Patently-O Bits and Bytes

  • Rational Ignorance at the PTO: I received many interesting comments on The Lemley-Cotropia-Sampat article yesterday.  Many of the comments pushed-back against the authors’ conclusions with reasons why applicant-cited art is more-rarely asserted in prior art rejections. Query: Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art.
  • Patent Law in Print:
    • Joe Mullin at Corporate Counsel (an ALM Magazine) reports on Patent Attorney Wes Whitmeyer’s patent infringement lawsuits against Brinks Hofer, Dinsmore & Shohl; Benesch Friedlander; Edwards Angell; and WilmerHale. [Link]
    • Susan Pan and Natalya Dvorson have a useful article in IPToday on how to obtain refunds from the USPTO. [Link]
    • Abigail Rubenstein of Law360 has a brief article about the en banc request in Telcordia Tech v. Cisco. In that case, Cisco is asking the Federal Circuit hold that Judges (rather than Juries) should decide whether patent claims are invalid as indefinite.  Microsoft and GM filed a joint brief in support of the petition. [Link]
    • Sharon Oriel has published a short article in Intellectual Asset Managament (IAM) magazine describing “a three-step process to persuade a company that it can prosper and grow through investing in intellectual asset management.” [Link]
  • Recent Patent Law Jobs:
    • Amazon is looking for business-minded corporate counsel with at least 5–years of patent prosecution experience and combination of in-house and law firm experience. [Link]
    • Miller Nash law firm is looking for a patent attorney (or attorneys) with 4+ years experience and a focus on medical devices and life-science related software. [Link]

107 thoughts on “Patently-O Bits and Bytes

  1. 106

    ping we all know all awful those Cherokee Jihads have been –

    Wasn’t Timmy McVeigh part Cherokee?

    Oh wait, I forgot: he was a full-blooded teabxgger.

  2. 104

    I’m not trying to resolve the Middle East conflict

    Damm – and I was so hopeful.

    The Cherokee have the same “problem”

    Yeah – and we all know all awful those Cherokee Jihads have been – how many Cherokee children have been wrapped up in explosives and sent in to mingle with those (evil) citizens minding their own fricking business.

    Whew – no wonder nobody is saying that the Cherokee faith is inherently evil or dangerous or anything like that.

  3. 103

    Ned: IANAE, the problem as I see it is that most (if not all) Muslims think that the whole of Palestine IS Muslim land and that no one, not Israel nor the UN nor the English, had a right to take that land and give it to Israel — without their consent, that is. And they did not consent.

    Well, that’s half of the problem. The other half is that Israel views the same land with the same sense of historical entitlement.

    I’m not trying to resolve the Middle East conflict, I’m simply saying (and I think you agree, even) that the Muslims in the region aren’t attacking Israel because Israel is non-Muslim. They’re attacking Israel because as far as they’re concerned Israel is on their land. If Israel had instead been given to Muslims from India (which I suppose the British could have done), the Palestinians would have been just as upset. If America’s support for Israel came from a Secret-Muslim president, that probably wouldn’t appease them either.

    This is not a problem with Islam. This is a problem with taking people’s land and expecting them to get over it. The Cherokee have the same “problem”, and nobody is saying their faith is inherently evil or dangerous or anything like that.

  4. 102

    Ned: “Now circling back a bit to Middle Eastern history, why is it that the Arab states attacked Israel in 1947? Could it be that they viewed Israel to be a foreign, non Muslim, entity illegality occupying Muslim land?”

    IANAE: “It’s much easier to be upset when you think someone is taking your land than when they simply disagree with you. You get a lot more ‘radicals’ that way. The Muslim nations fight amongst themselves, too.”

    IANAE, the problem as I see it is that most (if not all) Muslims think that the whole of Palestine IS Muslim land and that no one, not Israel nor the UN nor the English, had a right to take that land and give it to Israel — without their consent, that is. And they did not consent.

    Al Qaeda even claims they still “own” Spain.

    We have to understand their views on this — because the “problem” of Israel will remain unresolved until either Israel ceases to exist, or Islam as a whole recognizes Israel’s right to exist. And, so long as Israel exists, we are going to have “problems” with Islam due to our support of their existence.

    The way forward is clear, but it is almost impossible to achieve. It requires all of Islam to change.

  5. 101

    An Old Jewish Man

    A female CNN journalist heard about a very old Jewish man who had been going to the Western Wall in Jerusalem to pray, twice a day, every day, for a long, long time.

    So she went to check it out. She went to the Western Wall and there he was, walking slowly up to the holy site.
    She watched him pray and after about 45 minutes, when he turned to leave, using a cane and moving very slowly, she approached him for an interview.

    “Pardon me, sir, I’m Rebecca Smith from CNN. What’s your name?

    “Morris Feinberg,” he replied.

    “Sir, how long have you been coming to the Western Wall and praying?”

    “For about 60 years.”

    “60 years! That’s amazing! What do you pray for?”

    “I pray for peace between the Christians, Jews and the Muslims.”

    “I pray for all the wars and all the hatred to stop.”

    “I pray for all our children to grow up safely as responsible adults, and to love their fellow man.”

    “How do you feel after doing this for 60 years?”

    ” Like I’m talking to a phuckin ‘ wall.”

  6. 100

    You all must be able to find muslim patent attorneys that you can discuss this with. They might not all be terrorists. They might even be willing to engage in dialogue instead of diatribe.

  7. 98

    Now circling back a bit to Middle Eastern history, why is it that the Arab states attacked Israel in 1947? Could it be that they viewed Israel to be a foreign, non Muslim, entity illegality occupying Muslim land?

    It’s much easier to be upset when you think someone is taking your land than when they simply disagree with you. You get a lot more “radicals” that way. The Muslim nations fight amongst themselves, too.

    I bet you’re the same way. The two of us disagree all the time, and I bet we could still be civil to each other if we met in person. Yet, if I appropriated half of your back yard, you’d have a serious problem with that. You’d probably even call some people with guns and uniforms to have me forcibly removed.

    9/11 wasn’t a concerted effort by the world Muslim community. It wasn’t about Middle Eastern politics and land disputes. It was a terrorist act and the world’s biggest cry for attention by a small-ish group of crazy people who, yes, happen to self-identify as Muslim and are pretty radical about nonbelievers.

    Are there still people who believe 9/11 was a Jewish conspiracy? I wonder if they’d oppose building a synagogue a couple blocks from Ground Zero. Or maybe they’d rather jump on the anti-mosque bandwagon for no good reason.

  8. 97

    All religions are pretty much that way? I somewhat agree in principle — which is why we do not allow religions to run the state. But we do have that in Islamic states where Sharia Law is the law of the land. We also had it in Europe where the Catholic Church was generally part of the government. We then had it in England where the likes of Cromwell decimated in the name of religion.

    I agree wholeheartedly with your observation, IANAE.

    Now circling back a bit to Middle Eastern history, why is it that the Arab states attacked Israel in 1947? Could it be that they viewed Israel to be a foreign, non Muslim, entity illegality occupying Muslim land?

    That is exactly what they said then and is exactly the what they say now — and this sentiment is not limited to the so-called radical Muslims. It is virtually all of them.

  9. 95

    The Amish practice what they would consider strict Christianity, and it’s pretty incompatible with a lot of Western civilization

  10. 94

    Dear SARAH,

    Re:
    “Someone shut my Computer off three times. So I will see you all later. I can’t be bothered with half a life. But it ain’t over till it’s over.
    Posted by: sarah mcpherson | Aug 24, 2010 at 03:54 PM”

    Someone please, shut off sarah’s computer. Feed her cat, give her half a life and tell her its over and its over.

  11. 92

    Well, IANAE, there are religious beliefs that I and many others oppose in principle.

    Everyone who has religious beliefs also has religious beliefs they oppose in principle. They’re called “the religious beliefs of others”.

    We need to understand that one mans right of religious liberty does not allow them to oppress others in the name of that liberty. We have consistently understood this in US law.

    I assume you mean that we shouldn’t be oppressing Muslims in the name of our own liberty. Only, that seems to be very inconsistently understood.

    I find a lot in strict Islam (some would call it, radical Islam) incompatible with Western civilization.

    The Amish practice what they would consider strict Christianity, and it’s pretty incompatible with a lot of Western civilization. We extend to them considerable freedom to act as they see fit. Heck, Judaism allowed polygamy until a few centuries ago, and I bet it still doesn’t allow the use of firearms on the Sabbath. We’ve decided that polygamy is a fundamentally bad thing, so we criminalize and prosecute polygamy, but that does not entitle us to prosecute Mormonism generally or prevent Mormons from building places of worship.

    But what gets me the most about (radical) Islam is its religiously mandated intolerance and bigotry.

    I guess this is your first experience with religion. Spoiler alert: they’re all that way, pretty much.

    Not all Muslims are out to kill you. Islam doesn’t even have a central authority that might order the deaths of all nonbelievers like Pope Urban II did a few centuries ago. Not all Muslims are even from the Middle East.

    You know what gets me the most about (radical) American patriotism? Its religiously mandated intolerance and bigotry.

  12. 91

    Well, IANAE, there are religious beliefs that I and many others oppose in principle. Do we allow the oppression of women in the name of religious liberty? Obviously not. We need to understand that one mans right of religious liberty does not allow them to oppress others in the name of that liberty. We have consistently understood this in US law.

    Mormans believe in and some sects even today attempt to practice polygamy. We prosecute them.

    Islam has the same beliefs. Do we allow a Muslim the right to polygamy. I would hope not.

    I find a lot in strict Islam (some would call it, radical Islam) incompatible with Western civilization. I oppose those aspects of Islam, just as I oppose the barbaric practices of other religions.

    But what gets me the most about (radical) Islam is its religiously mandated intolerance and bigotry. I find it hard to accept that we must accord Islam the same respect we have for other religions when Islam has no respect for the civil rights or freedoms of others who are not Muslims.

  13. 90

    would you approve of a religion that would make a holy sacrifice of a live human baby?

    You must be putting me on.

  14. 89

    Dear IANAE,

    Am I to take it that you approve of all religions?,
    no matter how bazaar?
    For example,
    would you approve of a religion that would make
    a holy sacrifice of a live human baby?

  15. 88

    Thou shall not kill those what don’t deserve to be whacked

    Interesting qualifier.

    The Old Testament mentions four approved methods of capital punishment for people who don’t live by Da Rules. Do unto others, indeed.

    It’s really quite consistent with your “I am not against any religion I approve of” post at 3:26 PM yesterday.

  16. 86

    Does one tolerate the intolerant, the irrational, the immoderate, those who oppose civil liberties in principle, those who view woman and unbelievers as inherently unequal?

    Apparently so, even though they haven’t been in power for a couple of years now.

  17. 85

    Thou shall not kill

    It depends – Does the inherent meaning extend to self-killing? to self-killing when the continued living is an affront to the dignity of the individual? And in the other direction, does it extend to purposeful harm of another person? to any sentient living being? to any living being?

    Ima pretty sure that your begging won’t answer the questions to everyone’s satisfaction.

  18. 84

    Dear IANAE,

    I beg to differ; e.g:

    Do unto others

    Thou shalt not kill

    What do you think are the inherent meanings of these phrases?

  19. 83

    IANAE, “If we are defending the ground of equality, tolerance, rational thinking, moderation, and civil liberties, our footing looks very weak indeed.”

    Does one tolerate the intolerant, the irrational, the immoderate, those who oppose civil liberties in principle, those who view woman and unbelievers as inherently unequal?

  20. 82

    Umm, make that “major US religion”. I can’t possibly account for them all, but it’s pretty easy to rule out the big ones.

  21. 81

    Your point being ? …

    My point being, not one single religion has world peace and harmony as an inherent belief. Certainly not your own.

  22. 78

    as long as world peace and harmony are an inherent belief thereof/therein.

    You do know, I presume, that inherency is disproved by a single counterexample.

  23. 77

    Dear IANAE,

    Thank you for your assumption regarding my broad tolerance of different religions.

    Yes, all else being equal, I am not against the practice of any religion, nor the building of any place of prayer or worship, as long as world peace and harmony are an inherent belief thereof/therein.

    I believe that is explicitly and implicitly clear from my postings.

  24. 73

    If we are defending the ground of equality, tolerance, rational thinking, moderation, and civil liberties

    Those that turn the other cheek get slapped twice as hard.

  25. 72

    I only oppose the construction of one mosque, the one near Ground Zero, which many Americans consider hollowed ground.

    I’ve seen the photos. It is clearly hollowed ground.

    I presume you’re dead set against all the other mosque protests around the country, nowhere near Ground Zero? Footage available at dailyshow.com. Because, y’know, this isn’t at all about hating Islam. It’s just that Murfreesboro TN is too close to the hallowed ground.

    It’s fascinating to watch this ideological tug-of-war unfold. Funny thing about tug-of-war, it’s not won by the stronger side – it’s won by the side with the better footing. If we are defending the ground of equality, tolerance, rational thinking, moderation, and civil liberties, our footing looks very weak indeed.

  26. 71

    Enough, enough for one day.

    I should have listened to my Mother, don’t suffer fools
    (no offense to those what don’t deserve it).

  27. 69

    Dear Lionel,

    Re:
    “And my point is if you oppose the construction of new mosques (which the community center is not) then you do oopose [sic] freedom of religion.)

    What a smuck – I only oppose the construction of one mosque, the one near Ground Zero, which many Americans consider hollowed ground.

    If you were able to follow the gist of the thread, you’d have know that!

  28. 68

    Re EFS being down for 24 hours–isn’t there supposed to be an emergency backup site?

    There was, and there was a link to it.

    Only for EFS, though. Not for PAIR.

  29. 67

    Re EFS being down for 24 hours–isn’t there supposed to be an emergency backup site? Doesn’t sound like it, from the posts above. We haven’t switched over yet to electronic filing and were starting to consider it, but in view of this, I think we’ll put it off for another couple of years. I don’t need any help having a stress-induced medical emergency because I can’t get something filed.

  30. 65

    “This controversy has little, nay, nothing, to do with freedom of religion.”

    Meant to include that tidbit in the cut and paste for my first quote.

    And my point is if you oppose the construction of new mosques (which the community center is not) then you do oopose freedom of religion.

  31. 63

    “There are mosques all over NYC and our country with no more objection to Muslims practicing their religion than to Christians or Jews practicing theirs.”

    “Regarding the building of the proposed mosque, there is no way it would ever be completed in my city. No construction worker would tolerate such construction, and they wouldn’t tolerate scabs on the job.”

    JAOI maybe your tiny brain cannot comprehend, but there is an apparent conflict between these two statements.

  32. 62

    none of my posts appear to be going through. They will probably all go through later.

    Max you are generally accurate in your assessment.

  33. 60

    Dear IANAE,

    Re: “Maybe a second psychiatrist is in order?”

    Confucius say:
    He who is in glass house shouldn’t throw stones.

  34. 59

    You got that right …

    It scares Jon Stewart that American journalism has fallen so far that a fake news show hosted by a failed actor covers more real news stories in two hours a week with more insightful commentary and has more journalistic integrity than any of the several 24-hour dedicated news networks.

    After all, Jon Stewart is the one who followed the money from that Ground Zero mosque all the way to Faux News. Even Faux News itself couldn’t figure that one out.

  35. 57

    Dear IANAE,

    Re: “And that scares Jon Stewart, too.”

    You got that right …

  36. 55

    Dear IANAE,

    I thank you for your sage advice.

    I have three cats two of which are a mating pair, a trophy wife, an amazing son turning 21 who is an accomplished scholar, an adorable, absolutely unique physical therapist, a brilliant psychiatrist, a beautiful PCP and gifted specialist physicians – I think I’ll pass on a dog until I retire. But I do miss the wonderful Shepards I had.

    What do you think about the mosque?

  37. 54

    All Europeans get all of their information about the USA from The Daily Show with Jon Stewart

    To think, you don’t even get the full version of his show.

    Even in America, he’s among the most trusted journalists. And that scares Jon Stewart, too.

  38. 53

    All Europeans get all of their information about the USA from The Daily Show with Jon Stewart – FACT

  39. 51

    Dear Lionel,

    Re: “Just the sort of irrational, xenophobic stuff I’d expect from you.”

    You still have the sensitivity of a frog, a dead frog at that. Here’s some advice – Get a heart – you’ll thank me in the morning.

    PS:
    Re: “irrational, xenophobic”
    Isn’t that a bit redundant?

    ———

    Dear Max,

    Re: “Lionel to assuage your concerns…”

    Your anti-anything American bias is showing. Moreover, each of you’re your gathered “facts” begs the issue, is a misstatement or is Just plain wrong.

    And furthermore, you are phucking delusional – to suggest that:
    “We gather over here that…”
    You got a mouse in your pocket? For whom else do you speak? Please, with all due respect, provide some explanation for your phucking delusional assertion.

  40. 50

    Dear Max,

    Re: “I’m mindful that, yesterday, another poster deplored those who indulge themselves here in “pissing competitions”. I think he was right too.”

    Thanks for pointing out that some comments made yesterday in this thread are no longer present: I salvaged these comments:

    ———————————————————–

    Dear IANAE,
    Re: “I don’t have the patience to deal with each of your particular delusions on an individual basis.”

    Thanks again for your comment.
    I accept it for what it is despite the redundancy therein.

    Regarding the building of the proposed mosque, there is no way it would ever be completed in my city. No construction worker would tolerate such construction, and they wouldn’t tolerate scabs on the job.

    So, this is only an academic concern, and on that score, with all due respect, you are somewhat ill-equipped. :-(
    [Posted by: Just an ordinary inventor(TM)]
    ———

    Regarding the building of the proposed mosque,

    Wow, trolling two threads now? It really is astonishing how desperate you are to have an argument about this on the internet. Not to mention how much difficulty you’re having in finding someone willing to argue an issue that comes with pre-manufactured controversy.
    Posted by: IANAE | Aug 23, 2010 at 03:31 PM
    ———

    Mosque controversy?! That’s all we need to pull in IP professionals for civil, patent-related discussions.

    I say protect the hallowed grounds of patentlyo.com from the sewage of online political rants.
    Posted by: Andrew Dhuey | Aug 23, 2010 at 03:36 PM
    ———

    Dear IANAE,

    I felt compelled to state certain facts in my comment on the hot-issue-of-the-time in this, the forum I respect most, and in the community in which I have labored.

    However, I inadvertently posted in this thread – I meant to post in the Patently-O Bits and Bytes thread – oops.
    Posted by: Just an ordinary inventor(TM) | Aug 23, 2010 at 03:53 PM
    ———

    I second “protect the hallowed grounds of patentlyo.com from the sewage of online political rants” even though they provide me rare opportunities to agree with Mooney.
    Posted by: Znutar | Aug 23, 2010 at 03:56 PM
    ———

    There is only one reason to get involved in this nonsense and that is to cut the nonsense out of the system.
    Posted by: 6 | Aug 23, 2010 at 04:05 PM
    ———

    Dear IANAE,
    I believe that anyone with a strong opposing opinion about the mosque would have commented by now. None have – perhaps my comment rings true in readers’ minds.
    Fellas, get a life!!
    As much as I love Patently-O, and you know I do, there is nothing hallowed about it.
    Those who work in the IP industry are people, Just people, hopefully people making a comfortable living in IP.
    Posted by: Just an ordinary inventor(TM) | Aug 23, 2010 at 04:08 PM

    ———————————————————–

  41. 49

    This is by no way scientific, but I have lost count of the number of times we have submitted in an IDS what we believe to be the closest prior art and the Examiner comes back with different art that is not only less relevant than our submitted art, but often nearly irrelevant. I don’t know if this means the Examiner is ignoring the submitted art or not, but that certainly would be a reasonable hypothesis.

  42. 48

    Lionel to assuage your concerns, I should perhaps chime in from Europe. We gather over here that 1) it isn’t actually a “mosque” 2) in the context of densely populated lower Manhattan, it isn’t actually anywhere “near” Ground Zero, 3) any stick will do, and 4) on high quality blogs such as this, there is good reason to ignore posters who try to hi-jack the thread.

    I’m mindful that, yesterday, another poster deplored those who indulge themselves here in “pissing competitions”. I think he was right too.

  43. 47

    JAOI,

    Just the sort of irrational, xenophobic stuff I’d expect from you.

    I hope you’re out there opposing the building of YMCA’s two blocks from schools and/or planned parenthood offices.

  44. 46

    I accept that as tacit approval.

    Believe what you want. I don’t have the patience to deal with each of your particular delusions on an individual basis.

  45. 45

    Dear IANAE,

    This time!
    You didn’t disagree, and I accept that as tacit approval.
    I have come to expect no more of you – and that’s fine by me.

  46. 44

    I take it that you agree with the sentiment of my comment.

    In all the time I’ve been posting here, when have I ever done that?

  47. 43

    Dear IANAE,

    Thank you for your comment.
    I take it that you agree with the sentiment of my comment.
    Thanks,
    I knew you’d put respect for your fellow Americans and especially New Yorkers above the lack of any particular need to build a mosque on the proposed construction site. A mosque there would offend, to say the least, millions of Americans and others worldwide.

  48. 41

    Subject: A mosque near Ground Zero.

    Pres. Obama finally came out on this riveting political, religious and moral debate giving his approval, and supporting his approval with reference to our Constitution.

    Not one day later Pres. Obama withdraws his approval based on a judgment call.
    Talk about flip-flopping based on public opinion!

    This controversy has little, nay, nothing, to do with freedom of religion.

    There are mosques all over NYC and our country with no more objection to Muslims practicing their religion than to Christians or Jews practicing theirs.

    The conflict here, a new mosque near Ground Zero, has to do with common sense, courtesy and respect for your neighbors.

    Especially, given that, historically, Islamic monuments and mosques around the world were built to commemorate victory against Islamic infidels, the idea of building a mosque near Ground Zero is crazy-nuts, a blatant affront to the common sense of all except some Muslims and Muslim sympathizers.

    The outcry against a mosque near Ground Zero should come from within the peace-loving Islamic community – where, oh where, is their outcry?

    Is there a peace-loving Islamic community? – their silence is deafening.

  49. 40

    1) A nice piece of evidence is to have a look at the worksheets in the file wrappers. When an examiner didn’t seem to find the time to sign off the lines of form 1449 individually but just made a wavy line and initials on top and bottom of the page — What would you think about the amount of time spent per reference? – I’d say less than a second.. This actually turns the form into a “list of prior art submitted by the applicant and ignored by the examiner”.

    In line with an anonymous posting (Aug 20, 01:52) “How many Federal Circuit cases have affirmed a theory of burying a reference?”: when examiners fail to consider art submitted in an IDS, if the applicant knows of a piece of art of particular relevance, there’s no safer way of hiding it from the examiner than just submitting it together with a bunch of other pices of more or less loosely related art in an IDS. And all of a sudden the presumption of validity has whitewashed the patent, making it at least at first sight “novel” over the submitted prior art.
    For example: If the examiner looks at 50% of the submitted art: there’s a 50% chance of “burying a reference”.

    2) A “hard” piece of evidence would be when a patent was found invalid based on art that was already listed on the front page. I’d love to know how frequently that happens.

  50. 38

    I’D LAUGH IF IT WASN’T SO SAD. SO SAD FOR YOU,NOT. IMAGINE I DON’T EVEN KNOW WHAT IT EVEN LOOKS LIKE. THAT’S WHY I CAN’T GET ANY THING. HOW ABOUT A LITTLE SMASH MOUTH BABEL BALL. IMAGINE SENDING WHAT YOU WANT ME TO SEND TO THE OFFICE BECAUSE I DIDN’T HAVE A CLUE. THIS HAS TO GO TO THE DIAMOND. SMALL ONE LARGE ONE IT DON’T MATTER. BUT IT MUST BE WRITTEN IN FLINTSTONE.
    METIS

  51. 37

    Hey Babel Boy,
    It’s my turn now.
    I ordered these things a long time ago. The order numbers on one set that took forever didn’t match what I ordered. So obviously all this time I thought what I signed was what I got. Oh how silly of me. I got what I thought was what I have been complaining about forever. So imagine my surprise when I realized (DUH) It’s not anything like I should have gotten. And the reason for that is because I didn’t know what I had. And I wasn’t supposed to get it. But I got it GET IT! GOT IT!

    BROUGHT TOP YOU BY THE DOG DINO. THE DOG OWNED BY METIS. WUFF WUFF GAFFE!!!!!!!!!!!!

  52. 36

    (at which point the admission is implicit anyway)

    That’s what I am told – but why?

  53. 35

    Ned makes a good point:

    “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.” MPEP 609.

    Maybe you could get an examiner to tell you whether or not a reference that you think is a “key reference” doesn’t render the claims anticipated or obvious, but it’s unlikely that an examiner would admit to this until allowance (at which point the admission is implicit anyway).

  54. 34

    American C, “ignore” needs to be defined. “Review,” really means, according to the PTO, that the examiner has cursorily looked at the reference. But to us, that means “ignore.”

    Our “ignore” is equivalent to the PTO’s “review.”

  55. 33

    Dennis, I think we ought to look at what really is important – and that is the standard for “substantial new question of patenability” in a reexamination. If a reference is actually applied in a rejection, or mentioned in a Notice of Allowance, or as a basis for a reexamination order, it is completely “of record” so that it should properly forms the basis of a presumption of validity and ordinarily should not be the basis of a subsequent reexamination order.

    Every other reference cited may or may not have been reviewed thoroughly by the examiner. The PTO gives no presumption that it has when considering whether it can form the basis of “substantial new question.”

    As I mentioned in another thread, at times many of us would like the examiner to say something about a particular reference so that we may get on the record why we believe our claims are patentable over the reference. Simply citing the reference in an IDS provides no guarantee that the examiner will even look at it in any but a cursory fashion. I also do not think explaining reference in the IDS or background section is enough to assure that the examiner has fully considered the reference. Perhaps an examiner interview might do the trick so that we can get on the record that we actually discussed the reference with the examiner?

    Regardless, any study should clearly limit “examiner used references” to references actually mentioned by the examiner in the prosecution history and not merely listed on some form.

  56. 32

    To get back to Dennis’s basic Query: Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art?

    Concluding that they ignore the references requires that the single most likely inference is that the examiner was intentionally derelict in his duty and committing fraud when initialling the PTO-1449, simply because applicant submitted references are not used often in making rejections. This is where recent IC cases are going as to an inference of intent to deceive based upon a bare record that the attorney had a reference he did not submit.

    That is, Lemley’s accusation requires us to assume something nefarious about examiners, so it better be the only assumption that is reasonable. I don’t think it is the only assumption that is reasonable.

  57. 31

    Is there any disincentive to willfully, carelessly, gratuitously, offensively accusing the other side of “inequitable conduct”?

    If not now, should there be one tomorrow?

    Only asking.

  58. 30

    Don’t we also have a duty to our clients to get the art actually considered during examination if we know the art to be material to patentability

    IANAE, ya sound like blah blah blah.

    Do you know what “considered” means by rule? Do you know that by putting it on the IDS you have completed your obligation?

    Really, it is that simple.

  59. 29

    This isn’t about avoiding allegations.

    It is to some extent. A lot of the relevant comments in this blog are about the hardship of being falsely accused of inequitable conduct, the deposition, the trial time, the distraction, and the eternal black mark on your reputation.

    Pretty much every actual finding of inequitable conduct is based on deliberately withholding a reference someone knew was problematic, or withholding what was known to be the closest art. That kind of thing is easily avoided by simply being conscious, reasonable, and honest.

    Remember, the “plague” is about how frequently it’s alleged, not how frequently it’s proven.

  60. 28

    IANAE wrote,
    Even if you file absolutely everything you’ll still catch the plague, same as everyone else.
    and
    Because litigators will argue pretty much anything, you know.

    Amen. You can’t prevent the allegations by gigantic IDSes.

    But you can prevent findings of inequitable conduct based on the art cited therein. How many Federal Circuit cases have affirmed a theory of burying a reference? This isn’t about avoiding allegations.

  61. 27

    I have found that the first IDS submission can be very helpful if: I file it before the first OA and make sure it has only a few refs (3-10) that are really on point.

    It’s great to see that someone here knows how to use an IDS form.

    Just one question, though. At what point do you disclose all the unhelpful art “because of Rule 56 and the crazy case law on inequitable conduct”? Before the first office action or after? Are you at all concerned that you might contract the plague that’s going around by submitting some art when you believe the examiner will read it and other art when you believe the examiner will ignore it?

    Because litigators will argue pretty much anything, you know.

  62. 26

    Based on my own experience, I have to generally agree with the examiners on this one – most of the art I cite is not helpful, but I do it because of Rule 56 and the crazy case law on inequitable conduct.

    That said, I have found that the first IDS submission can be very helpful if: I file it before the first OA and make sure it has only a few refs (3-10) that are really on point. Contrary to what Prof. Kayton apparently believes, I find that when I submit a simple, directed IDS before the first OA that I know has “good” art in it, in general the examination I get is better, the OAs are more on point, and the art cited and relied on by the examiners is also better.

    So, to react to the study about examiners not “using” the IDS-submitted art, I may not get rejected frequently on the art in my IDSs, but the art used to reject the claims is generally more on point as a result of the IDS (at least as I stated above), and the examination is generally better also. In that sense, I would argue there is evidence that the IDS submission is taken into consideration by the Examiner.

  63. 25

    but this is justified to some extent because the client believes that their invention is an advance over anything they know about, otherwise they wouldn’t be filing an application.

    It’s also justified because clients generally supply only the references they think are particularly relevant, rather than FedExing you their entire file cabinet of unrelated prior art.

    Inequitable conduct defences are a plague, but as long as this problem isn’t fixed it is completely inevitable that we will file absolutely everything, period.

    Why is that completely inevitable? Even if you file absolutely everything you’ll still catch the plague, same as everyone else.

    Don’t we also have a duty to our clients to get the art actually considered during examination if we know the art to be material to patentability, and should we not be structuring our IDSes accordingly? I suppose on this point I can concede that if the client doesn’t want to pay his agent for better examination he shouldn’t get it, but surely there is at least a duty to advise the client that flooding the examiner with IDSes prepared on the cheap could be bad for his patent.

  64. 24

    RCH and INAE are both right. If we have a search done, then we draft around the art that is found, and the Examiners expect us to, and then we have to file them in an IDS. OTOH, if a bunch of references are dumped on us by the client, we put them in an IDS and probably don’t spend much time looking at them, but this is justified to some extent because the client believes that their invention is an advance over anything they know about, otherwise they wouldn’t be filing an application.

    Inequitable conduct defences are a plague, but as long as this problem isn’t fixed it is completely inevitable that we will file absolutely everything, period. I understand exactly why Examiners don’t want all these references, or indeed any IDSs atall, but their only solution lies with congress, not patent counsel.

  65. 22

    As I had noted, the only times I knew for SURE the applicant cited references had not been read was where the examiner only cited and applied clearly vastly less relevant references, and it would be difficult to quantify that.

    But does anyone honestly believe that an examiner even has the time to carefully read all of the reference cited in a “reference dump” of 50, 100, 500 or more cited references?

  66. 21

    Sure, I have a suggestion: ask them.

    Self-report survey.

    And good luck with conducting THAT study.

  67. 20

    The lawyer has an obligation (on behalf of the applicant client) to submit relevant prior art, that the client is aware of.”

    Fixed – just a minor nit (or not). Well actually, ya kinda go off the deep end on this one IANAE. I realize ya been away from teh practice world for awhile, but this smacks of being more policy driven than law or fact driven. And let’s face it – policy driven arguments (without law or fact support) are like opinions.

    As for it being a nit or not – that kinda depends on how you define “obligation” What do the Rules say abou this? hmm, that’s right – no search – gotcha. hmmm, that’s right – neutrality on any affect on patentability – gotcha. Seems pretty clear that ya be barking up the wrong policy tree. Oh wait, is another one of those that ya wanna change?

    It appears that you think the obligation extends to some type of examination, even so far as to determining relative relevancy (and that be without the benefit of how the examiner is goin to apply BRI).

    You be creating an obligation that just don’t exist. Labeling it as a paranoid sound pretty cool on th eblog (you be the man with cool blog postings – there be no doubt).

    As to “. And another thing, these lawyers are still making decisions about what to submit.” – whole different level of decision – whole different level of “obligation”, and of course, a whole different level of what the market will bear (since the driver is not a true legal obligation, market drivers cannot be dismissed).

    Ya see, this don’t take any nerve – it just takes a realization of what the Rules of the game actually are.

  68. 19

    Some clients won’t pay for the lawyer to read the art. Is it the lawyer’s fault?

    Is it the examiner’s?

    The lawyer has an obligation (on behalf of the applicant client) to submit relevant prior art. Shouldn’t the lawyer know what art is relevant? Shouldn’t the client pay for the lawyer to fulfill the client’s obligations on his behalf?

    Should the lawyer even take a client who won’t pay what it costs to fulfill his legal obligations?

    And don’t tell me lawyers do it because it’s safer not to make decisions about what to disclose. That’s a paranoid rationalization. For one thing, you’re never safe from allegations of inequitable conduct no matter what you do. It’s alleged almost as often as infringement. Any defense counsel will consider it worth a try, as both a pressure tactic and a fishing expedition. And another thing, these lawyers are still making decisions about what to submit. They don’t disclose every single piece of prior art they’re aware of. If they did, every IDS they filed would be identical, with slight updates as older applications they’ve drafted become prior art. That means they’re still filtering, and while they’re filtering they might as well do it competently.

    But what really takes nerve is for those same lawyers to insist that the content of the IDS (the applicant’s responsibility) is the examiner’s problem, and that the examiner should spend his own unpaid time poring over every single disclosed reference the lawyer couldn’t be arsed to read because his client won’t pay.

  69. 17

    “Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art.”

    It’d be helpful if we had a working definition of “effectively ignored.” Preferably one that doesn’t include instances where an examiner takes a look at the submitted references, decides there’s better stuff out there, and uses the other art.

    “What’s going on with the electronic filing portal at the USPTO (EFS web)? It’s been down for almost 24 hours. ”

    There was a major global computer snafu yesterday at around 4:00 PM.

  70. 15

    lawyers draft around art before submitting,

    Not all of them. Some don’t even read the art before submitting.

  71. 13

    Examiners “effectively ignore” submitted art because lawyers draft around art before submitting, or as a preliminary amendment to, claims. Duh…

  72. 12

    6, I just saw your question above, on unity of invention, and I do try to be useful.

    But just now I have no time.

    And anyway, I would prefer that you get an answer from an EPO Examiner. I do not search or write exam reports.

    But here’s a very quick comment. If an EPO Exr can find art that deprives of novelty that subject matter which all the independent claims have in common, that leaves those independent claims as separate islands of patentability. Each of those separate islands is separated from the prior art continent by its own particular different “gap”. Whether that specific gap was obvious to bridge involves a separate analysis for each island. Pay one fee, all you get is just one gap analysis.

    Suppose Applicant’s patentable inventive concept turns out to be claim features X, Y and Z. You can express that single inventive concept as the method steps of X-ing, Y-ing and Z-ing or, equally, by the apparatus features means for X-ing, means for Y-ing and means for Z-ing.

    There, for your concept XYZ you’ve got yourself two nice broad claims, in just one application to the EPO. Can it really be that simple? Oh, I should add, we don’t do 35USC112 M+F in Europe.

  73. 11

    What is clear is that there is more (by number) art cited by applicants in IDSs than cited by examiners in 892s. That is the only fact that I got out of the “paper”. [I would love to see the comments this paper would get on a statistics and analysis blog].

    What appears to be lacking from comments is any link to proper examination practice. In looking through MPEP 700 (Examination of Applications) there is no mention that examiners should review applicant submitted art first and use those references if they are good so they don’t have to do a proper prior art search. To the contrary, the MPEP actually states, between MPEP 704.01 and 904.02 that an examiner should do a thorough search of all appropriate domestic patents, foreign patents and non-patent literature. Surprisingly, there is no mention of IDS in all of chapter 900 (Prior art, classification and search). There is also no mention of IDS regarding a FAOM in chapter 700.

    Furthermore, there are two appropriate concepts that explain why applicants supply more art than examiners use.
    1) Compact prosecution MPEP 707.02- granted it is largely a concept, but it should be that Examiners should do one thorough search at the beginning of examination so that very little searching is needed from then on. By only using applicant cited art Examiners would comply even less to this concept.
    2) Avoiding multiple rejections MPEP 706.02 (I) – While the applicant should cite ALL art that is pertinent to patentability, the examiner should only cite the BEST art in a rejection. Therefore, if an applicant cites 70 references, even if the examiner only used applicant cited art in the rejection there would be likely 65 references cited by the applicant but “ignored” by the examiner.

    Based off of my years of statistical review of this matter, my conclusion is… wait for it… “It is what it is!” Basically, the data presented in the paper is practically meaningless data which comes from the patent system working how the MPEP says that it should work.

    Here is some more data.. on average, 13 people a year die from vending machine accidents. My conclusion from that data is that everyone in the world ignores warning labels on vending machines.

  74. 10

    “Excuse my regional ignorance, but is it just me or is there a general EFS/PAIRS outage at the PTO? I’ve been trying to file a few things tonight and have been checking back since four in the afternoon. Luckily, none are actually due today, but I could imagine some people are freaking. ”

    Yes, I just got through saying that the computers were wacked out.

  75. 9

    Is an examiner more likely to act quicker on applications with cited references or those without cited references.

    If a bunch of references are cited, the examiner may procrastinate examining the application because he will have to review the prior art?

    Or will the examiner pick up the application with a bunch of cited art early because the cited art helps him with his examination?

    Maybe
    Yes
    and Maybe.

    Maybe, if it is a reasonable number of references, and especially if you have a prior experience with that applicant or company such that you know they aren’t bsing with their art that they submit. There are different types of applicants. There are the kind who are competent, MM happens to appear to be this kind. There are the kind that appear to be incompetent, NWPA and ping appear to be this kind. When you receive references from MM, you know they won’t be a total waste of time and you might even find something that will be pretty close to what you need, either a basis for a 103 or a great reason to say “hey spe, I’ve got really close but I don’t quite have it, let’s allow it”. When you receive references from NWPA or ping it is just a giant crp shoot. So there is no incentive to look through it.

    That said, you won’t recognize most apps/companies usually so usually you don’t have any incentive to speed up looking at it.

    That’s just how it is.

    Yes because obviously if there are 500 references it is basically having to review an extra subclass that you have to painfully put into EAST and verify that all of them get in properly.

    And then Maybe again because of the answer in the first part.

  76. 8

    Excuse my regional ignorance, but is it just me or is there a general EFS/PAIRS outage at the PTO? I’ve been trying to file a few things tonight and have been checking back since four in the afternoon. Luckily, none are actually due today, but I could imagine some people are freaking.

  77. 7

    Thoughts about IDS’s and cited references in general, in no particular order:
    1. References cited by applicants that aren’t based on a foreign office action are usually worthless.
    2. References cited based on foreign office actions are usually good (in my experience, relevant maybe 65% of the time). EPO is good, Japanese is better. However, the foreign office action analysis is usually not helpful. I consider the references but don’t put much weight in the office action analysis.
    3. References cited after the claims have been amended are rarely useful (even if they’re based on a foreign office action).
    4. The more references cited in an IDS, the less relevant they seem to be.
    5. I find it useful to go back and briefly reconsider the references cited on IDS’s each time I do an office action, the reason being that as my familiarity with the art increases, either through working on the case or other cases, sometimes I will see the relevance of a reference that I previously considered irrelevant.
    6. While it is true that the applicant submitted art tends to be spotty, the same is true of examiner cited art. One of the most powerful tools EAST has for finding relevant art quickly is the forward/backward citation feature. Basically, when you locate a very relevant document, the citation feature will retrieve the references cited in that case, which often leads you to other relevant art. However, an unintended consequence of this is that it shows you which of your fellow examiners do good searches and cite relevant art. You fairly quickly learn what kind of references you’re going to get from the examiner name on that issued patent.
    7. The best place to get relevant foreign references is from an IDS. All we can search are abstracts, whereas the foreign examiners are searching the full docs.

  78. 6

    “Is an examiner more likely to act quicker on applications with cited references or those without cited references.”

    Unlike the number claims and the length of the disclosure, it has been my experience that the number of cited references doesn’t influence in any way the speed with which examiners pick up cases.

    “If a bunch of references are cited, the examiner may procrastinate examining the application because he will have to review the prior art?”

    No.

    “Or will the examiner pick up the application with a bunch of cited art early because the cited art helps him with his examination?”

    No.

  79. 5

    Is an examiner more likely to act quicker on applications with cited references or those without cited references.

    If a bunch of references are cited, the examiner may procrastinate examining the application because he will have to review the prior art?

    Or will the examiner pick up the application with a bunch of cited art early because the cited art helps him with his examination?

  80. 4

    If validity of the issued claims over prior art is later litigated, which references are used? Those cited by the examiner or the applicant?

    If third party requests for reexamination are filed what references are used?

  81. 3

    Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art

    Same thing I told Malcolm – a little thing called the examiner’s signature. C’mon big D – let’s here ya call them liars.

  82. 2

    Dennis, I think the most telling reason why examiners do not apply the art submitted via an IDS is that they believe that the art is largely irrelevant and a waste of their time to review. There are more reasons than one for this irrelevancy, but the most important reason is that applicants submit all art regardless of relevance due to the requirements of the “duty of disclosure.”

    The most interesting part of Lemley’s paper is the comments of experience examiners that they would prefer that applicants not submit any art at all because it simply wastes their time.

    Long-ago, Prof. Kayton advised against submitting an IDS until the examiner had conducted his search. His reason? He assumed the examiner would read the IDS and the selection of art would then bias his own search. While this may no longer be true given the fact that examiners apparently “ignore” applicant-submitted references, it still is good practice to the extent that the examiner in the first instance should read the claims the way they are written and be as unbiased as possible in their interpretation.

  83. 1

    “Query: Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art.”

    Not only do I have a suggestion, I have a plan. And I’m going to implement it.

    I’m going to keep a record of my own cases over the space of 50 cases or so (I might continue to 100). In the record will be information concerning the number of references cited, number of references at least loosely related to the subject of the spec, number of references loosely related to the claims, number of references actually related to the subject of the spec, number of references actually related to the claims, number of references that it could be reasonably expected that they might amend into, and number of references that are actually used in a rejection.

    It’ll be a case study sure, and it will be anon, but you’ll get your info. Anyone interested in using it in a scholarly work can contact me and verify some info about me with the understanding that it will not be revealed upon pain of death.

    I’ll try to update it in realtime as the weeks go by. I would start today but the computers are wacked out so nobody is getting anything done except cases that we have a paper file for. I’m nearly entirely paperless myself so I only had a PCT chapter 2 to do and all I have to do for that is write it up, as I already did the parent.

    Also, it is plainly false ivo the fact that examiners already use the IDS references in several OAs, what was it, 1 out of 8?

    BTW, max, perhaps you can be useful. Lets say my PCT has two ind claims, one method and one device. I rejected the ind in the “parent” (I think it was parent, but maybe it was child, whatever, I already did it) under 102b. Thus, that claim has no special technical features so far as I’m aware. The question is then, if that is the case, can I do a Unity of Invention restriction based on the fact that they share no special technical features?

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