Professors Mark Lemley, Chris Cotropia, and Bhaven Sampat recently released a draft of their new article titled “Do Applicant Patent Citations Matter? Implications for the Presumption of Validity.” [Download Here.]
For the article, the trio analyzed the file histories of 1,500+ utility patents issued in 2007 and compared references used in office action rejections with the list of references cited on the patent cover-pages. The objective was to figure-out the role of applicant-cited prior-art in the examination process.
Findings: Patent examiners rarely rely on applicant-submitted prior-art when making rejections. Only 13% of the prior art used in office action rejections was applicant-submitted (despite the fact that 74% of cited references are applicant-submitted). Generally, the study found that examiners “effectively ignored” applicant-submitted prior art regardless of how few or how many references were cited; regardless of the timing of the IDS filing; and regardless of whether the submission included an EPO search reports identifying the references as “X-references.”
Implications: The authors suggest several implications of their findings: (1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway); (2) That the presumption of validity associated with patents may be too strong; and (3) That studies based on patent citations likely lack merit.
Notes: I have privately e-mailed Professor Lemley with several comments on the article. Patent prosecutors will not likely be surprised that US examiners tend to rely on their own search results. However, I was surprised at the extent to which they found that this occurs. As a matter of patent office policy, I would think that some minor changes could alter these results. For instance, examiners should be given a tool for performing text-searches that are limited to submitted (and identified) prior art references. The office may also want to educate examiners on how to read European search/examination reports.
There are several rational reasons for examiners to cite their own prior art. Because of the backlog, PCTs, and provisional applications, US examination often begins several years after the application was originally filed. During that interim, many references become available that were not known at filing. Thus, it is not surprising that applicants rarely cite 102(e) prior art, but examiners cite loads of it. There is some reason to think that this “newer” prior art is probably better because of technological developments. It may also be true that the applicant and examiner references are cited for different purposes — namely, applicants cite references that are generally relevant to the invention while examiners are looking for references that teach each particular element in the filed claims. A third issue is that applicants tend to modify their claims during prosecution. That modification may make their originally cited art less relevant.
In the words of Lawrence Solum: Download it while its hot.
Patent litigation: agreed. Lemley may not have intended this, but he put really put a sock into one of the fundamentals of the “duty of disclosure.” If the examiners do not actually read the IDS content, the duty of disclosure is a farce; a complete waste of everyone’s time. No data could have said it better.
These findings could have a measurable impact on patent litigation. Any strong evidence like this that could potentially reduce the frequency of inequitable conduct charges is more than welcome.
When I pick up a case for examination, it goes like this: 1.read the claims and determine the scope. 2. read through the spec to see if claim scope is different from my first impression and to see what was actually invented as opposed to what was claimed. 3. Go through the IDS references and note the relevance of each. 4. Search, with information gleaned from the spec and IDS references in mind.
Patetnly Bummer,
Re: Vansant – I’ve known him for years and he does a better than average job because he still cares about doing a quality job. It’s rare that he gets fired up enough to post on here though. Guess he didn’t want anyway disparaging all public searchers!
Re: PCT Searches – Two large firms do this work on a contract basis for the PTO. It is a beautiful cash cow for them with very little oversight, buy I imagine your pontificating was rhetorical and you already knew this.
Re: Crappy 1449’s – As someone who backcites 100’s of references per week, it baffles me where the applicant gets many of their citations. Not even the worst professional searcher doing 10 minute “quick and dirtys” would call much of it relevant.
Bummer, will you allow me a comment on your “dumping” insinuations?
Those who make PCT applications must apply to the designated “Receiving Office” (RO). For Americans, it is the USPTO. Many US Applicants did that, but designated the EPO as their ISA and IPEA (their international searching and examining authority). Why that then?
After a few years, EPO Examiners grew weary of the offensive tone with which they were assailed by US patent attorneys, in PCT Chapter II prelinimary examination on the merits. So, the EPO simply invited the USPTO to do that Ch II work, for cases filed at the USPTO.
How do you get from there to “dumping”?
I should explain to readers that the EPO still examines in PCT Ch II cases filed at the EPO as RO. When these cases enter the national phase they get a Notice of Allowance, straightaway.
SnakeFist.
I was all set to jump your case about:
“Obviously, if an examiner is able to rely on prior art cited in an IDS – i.e., art the pracitioner knew of – to properly reject a claim, then the practitioner is incompetent.”
until I saw your weasel word “properly”.
With that word you have eliminated 95% of all reliance on prior art cited in an IDS cause of the BUI effect.
Of course, if “properly” could be assumed, we wouldn’t have the mess we have, now would we?
(Yeah, that’s a sharp stick in my idol’s eye – but his posts lately have been so bad, someone’s gotta jump start him).
A couple of years ago, I noted that, in my experience, examiners almost never rely on prior art cited in an IDS. According to Mooney and 6, that was the dumbest thing that had ever been posted on this site.
Obviously, if an examiner is able to rely on prior art cited in an IDS – i.e., art the pracitioner knew of – to properly reject a claim, then the practitioner is incompetent. Almost by definition, the art cited in an IDS shouldn’t be relevant to the patentability of the claims.
Before disparaging Examiners, I think you tools should look at the post by Vansant (or whatever his name is). Limy and Co. assume all public searchers, attorneys or inventors are so unbiased that they actually perform a proper search in the first place. In fact, are all searchers as skilled as Vansant?
Better yet, I like the part where Vansant says he doesn’t even have the claims when he searches. You see as an Examiner I had many searchers show up at my door back in the day with a brush of notes or maybe a short paragraph describing an invention. If Lemely and his ilk had any actual experience in the patent system they would understand that this is at least one simple difference why a 1449 may not have good prior art. Hence examiners won’t use it…. Besides, if the Examiner has better prior art which should they use? Is there a comparison of this in their scholarly paper?
Of course, this is even besides the fact that if the 1449 actually had a statutory death blow, then the case shouldn’t have even been filed in the first place. I guess there are some who need the income and file anyway. It isn’t like OED is going to do anything.
So, as this paper proposes that Examiner’s are just ignoring all sorts of fantastic prior art in order to waste time looking for something else; this because their ex parte counterparts (us) are trying to be so helpful as to serve up the art on a platter…..I think is intellectually dishonest. In fact, if not dishonest then the California Medical MJ distributors are getting great business out of Stanford.
BRI as interpreted by the Examiner v. Applicant. Let’s see, so you get that weak search from a public searcher (not their fault) based on a quick summary of the prior art and maybe a drawing. Do you file everything in the search? Do you vet the prior art and exclude some despite the potential for IC? Do you draft the claims around the prior art? Is it really likely that the Examiner is going to even use this art in a rejection.
So how exactly can one conclude that the lack of 1449 prior art cited by an examiner in a rejection is evidence of anything?
Sounds to me like someone either has an agenda (maybe he just wants the gov’t to gather up all the patents and evenly hand them out…a patent welfare system), they are grossly uneducated as to the real system at hand.
In either event, regardless of motive, this paper is in the least a fluff piece and should have never cleared the hurdle of academic review. I think it is quite an embarrassing to the authors themselves.
For the record, now that I’m on the outside I find my self being able to anticipate the hurdles that examiners approach with examination. I can actually use my examining experience to critique my finished product and attempt to eliminate any bias. Maybe PTO registration should require compulsory PTO employment before granting a registration number to give you geniuses a crack at it.
By the way, anyone who knows anything about international searching and PCT’s, these filings are nothing but the stepchildren of the system. Europe couldn’t do them and probably didn’t care for them since they have their own patent system to worry about, and honestly I’m sure the PTO cared either.
So EPO just effectively dumped them on the PTO. Now there are some clerks doing them as Examiner’s are no longer responsible for doing them. hmmmm, I wonder what the backrounds are for those doing the PCT’s these days……(unless they are just stealing the actions from the work of the examiner) do they have any technical expertise? Pesky treaties!
“6
If you don’t trust yourself to do your job properly, perhaps you should find another line of work.”
I trust myself to do it better than most. And that’s what makes your reasoning for the presumptionlol even worse.
Anon wrote, “… examiners …simply told their union POPA that a professional job with …”
With apologies to Ping, this deserves the non sequitur of the day award more than MM.
(Not to Anon, to the concept of “unionized professionals”).
6
If you don’t trust yourself to do your job properly, perhaps you should find another line of work.
Come on PING THINK! Even I know who he is. I even know who 6 is. THINK!
BIRTH SIGN OUGHTTAH DO IT! THINK!
ping, I too have for a while been thinking that IANAE must be a law professor. But I don’t mind. Indeed, I’m glad. You see, my scribblings are aimed not at you but at leaders of opinion.
Brilliant, IANAE. For the first time, I read a logical rational explanation of the Presumption.
And I find it to be the same as it is in Germany. Petty patents are unexamined rights and get no deference. 20 year patents are “examined rights” which do get deference, in the courts trying infringement.
It is just that, in Germany, we all know that any post-issue challenge to validity is adjudicated by a panel of 5 specialist judges (3 are ex-PTO Examiners or equivalent) in a court that goes by the name of “The Federal Patents Court”. We know that, after that panel has heard the opposing parties thoroughly, it has the effrontery to think that it improves on the rigour of the pre-grant, ex parte decision made by the lone time-pressed PTO Examiner, and has no hesitation in reversing that decision whenever the preponderance of the evidence requires it.
IANAE,
I though it was the law itself and som eother such ramblings – oh wait – that’s when it suited you.
Your game is still off – usually you can pull this talk outa both sides of your mouth stuff so much better. Here it only looks like you be a professor yourself.
I DON”T EVEN TRUST MYSELF TO DO THAT, WHY IN THE F WOULD A COURT?
They trust you to do it, but not in the sense that they necessarily think (or care) that you’ve done a good job.
They trust you to do it in the sense that they acknowledge that the responsibility for that decision has been delegated to you. The presumption is a matter of principle, the principle being that a decision once made in an official capacity is not lightly revisited.
Because we all know the Federal Circuit hates reviewing questions de novo.
“1. The US patent system sets the gold standard, in that, unique in all the world, every patent the PTO issues rides out in a magic cloak of invulnerability, called the “Presumption of Validity”.
2. Who dresses the rider in that cloak? Why, 6 of course (or one of his brothers and sisters).
3. How does he do that? It could not be simpler. All he has to do is “do his job”.
4. What is his job? Just speed read every word of every IDS document. Anything more? Not so far as I can gather.
On this thread, there seems to be a perception that, if only 6 would read all the docs, the gold standard is preserved and the magic cloak retains its powers.
My point is very simple, that even after that reading, 6 needs help from those in the art, before he can grasp the full content of the state of the art, particularly that which, to the PHOSITA, goes without saying.
”
LOLOLOLs.
Exactly Max. And that is why I don’t support the presumption o validity. The patent system was fine without it for what? More than a century? Now all of a sudden people like myself declare a patent valid and it gets that presumption in court? I DON”T EVEN TRUST MYSELF TO DO THAT, WHY IN THE F WOULD A COURT?
Seriously you guys should tell me another lolable proposition.
Also I note that they don’t tell you anything about this before you get hired or in your first little while here. They don’t tell your real responsibility in this job, doing as shi tty of a job as possible to make better production to get promos so as to saddle as many defendants with presumptively valid patents against them. And don’t even try to tell me otherwise, because if it were otherwise I’d be getting promos for quality.
“If the prior art isn’t being addressed, then the issue needs to be dealt with. There really are only two choices: (1) Rid us of all patents and the PTO and all of patent law, or (2) fix the patent office. ”
Or (3) carry on the status quo.
We’ve been doing it for years, why change now? Course, we could always do (3) with the slight change where we deprive you of a certain procedural mechanism in litigation…
Lets try this again Malcolm.
Only a More-off would want a weak, invalid, Patent. People MOST PEOPLE anyway that file Patents that are Independent Inventors want a Patent that they can use to start a business, or sell to sell another. Sort of like a writer of songs. their heads are full of them.
Only a More-off would file a Patent that a Mor-on could steal from them.
Real people just don’t do stooopid things like that. Only people that think because they have a Patent they are somehow special, even if it’s worthless are only in it for the glory. But that’s not glory Malcolm. I think they call that co@ky with a (c). And that gets you know where, except with a good wind and being so full of hot air you might take off.
Metis
“But I’d say about 10% of IDS sign-offs are more or less just phoned in, particularly those relating to IDSs filed after the first office action.”
That’s probably a bit high imo. I would go a maximum of 2%. You simply have to remember the sheer volume of IDSs coming in, so all the ones that you genuinely suspect that happened in are rather quickly overwhelmed.
If some reference is that relevant, you should be amending around it anyway.
This ignores the fact that clients are often simply looking for a patent and are not terribly concerned about the strength of the validity of each claim.
On another note MM is right that “many” examiners no doubt do ignore references. His word “many” is rather indefinite but I doubt that the number is all that large of a portion of examiners.
It’s not that large of a portion and of examiners and not all examiners ignore references all the time. But I’d say about 10% of IDS sign-offs are more or less just phoned in, particularly those relating to IDSs filed after the first office action.
Is that “many”? Do the math.
Do Lemley et al. have any data on whether the 13% of IDS-sourced art rejections were more likely to have come from short IDSes or long ones?
The point is moot because if you know of some prior art, and it’s material to patentability, you have to submit the art.
If some reference is that relevant, you should be amending around it anyway.
I was an Examiner, and I always considered Applicant submitted art.
I think Lemley’s article is extremely valuable for this point: the duty of disclosure is quite demanding, but there is an underlying assumption that the examiner would actually review and use the information disclosed. But it appears that almost all examiners conduct only a cursory review, at best, of IDS materials. (See the supporting post of the biotech examiner above at 9:04 AM.) This turns the whole duty of disclosure concept into a farce – particularly where the remedy for nondisclosure of references that would not be considered by the patent office regardless is to have perfectly valid patents held unenforceable.
If the intended to undermine the presumption of validity, he has actually done something quite different: he has undermined and demonstrated the almost total dysfunctionality of the and equitable conduct regime.
Do you understand that Lemley produces a constant stream of nonsense regarding why patents/copyright/trademarks should no longer exist.
I do not understand that. I understand that he produced one recent article that confirmed all of everybody’s expectations about the problem with over-inflated IDSes, and as a result he legitimately questioned how sure we can really be that our patents are presumptively valid.
The patent office is having problems. Short sighted nonsense doesn’t help.
Time to bite the bullet and pare down your IDSes, then. That’s the main problem the PTO is having in this area right now, and it’s compounded by agents’ short-term nonsense about inequitable conduct and billable hours.
The title of Lemley’s article was clearly provocative.
Of course it was. Nobody reads the text if the title is boring.
IANAE >>some crazy person starts ranting that they’re >>calling for the destruction of the entire >>patent system.
I can always count on you to simply not get it. Do you understand that Lemley produces a constant stream of nonsense regarding why patents/copyright/trademarks should no longer exist.
The patent office is having problems. Short sighted nonsense doesn’t help. Focus on fixing the patent office. The title of Lemley’s article was clearly provocative. I wonder if there are interests that indirectly give him money for such articles. I would guess yes.
Let’s hope that Gate’s prediction comes true about universities.
?? aim’s got nothin to do here. Total Non-Sequitur.
IANAE, I gotsa tell ya – your posts have been really wack lately. It’s like your concentration isn’t quite there. C’mon man – I expect better from you.
Perfection is not acheived in this life.
You might not hit the bulls-eye every time, or ever, but that’s no reason why you shouldn’t be aiming for the target every time.
The accusation is that examiners don’t give IDS citations the attention they are due. If that is true, what other short-cuts are examiners taking? Are they saying they searched class/subclass xx/yyy when in fact they did not? or they did not look at those references with as much scrutiny as Lemley would like?
There are some 7,000,000 plus US patents, many more foreigns and printed publications out the wazoo. They do not all get fully read every time an examiner examines an application. Instead, the examiner uses searching tools and his/her training and experience to define a subset for review and from that review, usually he/she narrows down the population of references to a dozen or less for close scrutiny. We all find that perfectly fine, do we not?
If the examiner includes the group of citations by the applicant in these stages of review and scrutiny, she is doing her job.
Perfection is not acheived in this life.
I tried to tell you something Ping but he won’t let me.
Metis
The perception that consideration of a submitted a reference in an IDS requires an examiner to completely read that reference is simply incorrect. MPEP 609 clearly states the following: “Consideration by the examiner of the information submitted in an IDS means nothing
more than considering the documents in the same manner as other documents in Office
search files are considered by the examiner while conducting a search of the prior art in a
proper field of search. The initials of the examiner placed adjacent to the citations on the
PTO/SB/08A and 08B or its equivalent mean that the information has been considered
by the examiner to the extent noted above.” The same definition is also found in MPEP 609.05(b). Thus consideration of an IDS could be as little as looking at the list of documents as deciding that they were all found within a database (such as the USPAT and USPGPUBS databases) that the examiner had already searched by other means, or looking at a title and deciding that the document will not be helpful
Maxie,
As for that “On this thread, there seems to be a perception that, if only 6 would read all the docs, the gold standard is preserved” line o crrp, see my post above at 9:05 PM – that was another N A I L E D post.
6: On another note MM is right that “many” examiners no doubt do ignore references. His word “many” is rather indefinite
His word “ignore” is also indefinite.
I don’t think many of us are saying that many examiners sign off on IDSes without looking at the art at all. I imagine something more like an examiner skimming the front cover drawings of the references with a possibly-subconscious but probably reasonable preconception that he’s not going to find much of relevance. In other words, by whatever mechanism, the art is not being fully considered.
Lemley’s statistics, whether you believe/trust them or not, point to art not being properly looked at. They don’t suggest any sort of deliberate misconduct or negligence other than what you’d expect when you needlessly give an overworked person additional work he knows will be unproductive.
J: An examiner friend of mine got an IDS with an anal probe.
That’s certainly a more effective way to get the examiner to consider the IDS than electronic filing.
NWPA: (1) Rid us of all patents and the PTO and all of patent law,
…
Lemley and his gang of bozos wants to burn the system down
What is it with you people? Any time anybody says anything short of “make patents issue without examination, and abolish the defenses of invalidity and inequitable conduct” some crazy person starts ranting that they’re calling for the destruction of the entire patent system. Must have learned that from Glenn Beck.
Protip: Moving the US system part-way toward what other countries with a perfectly good patent system do is not the same thing as destroying the patent system.
6,
“It has nothing to do with the law mo ron. It has to do with policy.”
Whew, for a moment there I thought ya might have something of substance like law or fact. Since it be policy, let me just put it with the rest o my “policy” arguments…damm, where is that Willton file…
Maxie,
“So, tell me folks, whether I understand it right”
Um, right there the odds are pretty good the answer is gona be “No”. This be driven by different factors at different times and it appears that this time the driver is Maxie’s jealousy and desire to take down his competition – the US patent.
But let me throw one thing back atya: How does the glorious EPO examiner get to that pinnacle D1 reference that is the closest thing at the time of filing? How does that single one reference separate itself from the entirity of the prior art? Someone has look for it no? “ How does he do that? It could not be simpler. All he has to do is “do his job”. Tell me Maxie – does the EP do an exhaustive search and read every piece of prior art to find that closest one?
As for “6 needs help from those in the art“, that canard died inthe claims and continuations rules fiasco. Such help aint the applicants job. Such help be illegal to make the applicant do. The royal we of applicants aint goin to do the job of the examiner – that’s why we pay examiners (well except for Ned).
NWPA – ya N A I L E D it bro.
sara – they be after me now – three posts in two days – and Iza know that the last two were clean of filter-catchin words.
Cypher move L7-block2
>>It “follows” because he came to a conclusion >>which would support that. That plainly >>examiners are ignoring relevant art irl, >>despite your best efforts to make them not >>ignore it. So, he wonders, why give the >>presumption of validity?
6, the point is that Lemley and his gang are coming after patents and do not care about logic and fairness. The PTO has problems and those probems need to be addressed.
If the prior art isn’t being addressed, then the issue needs to be dealt with. There really are only two choices: (1) Rid us of all patents and the PTO and all of patent law, or (2) fix the patent office.
I think that (2) is the right way to go and all the paper that Lemley generates is trying to get us to chose (1).
I’ll say it again: (1) move to Richmond, (2) give examiners twice the time for first action, (3) get your search system fixed, and (4) get your classification fixed so examiners can become experts in small fields.
Lemley and his gang of bozos wants to burn the system down with their “academic” papers. You bozos wouldn’t know patent law if it bite you in the ****.
Hey J, great laugh there but, has it occurred to you that that particular attorney might be deliberately including that particular piece of prior art in every single IDS he files, as his own little joke, just to see how far the Examiners are willing to go. Come to think of it, it is rather like including a few lines of junk code in the computer software arts, just to see who’s taken it.
But What, you mean to tell me that you haven’t yet met James’s wife Sarah? Readers, is it possible that Dennis has excommunicated Sarah so now she posts as James?
Can anyone understand James? Does this guy just post so people click his link to his website?
An examiner friend of mine got an IDS with an anal probe. He’s in the computer arts. I’m just saying, maybe the applicants are partly to blame.
So, tell me folks, whether I understand it right:
1. The US patent system sets the gold standard, in that, unique in all the world, every patent the PTO issues rides out in a magic cloak of invulnerability, called the “Presumption of Validity”.
2. Who dresses the rider in that cloak? Why, 6 of course (or one of his brothers and sisters).
3. How does he do that? It could not be simpler. All he has to do is “do his job”.
4. What is his job? Just speed read every word of every IDS document. Anything more? Not so far as I can gather.
On this thread, there seems to be a perception that, if only 6 would read all the docs, the gold standard is preserved and the magic cloak retains its powers.
My point is very simple, that even after that reading, 6 needs help from those in the art, before he can grasp the full content of the state of the art, particularly that which, to the PHOSITA, goes without saying.
“6,
the filter nabbed my lecture on your NPE bias – suffice to say, Ida love to see where that bias has any basis in da law.”
It has nothing to do with the law mo ron. It has to do with policy.
On another note MM is right that “many” examiners no doubt do ignore references. His word “many” is rather indefinite but I doubt that the number is all that large of a portion of examiners. I do however know for a fact that at least one examiner I know has signed an IDS without going over it. In her particular case though she will end up going over it before any allowance. On a Sat night when you need no workflow points some sht will happen, that is a necessary evil of the count/workflow system.
Now Malcolm – I aint lookin up the quote and I did not fave the page, so yous gonna have to trust me.
Ya said it plain as day – now perhaps Iza not remembering right – perhaps you said that you yourself was never the target of an IC charge (thatta cover your weasely defend IC cases comment and still comport with my lazy memory, and Iza can easily see you “bringing it on” with the way you throw those charges at the poor examiners – speaking o which – a few choice words:
“An information disclosure statement filed in accordance with the provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner assigned to the application.”
“encouraged to submit information to the Office so the examiner can evaluate its relevance to the claimed invention.”
“so that the Office will consider information contained therein before a patent is granted.”
and of course, my fave:
“The initials of the examiner placed adjacent to the citations on the PTO/SB/08A and 08B or its equivalent mean that the information has been considered by the examiner to the extent noted above. ”
I see ya wanna weasel on the “many” – take your pick either your first comment don’t mean nothin (many being the Malcolm more than- but down to four individuals), or weza just go with my thousands.
Hey I even found a bonus for the old geezers:
“For unpublished, pending applications, any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291 prior to the mailing of a notice of allowance.”
Kinda nice.
ping Ya gotta remember that Malcolm has admitted that he has zero actual experience with real Inequitable Conduct cases
Nice. Just making stuff up now, ping? Bold.
I do have experience defending IC cases as well as bringing it on in litigation. Not sure why you’re confused about that as I’ve never asserted otherwise.
C’mon sunshine – you just laid a pretty hefty charge against thousands of examiners – lying, falsifying government documents, etc.
I think I said “many” Examiners. And it’s not “lying”, not any more than sleepwalking or sloppiness is lying.
I saw this over at Zura’s 271 and thought it merited my steal..er um, copying it here: I modified slightly, just to add my personal touch.
“So, why do we need a duty of disclosure? Is it tied to the presumption of validity?”
Note: this is a nekked assumption type of thing that Lemley blows.
The duty of disclosure is to make sure that the Office has any and all items so that the Office can do it’s f_n job and make the examination decision. The duty of disclosure is a mechanism to prevent applicants from hiding the ball and providing anything that the applicant may have that may be material, so that the examiner can decide for himself whether that material should be used in making decisions about patentability – note this does not mean that the material submitted actually is material, in fact the rules expressly state the applicant’s neutrality on this matter.
The duty of disclosure is not (nor is it meant to be) tightly tied to the level of presumption (Lemley – that’s a big whifff for your bias, buddy), or to put another way, it is not meant to drive any level of presumption – this is evident in the IDS rules that explicitly waive any such inference (Next time try to include the rules of the game in your little expedition).
What this is is another academic attack on the strength of patents (a painfully obvious one at that).
The presumption of validity is an anchor of the value of patents. If one cannot simpy get rid of patents altogether, one can at least try to emasculate them.
Ned,
Did y’all have a good discussion of 37 CFR 1.97 (h)?
“agreeing with my brief” – what part of the IDS form is this “brief” contained in?
ping, OK brilliant (cough…), tell us how you could get an examiner to actually consider a reference on the record. As I said, I have been struggling with this.
That said, in a recent IDS, I essentially filed a brief explaining in pertinent detail the references and how they did not apply, etc., etc., etc. The examiner responded with an “allowance” discussing these references and agreeing with my brief.
Do you really think that you will be given a question that permits such an answer?
Maybe not by defendant’s counsel (but you can still give your answer). And surely you will be asked some softball questions by plaintiff’s counsel at some point.
I have not been here in a while, but I see that Sarah McPherson had another sex change operation.
“but also discuss a reference that might even be better than his reference an discuss just why your claims define over this reference as well.”
LOL Ned – what’s better than forcing the applicant to perform the examination?
Having that ruled illegal, but then doing it anyway.
Wow Ned, did ya run out of blues and greens?
So every time there is a car accident involving two licensed drivers, the presumption should be that the accident was caused by brake failure until proven otherwise by clear and convincing evidence.
Bad analogy. Try again.
I know and thank you. But it is what it is.
Metis
And Malcolm,
I aint fogot about you.
“ the evidence which shows that many Examiners do not look at art cited by Applicants is fairly overwhelming ”
Oh really? – would such evidence than make every examiner a perjurer or worse for signing off on IDS’s during patent prosecution – which by the way is uncontroverted evidence that the Examiners did look at the art cited.
C’mon sunshine – you just laid a pretty hefty charge against thousands of examiners – lying, falsifying government documents, etc.
But if ya be right (giggle), can government employees be sued? Is this the start of a new cottage industry?
Ya really want to earn that Non Sequitur of the Day Award, doncha Malcolm? – as if the rights under a driver’s license are anything at all like the rights granted with a patent. Did you even think twice before sending that one out?
Man I ha_te the Ha_te filter – it just lost the world a beaut.
Hey LR,
Ya gotta remember that Malcolm has admitted that he has zero actual experience with real Inequitable Conduct cases – not that that fact affactes how most people take his advice.
6,
the filter nabbed my lecture on your NPE bias – suffice to say, Ida love to see where that bias has any basis in da law.
Ned,
the filter also lost the sage observations I had for you and New (Dim) Light – like how your answer don’t affect like any art on initially filed IDS’s or even later filed IDS’s that aren’t touched in an Office Action and the wee small part ya gonna have with the very rules of IDS (that they explicitly are not a statement on patentability).
“Metis”,
nice to see ya back, ya gotta do soomethin about being able to post as yourself tho, seeing the james mcpherson tag is kinda creepy.
Oops I need to clarify that be one and two. Not three. Three is not the bad guy I thought he was. He got really scr@w@d.
Metis
Do you really think that you will be given a question that permits such an answer?
If you don’t, you’re home free. Intent is an element of inequitable conduct.
American Cowboy,
The art I gave to the Attorneys was supposed to be the “drawings filed.” I, as I said gave Photos, an EXCELLENT model, A video, and drawings. I sure hope I get an Atty. soon. Because I am about to bust wide open with so many things that I have. Even things they wrote in the Files that they can’t deny.
My first model was in vinyl, as I said. And it had no piping strip. The Ripstop was because as I said easier to work with. The models were of Ripstop Nylon. And they all had the piping. The foldables had the piping at the top because the pockets were sewn before hand. And the drawings, photos, model, and video reflected the new design. And that was what I sent Les, I mean American Cowboy. And bye the way I am a Real Person.
Metis
New Light, you have identified a problem I have been wrestling with myself. The ONLY solution I have come up with is to fully explain the relevance of a reference when submitting it to the examiner. The best way to do this is in an amendment where you not only distinguish the reference cited by the examiner, but also discuss a reference that might even be better than his reference an discuss just why your claims define over this reference as well.
“Yes, I know, there is the argument that the technology is not “new” if there really was invalidating prior art. But, the art was obscure enough that the inventor who knows his field in many cases, the attorney who likely did a pre-filing search and the examiner who definitely did a search did not find it. For all practical purposess, that hidden prior art did not exist, so the invention is new. Particularly when judged using hindsight, based upon substantial investments made by the inventor or his backers. Their efforts and investments in the government-reviewed patent should not be tossed aside like last year’s supermodel. They should be justified in relying on the government grant.”
If NPE’s were not allowed to bring infringement cases then I would stand with you on this.
“Yes, I know, there is the argument that the technology is not “new” if there really was invalidating prior art. But, the art was obscure enough that the inventor who knows his field in many cases, the attorney who likely did a pre-filing search and the examiner who definitely did a search did not find it. For all practical purposess, that hidden prior art did not exist, so the invention is new. Particularly when judged using hindsight, based upon substantial investments made by the inventor or his backers. Their efforts and investments in the government-reviewed patent should not be tossed aside like last year’s supermodel. They should be justified in relying on the government grant.”
If NPE’s were not allowed to bring infringement cases then I would stand with you on this.
“Why not just say that the spin on the reference didn’t occur to you?”
Do you really think that you will be given a question that permits such an answer?
It is much less enjoyable to explain why you didn’t cite a particular a reference, particularly if the oppposing attorney is able to put a spin on the reference that didn’t occur to you.
Why not just say that the spin on the reference didn’t occur to you?
I have been intrigued with the reexamination process and its limits for some time. I had always thought that any major change in how patent law was perceived would have had an inadvertent effect on all live patents that were not evaluated under the newly evolved standard.
I fully realize that this would create an unworkable dilemma, given that any and every patent would be at the mercy of a switch in patent theory as announced by the courts (most likely) or through congress (most likely not).
When KSR came out, those applications caught in the process that had been prosecuted under the TSM philosophy were casualties, while the exact same style freshly minted patents skated. This just did not seem fair.
I learned that the change in legal philosophy was NOT a matter that could drive the Substantial New Question of Patentability (per Office edict).
I have always been a bit unsatisfied with this as an answer.
Ned’s focus at 2:56 PM was exactly the vehicle I proposed – any patent on the face of the patent, but not specifically discussed or used by the examiner could serve as the segue into applying TSM-killing arguments on obviousness type rejections.
I was told that this was not possible because even though so few patents are actually used by an examiner or discussed during examination, the fact that they are checked off by an examiner means that they have been fully reviewed under ALL existing legal theories, and the patent is indeed vetted.
Just like the KSR legal theory, such an answer leaves me unsatisfied. Yet, to me this flies directly in the face of Case Law which says that a reference discussed in a certain way, can be used in a way that it was not discussed. To me this again raises a fundamental fairness question that seems to benefit having less actual discussion during patent prosecution.
And similarly to the change in legal theory rationale, I understand the “can’t have that” of the clear unintended aspects of throwing every single patent open to perpetual questions, is a legal end that will be avoided.
For example, and following Ned’s thoughts, how do applicants drive the desired strong presumption?
Short of applicants demanding an examiner discuss every reference on the face of a patent somewhere in the prosecution – be it an Office Action (as through an applicant’s response containing a de facto style argument blankly stating that the application is patentable above each and every reference (and listing each and every reference)) or attempting to do the same in a response to Examiner’s Statement of Allowance – what is a real-world workable solution?
Applicants will not be willing to simply surrender the presumption of validity without a fight (and I have to believe that any Office change affecting that presumption will be fought since such a change by definition is outside what the Office can do on its own (based on the lesson from the Rules changes affecting an applicant’s substantial interests).
I am baffled at the apparent contradiction that there is a presumption that the Office actually did its job and actually did fully consider all references – except those it really did consider and discussed, but perhaps did not discuss in all types of manner or combinations.
The path is just so murky to me.
They should be justified in relying on the government grant.
So every time there is a car accident involving two licensed drivers, the presumption should be that the accident was caused by brake failure until proven otherwise by clear and convincing evidence.
As numerous posters have pointed out, the fact that the art the applicant cited is not used in making a rejection does not mean it was not looked at.
Right. Except of course that the evidence which shows that many Examiners do not look at art cited by Applicants is fairly overwhelming. Or maybe they look at it but that’s it. They just look at it. Then they look away and get back to the next application on their docket. Ka-ching!
The presumption is a crock.
Lemley et al. use their findings to attack the presumption of validity. This is specious, and part and parcel of a general attack on patents that has sprung up inappropriately in the last decade or so.
As numerous posters have pointed out, the fact that the art the applicant cited is not used in making a rejection does not mean it was not looked at. The authors can only come to this conclusion by thinking that applicants and examiners each for their own devious ends bring about a farce and a fraud. Where else in the law are people presumed to be crooks? Well, yes there is Congress, but this is not supposed to be a blog about politics.
Further, the presumption of validity applies even to art the examiner did not consider, for sound public policy reasons. Patents are property and are the foundation of, in many cases, very substantial investments. Society thinks investments in new technology are good and to be encouraged: they provide jobs as well as access to the goods themselves. If the foundations are shaky, the investments won’t be made and the jobs won’t be created.
Yes, I know, there is the argument that the technology is not “new” if there really was invalidating prior art. But, the art was obscure enough that the inventor who knows his field in many cases, the attorney who likely did a pre-filing search and the examiner who definitely did a search did not find it. For all practical purposess, that hidden prior art did not exist, so the invention is new. Particularly when judged using hindsight, based upon substantial investments made by the inventor or his backers. Their efforts and investments in the government-reviewed patent should not be tossed aside like last year’s supermodel. They should be justified in relying on the government grant.
We are a bunch of lawyers and we think litigation is an everyday thing and invalidating patents is an everyday thing. Real people don’t think that way.
I wonder if IANAE has ever been accused of inequitable conduct since it sounds so simple to follow his advice, i.e. weed out the cumulative references and trim down the IDS to manageable proportions. I was accused a number of years ago. I imagine others who have been in the same spot find it to be much easier to explain how a reference differs from the invention and doesn’t alone or in combination with another reference anticipate or make the invention obvious. It is much less enjoyable to explain why you didn’t cite a particular a reference, particularly if the oppposing attorney is able to put a spin on the reference that didn’t occur to you.
Chris said: “In my personal experience, it’s usually that the examiners’ interpretation of the claim language is broader than the inventors’. That’s the main problem I have with finding inequitable conduct for withholding a reference – there is no accounting for honest disagreements about what a reference teaches or how the claim is interpreted.”
I agree that this is a major reason for the examiner to want to search independently, and not the myopia that Lemley presupposes. Lemley merely assumes that the examiner and the applicant agree on what the claim is claiming. They do not in many if not most cases.
Ditto the US examiner and the foreign examiner.
MOREOVER, one must assume and I think the examiners do assume that the applicant has submitted claims that are patentable over the art submitted. This is another reason why they conduct a “fresh search” with fresh eyes, reading the claims the way they are written and not reading into them narrow meanings that a claim drafter may have intended when he drafted them.
Applicants submit art for two reasons: first, to avoid a charge of inequitable conduct, and second, to “launder” the references by attaching to them an “enhanced” presumption of validity by being listed on the face of the patent. As Lemley adequately explains, the result is both farcical and counterproductive.
The whole doctrine of IC is up for review. Hopefully the Feds finally get it and do something about the doctrine. Hopefully as well, the Director does something himself by simply banning the submission of searchable prior art and foreign search reports.
Oh ohhh I feel it bubbling.I can’t help myself.
I can see clearly the rain is gone.
I can see all obstacles in my way.
Gone are the dark clouds that had me down.
It’s gonna be a bright bright bright sun shiny day.
Metis
You are way to kind Chris. If a person is withholding the Reference in the ART…. could it be that they are making the applicant pay for the application that was not necessary? Why would they do that? If all had been on the up and up? So if a Non Provisional were written as expected…. then A CIP or a Divisional would not be necessary.
And if you tried to file a Malpractice suit, but couldn’t because the Atty. second in line would not let you. Then yes I guess I may have answered your question, and answer Chris… MY BAD…A SELF FULFILLING PHROPECY
Here is what happens:
Inventor discloses invention to attorney and says the invention is the combination of a, b, c and d.
Attorney does search and finds five references showing, respectively:
a and b
c and d
a, c and d
a, c and d’
a, c and d”
So the opinion is that as long as you stick to the combination of a, b, c and d, with b necessarily present, you distinguish over the art. Attorney drafts application with claims limited to (a, b, c, and d) and (a, b’, c and d). Attorney files along with
Examiner gets the case, glances at the claims and the ids and says, well none of these references support a rejection, since they don’t show or suggest the combination of a, b, c and d.
Examiner then does his own search, FOCUSSING ON THE CLAIMS THAT WERE DRAFTED TO OVERCOME THE ART FOUND BY THE ATTORNEY. Lo and behold, with the search parameters altered from what the attorney used (since the presence of b is so much more important in the claims than seemed to the attorney when doing the pre-filing search) the examiner finds something suggesting the addition of b that the attorney did not find. Hence the rejection relies on art found by the examiner, not what was in the the ids.
I think it is important to point out that in considering the question of “substantial new question of patentability” during re-examinations, the PTO has apparently adopted the position that if a reference was not actually used to reject the claims in a prior prosecution, and if the reference is not clearly cumulative of references that were discussed in such a prior prosecution, the reference can be the basis of invoking a re-examination based upon a substantial new question of patentability even if the reference was listed in the patent under consideration.
This also extends to references cited as a basis of a substantial new question of patentability to invoke a re-examination even if those references are not subsequently used to reject the claims in a re-examination.
What this means is that there is practically is no presumption of validity with respect to references that are not actually employed to reject the claims, or which do not form the basis of a re-examination order.
I am not so sure whether a court could properly instructed jury along these lines, but it seems quite reasonable to say that if a reference was not actually discussed in some manner during ex parte prosecution, there is no presumption that the claims are either valid or patentable over such a reference.
To the contrary, to the extent that a reference was discussed, the presumption that the claims are valid over that reference should be strong and should not be set aside by a court unless the court is convinced that the patent office committed clear error.
Do examiners assume that applicants have good arguments for distinguishing over art they cited so they don’t bother using it in their rejects, but rather use their own art?
In my personal experience, it’s usually that the examiners’ interpretation of the claim language is broader than the inventors’. That’s the main problem I have with finding inequitable conduct for withholding a reference – there is no accounting for honest disagreements about what a reference teaches or how the claim is interpreted.
But to address your scenario, if you know that a piece of prior art on your IDS is a rock-solid 102 rejection against your claims, why would you proceed and waste everyone’s time?
You would likely try to draft the claims prior to filing to avoid that 102 rejection, wouldn’t you? So it is a self-fulfilling prophecy to some extent. The examiners will use different art in the rejection than what was cited, in some part due to the fact that the practitioners have already read the claims they drafted, and considered the prior art they are citing.
Do examiners assume that applicants have good arguments for distinguishing over art they cited so they don’t bother using it in their rejects, but rather use their own art?
(1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway);
What a ridiculous conclusion. How can you even type that with a straight face? In effect you’re saying “Practitioners shouldn’t be penalized for not citing the best art for the examiner, because the examiners usually don’t use the art the practitioners cited for them.”
How many of the examiners’ cited references (not on the IDS) were used in 102 (b) rejections only because the original claims were written so broadly that they read on numerous references not cited by applicant? How many were used in 103 rejections for that same reason?
How many of those references were used by the examiner only for some minor feature that was not in the original claim, but that applicant threw in after receiving a rejection?
Personally I think there should be a much higher burden of proof for inequitable conduct for alleged withholding of a reference. It’s as simple as that. The burden in court should be to prove that the practitioner 1) read and/or discussed the specific piece of prior art, 2) knew and understood that the specific piece of prior art would be relevant to the claims and 3) chose to withhold it anyway. The whole purpose of having PTO is to find that art that the practitioners missed for whatever reason. Practitioners can’t be expected to find every possible 102 or 103 reference. That’s the examiner’s job. Literally.
Inequitable conduct based on false or misleading statements made during prosecution is a whole different matter, but not in the purview of the paper.
Slonecker–
And tedious to a PHASIPP (acronym mine)
Species does not here anticipate the genus!
I like PHOSIPP very much, I think it should enter standard usage at least here on Patently-O.
IBP
If I implied any such assumption its was inadvertent and certainly not intentional.
I have read many academic papers that do provide very useful,insightful, and thought provoking information, but such papers seem to be in the clear minority. I happen to believe that this paper is not within the beneficial minority, but is instead manifestly obvious to a PHOSIPP (acronym mine).
Slonecker–
You seem to assume that academics write papers with a view toward, or for the benefit of, “professionals practicing within the field of patent law”.
I don’t think any such assumption is warranted.
Not meaning to mix Religion and Politics. But I really have to share this. My Father now would have been 103 today if he were alive. And if I had to chose where he would go, with a choice of three Barrels I have here in front of me. 1 being a good egg. He would still go in Barrel number 3 along with Fred, Barney, and Bam Bam. But today is his birthday. And I can’t seem to recall ever looking at the drawings, the model, the photos, and considering the video and the fact that the edges were missing until this morning. Maybe he has passed over. And if he has, then God is VERY forgiving. Way more forgiving than me. So anyway I just thought I would share that tidbit. Maybe a sense of forgiveness is expected from me. But nope… I just don’t feel that warm and fuzzy feeling. But I still wanted to share it anyway.
I simply must ask the question. Is there anyone who has been involved in patent prosecution practice well beyond the “wet behind the ears” stage of their careers who finds anything contained in the paper earth shattering?
It seems to me that the authors could have obtained almost identical results from having discussed the matter in detail with well seasoned attorneys, agents, and examiners.
If the paper could be characterized as a patent application, does anyone really belive it would not be rejected (and sustained on appeal) under 102 and 103? I think not.
Importantly, I am not slamming academics such as Mr. Lemley. The sole point I am making is that professional practicing within the field of patent law are not as uninformed about the law, policy arguments, case law, etc. as some academics appear to believe may be the case.
Perhaps in your world all prior art references can neatly be classified into cumulative/non-cumulative boxes. That’s not the real world.
No, it’s not. Because in the real world the agent doesn’t even bother to read the references. They’re all equally material, as far as he knows.