issues a juicy inequitable conduct >>opinion to remind the hacks here what the >>difference is between “duty” and “idiocy.”

    You see what is so interesting about this point is that the USPTO is trying to get away from their job of finding the most relevant art. That is the core of examination and the USPTO’s and the examiner’s job. Not the applicants. The applicant has a duty to disclose what they know that may be relevant to patentability, but not to search the prior art, not to provide obvisouness explanations, etc.

    This is at the core of the problem of the USPTO. Do your job USPTO and all the other problems will melt away.

    The examiners on this board that were weened by Dudas seem to think that is the attorneys job–no it is not!!! That is your job and what my clients are paying you to do you lazy *&%$#*s.

    Find the best art and make your arguments. It is not my client’s responsibility to read the art and figure it out for you. My clients have paid for many hours of me explaining prior art to examiners. Focus on your jobs.

    And, baboon, your prayer for the federal circuit to come and back up your position will never happen unless the laws are changed. And if the Congress changes the law, then I will change my practice, because unlike you I am an ethical and moral person. Go read the laws, entitled to patent unless. It doesn’t say that the applicant is suppose to figure out what the best art is and submit it to the USPTO.

  24. 116

    BigGuy,

    “But, refusing to go beyond the letter of your obligations to the Office and beyond what your client is willing to pay for might sometimes be unethical, mightn’t it?”

    Quite simply: No. At least not in the situation you present.

    However, I will note that this intellectual exercise can be mooted by the way you approach your practice. I am not sure just how either you or NWPA structure your practices, so I cannot comment on the particular ethics involved. In my engagements, I am in control of my level of duty. It is my professional opinion that my clients pay for, and that opinion includes just how much of a cited reference to review as I see necessary.

    To NWPA’s point, if in one’s professional opinion an entire reference is not required to be reviewed, there is absolutely NO ethical question involved. None. Of course, different people will have different professional views on what is required (I require thoroughness).

    I do not think that you are tracking what NWPA is discussing in his rebuttal to Anon56. Clearly NWPA paints a picture of an unethical situation, in that the attorney in his hypothetical is padding his hours at the client’s expense. In this regards, NWPA is closer to the mark and you are farther from the mark – hence my comment.

    In sum, as it were, my client doesn’t decide where I stop in reviewing cited art. I do. My client pays for my judgement.

  25. 115

    “Surely you can imagine an unethical attorney reading every reference whether or not he/she felt it was relevant or not.”

    Surely I can. Of course, reading those references is not unethical. Billing the client for that time might be, depending on the arrangement you have with your client.

    NAL suggests that I’m a little “off”, and repeats that “examination by the applicant is NOT required.” My point is that while it is not required by the Office, it may well be required by my duty to my client. Professional ethics don’t end with meeting the minimal requirements of the Office and billing my client properly. I have an obligation to represent my client competently, and that might well require that I spend more time reading references than I like. It might also, horrors upon horrors, require that I do some of it for free, if my prior agreement with the client and my obligation to do a thorough job conflict.

    In sum, reading more than is strictly necessary is never an ethical violation, so it’s definitely not “closer” to an ethical violation than the approach Anon56 attacks. Billing for a thorough review of references might be unethical, depending on the understanding you have with your client. But, refusing to go beyond the letter of your obligations to the Office and beyond what your client is willing to pay for might sometimes be unethical, mightn’t it?

  26. 114

    “I would argue that reading references beyond what the examiner’s understanding of the reference is closer to an ethics vioation than my practice.”

    I don’t even want to know which of the regular morans here wrote that nonsense.

    I think it’s about time that the Federal Circuit issues a juicy inequitable conduct opinion to remind the hacks here what the difference is between “duty” and “idiocy.”

  27. 113

    All I have to say is that NWPA’s position explains perfectly why so many attorneys respond with nonsense. As much nonsense as allegedly comes from the Office.

  28. 112

    I also suspect that Anon56 is not an actual attorney, but someone from the PTO.

  29. 111

    BigGuy and NAL: Good points.

    My point BigGuy was that it is a balancing act how much time to spend on the references. Surely you can imagine an unethical attorney reading every reference whether or not he/she felt it was relevant or not. For example, let’s say an attorney read several pages of a reference and realized it was way off base. The client said, I’ll trust you to spend what it takes to get me a good patent. The attorney is light on billing for the week, so he/she decides to analyze the reference that is way off base, and then bills the client for the hours reading the way off base reference so as to make his/her hours for the week.

    That is one extreme. The other would be not to even look at the reference and make statements about the reference.

    And, BigGuy, my position isn’t silly, as I said closer to being and not that it was anywhere near being unethical. My point being that if I read the reference well enough to understand the examiner’s arguments, that no one could question the ethics of spending time performing that work, but that time that goes beyond understanding the examiner’s argument brings one out of the *absolutely* safe zone. This doesn’t mean that any of the work you or NAL mention above is anywhere near a questionable zone. Just that it is beyond the absolutely necessary zone.

    Often I read the references and do exactly what you and NAL mentione above.

  30. 110

    I agree with BigGuy (to a point). As to any type of ethics violation, BigGuy is off a tad, since examination by the applicant is NOT required (nice reference to the illegal power grab by Dudad NWPA), it is de facto not required to research the full extent of cited art (unless the full art is cited, in which case, see the note by breadcrumbs).

    I do agree with BigGuy as to while reviewing the entire reference is not a requirement, good practice means being thorough. Besides, in not just a few cases, I have picked up from the cited reference sections of teaching away and/or destruction of the reference when trying to use as suggested by the examiner. Such when included in the record makes for stronger cases on Appeal.

  31. 109

    “I would argue that reading references beyond what the examiner’s understanding of the reference is closer to an ethics vioation than my practice.”

    What is your authority for stating that it is? What would a complaint against me look like? What rules/law and cases would be cited against me?

    With all due respect, Night, your position is almost as silly as that of Anon56. Based on your previous comments, this surprises me, so I suspect that you got a little carried away in this instance. I agree that your duty of candor to the Office doesn’t require you to pore over a reference to figure out what the examiner might have said had he actually read the reference. But surely you have a professional obligation to advise your client reasonably thoroughly, don’t you? Doesn’t that require having a pretty good idea of whether future rejections on the same reference are likely to stick, notwithstanding the examiner’s inability or unwillingness to articulate a proper rejection, or whether the reference is likely to present problems if/when the patent is ultimately enforced?

  32. 108

    Night Writer Patent Attorney and Anon56,

    Isn’t there a reason why the Office has moved away from the one page form paragraph of “see general reference one in view of general reference two”?

    I believe it has something to do with the Office following its own rules as to pointing out with enough particularity why a claim is rejected so as to provide the applicant a sound rationale to refute or amend (I believe there is an MPEP section that can be used in response to a “too-vague” rejection).

    The fact that such generic Office actions are no longer promulgated should be an indication of their standing and historical usefulness (or lack thereof).

  33. 107

    >>NWPA: Suppose the PTO went back to the 1 page >>rejections of Ref A in View B without >>explanation. Patent attorneys understood that >>simple sentence for almost 100 years. What >>would you do?

    This is a good question. And, what I am forced to do is read the whole reference so that I can say the whole reference does not disclose or suggest. There are other ways around this, but to date the only action I’ve ever taken is to read the whole reference.

  34. 106

    Anon 56: you have certainly conflated a lot of issues together and made a rather strong accusation.

    1) It is not unethical not to completely read the references. What is your authority for stating that it is? What would a complaint against me look like? What rules/law and cases would be cited against me?

    Typically, I see the examiner pulling out a few sentences based on a textual match of the claim and the prior art. I understand the reference well enough to understand the reference better than the examiner in that I have to understand why the rejection is not appropriate. I do not feel the need to understand a reference better than the examiner, and do not spend my client’s money reading a reference that the examiner hasn’t read merely because there was a textual match with a claim. I would argue that reading references beyond what the examiner’s understanding of the reference is closer to an ethics vioation than my practice. What right have you to spend your client’s money reading references that happen to have textual matches with the claims? Intellectal curiosity? And you want your client to pay for that? It may be that after reading a part of the reference I may think perhaps there are more parts to this reference that may be applicable to my claims, but then again I do not have an obligation to follow up on a hunch. I do not have a proactive duty to search for a way for my claims to be rejected. And many of my clients think it is the USPTO’s responsibility and not theirs. Think very hard about that last sentence. You will find statutes,rules, and cases that support that position. I know that Dudas wanted to try and flip that, but it wasn’t flipped.

    2)What facts do you base your implied assertion that you get more allowances than me? Where did that come from? Where did a two line claim come from? Where did the presumption that your claims are better than mine come from?

    Think before you write nonsense. Also, try to understand what our differences are. What are they? The difference between our practices is that many of my clients assume that it is the Office’s responsibility to grant a patent “unless” they can find references to reject the claims under 102 and 103. Gee, did that come from the law?

    For the record, I also have clients that pay me to do prior art searches and to draft claims that I think may be allowable over the prior art before writing an application. These are wonderful clients to have. But,the search costs money and the process of figuring out the novel features over the prior art is more expensive.

    Some clients also want me to read references and tell the examiner why they aren’t applicable and file IDSs and have patents with hundreds of referencs listed. Wonderful clients to have when you can find clients willing to pay for this work.

    For my clients that don’t want to pay for a search, I draft claims that include what the inventor feels is the invention. I provide plenty of dependent claims that insure that we have many positions to fall back on. I think I am pretty good at squeezing out everything the inventor did in the claims.

    Now, please be specific about your accusation that my practice is unethical. Try to support your accusation with the law and facts. And ask yourself what ethical violation you may be breaking? Also, try to keep in your head how two people’s judgment may differ and how that may affect their treatment of prior art.

  35. 105

    Anon 56: I don’t like the sound of your

    “rejections of Ref A in View B without explanation”

    I advocate the EPO position, which is more like:

    1) Write the text of the ind., interspersed with reference numerals from D1 (to show where in D1 each of the featues in the claim can be found). 2) Announce the feature “X” that gives novelty over D1.

    3) Write the specific reason (Y) why PHOSITA would modify D1 by the inclusion in it of feature X (which, see D2, is also known in the same art, for the same reason Y.

    4) Invite the attorney to reply.

    Once you get used to the EPO-PSA approach, 6, you can rattle of one penetrating FAOM after another, in quick succession, and await tasty replies.

    And if you can’t hack it, in a specific case, you should allow it.

  36. 104

    NWPA I think the way you practice is unethical. You have to READ the reference. You said that “I don’t have time to go and figure out the entire teaching of the reference.” Then why not drop a few clients and spend the time to actually read the references. I actually READ the references, get allowances, and could use a few more clients.

    “Other clients particularly corporate clients just want me to claim the invention and not worry about the prior art.”
    So NWPA, you file a 2 line claim and then complains because you got a rejection? The reason I believe I get so many allowances is because I’ve actually READ the references and then draft claims outside of the references. Duh. Its not rocket science.

    NWPA: Suppose the PTO went back to the 1 page rejections of Ref A in View B without explanation. Patent attorneys understood that simple sentence for almost 100 years. What would you do?

  37. 103

    “Is not the standard “nothing in the deps” paragraph there, which reveals that the deps have indeed been closely scrutinised?”

    Yeah I’m a bit confused why practice evolved the way it did here. It is stu pid beyond belief. And yes max the standard form paragraph is there.

  38. 102

    Well, that is it for me for the long weekend. Have a good weekend! MLK was a great man!

  39. 101

    6, you write:

    “For some odd reasons the EPO decided to ignore all the deps.”

    In my experience, they do look at the deps, to see if there is something there they can recognise as patentable. If they see it, they say it. They want their disposal point.

    The absence from the FAOM of any analysis of the deps cannot be taken as evidence that the Exr has ignored them. Is not the standard “nothing in the deps” paragraph there, which reveals that the deps have indeed been closely scrutinised?

    It’s the reasoning you’re not seeing, isn’t it. Well, to nod towards the “helping inventors” thread, if Applicant doesn’t announce, in the app as filed, technical effects delivered by the subject matter of a dep, over and beyond that of the ind, how can that dep be any more patentable than the ind? No Exr reasoning necessary. In Europe that is.

  40. 100

    “The FAOM often consists merely of a first analysis by key word search of claim words. Even then, the second round gets you a new search on a badly interpreted reading (often using any prior art discussed as cobbled together 103’s). ”

    Cry more and write better claims.

  41. 99

    “Such a first reading from the US side is so infrequent as to be non-existent in the last several years.”

    Only in some “arts” :(

    “This includes FAOM’s on cases where I have submitted not only the art cited from the related EP application, but the International Search Report and Written Opinion itself.”

    Yeah I’m doing one of those cases now. The EP rejection made of the exact same claims that I have in front of me is attrocious and ignores more than half the claim. I’m tempted to make the same 102 as the EPO did, just to see how much the applicant loves the EPO’s search and analysis. For some odd reasons the EPO decided to ignore all the deps. Maybe it was the whole restriction practice over there or something.

  42. 98

    First MaxDrei,

    I will give Kudos to the EP Examining Corp. Usually the first report is an admirable, professional job that exhibits the examiner’s knowledge of the field and a careful reading and understanding of the application.

    Such a first reading from the US side is so infrequent as to be non-existent in the last several years. This includes FAOM’s on cases where I have submitted not only the art cited from the related EP application, but the International Search Report and Written Opinion itself.

    NWPA speaks of a major difference between EP and US prosecution. As can be witnessed by certain famoose US examiners, there are those who do not think it is even required to READ the application. The FAOM often consists merely of a first analysis by key word search of claim words. Even then, the second round gets you a new search on a badly interpreted reading (often using any prior art discussed as cobbled together 103’s). We are not yet far enough removed from the RCE gravy train era that I can expect an examination on par with the much quicker response from the EP before a third action. Typically speaking, the first action from the EP is of such higher quality that my path forward is so clear that I have not witnessed NWPA’s dilemma, so I cannot comment on that.

  43. 97

    But, you are right, the european attorneys have a different view of what the differences are. It is interesting speaking with them.

  44. 96

    >>the EPO Exr must (I think) already at that >>stage have a good understanding of what the >>claim means.

    Well, that is the big difference. And, if you can find a fault in their reasoning then you get a patent. In the US they usually don’t understand the invention at first and keep on searching and searching each time your client pays you to explain the invention to the examiner. After an interview and several office actions, the examiner finally understands and if they are a primary will give you a patent.

    IF they have to go to a SPE, then oh boy, you can be in for another round or two.

  45. 95

    Thanks Night. Fascinating. You write:

    “once you get the examiner to understand the difference between your claims and the references”

    you get a European patent. My experience is a little different. It is:

    “once you can get your instructing US patent attorney to understand the difference between his claims and the references”

    you can get for him a European patent.

    In support of my position, I cite the uniform praise of the quality of the EPO search report. To do such a focussed search, the EPO Exr must (I think) already at that stage have a good understanding of what the claim means.

  46. 94

    >>”the follow-up is much better in the US”. Can >>you say a bit more?.

    I mean once you get the examiner to understand the difference between your claims and the references, you get a patent.

    In the US, the examiner goes and does another search and likely as not comes up with another rejection with different art.

    Generally speaking of course.

  47. 93

    7. Don’t hold your breath. Pay the exam fee and all you will get is a two-liner from the EPO computer.

    Unless you first address what’s in the “opinion” on patentability that is part of the EESR. If you do that, the EPO Exr will respond to that, in a tailored FAOM. It’s like the game of ping-pong. (Is that what you call table tennis in the USA?).

    The EPO does 103 by toggling between technical features and technical effects. It is not as if any technical effect is enough to get you past the 103 hurdle. tell the Exr which feature is not in D1 and what effect it has. Then look forward to a useful FAOM.

    Night, what do you mean by:

    “the follow-up is much better in the US”. Can you say a bit more?.

    Noise asks me:

    “Why do you seem surprised”

    I don’t know. I didn’t think I was expressing such surprise. Never mind. Not enough time to get things 100% clear. This blogging is addictive but it sure does cut into my concentration on real work.

  48. 92

    “7: It’s this game of “After you, good Sir. No, no, really. After you Madam” that is so hard for adversarial Americans to play, in a civil law jurisdiction. Is there really nothing in common, between your claim (on its broadest reasonable interpretation) and the reservoir of disclosure content in D1? (I note you don’t dispute the “quality” of the search, as such). If so, just write and explain, and all will be well. At least he’s not going to start searching all over again.

    As to “technical” that’s what your EPO counsel is there for, to help you understand”

    I try not to conduct things in an adversarial manner with the USPTO. Being civil and polite with the examiner often gets you a lot farther.

    D1 and my claim are directed to the same technical area and share some common features. But the distinguishing feature (what I would put after CIT if it were a two part claim) is absolutely positively not in D1.

    I understand all too well what the EPO means when they say some features do not produce a technical effect, and do have a fairly decent understanding of how to prosecute before the EPO. But this case is silly. A physical configuration of an antenna doesn’t produce a technical effect? Is a different radiation pattern not a technical effect?

    Once examination is actually under way, I expect to receive a better and more reasoned action.

  49. 91

    >>At least he’s not going to start searching all >>over again.

    That is the key to getting an EP patent. The examiner is usually so sure of their intial judgment of the application and their reasoning that you want to play into that and find some difference, and then they award the patent. In the US the examiner would then do another search and give you a 103.

    I think the EPO gives in general a better first search report, but the follow-up is much better in the US.

    Thanks MaxDrei reading your thoughts has helped me to think about this.

  50. 90

    MaxDrei,

    The game to play for Americans is that the Office actually examines and notes the differences. That is part of the job.

    It is not so much a difficulty in playing the game as it is in understanding that the games are different.

    You yourself exhibit the same difficulty in understanding (in looking at playing the US game). Why do you seem surprised that Americans find the EPO game difficult?

  51. 89

    $225 is an absurd amout of money for a book on common sense. We could all buy one copy and photocopy it, so long as copyright ethics are not part of the book.

  52. 88

    7: It’s this game of “After you, good Sir. No, no, really. After you Madam” that is so hard for adversarial Americans to play, in a civil law jurisdiction. Is there really nothing in common, between your claim (on its broadest reasonable interpretation) and the reservoir of disclosure content in D1? (I note you don’t dispute the “quality” of the search, as such). If so, just write and explain, and all will be well. At least he’s not going to start searching all over again.

    As to “technical” that’s what your EPO counsel is there for, to help you understand.

  53. 87

    [quote]7: EPO quality falling away? Thanks for the tip but, no, I don’t think so. I smell wishful thinking, or self-delusion. Are you saying the EPO opinion is too mild or too severe. Admittedly there are a great many newbies at the EPO these days, but the 3 member Examining Division institution is still in place and must be negotiated, before a case can get through to allowance.

    Wait on, and see what claims you get through to issue[/quote]

    Wishful thinking? Why would I want quality of examination at ANY patent office to go down? I have to say I find it a little humorous that you cannot fathom that, maybe, the EPO could issue anything but an ESR so perfect that god himself couldn’t do a better job.

    I’m saying the opinion is trash. I just received one where the examiner simply said “D1 discloses…” then merely cut and pasted the wording of my first claim in there. No pinpoint citations, nothing. He then simply stated that any differences would be non technical anyway.

    This was an application directed to an antenna array… UMMMM… non-technical my rump. Further, there were clear, non-trivial distinctions of my claim over the prior art.

    That, good sir, is a trash opinion.

  54. 85

    If I had the money to spend on a book right now, I would buy this one because I worked with Mercedes and I know she is sharp and a very nice person too.

  55. 84

    7: EPO quality falling away? Thanks for the tip but, no, I don’t think so. I smell wishful thinking, or self-delusion. Are you saying the EPO opinion is too mild or too severe. Admittedly there are a great many newbies at the EPO these days, but the 3 member Examining Division institution is still in place and must be negotiated, before a case can get through to allowance.

    Wait on, and see what claims you get through to issue.

  56. 82

    “top quality EPO search report and patentability opinion”

    Max, those days are long gone. I have one institutional client who has been filing a lot of their cases in europe as well, and in about 3/4’s of those cases, the EPO search report has been lower quality than what the USPTO would produce.

    Not the search itself, which is still good, but the analysis of the art found and the rejections made… Wow. Two years ago I found the EPO search reports to be top notch. Now, seems like Dudas is over at the EPO giving instruction.

  57. 81

    Wait a minute. Isn’t that an unconscionable fee being charged for that book, i.e., isn’t the book’s price an ethical violation ;) Just kidding.

  58. 79

    $255?!?!? That is way too expensive. The partner that trained me many years would ask me this question – “How would you sleep the night before a deposition on what you are doing?” If you would sleep fine, then what you are doing is fine. If you would not sleep well, don’t do it.

    The book is simply a tax on those that don’t have a moral rudder to guide them.

  59. 78

    “I’ll refrain”

    Silence is the best form of refrain. Especially from you, 6.

    Your post is something like “I’m posting to tell you that I am not going to post…”

  60. 77

    “Some of you probably think that all this is just idle chatter.”

    Actually, no. We know it’s idle chatter.

  61. 75

    “I r must follow the MPEP? LOL. Please, cite me some sections for my amusement.”

    You might want to read the Foreword to the MPEP.

    I’ll quote the relevant parts for you:

    “It contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.”

    and

    “Examiners will be governed by the applicable statutes, rules, decisions, and orders and instructions issued by the Director of the USPTO and other officials authorized by the Director of the USPTO. Orders and Notices still in force which relate to the subject matter included in this Manual are incorporated in the text.”

    You’re welcome.

  62. 74

    Oh God..I guess this site is joining the big commercial corporate advertising machine…

    Dennis, please don’t automatically flog Amazon unless necessary. The ease of citing Amazon in every book review and blog post (by everyone, not just you) is part of the threat to the survival of every worthy but smaller and less net-connected bookstore.

  63. 73

    Noise as soon as you show a basic understanding of what is under discussion then I’ll respond further. Since you do nothing but miss the entire discussion I’ll refrain.

  64. 72

    Ignoring certain Examiners inane contributions, I too have to say that I would buy the book if it were a lot cheaper. Here’s an idea, how about a (much cheaper) paperback edition after the hardback has sold for a while? If they can do it with John Grisham novels, why not books on ethics?

    More to the point, long ago David Hricik told me he would be including a specific chapter on patent agents, and that he would let me preview it and critique it for him. Never saw it. It is of course entirely possible that no such chapter ever made it’s way into the book. There again, at that price it’s a little tricky to check on that.

    If there is such a chapter and you forgot to show it to me, didn’t know how to contact me, etc., that’s OK too. I am curious about it, though.

    Alun Palmer, Patent Agent

  65. 71

    6,

    “trolling” indicates a level of intelligence that you have yet to show. The “publicity for the issue” is like your famoosity – not a good thing for you.

    That hole you are standing in keeps getting deeper and deeper.

  66. 70

    I should go ahead and tell you guys something. A bit of a confession if you will. Some of you probably think that all this is just idle chatter. In fact what I am doing is creating publicity for the issue, hoping that some litigators will take note, find the issue in a case, and bring the issue to the fore. At which point I will be interested to hear what a judge has to say about it. I really could care less what you guys think about it, but keep responding, it’ll make the thread more interesting.

    Remember, thousands of people are reading this blog. Hundreds at least must be reading the comments.

    Now, some of you might call this a form of trolling. I beg to disagree. I do have an interest in the outcome of the issue at hand and that negates trolling.

  67. 69

    “…the contents were so stunted and convoluted and devoid of reason”

    lol – yes, more famoosity of 6 (that’s not a good thing 6).

  68. 68

    “…you have a hard time swallowing the trap that you’ll probably fall into”

    No, 6, I recognize your traps rather easily.

    The problem you have is that you have no answer when I point out your trap and you must resort to incoherent babbling (only slightly different than your primary babbling). At least I haven’t seen your “now repeat back to me” nonsense in a while…

    Just put down the shovel and stop digging.

  69. 67

    “When you say “child’s play to find something about in a “textbook” on my shelf”, you show that you were simply TOO LAZY to do your job right the first time and actually supply a reference.”

    As I explained, citing the references isn’t a pleasant undertaking what with all the scanning and perhaps copyright infringin’.

    Even if what you say is true, what of it?

    “Instead, you threw out an “official notice” which from the fact pattern given was actually correctly rebutted (the fact itself was NOT instantly and unquestionably valid – you had to supply a reference).”

    Actually I never did supply a reference.

    “Whether the fact itself is ultimately valid is a FAR CRY from instantly and unquestionably valid. ”

    I’m not talking about the fact that was noticed. I’m talking about the factual statement which the attorney made. There is a difference. Whether or not the factual statement that the attorney made was true or not is at issue here.

    “Thus, the statement on the record is not false”

    Technically it was false. And even if I had cited (or “supply”) a reference (which I didn’t) then so long as I did so instantly and unquestionably then the statement the attorney placed on the record is still false. And had I have cited a reference then I promise it would have been instantly and unquestionably.

    I know, I know, you have a hard time swallowing the trap that you’ll probably fall into sooner or later. Or perhaps you already have a few patents that are ripe for invalidation by a court here soon? Looking forward to the malpractice suit?

  70. 66

    #1 rule of ethics for patent attorneys (or any attorneys for that matter):

    Never sue your client for unpaid fees. They WILL file a countersuit for malpractice.

    #1 rule of ethics for patent attorneys only:

    NEVER miss a critical filing date.

    That’s pretty much about it.

  71. 65

    I was scrolling down the page and came upon a post (hereinafter “lengthy manifesto”) that was so long I couldn’t see the author’s name. Upon cursory review, the contents were so stunted and convoluted and devoid of reason, I instinctively shut them out of my consciousness fearing that they would lower my IQ significantly. I thought to myself “I bet this is 6” before I could see who the author was.

    Sure enough it was 6.

    Amen.

  72. 64

    6,

    Put the shovel down and stop digging.

    You vanity belies your bravado. When you say “child’s play to find something about in a “textbook” on my shelf”, you show that you were simply TOO LAZY to do your job right the first time and actually supply a reference. Instead, you threw out an “official notice” which from the fact pattern given was actually correctly rebutted (the fact itself was NOT instantly and unquestionably valid – you had to supply a reference).

    Whether the fact itself is ultimately valid is a FAR CRY from instantly and unquestionably valid.

    Thus, the statement on the record is not false and your whole thread here is (once again) built on faulty logic. My what a lovely shield of persistent ignorance you have.

  73. 63

    “Incidentally, you’re about two centuries out of date with regards to your apparent notion that “may” and “can” should not be used interchangeably. ”

    My english teacher would have your head.

    ” In any event, I meant “can I conclude” in the sense of “is it possible to conclude”, which usage would likely be considered proper by your 5th-grade English teacher.”

    It is possible for you to conclude whatever you wish. It is not possible for me to conclude what you suggest however.

  74. 62

    “I don’t believe a court is likely to find an attorney argument to be IC when all of the relevant information/references are squarely in front of the examiner. If you are aware of a contrary case, I’d like to hear about it.”

    Keep your eyes open, this practice of making such statements on the record just started not too long ago.

  75. 61

    “What was the basis for taking official notice when you wrote the OA? Surely you had something in mind… ”

    No less than 3 textbooks on my shelf which I have read (nearly? entirely?) cover to cover?

  76. 60

    Six says,

    “I had this guy correctly traverse my official notice on a dependent claim.”

    What was the basis for taking official notice when you wrote the OA? Surely you had something in mind…

    “Tell it to the judge.”

    I don’t believe a court is likely to find an attorney argument to be IC when all of the relevant information/references are squarely in front of the examiner. If you are aware of a contrary case, I’d like to hear about it.

  77. 59

    OK, so now we’ve gone from sophomoric posturing to fifth-grade see-how-clever-I-am comments. Not a favorable trend, 6.

    Incidentally, you’re about two centuries out of date with regards to your apparent notion that “may” and “can” should not be used interchangeably. In any event, I meant “can I conclude” in the sense of “is it possible to conclude”, which usage would likely be considered proper by your 5th-grade English teacher. Why don’t you slip down the hall during recess and ask her?

  78. 57

    “Oh, I see. Can I conclude that your office actions consist of nothing but headings?”

    You may conclude anything you wish to conclude.

  79. 56

    “Need we quote from the MPEP, which you MUST follow.”

    I r must follow the MPEP? LOL. Please, cite me some sections for my amusement.

  80. 55

    “FYI, the heading explains the basis of the rejection.”

    Oh, I see. Can I conclude that your office actions consist of nothing but headings?

  81. 54

    6, don’t be ridiculous. Need we quote from the MPEP, which you MUST follow.

  82. 53

    “But none of that relieves the examiner of his obligation to actually explain the basis of the rejection. ”

    FYI, the heading explains the basis of the rejection. Believe otherwise at your own risk.

  83. 52

    Exactly what BigGuy said 6! Entitled to a patent UNLESSS—it is your job 6 to show it is not patentable not ours to show that it is.

  84. 51

    “You’ll be hearing from your SPE pretty quickly.”

    He’ll be saying “Good thing you thought of that, it was the right thing to do.” And I’ll say “thanks.”.

  85. 50

    “I might have to start sending back such responses as non-responsive :( ”

    Go ahead and try that, tough guy. You’ll be hearing from your SPE pretty quickly.

    I’ve recently noticed some new boilerplate language from some of the lazier examiners I work with. (Yes, I can tell the difference between those who take their jobs seriously and those who don’t.) Something to the effect of “citations to the prior art are for the convenience of the Applicant – the prior art must be considered in its ENTIRETY.” I’ll consider the entire reference when doing so is reasonable, and, like several earlier commmenters, I’ll amend the claims when the examiner has something, even if he doesn’t know it. But none of that relieves the examiner of his obligation to actually explain the basis of the rejection. If the cited portion of the reference does not disclose what the office action says it does, then the examiner has not met that obligation. It’s really that simple.

  86. 49

    ” If it is so trivial a task to evidence the element in the prior art, then why should the Examiner not put forth the allegedly minimal effort to do so? ”

    Because some people know the arts they prosecute in and are professional :(. The frowny is because of the word “some”. I know, I know, you might not fall into this category of people broj.

    Besides broje, the issue isn’t whether or not taking official notice was proper, what is at issue is whether or not a false statement was made on the record. The attny didn’t say that it was improper for the office to take official notice of the fact. What he said was that the fact noticed wasn’t capable of instant and unquestionable validation. That, as a statement of fact, is false, as shown by the actions taken at time of filing.

    “It is not a false statement on the record to say that your Official Notice is incapable of instant and unquestionable validation, while at the same time providing an IDS with 102(b) art on the subject. ”

    Tell it to the judge.

    “The art may have been the result of a second substantial search in light of your office action, hence it doesn’t prove anything regarding instant accessibility of validation of your Official Notice. ”

    It does at the moment he wrote/filed the response. BTW, the standard isn’t “instant accessibility” but even if it was, at the time of writing/filing it was instantly accessible.

    “Is it possible the attorney interpreted the claim terms (and thus how the reference could be mapped to them) differently from you?”

    Not unless he’s a complete mor on. It’s a fairly straightforward limitation that anyone with even basic exposure to the art recognizes immediately.

    “6 – chances are the attny either didn’t read the entire reference or read it but didn’t understand its significance (or how you would apply it). That’s a much simpler explanation than the dastardly attny submitting the reference knowing it’s a silver bullet, making incorrect statements about the reference, and hoping you overlook it.

    You don’t often give us credit for this, but we too are interested in procuring valid, enforceable patents for our clients.”

    I would love to believe it, but come on. One reference? The attny can’t take literally 2 minutes to skim the thing? Is 2 minutes worth thousands of dollars in attorney’s fees and an RCE? Your explanation doesn’t hold much water. Perhaps there is a section in there about the ethics of wasting a client’s money?

    “This part of the rule of law clearly defeats any “ethical” straw.”

    Because you don’t admit something somehow affects the factual question of whether or not something is or is not capable of instant and unquestionable validation? Keep dreaming Noise and tell it to the judge.

    “On another note, I usually write “the portions of X cited by the examiner fail to disclose Y,” so i’m not taking credit for the entire reference. ”

    I might have to start sending back such responses as non-responsive :( You’re playin’ with fire there. The rejection is over the references, not the sections cited, even if you want it to be. 400 page references might catch a break, but it seems like that is just a cost of doing business.

  87. 47

    NAL:
    >>well-my-customer-wants-me-to-file-something-I->>don’t-understand-so-I-must-do-it blind >>obedience model. Such imho IS unethical.

    NWPA wrote;
    >>what the client is telling me my job is within >>the context of my responsibilities to the PTO >>and the courts.

    I make sure that when I sign something that I am acting as an officer of the court and within the rules of the PTO. Never had any problems, and I will bet my practices are the status quo. I would argue that if you are going to use a higher standard that you should inform the client before taking the case from the client.

  88. 46

    Max 3 wrote

    “Thus, if the Examiner asserts that Bloggs discloses ABC in column 10, and the fact is that Bloggs discloses ABC in column 12 (but not in column 10) it seems to me a bit iffy to write in reply:

    Exr asserts that Bloggs discloses ABC. Bloggs, column 10, does not disclose ABC.”

    Irrespective of its ethicality, any attorney who did that would be badly serving his client.

    Max, you act as if NWPA has stated he wears blinders deliberately takes a head in the sand approach. This is not the case.

    (1) If an attorney does notice the reference discloses the claim limitations elsewhere in the patent, the attorney would amend or make an argument other than the cited passage does not show it. I have gone from Ha Ha! to Oh No! a few times where I noticed the passage cited by the Examiner was irrelevant to the invention, but another passage a couple paragraphs away was. Then I deal with that and point out to the Examiner that his initial argument was wrong while ‘unrelatedly’ amending the claims to get around the more important disclosure.

    (2) I would guess virtually all attorneys read the written description around the cited passage, so they would notice something a couple lines away.

    (3) I always state the Examiner has not shown and never the reference does not show as I do not read every single line in every single reference and I sincerely doubt you do either.

    (4) Because of (3), what can happen (and I usually try to at least skim all the references to ensure this does not happen) is that tucked away in a small corner toward the end of the written description is some alternative embodiments language (likely dreamt up by the prosecutor of the reference patent rather than the inventor) that the prosecutor misses.

    Max, it is very embarrassing when this happnes, and luckily it has not happened to me (almost once – the reference was a lot closer than I thought it was – but not quite) However, it is not the product of unethical behavior.

  89. 45

    anony, 7:

    That’s my practice as well. With tight budgets, I just read the abstract, maybe a bit of the background, and the portions cited by the Examiner, and argue about the portions cited by the Examiner. I typically read the whole primary reference though and just accept that that time will be cut. What kills you though is when you have to read the application and file hisotyr as well because it’s a transferred case. That’s a lot of time down the toilet.

  90. 44

    Regarding the price of this and similar tomes, has it ever occurred to these publishers that if they cut the price by two thirds they might far more than triple their sales?

  91. 43

    Hmmmm Hricik – no registration number, Meyer – a 45K somehting registration number.

    And please note the claim that professor Hricik is “is the country’s leading expert on patent law ethics.” Not “one of” the country’s leading experts mind you, but “the” leading expert.

    I find that simply hard to believe…

  92. 42

    MaxDrei,

    You are feeling the lightening that can be generated when you “just feel your way” with conclusive statements – especially statements dealing with ethics. Are you that surprised that you are getting singed?

    On the other hand, I think I understand what position you are trying to make and find myself agreeing with you (in a sense). Not that NWPA is incorrect – as the ill-fated Continuation Rules debacle clearly shows – the Office WILL try to offload its duties anyway it can, legal or not. Thankfully Dr. Tafas stood his ground and the Office is forestalled from that particular path. The Office, at least pre-Kappos, has demonstrated a lack of ethics and gumption to directly face up to and tackle an admittedly difficult job. Playing statistical numbers games and subverting the rule of Law was decided to be an easier path than actually managing or doing the work. The bar, including NWPA is rightfully watchful. Bad Joke Ahead is 100% correct – what you in jest refer to as “examiner laziness” is painfully just that – keyword searches and cobbled 103s without the slightest understanding of the claims in light of the specification (as our friend 6 will point out – he doesn’t even read the specification, or at least, believes that he does not have to).

    Where I disagree with NWPA, at least with what I think he is saying, pertains to the well-my-customer-wants-me-to-file-something-I-don’t-understand-so-I-must-do-it blind obedience model. Such imho IS unethical. While we are in business and must be mindful of the client’s budgetary constraints, we are not at liberty to ignore the very real duty we have to the court just because “the client says so”, or because we would have to charge the client for the performance of a duty. The client is NOT always right and does NOT get to dictate all aspects of my performance. Relinquishing such control is unethical.

    Perhaps I do not understand NWPA’s position fully, as his follow-up is still a little different than your hypothetical, MaxDrie. As NWPA and BigGuy indicate, I do understand that I do NOT have to read an entire cited reference to refute an examiner’s position – it does not matter if the key material (not read) is two pages later or in the next paragraph. I do not think that NWPA is indicating that having read that key material, he is NOT required to divulge what he has read. Clearly, as a practicioner is REQUIRED to share what he knows with the Office. NWPA is correct in that you have built a strawman which really does not advance your position (part of your education with writing on these blogs should be the realization that such strawmen are easily dispensed with – just note how impotent Malcolm’s arguments are when he advances his ridiculous strawmen).

    Further, listing material on an IDS is EXPRESSLY divorced from patentability per 37 CFR 1.97(h): “The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).” This part of the rule of law clearly defeats any “ethical” straw.

  93. 41

    Anony,

    If time and budget permits, I read the entire references. If it does not (which only happens when the examiner cites a 400 page reference), I read the portions cited by the examiner (together with some portions preceding and following). In such a situation, I’m VERY careful to argue that the portions cited by the examiner don’t disclose A, and not that the reference doesn’t disclose A.

  94. 40

    I’d be interested if most people practice like NWPA (and BigGuy). I am a first year and do read the entire references, but it is just about impossible to do so within the client’s budget / time allotted by partners. So I have to cut my hours (or have the partner do that, depending).

  95. 39

    MaxDrei,

    Spare us your sanctimony. The nub of the issue is the fact that the determination of whether or not ABC is disclosed in Blogg requires judgment by one ordinarily skilled in the art. As such the determination is open to varying interpretations (how many times have you seen expert witnesses who disagree on such points?). So, the question is not as black and white as you make it seem. Of course, a prosecutor will present an interpretation that best supports his/her case (usually a narrow one), just as an examiner will present an interpretation that best supports his/her case (usually a broad one) – no sense pointing fingers here.

  96. 38

    7, this business that it will be brought up in litigation may be true, but the cost of showing that a patent is obvious over two references may be in the millions of dollars in litigation.

  97. 37

    “Do you have to mention a potential B in view of A rejection to the examiner?”

    It’s not the applicant’s burden to establish patentability — the examiner has to establish unpatentability. Given the fact that B and A have already been cited in the official action, I see no ethical obligation to provide the proper rejection for the examiner.

    That said, you’re dumb if you don’t, because in litigation, the other side will argue the claims as being invalid over B in view of A.

    On another note, I usually write “the portions of X cited by the examiner fail to disclose Y,” so i’m not taking credit for the entire reference.

  98. 36

    *******Of course, if the prosecutor in 6’s anecdote knew about the teaching in the cited reference then there is a wee bit of an ethical problem.*******

    Just because the element that the Examiner took Official Notice regarding can be evidenced in one piece of prior art, does not mean that the taking of Official Notice was proper. I don’t know why the Office even allows Examiners to ever take Official Notice anyway. If it is so trivial a task to evidence the element in the prior art, then why should the Examiner not put forth the allegedly minimal effort to do so? Every time I see Official Notice, it sets off my Lazy Examiner Detector.

    On the other hand, if the practitioner knew that the amended independent claim would be unpatentable over the submitted reference, then that would be unethical. But then, why is not every practitioner disbarred whenever the Examiner rejects a claim purely over art submitted in an IDS? Here’s why. It is unreasonable to charge an ethical violation in such cases because you cannot know what was in the practitioner’s mind. Also, as others have already pointed out, it is common for Examiners to construe claims in ways that practitioners do not foresee.

  99. 35

    “Exr asserts that Bloggs discloses ABC. Bloggs, column 10, does not disclose ABC. … It’s an affirmative statement. On its face, true. But is it ethical.”

    Ah, now we’re talking. In my opinion, there’s nothing unethical about the statement, by itself. HOWEVER, you have to look at the whole situation. First, if I actually know that Bloggs discloses ABC, then I’m not only providing my client with poor service (why procure a claim that will almost certainly fall to an invalidity challenge?), but I may be violating the canon/rule against making an unwarranted claim (see 37 CFR 10.85). (But, and here’s where I will lose 6 and other readers who have trouble with subtlety, submitting an argument that you know you’re probably going to lose is not necessarily an ethical violation.)

    On the other hand, if Bloggs is a 4000 page reference, and the examiner has cited only page 32, I’m not going to read the whole reference, unless my client wants to pay for that. In that case, a response like you suggest might be entirely appropriate.

    Do attorneys cross the line? Of course. Does this mean that there are no rules, or that most attorneys don’t take the rules seriously? Of course not.

  100. 34

    Big Guy wrote:

    “It would be the very rare situation, in my opinion, where the omission of an argument or factual assertion would be unethical”

    and now asks why I write about affirmative false statements when he was asking about omitting a factual statement.

    I was thinking that being “economical with the truth” and being disingenuous are not so very different. Thus, if the Examiner asserts that Bloggs discloses ABC in column 10, and the fact is that Bloggs discloses ABC in column 12 (but not in column 10) it seems to me a bit iffy to write in reply:

    Exr asserts that Bloggs discloses ABC. Bloggs, column 10, does not disclose ABC.

    It’s an affirmative statement. On its face, true. But is it ethical. Sure it is, if you haven’t yet read Bloggs column 12. And I guess it is also entirely ethical deliberately to avert one’s eyes from Bloggs, column 12. As has been pointed out, it’s the burden of the Exr to put together a viable objection and no burden on the prosecutor to imagine one.

    Just feeling my way here.

  101. 33

    I meant to say, “I write the cited portion of X does not disclose y.” So, my statement is limited to the portion of the reference that I am familiar with that includes the portion the examiner cited. Often, the examiner will cite several lines of a 100 page reference that would take me hours to understand.

  102. 32

    And, actually, I would be interested if anyone believes that there is anything unethical with the way I practice. I do not and am being realistic with the budgets clients allocate. I also believe that what I stated is what is the status quo in the U.S. right now.

  103. 31

    MaxDrei try to be more fair with my positions.

    I didn’t say that I had not read the reference, but clearly what I said is that I would not read the entire reference, but only the portion that the examiner has cited. As an example, recently I received a rejection for a claim based on seven references. Not one of the portions of the cited references taught what the examiner stated. If I were to read all seven references, it would take me many hours to get through the some 200 pages.

    Please don’t turn my posts into strawpeople for your enjoyment.

    Also, MaxDrei, my job is what the client is telling me my job is within the context of my responsibilities to the PTO and the courts. Some clients will pay for a search and then I can write claims to define over the art. I recently did this for a client and did my own search. It was an important patent application for the client and they were willing to pay. Other clients particularly corporate clients just want me to claim the invention and not worry about the prior art. I write an application based on the disclosure and file an IDS with anything that is disclosed. That is all the client is willing to pay for in this case.

    I don’t see any ethical issue here. If I did, I would alter my practices. Also, please, I have done some EPO practice and the attorneys there always seem to have your attitude that they understand the references and the invention. But, isn’t it odd that the more I dig into an EPO case the less I find the EPO attorney understands the prior art or the invention. Maybe you just have this attitude that you have to reach the point of understanding as you described above, but that you are deluding yourself.

    At least I am honest about the scope of my representation and try to advise the client (and honestly deal with the PTO) accordingly. By the way, I don’t write X doesn’t disclose Y. I write does not disclose Y. I do not take responsibility for an entire reference when the examiner has not taken the time to understand the reference. Nor do I think it is unethical not to read and understand every reference the examiner decides to include in a rejection.

  104. 30

    Max says: “I suppose, then, that what restrains them from lying is somehow indirect: Fail to fulfill the Duty of Candor and client might suffer. Causing that suffering is the breach of the Code of Attorney Ethics. But I’m thinking that attorneys, as Officers of the Court, must somehow have an ethical duty, owed direct to the court, to tell the truth.”

    Of course they do, and yes, you apparently need to read the book. There are several canons for patent practitioners and disciplinary rules for attorneys that DIRECTLY prohibit making false statements to the patent office (or court, as applicable). No, the breach of ethics is not the causing the client suffering. Penalties for inequitable conduct (which undoubtedly make the client suffer) are distinct from the duty of candor. Indeed, meeting the duty of candor may sometimes be contrary to the client’s interests.

    The question I addressed earlier, in response to your comment, was whether being “economical” could result in an ethical violation. You come back with an anecdote involving an affirmative false statement. What exactly is it that you are concerned about?

  105. 29

    Max,

    You really need to see a routine US prosecution to appreciate what Night Writer is saying. EVERY action is filled with claim interpretations that don’t match the plain language of the claims, much less the spec. The main reference may be fairly close, but the other references are found and cited merely by text searching the database for a key word, and they may be wholly unrelated to the subject matter at hand. Then, the references are combined, “because it would have been obvious to one having ordinary skill in the art to combine A with B to render the present invention.” What would you do with that? Do tell.

  106. 28

    I’m indebted to NWPA for his brutal directness in acquainting me with the reality of practice, which is that the attorney who writes “Bloggs does not disclose ABC” hasn’t even read Bloggs. That explains much.

    I gather that we timid, (overly-ethical???) European Patent Attorneys who are reluctant to write “Bloggs does not disclose ABC” unless it’s true, are simply not living in the real world. No wonder our work is received with exasperation by our more real world US colleagues.

    Whereas Europeans see a top quality EPO search report and patentability opinion as doing Applicant a favour, so that we can take a case to issue with every one of its claims well-equipped to do its job post-issue, by which I mean, to survive all available validity attacks, NWPA thinks this activity is just the PTO lazily dumping work on the Applicant. Whereas I think it’s MY job to assess the art and get my clients claims that will stand up in court, NWPA seems to think it’s no part of his job. Aren’t ethics interesting?

  107. 26

    The reality of practice:

    The examiner cites references without understanding the reference and I have no time or desire to figure out the reference much less figure out the reference and reject my own claims based on a reference that the examiner incorrectly cited. I focus on the portions of the reference the examiner cited. Consider the attempt by the examiner to off-load the work of figuring out the references on my client and me which just makes my life harder. Also, consider that often the examiner cites a ridiculous portion of the reference and I don’t have time to go and figure out the entire teaching of the reference.

    Also, I see clients that just give references without any analysis or with some vague abstract distinction between the reference and their invention. There isn’t anyway for me to know if the reference anticpates or renders the claims obvious.

    I don’t think the client wants a thousand dollar or more bill for me to go and figure out if the reference(s) they gave me anticipate or renders obvious the claims. So, you take a quick look and file an IDS.

    The reality is that it is a lot of work to see the relevance of a reference to an application. The reality of the situation is that the examiner should be the expert in their small area. I see applications from so many different areas. It goes back to the Office trying to off-load the work of examining to applicants.

  108. 25

    Paul Cole:

    “how about where your claim is rejected over A in view of B, which rejection is nonsensical and is withdrawn when you point this out to the examiner, but you realize that the claim is likely unpatentable over B in view of A.

    Do you have to mention a potential B in view of A rejection to the examiner?”

  109. 24

    If there is a choice between malice and a screw-up, on probabilities the screw-up wins every time. In the inequitable conduct cases I have read you have to establish both materiality and intent. Have a look at the relevant CAFC decisions if you disagree.

    And just for the record, prosecuting patent applications is not a game. We all have responsibilities to our clients to try to obtain valid patents i.e. those which are novel and not open to an obviousness objection over the prior art known to us. Obtaining claims which are anticipated raises false expectations that are not in a client’s long-term interests. We may (and often do) make mistakes, but usually they are honest mistakes, not an attempt to deceive because we are not in the deception business, nor are we paid by our clients to be deceptive. We are, of course, advocates for our clients which inevitably affects our view, but honest advocacy should not be equated with an inclination to deceive.

  110. 23

    I noted 6’s comment that what prosecuting attys often write is tantamount to lying. I suggested that the public thinks anything short of “the truth, the whole truth, and nothing but the truth” is lying. In a very helpful observation, Big Guy points out that attorneys are not witnesses, so are not bound to tell the truth to the same extent as witnesses and that it’s the Duty of Candor that bears down on attorneys. I suppose, then, that what restrains them from lying is somehow indirect: Fail to fulfill the Duty of Candor and client might suffer. Causing that suffering is the breach of the Code of Attorney Ethics. But I’m thinking that attorneys, as Officers of the Court, must somehow have an ethical duty, owed direct to the court, to tell the truth. I think that’s how it is, in civil law countries.

    Big writes:

    “Obviously you can’t make false statements of law or fact”

    But I see all the time statements like “Bloggs does not disclose ABC” in the US prosecution history which I’m invited to repeat to the EPO but can’t because plainly (to me anyway) Bloggs DOES disclose ABC. There’s something (what could it be?) that inhibits me to putting my signature to such a statement.

    I really must read this book.

  111. 22

    “The patent should be invalid in view of inequitable conduct grounds because the attorney should have known that cited reference “A” anticipates the patent, even though they argued differently.”

    So if the patent practitioner mistakenly misinterprets a reference, and the patent thereby erroneously issues the patent is invalid for inequitable conduct?

    (Or even if the patent doesn’t issue but the PTO raises an inequitable conduct defense, then the application cannot issue because of inequitable conduct?)

  112. 21

    Malcolm,

    You are right if the practioner made statements that they knew were untrue in view of the reference.

    If the practioner however could make a reasonable argument (whatever the hell reasonable means) to distingish a claim over the reference, then an ethical breach probably did not take place.

    I think however that one has to still favor the idea of having a practioner cite relevant prior art over a very harsh standard which can be applied in a “should have known sense” i.e., the practioner should have known that a claim was not patentable in view of a cited referencem, even though they thought the opposite.

    That is, if I were a litigator and if this standard existed, I would argue for any issued patent that 1. The Examiner did not appreciate a cited reference in determining patentability 2. The patent should be invalid in view of inequitable conduct grounds because the attorney should have known that cited reference “A” anticipates the patent, even though they argued differently.

    If inequitable conduct were at such a low bar, it would be very easy to be a defendant in a patent infringement action.

  113. 20

    Further to my comments above, how about where your claim is rejected over A in view of B, which rejection is nonsensical and is withdrawn when you point this out to the examiner, but you realize that the claim is likely unpatentable over B in view of A.

    Do you have to mention a potential B in view of A rejection to the examiner?

    Do you have to cancel the claim?

  114. 19

    Wonder what the book says about filing a claim which one thinks is only arguably unpatentable over A in view of B, where both A and B are of record?

    What does it say, David Hricik or Mercedes Meyer?

  115. 18

    Of course, if the prosecutor in 6’s anecdote knew about the teaching in the cited reference then there is a wee bit of an ethical problem.

    But of course prosecutors never know what it’s in the prior art. Right?

  116. 17

    7 says “6 considers it lying when a prosecutor claims anything broader than one very specific narrow embodiment disclosed by the inventor.

    If so, 6 will find the transition to private practice to be very difficult.

  117. 16

    Max,
    Prosecuting attorneys and agents are not witnesses, so the “truth, the whole truth, and nothing but the truth” doesn’t apply. Agents/attorneys practicing before the office have a duty of candor, but that is not inconsistent with being “economical”, as you put it. The duty of candor means that you can’t play “hide the ball” with the examiner, and also means that you can’t take inconsistent positions in the same or related cases. Obviously you can’t make false statements of law or fact, but you don’t have to do the examiner’s job for him. It would be the very rare situation, in my opinion, where the omission of an argument or factual assertion would be unethical. 6, who has demonstrated repeatedly that he knows absolutely nothing about ethics, conveniently ignores the fact that the office has the burden of establishing unpatentability.

  118. 15

    I agree with the AnotherJuniorExaminer on his point. I am not quite following the issue of offical notice and how the IDS would consitute unethical conduct.

    Presumably, the prosecutor objected to your use of offical notice within the argument in your rejection. So, the combination of your 103 rejection to the dependent claim may not have been proper according to the Applicants.

    I am gathering that because you were impressed with the prosecutor’s statements about “instant and unquestionable validation” that in fact you agreed with the Applicant on this point before you read the IDS. [I can be wrong here but at least it seems you give the prosecutor some credit)

    Regardless, on this point let’s say that you are correct, and that the prosecutor should be held in ethical breach because the supplied reference contradicts the arguments about offical notice. One can then also argue that the prosecutor is also committing an ethical breach because the supplied reference clearly discloses the claims of the application. Hence, the Applicant’s representative is committing an ethical breach if we were to follow your arguments completely.

    Such a situation however arises because the prosecutor is attempting to comply with 37 C.F.R. 1.56 (which is presumed to be ethical behaviour) where the Applicant is citing relevant prior art.

    Stepping back a bit here, if we would accept “6” premesis that the Applicant’s represenative committed an ethical breach because the supplied art and the statements made in the office action were in conflict, wouldn’t this defeat the purpose for having IDS’s in the first place? As a prosecutor, I would potentially undermine myself anytime I disclosed any reference to the patent office.

    Wouldn’t it be better to try to have the Applicant’s reprensative cite relevant prior art instead of having them cite such art and penalize the prosecutor if their arguments for an office action conflict with the cited prior art? [let’s take the spamming of the USPTO with references off the table for this point]

    Obviously, the “public policy” desire is to have an Applicant’s representative relevant prior art instead of witholding it. So, although 6 may be right about a theoritical ethical breach, I think the public policy behind citation of references encourages disclosure of prior art and strong advocacy for an Applicant position would trump 6’s point.

    Also, the argument issue is debateable because of the earlier points made by 7 and AnotherJuniorExaminer.

  119. 14

    @6 – I’m a different examiner and I have to say that your non sequitur logic always takes a second reading because you always lose me along the way. It is not a false statement on the record to say that your Official Notice is incapable of instant and unquestionable validation, while at the same time providing an IDS with 102(b) art on the subject. The art may have been the result of a second substantial search in light of your office action, hence it doesn’t prove anything regarding instant accessibility of validation of your Official Notice. That’s not the same thing as an ethical violation, though to make the argument after providing the art does seem pointless.

  120. 13

    6,

    Is it possible the attorney interpreted the claim terms (and thus how the reference could be mapped to them) differently from you? I know that examiners sometimes interpret claim terms in very broad, unreasonable, and unfair ways to have them read on references.

    Seems to me that, somehow, broadest reasonable interpretation consistent with the specification is often applied by examiners as broadest unreasonable interpretation inconsistent with anything in the specification ;)

    I’ll give an example — I recently had an examiner interpret the claim term “parallel electrical connection,” in an electrical case, as a geometrical relationship. That’s deficient, unfair, and quite frankly, ridiculous.

    Reasonable minds — spot on, good sir.

  121. 12

    I’m actually surprised that there isn’t more literature out there of a comprehensive nature on patent prosecution risk management and ethics. My firm’s library just has scattershot treatises and pamphlets from our risk mitigation group and malpractice insurer. I hope they acquire this title.

    6 – chances are the attny either didn’t read the entire reference or read it but didn’t understand its significance (or how you would apply it). That’s a much simpler explanation than the dastardly attny submitting the reference knowing it’s a silver bullet, making incorrect statements about the reference, and hoping you overlook it.

    You don’t often give us credit for this, but we too are interested in procuring valid, enforceable patents for our clients.

  122. 11

    Well Carlton all of us aren’t as lucky as you. It’s been my experience that the lawyers I deal with are very ethical once you’ve had a little chat with them. But until the first interview I think they feel like they’re kind of anonymous, in so far as they’re just a name on a page to the examiner reading it. That feeling leads them to feel like they can just say whatever the f they want to.

    And specifically what comes to mind is a recent case where I had this guy correctly traverse my official notice on a dependent claim. That is, he stated for the record that the fact noticed would not be capable of instant and unquestionable validation. I was impressed. He also amended the ind. But then I was rather unimpressed when I notice an IDS with all of one reference that turned out to be a 102b for the new ind as well as the old dep.

    He just got through stating for the record that the fact noticed was not capable of instant and unquestionable validation whilst instantly and unquestionably validating the official notice himself.

    W T F? That’s a false statement on the record. And that’s not even considering that the fact noticed was child’s play to find something about in a “textbook” on my shelf. I tend to rather not like to have to scan in book pages though so I avoid doing it. Plus I always feel like I might be infringin on the author’s copyright when I copy the book pages. Perhaps it is fair use idk. There are very few authors who I feel like “deserve” the copyright protection we currently afford authors, but authors of technical works I have to say I am rather impressed with and I rather respect their copyright.

    Now, to be clear, the thing that pisses me off about this situation is that it would likely be 1. blatant IC if I had missed the relevance of the reference on the IDS and allowed the case thus negating the whole point of my job to issue him a valid patent and 2. a waste of his time to type and my time to read. Put your fin thinking caps on before you just respond with whatever lie pops into your head.

  123. 10

    When it comes to publishing and price you get what you pay for.

    Fundamentals of Patent Drafting was published through the Chartered Institute of Patent Attorneys and costs £ 25.00. However, publishing within a body such as CIPA is not truly a commercial enterprise and nor are the resources of such an enterprise available.

    The CIPA Guide to the Patents Acts is published by Sweet and Maxwell, a commercial publisher. It is a much bigger work but costs £300. What beyond the increased length justifies the increased price? Well, the publishers compiled the index of statutes, the index of cases and the general index which was a massive work underrtaken by qualified lawyers in their staff. Not something the individual authors or the editors wished to do.They did much consistency checking. Their staff were a pleasure to work with, and took a great deal of the load off us. And they do the promotion and the marketing.

    If you want a textbook in a specialised field you have to be prepared to pay the price, otherwise publishers will not find the service worthwhile to provide. So good luck to the book and if you need it do not quibble over the price.

  124. 9

    For those of you complaining about the price — that price is set by Oxford University Press, not the authors. They published my book on patent damages last year and charged $185 for a book that was about 185 pages. When I noted my surprise to my editor, he told me that that price was what they normally charged for these kinds of books which were mainly sold to institutions, libraries and law firms. BTW, they will be lucky to sell 500 copies at this price — the only “bump” in sales I got was when Dennis mentioned it on this site. Otherwise, most people will never even hear of it.

  125. 8

    6 considers it lying when a prosecutor claims anything broader than one very specific narrow embodiment disclosed by the inventor.

  126. 7

    Oh God..I guess this site is joining the big commercial corporate advertising machine…and its core complain when US companys try to make a profit by protecting their inventions through patents….I see a contradiction.

  127. 6

    But 6 and Carlton identify what for me is an interesting issue: just exactly when does a statement become “false”? in England, witnesses declare on oath that they are going to tell “the truth”. But that’s not enough. They also declare that they will tell “the whole truth”. But even that’s not enough. They go on to swear that they will tell “nothing but the truth”.

    However, in the light of recent highly publicised events in England, the expression “being economical with the truth” has become notorious. Lay members of the public have a very finely developed sense of the smell of somebody being disingenuous. They call it lying.

    When does being economical offend a code of ethics? When does being disingenuous? And do patent prosecutors learn all this already at law school so, on that point at least, have nothing to learn from this book?

  128. 2

    Yo 6, another examiner here. I usually find your comments annoying and not reflecting on examiners. You occasionally make a point, but it gets lost in the noise. Nearly all of the practitioners on my docket are rather competent and all as far as I can tell are ethical.

  129. 1

    A must-have for every prosecutor! If your friend doesn’t have one yet, why not get him an early christmas present?

    Maybe after you read this book some of you will stop making false statements on the record. It is unethical.

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