Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application

Radio Systems Corp. v. Accession, Inc. (Fed. Cir. 2011) – Part II

As the facts are alleged in this case, after learning that Radio Systems had received a notice of allowance on its “SmartDoor” patent application, Accession’s patent counsel telephoned the USPTO Examiner handling the Radio Systems. Because the Examiner did not answer the telephone call, Accession’s attorney left a voice message. Six days later, the Examiner returned the telephone call and spoke directly with Accession’s attorney. During the conversation, the examiner apparently learned about the existence and relevance of the Sullivan prior art patent. (Mr. Sullivan is the founder of Accession). After considering the prior art, the examiner withdrew the patent from issue and filed a new rejection of independent claim 17 based on the Sullivan prior art. Without comment, Radio Systems cancelled claim 17 and the patent issued.

These conversations all occurred in August 2009. For the three years prior to that time, Radio Systems and Accession had been engaging in a slow conversation regarding the Sullivan patent and whether Radio Systems would license the patent rights. During that time, Radio Systems never submitted the reference as prior art to the patent examiner.

To recap, a patent attorney representing a third party (who was interested in ensuring that no patent issued) provided the USPTO Examiner with valuable prior art and likely an explanation of how the prior art related to the patent application under examination. The Examiner had a verbal conversation with the patent attorney and concluded that the prior art rendered the pending claims invalid. The patent applicant had previously been made aware of the prior art but had failed to inform the Examiner of its existence. Without argument, the patent applicant cancelled its claim after it was rejected by the Examiner.

Illegitimate Means to a Legitimate End?: From all appearances, the result of this sequence of events is that third-party contact helped the USPTO avoid issuing a patent with invalid claims. The problem is that the examiner and attorneys had to violate USPTO rules to achieve that beneficial result. When rules in-place frustrate beneficial ends, the proper solution may well be to change the rules.

Legitimizing the Means: What is needed here is a simple straightforward mechanism for third parties to provide information to patent examiners regarding reasons why a particular pending application should be rejected. The submission should be written and preferably in the English language, but there is no reason why it must follow any other formality requirements. At that point, the patent examiner should have independent authority to consider the submission on its merits. Written correspondence (such as e-mail correspondence) between the third party and the examiners could also be allowed to give the examiner a better opportunity to understand the submission. The written record is helpful to avoid the appearance of any secret or improper dealings between the examiner and a third party.

Background on Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application

US patent applications were not published prior to 2001. As Congress considered implementing the publication system, some patent applicants complained that competitors and others would raise the cost of patenting by filing needless oppositions. Thus, the law was written to limit third party oppositions. The relevant statute, 35 U.S.C. § 122(c), states that:

The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

The USPTO has given a somewhat narrow interpretation to the restrictions blocking any post-publication “protest or other form of pre-issuance opposition to the grant.” In its rulemaking for 37 C.F.R. § 1.99, the USPTO decided to allow third parties to submit prior art during a limited two-month period after publication but prohibited any explanation of the patents or publications or the submission of any other information. 1239 Off. Gaz. Pat. Office 71. Thus, according to the rulemaking, the mere third-party submissions of prior art is not considered a “protest” or “pre-issuance opposition.”

In 2003, Steve Kunin was the Deputy Commissioner for Patent Examination Policy at the USPTO. In March of that year, Kunin published a notice in the USPTO Official Gazette explaining further limitations on the examination corps in dealing with non-party contact with examiners during ex parte prosecution. Kunin writes:

[T]he USPTO is instructing the Patent Examining Corps to: (1) not reply to any third-party inquiry or other submission in a published application that is still pending before the USPTO; (2) not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in 37 CFR 1.99 and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and (3) decline to accept oral or telephoned comments or submissions about published applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, to this Notice, or to 37 CFR 1.2 (all Office business should be transacted in writing), if appropriate. The USPTO may also refer third-party inquiries or submissions not provided for in 37 CFR 1.99 by registered practitioners in published applications in which the applicant has not provided an express written consent to protest or pre-issuance opposition to the Office of Enrollment and Discipline for appropriate action.

The USPTO’s interpretation of the law is that examiners should refuse to consider any submissions by non-parties. However, Kunin’s notice further indicated that the USPTO retains the right to use the material submitted if it is relevant to patentability:

[T]he provisions of 35 U.S.C. § 122(c) and 37 CFR 1.99, 1.291, and 1.292 limit a third party’s ability to protest, oppose the grant of, or have information entered and considered in an application pending before the USPTO. However, these provisions (and this notice) do not limit the USPTO’s authority to independently re-open the prosecution of a pending application on the USPTO’s own initiative and consider information deemed relevant to the patentability of any claim in the application.

This approach follows a recent examiner comment on Patently-O that “what has been seen cannot then be unseen.”

Changing the Rule without Changing the Law: The law forbids non-party “protests” and other forms of “pre-issuance opposition to the grant of a patent” subsequent to publication of the application. The law also requires the USPTO Director to establish appropriate procedures to ensure that those activities do not take place. However, USPTO has already decided that the law does not forbid submission of prior art documents during a limited time period post-publication so long as the examiner retains independent authority to analyze for patentability and craft rejections. The USPTO would likely be well within its powers to expand the document submission program in a way that (1) allows for submission of explanations; (2) extends the timing of submissions; and (3) reduces or eliminates the fee associated with the submission.

198 thoughts on “Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application

  1. 198

    ANL, this is just a bit much.

    Have you read and understood Precision Instruments? The facts there and the facts here are very close. Two applications claiming the same invention. One applicant lies to the PTO. Another knows about it, but says nothing. He then takes advantage of the silence.

    I think the Supremes were clear, if you know of fraud (or attempted fraud), you have a duty to report it. You cannot keep quiet because then, as in Precision, you can take advantage of that secret knowledge that no others can have without extroadinary expense.

    I think any law, any rule or any legal theory that would prevent one with particular knowledge of fraud from reporting it is not only ill considered, but virtually unconstitutional just as Paul Cole suggested.

    Now, we have the law and the rule, what could the attorney in the shoes of Accession’s attorney do to get the info to the PTO prior to the patent issuing?

    Let’s go back to Precission Instruments: file a reissue application, copy claim 17 or a broader claim to the locking mechanism, request and interference, and in the same request report the attempted fraud by Radio.

    Since all of this is legal, within the rights of Accession, why not short circuit the process and proceed with just a little common sense?

  2. 197

    If you are looking at the situation as a lawyer, you see the Examiner as an administrative judge, you see the application as an ex parte judicial process and you become incensed at any outside interference with that process.

    If you are a technologist, you are concerned with objective reality. If the claimed subject matter is not new, then it does not matter so much how the relevant knowledge gets to the Examiner, what is important is that the application is amended, if that is possible, or refused.

    Likewise of the disclosure cannot be made to work because critical information has been omitted, or a third party has repeated the procedure as described and failed to achieve the stated results. As is known to any practising scientist, peer repetition of published results is essential to keeping the progress of science on track. If you don’t admit such evidence, you are likely to be granting patents for cold fusion.

    On the whole, I am for the second group. As Dick Feynman famously said, nature cannot be fooled. Nor in the end can the courts. So if there is a damaging reference there, taking the position that it ought not to be considered for procedural reasons is folly. And if what is disclosed does not work as described, turning a blind eye to that is similar folly. Patenting is not a game, and the patents we obtain for our clients have to be fit to put before a court. Although I can see where A New Light is coming from, his argument however well founded in law is less well founded in reality.

  3. 196

    In Radio’s shoes, I’d like to think that I would have submitted that patent just to make sure that it got considered on the record. Plus, unless it was substantially cumulative with art of record, I would imagine that even if claim 17 recites some limitations not taught by the patent, it might be the case that it could still be applied in an obviousness rejection. But I don’t have enough information to reach any conclusions.

    Of course, Radio still had the opportunity to submit the reference before issuance, or to rexam the issued patent later on. It might be said that the inequitable conduct, if it occurred, is not tolled until they attempt to enforce the issued patent, because the failure to submit that reference can be remedied prior to the enforcement of the patent.

    I just don’t see how your position as tenable that Accession would be harmed by issuance of that claim 17, as it only creates a right to sue. And if claim 17 were truly obvious or anticipated by Accession’s earlier patent, then Claim 17 would be deemed invalid at trial. I know you are concerned that Accession would have trouble licensing their patent to others if those others would fear infringement of Radio’s claim 17, but it would be a rather absurd fear of infringement if the product is faithfully built according to Accession’s disclosure, and thus is prior art to Radio’s claim 17.

    I guess the bottom line is, I don’t really understand this fear of issuance of potentially invalid claims. The economy was booming during the hey day of potentially invalid claim issuance, back when business embraced the reality that doing business involves risk and uncertainty, and cross-licensing of defensive patent portfolios was the order of the day.

    Of course, the immunity to countersuit of so-called “patent trolls” changes the game with respect to them, but isn’t Accession the non-practicing entity (NPE) in this case? It’s hard to have sympathy for NPEs that don’t even try to bring their invention to market. That is why I have proposed that damages awarded to such entities be offset by an amount of damages equal to those that would be awarded the defendant for infringement of the defendant’s dominant patents by the NPE were the NPE to bring a commercially successful product to market that would be covered by the asserted claim(s) of its servient patent. That would put the NPE in the shoes of, or at least on equal footing with, a PE, and discourage would be NPE’s from believing the pipe dream that they can just patent and license inventions, instead of bring them to market.

  4. 195

    TINLA, I made an argument similar to yours elsewhere for Radio’s good faith. However, you will note that the locking arrangement appear to be the same: a shoulder and a channel. The details are just a bit different.

    Despite the minor differences, wouldn’t you agree that if the law firm knew about Sullivan’s patent, they should have disclosed it absent any more relevant prior art?

    There are facts here that need to be fleshed out indeed. But the question I had is why with so much smoke, why didn’t the PTO investigate the lack of disclosure just a bit more?

    BTW, are you familiar with Oddz on Products?

  5. 194

    Just for you Ned, I have read through all the comments below, and it seems to me that you are insisting on viewign the facts in the light least favorable to Radio Systems, and leaping to several conclusions.

    Try looking at it in the light most favorable to Radio Systems, and see if you still think there are grounds, absent findings of fact by a jury, for your premature conclusions that fraud and inequitable conduct took place.

    For example, for all we know, Radio Systems honestly believed that Accession’s patent was not relevant to the claims of it’s application, and that Accession’s allegations of anticipation and interference were wholly groundless. For support of this possibility, look to Radio Systems’ arguments of record regarding irrelevance of Accessions’ patent to the claim that was rejected by the Examiner as anticipated by the patent:

    “Applicant respectfully submits that Sullivan does not disclose the limitations of ‘a frame defining … an engagement shoulder … outlining a portion of the through-way; a flap defining an engagement slot; and a locking mechanism engaged with said flap, said locking mechanism situat[ing] said flap at a locked position and an unlocked position, when said flap is at the locked position, the engagment slot receiv[ing] the engagement shoulder,’ appearing in claim 17. To the contrary, Sullivan discloses that ‘[w]hen flap lock knob 76 is turned counter clockwise, flap lock cam 169 is rotated down in upper hinge 163, lowering flap 166 of flap assembly 162 down and between interior frame 172 and exterior frame 172trapping an area 166A of lowermost portion of flap 166 as shown in FIGS. 50A-C.’ Sullivan c. 25, ll. 59-64 (emphasis added). In other words, Sullivan discloses that the flap is received by slot in the frame. Thus, Sullivan does not infringe claim 17.”

    By all appearances, the Applicant was able to point out some differences that indicate the rejection of claim 17 was imporoper. The Duty to disclose the patent only arises if the Applicant knew or should have known that a reasonable Examiner would want to apply the art in rejecting the claims. of course, reasonable people disagree over what constitutes a “broadest reasonable interpretation” of claim language. However, I think everyone can agree that Applicants have no duty to disclose art that an Examiner would apply in establish an improper rejection, even though even reasonable Examiners make mistakes from time to time. Therefore, I don’t think you can look to the fact that the Examiner chose to apply the Accession patent in rejecting one of the claims of Radio Systems’ application as conclusive proof of the relevance of the patent to the claims in the application.

    In view of all of that, I say it still remains unfair for the Applicant to be forced to cancel the allowed claim to get the other claims to issue without having to appeal or file an RCE, especially where the regulations provide for other opportunities for submission of the reference, and post grant remedies. A court of law is the place to settle these allegations of fraud and inequitable conduct, where finders of fact can perform their smoke and mirrors routine in which they somehow assess the credibility of witnesses and leap to a permissible conclusion that looks a bit more like justice than such conclusive leaps appear when performed by you, me, or a USPTO Examiner.

    I don’t know why you think it is good or just to conduct an invalidity trial at the USPTO, or in blog comments based on an incomplete statement of inconclusive facts.

  6. 193

    blah blah blah ping is right blah blah blah

    Ya got some parts right there Dim – specially the bold part in my summary here.

  7. 192

    “Shall” being a non-optional directive,…

    A masterful job, ANL. I agree completely that 35 USC 122 is clear on its face.

    But I do have one question – I note that the “shall” you discuss is actually applied to the Director, as in the “Director shall establish appropriate procedures …” Aren’t you saying that the Director broke the Law, rather than the examiner? What about the patent attorney?

  8. 191

    There is a 30 year history now, at the EPO, of declining to look at written submissions until the patent owner has given his explicit consent to their introduction to the ongoing proceedings. Works very well. Unproblematic, uncontroversial. Any thoughts Paul?

  9. 190

    Dennis,

    The title of this thread, “Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application” starts well enough and eventually gets around to the background of the importance of the title, but seems to lose its way very quickly.

    In doing so, you have invited quite a number of posts to join in on a policy debate that already was undertaken and decided – in law (not in “rules” as you indicate). And while the carpet bombing does bloat the number of comments on the thread, there appears to be very little actual substance – and what substance there is horribly overlooks the greater wrong or is simply misfocused on red herrings.

    Further, I would hold that the actual “rule” in place by the Office, or at leas thow it is applied, horribly twists the very law that it is meant to uphold. In your section “ Background on Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application you nicely lay out that law – and the compromise that generated that law. The words of the law are clear and strong: shall… no… or other form… without express….

    “Shall” being a non-optional directive,
    “no” does not mean maybe,
    “or other form” is open ended – not closed ended, and “without express” clearly seeks to place the control back into the hands of the applicant – not the examiner.

    Clearly, the law is meant to ameliorate the loss of control suffered by the applicant with the, at then, unimaginable violation of confidentiality that the publication route invoked, and the appliant did indeed lose the traditional “Quid Pro Quo” arrangement.

    The purpose of the Law, it seems has been forgotten, or at least muddled with the notion that no express written consent is needed as long as the examiner is still the one doing the examination.

    I make no bones about that I think that publication has been an absolutely horrible idea. And to make matters worse, how the Office decides that any submission by a third party is something other than “an opposition or other” is simply put, intellectually dishonest. It is quite besides the point that “an invalid patent may issue” – two wrongs do not a right make. The ends never justify the means. Never. There may be justification, but carte blanche treatment cannot stand. Further, the debate about First Amendment is a horrible red herring. Lest we forget, this is a third party involvement and the law – which any rule is meant to support clearly states that the applicant controls what is or is not to be submitted to the examiner. Even the two month window allowed by Rule 99 still must comport with the Law that it falls under.

    To me, the Office would be in perfect alignment to allow the full time period from publication to issue – as long as the law was followed and the reference was not examined in any way until the applicant provided express written consent – as demanded by law. Dennis, you reflect on a comment by an examiner that “what has been seen cannot then be unseen.” And while this may be true – it is just as true that what hasn’t been seen remains unseen. There is an old story on this premise. It lies in a box and Pandora is casting a curious eye towards it.

    As Ping states, but somewhat mischaracterizes, the step of giving control back to the applicant is not an open invitation to simply bury a prior art reference in order to get a patent. Thus, even the end to be achieved as fulfilling the Office mandate is a false argument. If the applicant knows of a damning reference, then the applicant knows that a claim in a patent obtained will not only be not enforceable, but that the entire patent can be subject to invalidation based on the grounds of inequitable conduct. If there is a third party that properly submits a reference to the applicant, the applicant knows that such art lies like a deadly mine ahead – it never is something tha the appliant can truly bury. Like Stephen King’s pet cemetary, anything so butied will come back in a most unpleasant way. But it is the applicant that chooses how to proceed – that is how the law is written.

    Dennis, you seem to fan the flames of misunderstanding by stating so matter of factly “The patent applicant had previously been made aware of the prior art but had failed to inform the Examiner of its existence. Without argument, the patent applicant cancelled its claim after it was rejected by the Examiner. ” As TINLA has shown, this simply was not the case, and as many have noted – the examiner broke both the rule and the law by not first obtaining the required express written consent of the applicant prior to examining the third party supplied reference.

    I will agree that “When rules [and law] in-place frustrate beneficial ends, the proper solution may well be to change the rules [and law].” But there are proper ways to reach that proper solution, to change the law, and until the law is changed, that law must be respected and obeyed. Publication has taken the control out of the hands of the applicant – such loose and disrespectful stomping of the law, no matter how beneficial the ends, damages even more so the hallowed Quid Pro Quo. It shames me to think that anyone would lose sight of the real injustice here. The examiner should be fired. The attorney sanctioned. Ask yourself this – would either be permitted to operate in the first place with such a callous disregard for the law? I think not.

  10. 189

    Well Paul, I agree they are rare at the EPO but, unlike you, I don’t find that surprising. I think the real reason why there are so few observations filed is because it prompts Applicant to: i) check extra carefully that the pending application is going to be able to resist all post-issue attacks on its validity, Art 123(2) included, and ii) get at least one divisional on file.

    But these reasons don’t apply in the USA.

    So perhaps those Chicken Littles fearing the sky is going to fall are not Chicken Littles at all. Perhaps the public, motivated by the thought that, at issue, the C+C presumption of validity is going to kick in, will indeed hit most every app pending at the USPTO with a flood of penetrating observations on the validity of one or other questionable claim.

  11. 188

    one which I suggest ought to be followed in the US

    Sounds great Paulie, but does not address the US rape O the Quid Pro Quo (teh Quid Pro Quo be a beautiful driver that makes the US system teh Gold Standard, makes the US patent the more powerful patent).

    If there is a system of law in which patent applications are published pre-grant, then it is as a practical matter essential to provide a mechanism by which members of the public may comment or provide information.

    Well the US does not agree completely. As I done observed, the US does provide a structered window for the members of the public to provide information (not too surprisingly, none of the naysayers seems able to address this point O law). The comments and “observations concerning the patentability” be reserved to the person responsible for the examination – as it should be. This little facet preserves the level playing field and attempts to stymie the Sport O Kings effect.

  12. 187

    Before the EPO, third party observations are governed by a 114 EPC which reads:

    In proceedings before the European Patent Office, following the publication of the European patent application, any third party may, in accordance with the Implementing Regulations, present observations concerning the patentability of the invention to which the application or patent relates. That person shall not be a party to the proceedings.

    These provisions are given practical effect by r.114 EPC which states that:

    (1)Any observations by a third party shall be filed in writing in an official language of the European Patent Office and state the grounds on which they are based. Rule 3, paragraph 3, shall apply.

    (2) Any such observations shall be communicated to the applicant for or proprietor of the patent, who may comment on them.

    Rule 3 paragraph 3 provides for the filing of documentary evidence.

    If there is a system of law in which patent applications are published pre-grant, then it is as a practical matter essential to provide a mechanism by which members of the public may comment or provide information. The EPO procedure enables this to be done in a structured way, and does not enable informal telephone contacts which are never recorded. That is consistemt with the principle that the whole file record should be documented so that both the applicant and the public can see what transpired and have a proper opportunity to comment.

    Experience has shown that the EPO is not deluged with a flood of third-party observations which are, in practice, surprisingly rare. One reason is that if they are to be effective such observations need to be prepared with care and properly documented and argued and the effort and cost involved may approach the cost of subsequently filing a European opposition The European approach is one which I suggest ought to be followed in the US.

  13. 186

    Big D – posts be disappearin.

    Sunshine – nice goal post moving equipment here.

    Now you be wanting an analysis of efficacy O the reasons given, when only the fact that there be reasons at all was the issue.

    No one is distracted from your waffling. Here let me quote me:

    ping said in reply to Malcolm Mooney…
    Well Sunshine, it seems we have moved from “perfect for summary judgment” to “it would seem like a pretty good candidate.”

    So does this mean that ya actually agree with me that it depends on the actual facts and that just because one side says the reference be relevant dont make it so?

    You can line up with wtvlfdt to thank me when it be quiet here.
    Reply Apr 27, 2011 at 12:45 PM

    Just thank me already and move on.

  14. 185

    assuming that Accessions attorney had no duty to report possible fraud, do you then support, as do many here it seems, disiplinary proceeding for his actual reporting of fraud (assuming that is what he did) in violation of the rule?

    I’ve explained at great length in this thread why I don’t think there was a violation of a rule.

    On the flip side, did he become a party to the proceedings when he contacted the PTO and had a conversation with the examiner to the extent that he then had a duty to disclose the fraud or attempted fraud after he became involved?

    Of course not. Does some loon become a party to a lawsuit when he wanders into the courtroom and starts yelling about conspiracies? No! The term “party to the proceedings” is a term of art, Ned. You really don’t know what that means?

  15. 184

    If you Cy were representing Radio under these circumstances, do you report the alleged fraud, or continue to represent Radio but keep quiet?

    You’ve adjusted the scenario so much, Ned, that I don’t know what “these circumstances” are. If your client won’t let you submit prior art that you’re convinced is material, then you must withdraw from the representation. Does that answer your question?

  16. 181

    Ned-O-gram, your own posts contradict what ya what them ta say:

    the Supreme Court seemed require all attorneys who had any knowledge of the perjury to either withdraw from further representation of Larson” – there be nothin here that meets your invocation to report fraud (either to the court or to teh Office). all attorneys… any knowledge… Cause it be given that in this case all attorneys where a party to the proceedings, your own facts cannot lead to the conclusion you want.

  17. 180

    Cy, assuming that Accessions attorney had no duty to report possible fraud, do you then support, as do many here it seems, disiplinary proceeding for his actual reporting of fraud (assuming that is what he did) in violation of the rule?

    On the flip side, did he become a party to the proceedings when he contacted the PTO and had a conversation with the examiner to the extent that he then had a duty to disclose the fraud or attempted fraud after he became involved?

  18. 179

    What would you do?

    Ya keep on asking questions when ya havent answered my questions there Ned.

    Why is that? Are you now a proponent of removing all statutes O limitations and laches? Disband all procedural rules becuase they can only get inthe way of the ends? Cmon Ned, let’s see your defense of your positions here, not questions.

  19. 177

    Here are the facts that TINLA posted (and know, TINLA, I don’t have you on “ignore”):

    While I have not reviewed the teachings of the reference to determine how credible the explanation is

    I’m not interested at all in Radio’s self-serving b.s. about the “differences” between the reference and the claim that they canceled, for obvious reasons.

    pingaling, if you and TINLA want to explain to us all how the reference is “different” from the claim, please be my guest. Otherwise, there are no facts indicating any differences whatsoever, just some crxp that Radio put in their Response which I’d bet $100 is pure b.s.

  20. 176

    Nothing, ‘cept it appears Accession first learned of the patent application just about when it called the examiner.

    Assume these are the facts just for the sake of argument. What would you do ping when you discover that a party to whom you disclosed an invention has filed on it in their own name and a patent is about to issue on it, especially if the patent covers your products and your business?

    What would you do?

  21. 175

    No really. But I will grant you the Supremes did not have a case before it involving the facts of this case, Accession v. Radio.

    But, under Precission, the Radio patent here appears to have been procured under supicious circumstances. They were accused by Accession’s attorney of “perjury.” Did they have a duty to explain to the PTO all the facts involved?

    I note Radio simply cancelled the claim without explanation. Was this fufilling the uncomprosing duty as described in Precision?

    If you Cy were representing Radio under these circumstances, do you report the alleged fraud, or continue to represent Radio but keep quiet?

    If you need to, I will review with you what you said upstream.

  22. 174

    OK, I think the Supremes were clear there is a duty to report fraud if

    1) you know of it; and
    2) you are a party to a proceeding in which the fraud occured.

    In this case, it applies in spades to one of the two named parties and does not apply to the other.

    Name the guilty party.

  23. 173

    Well, what is interesting is that your reply completely evades my points.

    Will you be providing a reply that addresses my points?

  24. 172

    From the above, I conclude that if one is aware of perjury or fraud on the PTO by another then one has a duty to inform the PTO.

    Then you’re not reading it right. Context matters, as do the actual words the Court uses.

    In Precision, Automotive was trying to enforce a patent that went through a filthy interference proceeding. Even though the perjury involved their opponent, Automotive participated in covering it up. Automotive went so far as to buy the contaminated application from their opponent and managed to get a patent from it. And you’re surprised that the Court wouldn’t let them enforce their portfolio?

    Now let’s look at the words the Court used: “Those who have applications pending with the Patent Office or who are parties to Patent Office proceedings have an uncompromising duty to report to it all facts concerning possible fraud or inequitableness underlying the applications in issue.

    Those words do not give rise to any duty to inform the PTO of your concerns about somebody else’s patent, unless and until you’re involved in proceedings involving that patent.

    You’re all wet, Ned.

  25. 171

    Well it is interesting that automotive’s own patent was found unenforceable despite the fact that it itself was acquired without fraud.

  26. 170

    Cy, if you think about the purpose for the disclosure to the patent office, it will be to someone else besides the solicitor division responsible for disciplining attorneys. It would be to someone who could effectively do something about the fraud so as to protect the public against unlawfully acquired or issued patents.

  27. 169

    the Supreme Court seemed require all attorneys who had any knowledge of the perjury to either withdraw

    This is hardly a ringing endorsment of “must” anything.
    1) seem to
    2) withdraw from further representation.

    The first is ambiguous, the second requires absolutely NO action invloving either the court of the USPTO.

    This cannot be your best case.

  28. 168

    CY, read this an please comment:

    link to supreme.justia.com

    It is the Precision Instruments case.

    The Supreme Court held that Automotive had to disclose to the PTO the perjury committed by Larson, the inventor of another patent in interference with an Automotive application.

    Rather than do that, Automotive settled the interference, acquired the Larson patent, and by contract, silenced all who had knowledge of the perjury.

    The attorney for Larson, once he was made aware of the perjury, withdrew.

    The attorney for Automotive never informed the PTO, but instead hired Hobbs who then settled the case by acquiring the Larson patent for Automotive.

    From the above, I conclude that if one is aware of perjury or fraud on the PTO by another then one has a duty to inform the PTO.

    Further, the Supreme Court seemed require all attorneys who had any knowledge of the perjury to either withdraw from further representation of Larson or report the perjury.

    They seem to suggest that Hobbs was one of the villains and that he had a duty to listen when Automotive tried to tell him of the perjury.

    See if you agree on this.

  29. 167

    But Ned,

    Ya might be able to stop the (C)onsitutional (C)onsternation of (C)y below, and redress your past misdeeds.

    Just have your buddies reinstall the No Publication Until Issue Rule.

    You cannot allege something you dont know anything about, now can ya?

    Added benefit to the American farmer – cow sales will soar.

  30. 166

    I note you do that with seemingly everyone here.

    Posse initiation rites…?

    Good thing all the cancer survivors have left for the day.

  31. 164

    Toilet humor – sunshine is really reaching for the stars now.

    Whats the matta sunshine – no cancer survivors to put down?

  32. 163

    sunshine,

    Or you can thank me now, given that the thread has enough subcomments that ya can hide here.

    I promise I wont tell anyone.

  33. 162

    wtvlfdt,

    Or you can thank me now, given that the thread has enough subcomments that ya can hide here.

    I promise I wont tell anyone.

  34. 161

    or perhaps sparring with feeble-minded nitwits like ping too much

    It’s not “sparring”, really, unless you consider taking a number 2 to be “sparring” with the txilet bowl.

  35. 160

    Citation, Ned? Or do I have to read some 1885 treatise on patent prosecution?

    If your knowledge of the fraud comes from outside the client representation,then you might indeed be in a tricky place. But I suggest, given your demonstrated propensity for making up facts to make the story more interesting, that you might want to be darn sure that you really have actual knowledge of that fraud before you follow through with your duty.

  36. 159

    And you would have examiners, EXAMINERS!!!!!, who have ZERO legal training on issues like fraud, inequitable conduct, professional responsibility, etc. charged with a “duty of reasonable inquiry” and empowered to “investigate” and “verify” every 3rd party allegation.

    There’s nothing fundamentally wrong with the rules. The current rules and policies for examiners were arrived at after careful consideration, including consideration of the previous policies and procedures under which the PTO investigated allegations of fraud and inequitable conduct. The PTO doesn’t have the resources or the expertise for that, but you’re here banging the drum incessantly for the PTO to go back to those policies and procedures.

    You are right, I am a wunderkind. Of course, compared to you, 6 is a genius.

  37. 157

    TINLA,

    More likely simply a Med issue. He be allergic to Substance, and sometimes he messes up his psychotropics with his allergy meds.

    Ya notice how all of a sudden, he cant find this comment either?

  38. 156

    I just don’t see the rules allowing this.

    Ned-O-gram,

    Just what about the two month time period do you not see?

    And ya never did answer my question abouts statute O limitations and laches – why is that?

  39. 155

    Lolz at you Cy – you be the one who thinks that either Sunshine or wtvlfdt be capable of anything O substance. (O the irony of you calling me a feeble-minded nitwit)

  40. 154

    Cy, but the prior fraud by the client was the exact situation of a leading Supreme Court case on this topic. The holding of the Supreme Court was that the attorney had a DUTY TO DISCLOSE the prior fraud of his client.

    As I said, this does seem to place attorneys between a rock and a hard place when dealing with the PTO.

  41. 153

    He’s also assuming that Watov had “actual knowledge of fraud” being committed on the PTO by Radio Systems. Watov had no such “actual knowledge.” He had knowledge that Radio Systems was aware of a reference that arguably was, and arguably was not, material and did not submit. That is not “actual knowledge of fraud.” No matter how many times Ned says it.

    Ned has also never responded to my point that the examiner searched in the exact spot where Accession’s ‘141 patent was classified and didn’t apply it, or even cite it. The reference is so d#mning yet the examiner saw it, and didn’t even bother to list it along with the usual form paragraph references.

    Not sure how you can conclude that Watov had “actual knowledge” of “willful fraud” by Radio Systems in not submitting a reference the examiner didn’t even bother to cite.

  42. 152

    DC7, I assume that the prosecuting attorney did not know of the 141 reference or anything about his client’s contacts with Sullivan. Otherwise he or she probably would be in a lot of personal trouble with the PTO based on the Federal Circuit summary alone. If I were the examiner, I would have reported this incident to the office of discipline if Accession’s attorney had include the story about Sullivan’s contacts with Radio including the bit about giving Radio the Sullivan applications serial number.

    Shifting to the client, Radio, it is only recently that the duty of disclosure extended to presidents and other principles. It may be the people handling Sullivan did not know what was in their own patent application or that Sullivan’s patent needed to be disclosed. They may have assumed that their own patent application was limited to the radio claims, and did not have claims to the pet door locking mechanism that was the subject matter of Sullivan’s prior patent.

    But the facts are suspicious, indeed, and warrant further investigation, by someone.

    You may note that our wunderkind WHAT has stated that he would have followed the contact rules to the letter and would have hung up on Accession’s attorney had he attempted to convey personal knowledge of willful fraud. I assume most examiners would do the same, which does indicate there is something fundamentally wrong with the rules.

  43. 151

    “As to the evidence suggesting fraud, that clearly was the import of the Accession’s attorneys statements. He all but used the words ‘stole,’ ‘thief’ ‘liar’ and the like in his communications with Radio.”

    Really? You have access to the actual communications from Watov to Radio Systems?

    For a guy who’s convicted an applicant and its counsel of “willful fraud” and “actual IC” based on ZERO evidence of intent to deceive or mislead the PTO, you gotta lotta nerve whinig about “personal attacks.”

  44. 150

    The Supreme Court required practitioners to disclose actual knowledge of fraud on the PTO. How are we to square this edict with the PTO’s position that it will not listen to such information regardless of the form of disclosure?

    You seem to be assuming (among other things) that calling the examiner is the only way to “disclose actual knowledge of fraud on the PTO.” Wouldn’t writing a letter to OED satisfy your obligation? Are you telling us that the Supreme Court says that patent attorneys have to take all means necessary to prevent a fraudulently obtained patent from issuing? If so, I don’t believe you…

    One last matter, I have heard practioners say they will resign representation of a client who asks them to commit fraud. But, what is the attorney’s duty when he learns of prior fraud by the client?

    This is hardly a matter unique to patent law, Ned, and was probably addressed in that ethics class you had to take in law school. (Hint – your duty is to keep your mouth shut, if you learned it from your client.) I suggest you review your state’s comments accompanying the rule about confidentiality with respect to client communications. I don’t think any jurisdiction has exceptions for reporting past fraud, even if you were unwittingly part of it. The PTO rules (10.57) don’t have an exception at all for preventing fraud, only for preventing a crime.

  45. 149

    The problem is Malcolm is that I would join in that criticism if the rules provided Accession a way of communicating with the PTO in a manner that would guarantee that the examiner got the message.

    I just don’t see the rules allowing this. However, I might be wrong and simply asked what the Accession attorney could do within the rules to effectively communicate.

  46. 148

    what, I thinking about that. I suggest claim 17 of Radio’s patent. Much broader and I believe supported in Sullivan ‘141.

    As to the evidence suggesting fraud, that clearly was the import of the Accession’s attorneys statements. He all but used the words “stole,” “thief” “liar” and the like in his communications with Radio.

    what, we could discuss things a bit better if you would stop making personal attacks as part of every post. I note you do that with seemingly everyone here.

  47. 147

    Okey doke – I’ve gone on way too long on this topic. But you two have been practicing patent law way too long (or perhaps sparring with feeble-minded nitwits like ping too much) if you really think that “providing a fair and just system to patent applicants” trumps the 1st Amendment. I’m just saying …

  48. 145

    Good, What. I just wanted to get that on the record. I assume the examiner would do nothing to investigate despite the direct prohibition on issuing a patent where fraud was even attempted.

    FYI, the PTO once had a procedure for investigating fraud; but long since abandoned it for lack of resources. So why still maintain that portion of Rule 56 if the PTO will not listen to or investigate accusations of willful fraud based on personal knowledge?

    That said, we still have a problem. The Supreme Court required practitioners to disclose actual knowledge of fraud on the PTO. How are we to square this edict with the PTO’s position that it will not listen to such information regardless of the form of disclosure?

    One possible solution is to amend Rule 56 to require practictions with personal knowledge of fraud to report it in writing to the PTO, under oath, but have that accusation simply become part of the public record.

    If it turns out later that a pratitioner with personal knowledge of fraud failed to bring that matter to the attention of the Office, he could be disciplined or disbarred.

    One last matter, I have heard practioners say they will resign representation of a client who asks them to commit fraud. But, what is the attorney’s duty when he learns of prior fraud by the client?

  49. 144

    there has to be a more compelling reason than PTO convenience for a rule that expressly bans speech

    The rule doesn’t ban speech. The rule requires that those who wish to speak do so at certain times and following certain procedures.

    This is not about “PTO convenience.” This is about providing a fair and just system to patent applicants.

  50. 143

    If everyone followed the lead of the Accession attorney and the Examiner in this case, the USPTO would turn into a gxdxmn circus.

    Which is precisely why there are rules that tell the examiner what to do in this situation. If examiners consistently follow these rules, then there’s no circus.

    As I mention upthread, in a response to wtvlfdt, the PTO rules do have to comply with the constitution, but there has to be a more compelling reason than PTO convenience for a rule that expressly bans speech, especially when there are less restrictive approaches available. I also suggest in that response that this is likely why the rules don’t expressly ban contacts like the one that occurred in this case.

    Smart@ss responses like “you can’t yell fire in a crowded theater” really don’t address Mr. Cole’s point about whether PTO rules should be interpreted to ban speech.

  51. 142

    There’s a reason why the PTO does not conduct “further inquiry” into 3rd party allegations of “willful fraud” and “actual IC.” Can you guess what those reasons are?

  52. 141

    Do you know when

    I do not. Should I care?

    As far as I know, there is no special dispensation to the two month window based on when someone might have learned. (lesson: be diligent)

    Further, since teh two parties here had been going at it for far longer then the time in question, not knowing that the other party had a patent application published in the very art space that be your sole business smacks O incompetence, dont it?

    I just dont see a valid counterpoint there Ned.

  53. 140

    Cy

    the state has to balance the jurors’ free speech rights against the defendant’s 6th Amendment right to a fair trial, including an impartial jury.

    B-b-b-ut what’s the problem with the jury hearing facts about the case??????????!?!? How can a jury hearing facts possibly lead to unfairness?!??!?!

    Seriously, Cy, that is why the PTO has rules in place about when and how third parties are permitted to intervene. Without them, the Office would be inundated with phone calls with “tips” to Examiners from random (and non-random) guys like Ned who have “information” about “apparent” Rule 56 violations and the like.

    If everyone followed the lead of the Accession attorney and the Examiner in this case, the USPTO would turn into a gxdxmn circus.

  54. 139

    Careful TINLA, that smacks O substance, which has been known to drive wtvlfdt to a sunshine-like swear/deviant-behavior accusation mode.

  55. 138

    like, say, developing a process whereby examiners are entitled to, nay, instructed to, ignore certain submissions?

    Are you pulling Sunshine’s leg by statiing a process that actually is in place?

    After all, as I done observed, the Office does allow the action under discussion for a specific limited time already.

    Cy, what do you suggest with those, where as here, simply disobey the law and rules by doing something after the point in time that such actions are cut off? Should the ends jusitfy the means of eliminating any and all statutes of limitations and laches?

  56. 137

    The change in question did, of course, result in realization of a lot of other significant concerns. Massive art mailings to competitors just didn’t turn out to be one of them.

    The point is that peer to patent, 1.99 art submissions, the proposed change to allow art to be submitted post allowance, and even 3rd party initiated reexam, are all just solutions in search of problems. Most don’t get utilized significantly, and reexam just gets abused by infringers who typically withold the best art for trial, seeking two bites at the apple. I really don’t see the point in reexam, except as a way for defendants to forum shop, needlessly consume PTO resources, and create unnecessary delay. I’d make patentees and defendants hash it out in Court, and only permit reexam for patentees seeking to repair claims that were invalidated at trial.

  57. 136

    I guess sequestering juries is unconstitutional as well?

    No, but it’s only done under exceptional circumstances, and only then because the state has to balance the jurors’ free speech rights against the defendant’s 6th Amendment right to a fair trial, including an impartial jury.

    Is there some other Constitutional guarantee that would be vindicated by a “rule preventing a member of the public from speaking to an examiner about a published application and making reasonable and straightforward factual representations”? Are there less restrictive approaches to further the Patent Office’s valid interest in efficient operations, like, say, developing a process whereby examiners are entitled to, nay, instructed to, ignore certain submissions?

  58. 135

    I think Ned is right, insofar as the anticipatory nature of the reference is plain, and the applicant’s knowledge of the reference is well established. With this baseline, is there a rule that examiners use to determine when to balk when known facts raise a suspicion of inequitable conduct? The examiner would not know whether or not the applicant knew that one of his claims read on the reference, and in this case that fact has not been expressed, at least in the post (it is possible that the prosecuting patent attorney knew of the reference but did not realize it anticipated a claim he had drafted). However, after three years of knowledge of the reference and three years of prosecution, I would hope that the prosecuting patent attorney would catch on. The fact that he did not cite the reference is enough to legitimize a further inquiry by the PTO before granting the patent. But is there an established threshold for initiating a further inquiry?

  59. 134

    That’s certainly true, wtvlfdt, but to the extent that the rules of professional conduct are promulgated and enforced by the state, which they certainly are, those rules still have to pass constitutional muster.

    Paul’s comment raises a valid point. There is lots of case law addressing the constitutional validity of restrictions on lawyers’ speech, especially in the context of the criminal trial. While certain restrictions are permissible, there must be good reasons for the restriction. At the very least, free speech concerns should make us look very carefully at what a rule that might implicate those concerns actually says.

    Here we have a situation where Congress directed the PTO to prevent pre-grant oppositions and the PTO implemented rules telling examiners how to handle pre-grant submissions. Neither issued a direct prohibition of any attorney speech. This was probably intentional, as the PTO’s approach should be just as effective as expressly banning the unwanted submissions, and doesn’t raise any free speech issues.

    I appreciate the comment, Paul. Leave it to a Brit to appreciate our Constitution more than we do. By the way, has anyone over there inquired into whether the Right Honorable David Cameron has produced his long-form birth certificate?

  60. 133

    Now JD, I certainly didn’t tell you that. But you did just now demonstrate knowledge of something that you were apparently well aware of all along.

    I will tell you something that occured during a search training thing we had a few mo. back though. Apparently some of the QAS’s had been noticing search results forms and search results themselves which seemed to their proper minds to be indicating that an enormous amount of art was being considered for those cases. However, it turned out that there was merely some confusion amongst some people as to how to properly fill out forms and that it was necessary for QA to request for people to put a little initial next to the searches that were entirely looked through on the search results themselves.

    Also I lulzed during this training program.

  61. 132

    What I find very entertaining.. Is what was his Major?
    That facts… Just the Facts… But that is the other side of the Nickel.
    Drag Net..? Grad. Ten..? Word play. I don’t think so!

  62. 131

    That’s not what I was referring to, Ned. You seemed surprised that Accession seems to be getting a bit of flak here. But I don’t find it surprising at all, given Accession’s flagrant violation of the rules.

  63. 130

    According to the search notes in the IFW, the examiner performed a classified search, including the class/subclass where Accession’s ‘141 patent was primarily classified. Are you telling us that examiners claim to have performed classified searches, by listing the classes/subclasses in their search notes, which they know are part of the public record, but don’t actually perform the searches?

  64. 129

    Ned, when it comes to “assuming facts” I bow to you as the master.

    BTW, I asked if you could write a count for an interference, but I haven’t seen you post one. So based on the actual fact that Accession’s 141 patent allegedly anticipated ONE of Radio Systems’ claims, you’ve determined that, without a doubt in your mind, the two patents are claiming the same subject matter.

    “The facts are suspicious.”

    But they’re enough for you to have convicted Radio Systems and its counsel of “willful fraud” and “actual IC.”

    You’re a piece of work.

    I simply cannot believe that you’re an attorney.

  65. 128

    OMG, you’re an absolute nut.

    But first I’ll answer your “hypothetical.” If I were an examiner (I was once, but am no longer), and I got a phone call from a 3rd party I would tell the caller immediately that I’m not supposed to discuss pending applications with 3rd parties. And if the 3rd party insisted on trying to tell me some story about one of the applications pending on my docket, despite my admonition that I’m not supposed to communicate with 3rd parties, I would hang up on the caller.

    “Let’s assume further that the few facts that you can verify yourself do so verify…”

    I wouldn’t be “verifying” anything some 3rd party relayed to me, because I would understand that, as an examiner, it is not my job to “verify” 3rd party allegations of “willful fraud” and “actual IC.” What do you not understand about that? That is not the examiner’s job.

    Should the examiner ignore all of this “direct evidence of willful fraud”? Well, if my only choices are 1) Yes or 2) Ned Heller’s suggestion that examiners start conducting witch hunts in response to every improper 3rd party contact, then I’ll choose 1).

    There are many, many good reasons why examiners are not charged with “investigating” allegations of “willful fraud” and “actual IC”, or even charged with a “duty of reasonable inquiry.” Your insistence on ignoring those many, many good reasons, and your crusade to have the examining corps empowered with these duties and powers, suggests that you’re a whacko. And again, based on your stance on Therasense, a hypocrite too.

  66. 127

    I don’t know. You tell me. It appears from the Fed’s rendition of the facts that Accession hired new counsel circa July after discussion broke down with Radio. The approach to the examiner occured in August. This suggests that Accession became aware of the Radio application then and acted promplty.

    But, if they could have done something different to prevent the Radio patent from issuing, you tell me.

  67. 126

    the difference between listing something on search notes and having actually searched there which exists for many people.

    lolz – please explain.

  68. 124

    What, you are excellent at assuming facts and diverting attention?

    The issue is whether the attorney’s statements about “interference” and that Sullivan should have been a co-inventor, were corroborated. They were. The claims in the two patents appear to be claiming the same subject matter — subject matter disclosed to Radio several months prior to Radio’s filing date.

    The facts are suspicious.

  69. 123

    I think what you meant to say was “I noticed you had no response to my point that the examiner LISTED ON HIS SEARCH NOTES the class/subclass where Accession’s 141 patent was primarily classified,” while knowing in your mind the difference between listing something on search notes and having actually searched there which exists for many people.

  70. 122

    What, you again dodge the question. I did not say that Accession’s attorney told the examiner all the facts described in the Fed. Cir. opinion. I don’t know what he said. So we are dealing here with a hypothetical.

    Now the reason for the hypothetical is your assumption that the examiner is entitled to ignore evidence of willful IC communicated to him by a member of the public. That is what I am testing here. That statement or thought, whichever more accurately describes your position.

    So the hypo is this, once again: assume that you are an examiner and a member of the public with direct evidence of willful fraud phones you and tells you about it? Let’s assume further that the few facts that you can verify yourself do so verify, so that it appears that the caller is telling the truth.

    What do you do?

    And, please, do not dodge the question once again by assuming facts not in evidence to erect strawmen to knock down.

  71. 117

    Ya gotta apply that Latiin meaning in the context of the US system Firefly.

    If ya don’t understand the US system, then your “makes no sense” state O mind would be a fairly common thing on these boards.

    Maxie, be close enough for hand grenades with his “it goes like this”, but be way off in the characterization of “garage inventors” which implies a lower level of business savvy – it actually be the opposite – those with a larger degree of business savvy be more likely upset with the Rape of the Quid Pro Quo (leastwise those who like and enjoy the US Gold – read that as better – system).

  72. 116

    What’s the view, here are your quotes from earlier this week about the guy who tried to do the right thing and probably saved Radio System’s patent and counsel from an easy IC finding:

    Apr 25, 2011 at 03:29 PM
    I think we should all review Mr. W—v’s clients’ applications and start calling the examiners of those applications with suggested rejections.

    Apr 25, 2011 at 04:21 PM
    Let’s string Mr. W—v up.

  73. 115

    Patent rights in Europe are so useless and toothless that nobody bothers to fight for them.

    chuckles (gold plated chuckles even)

  74. 114

    Anti-patent corporations BigCorpA and BigCorpB both desire a weakened patent system.

    Someone wanting a weaker patent system? Why, that sounds downright cy nical…

  75. 113

    Sure it does, ping. Sure it does.

    Ned, so would your position then be to eliiminate all statues of limitations and laches? After all, it’s not as if your vaunted do-gooder here had no window of time to bring the information to the attention of the Office (he did have that Rule 99 provided avenue – and funny that, Rule 99 be one of those things I done schooled you on way back when). If the ends justify any means, where do you stop?

  76. 112

    “I remember when publication was passed and everyone thought that competitors would be sending one another huge amounts of art upon publication to create a record that they knew of the art and give them ammunition for IE at trial. Didn’t happen.”

    So you’re saying that a change resulted in nothing more than a bunch of chicken littles running around screaming that the sky was falling?

    I would never have guessed that.

  77. 110

    I know, right? I remember when publication was passed and everyone thought that competitors would be sending one another huge amounts of art upon publication to create a record that they knew of the art and give them ammunition for IE at trial. Didn’t happen.

    Then we had the peer review pilot program that received little interest. And how many 1.99 submissiions have been filed at the PTO? Is there any way to determine that?

    Plus, when competitor applications get allowed that look like they will be a problem, how often to the potential infringers choose to file for reexam, rather than keep the deadly art in reserve for trial? Seems like about every time. And even if they do file for reexam, they usually sav e the best art for trial rather than risk getting it considered on the record.

    That’s what is so unusual about this case. The attorney who called the Exmainer risked getting the art considered on the record. In fact, he did get it considered on the record for all of the claims that issued. Only the one claim got rejected and cancelled.

    So the bottom line is, even if the option to submit art post allowance were offerred, I don’t think it would be popular, or often used.

  78. 109

    Again, thanks Fly. Did you ever have the feeling that a witness has imperfect recollection of events, after 10 or 15 years? Did you ever have the feeling that a witness has ben “prepared” or “coached” by his own side, before being questioned by the legal member. Did you ever have any reason to doubt the documents? I ask because I was involved in an interesting case in England, where it emerged in cross-examination of the infringer’s managing director that the date on his engineering drawings (from ten years earlier) had been changed, from a date after our priority date to a date earlier than our priority date, and that innocent, well-intentioned witnesses were remembering events at the 1982 Trade Fair in Hannover, and NOT the one in 1981.

    We got the original engineering drawings, with TIP-PEX’ed date, through English “discovery” proceedings. I think it is only the rigorous fact-finding procedures under English law that prevent people telling fibs to the EPO much more often than they do today.

  79. 108

    The inquiry about prior use really isn’t that tough.

    It requires systematic assessment of what is submitted, you know, W5: What, When, Where, Why, How. The disclosure according to Art. 54(2) is determined by the chain of evidence, which is longer if it involves sales invoices, cancelled cheques, user manuals, product specifications, factory drawings, etc. . Art. 54(2) places no restriction on the type of disclosure, not like 35USC102 which creates categories (US or Foreign, patent or NPL, language, prior use, person who made the disclosure, etc.). The tricky part was often in deciding whether the information was PUBLICLY disclosed.

    As to witnesses, you would avoid summoning them if you can help it. In only one of my cases, a fairly messy situation, did we come close to inviting witnesses, but managed to do without, and the final decision, based on other evidence, stuck with DG3.

    Taking evidence from witnesses is something of a specialist matter.

    The examining division must be enlarged to four members with a jurist from DG5, who will take down the testimony under Art. 117, but would otherwise remain rather quiet for the rest of the time if there were no other legal (non-technical) questions to settle. The questions to be posed to the witness would be also be prepared in advance.

    At the normal pace of things, the witness can be heard something like 10-15 years after the events took place.

    I perceive oral testimony to be often simple, corroboration of written submissions, but often with an added statement about the circumstances in which the disclosure was made. “I presented D45 at the international standardization committee for pink chocolate gizmos, many people were present. There was no explicit or implied obligation of confidentiality”. The crucial bit justifying the presence of the witness would probably be the second statement.

    The party offering the testimony must substantiate in advance what testimony is offered, so that the division may decide whether it is necessary to summon the witness.

    Consider that you will have to schedule a separate OP, or prolong the OP by one day or so to take down the evidence, and that four interpreters will often be present for the duration. Moreover, you may have to guide the witness for dealing with the bureaucracy for getting his travel costs reimbursed. (The witness is invited on the EPO’s penny, as he doesn’t, and cannot belong to one of the parties). None of this is not cheap, so you don’t invite witnesses just for fun.

    A close colleague heard testimony from a witness who came from overseas, I unfortunately missed that OP, as that evidence was decisive.

    As to the delivery, OPs before the EPO are fairly undramatic. No prime-time-TV court room drama here. Sometimes the parties start ad-libbing (often bad), or the inventor is allowed to open his mouth (sometimes fatal). Quite a bit of stammering and mumbling, I must really admire the interpreters, the OD must prick up their ears too to make sense of the show. There is always the odd, unexpected request popping up out of the blue, the Chairman’s skill is to keep the circus under control. In OPPO, when I was in charge of the minutes, I would down some of the parties’ mote preposterous statements verbatim, which I would have suppressed in EXAM out of charity. I couldn’t always suppress a grin, even though I do bite my lower lip to avoid laughing.

  80. 107

    BTW, I noticed you had no response to my point that the examiner searched the class/subclass where Accession’s 141 patent was primarily classified, but didn’t apply, or even cite, it in his OA. So this examiner sees Accession’s 141 patent during his search, doesn’t think it significant enough to appply or even cite, but you’re proposing that we set this examiner up as prosecutor, judge, jury and executioner of a “willful fraud” and “actual IC” case against Radio Systems and its counsel?

    You’re ridiculous.

  81. 106

    The stench of your smearing of an applicant and member of the patent bar is far worse. Especially when it emanates from a hypocrite like you.

  82. 105

    “what, I am asking a hypothetical question of what you would do if a member of the public called up and told you the story as it is discussed in the Federal Circuit”

    You have no idea what Watov told the examiner. The Fed. Cir. decision says that Watov “informed” the examiner of Accession’s ‘141 patent. You do not know that Watov told the examiner that Accession had disclosed the Accession application to Radio Systems in January, 2007. The interview summary in the Radio Systems application does not say that Watov told the examiner anything other than the existence of Accession’s ‘141 patent.

    YOU HAVE ZERO EVIDENCE FOR ANY OF THESE “FACTS” THAT YOU ARE ASSUMING.

    With zero evidence, you’re all over this site making unequivocal statements that Radio Systems committed “willful fraud” and “actual IC.” Then you’re making nonsensical statements that the examiner had a “duty to investigate” or “at least make a reasonable inquiry.” You are so detached from reality that it amazes me you are actually an attorney. It’s simply unbelievable to me that you can come on this site, and with the actual evidence that is available to you, not what you’ve made up in your own mind, convict an applicant and their counsel of “willful fraud” and “actual IC.” You are an absolute disgrace to our profession. A disgrace.

    BTW, if you went over to the PTO today and asked 100, 1,000, or 5,000 random examiners, “What are the elements of fraud?” how many of them do you think would actually know the answer? Yet you’re proposing that we charge the examiners, THE EXAMINERS!!!!!, with policing the actions of the patent bar for fraud and IC.

    You are beyond insane. And as Malcolm pointed out given your position on Therasense, a d#mn hypocrite.

    You are a disgrace. An absolute disgrace.

  83. 104

    So, Snap, derivation proceedings at the EPO are rarer than hens’ teeth. Why is that? I can think of a number of reasons:

    1. Nobody ever “derives” anything from any other inventor.

    2. But if a derivor were ever to derive anything, and file on it, they would find themselves already too late, because the derivee has already filed first.

    3. Patent rights in Europe are so useless and toothless that nobody bothers to fight for them.

    4. Those derivation provisions at the supra-national EPO (Articles 60 and 61, EPC) depend on the aggrieved party (rightful owner of the invention) having first secured a decision in its favour, from a court in the (national) jurisdiction where the derivation is alleged to have taken place. The EPO swiftly acts, but only when it is presented with such a court decision.

    So, Snap, choose the reason YOU think most likely for the paucity of caselaw on the subject. I know which two I think are responsible.

    The leading EPO Decision is called Latchways. It gave the true owner, the winner in derivation proceedings in a court in the USA, the ownership of the relevant EPO patent application. The thief had already let the app lapse, but that did not phase the EPO, which simply put it back, up and running, in the name of the rightful owner.

  84. 103

    In view of Hal Wegner’s emails stating that the patent reform legislation must include EPO-style derivation proceedings if the US switches to first-to-file, would any of you EPO experts care to comment on how derivation proceedings are different from the current interference practice in the US? They appear (from what little I know) to serve the same function of determining who is the actual inventor and providing for some corrective action on the part of the Office, although I’m guessing derivation must be less cumbersome because I’ve never heard any complaints about it. And in an interference, I think usually the senior party is the first to file, so there is already some procedural advantage in winning the race to the office.

  85. 101

    Rouf, any experience at the EPO with “prior user” evidence? Come to think of it, have you ever been a member of an ED or an OD that examined a witness? Ever? Indeed, how does the EPO handle evidence from witnesses of fact? Has anybody at the EPO ever seen a witness being cross-examined (apart from on television)?

  86. 100

    Rouf, I think ping is bothered about PTO publication of unexamined patent applications. His “quid pro quo” is the one beloved of garage inventors. It goes like this. First you the PTO shall tell me whether or not I get my patent. Then, I get to decide between a) patent and publication or b) no patent but no publication either.

    You see, the USA has no equivalent to Art 67, EPC. Thus, Americans do not experience (and do not want to experience) the powerful deterrent and unsettling effect of reading a WO or A publication with wide and apparently valid claims.

  87. 99

    Interesting to exchange views with another EPC person. As to Art 115 (observations on patentability, served on the PTO Examiner by members of the public), I have had them made against me, and have made them myself. EPO Examiners are supposed to read them. As somebody on this blog once said: what has been read and understood cannot then be un-read. So, I can use Art 115 simply to convey a thought to the Examiner, and let the Examiner then choose which Article of the EPC to invoke in the next Communication to the Applicant.

    In the particular case in which I wrote to the Examiner under Art 115, it had the desired effect, prompting Applicant to amend claim 1 in the way we wanted so that, later, the claim was a sitting duck for the prior art attacks we brought forward as Opponent. The opposition succeeded.

    In the case where anonymous observations were filed against me, they were first class (from J&J, I suspect). They helped us get good solid claims to issue. Thereafter, J&J did not oppose. Perhaps they too were happy with the issued claims.

    My comment on DG3 being the only thing that counts was not disparagement of DG1. Rather, I was thinking that the TBA often renders a Decision on claims that were not even in the file till the patent owner filed them for the first time in the appeal proceedings. In common law countries, an appeal is about whether the first instance got the law wrong. It does not look at a whole new set of claims. In DG3, however, it is often a complete re-run, of fact-finding and law, on a different matrix of fact.

    Of course I do agree with you, that the Decision from DG1 is (or ought to be) the basic (and painstakingly prepared) road map for the decisive proceedings at the appeal instance.

  88. 98

    Fair fly, if Microsoft could have conducted a public use proceeding in the patent office it would not have had to deal with the “clear and convincing evidence” standard of proof.

    I am sure given that given a choice, most litigators would want to be in the patent office proving public use rather than try to do it in courts given this different level of proof required.
    Regarding the “duty to disclose,” it certainly has screwed up American prosecution. There is no candor and there is no risk taking whatsoever in fear that anything that is said can and will be used against you in court.

    However, given the Draconian consequences for failure to disclose material prior art, I can’t understand why any US prosecutor would fail to disclose a European search report or killer prior art that was cited in any non-US prosecution.

  89. 97

    I certainly understand the meaning of this Latin expression.

    However, the sentence you constructed with it makes no sense to me at all.

  90. 96

    Ned,

    Had the Commissioner not acted and requested the new law authorizing a ban on submissions of prior art, public use proceedings and protests, the US world of patent prosecution may have turned out to be quite different after the publication of patents.

    One can’t really tell.

    Art. 115 observations are a rather marginal phenomenon at the EPO, but then there are effective post-grant inter-parte opposition proceedings, contrary to the US.

    This foreigner’s perception is that the US patent system would be much improved if it concentrated on the factual situation of the application documents, rather than on the statements and behavior of the players.

    The duty of candor makes applicant anything but candid, and this obligation, together with inequitable conduct, treble damage, contaminate the conduct of procedure in Europe.

    I think I’m allowed to make that statement, I was an examiner, and in the later years I very often looked up in PAIR what happened at the USPTO in cases associated to mine.

    Why was it that the IDS filed in the US almost always only comprised EXACTLY the documents I cited in my EP search report, and NOTHING more, as if the applicant was totally dumb about the technology?

    Why was it that some patent attorneys friends told me in confidence that they do not check the prior art when they draft a new application in fear of US requirements, or tell me in a hush tone that if they do, it is in secret? Wouldn’t it be better if they tried at the outset to figure out what they really invented, and draft potentially allowable claims accordingly?

    Why was it that I never saw a supplemental IDS filed when I introduced at a later stage a new killer document into the EP procedure?

    Why was it that I never saw a request for reissue of a US patent after its EP counterpart was refused or revoked in examination or opposition, even after an appeal? Surely, after all that scrutiny, the documents cited must have been material to patentability according to some standard?

    Why is it that when I cite a granted US patent in the EP procedure whose claims appear to cover the applicant’s business, I get the feeling that the representative’s IQ dropped by more than 50 points?

    Why is it that when an USPTO examiner picks up and uses my documents from the IDS, the EP representative starts stalling and plays really dumb. The EP procedure appears in such cases to be directly driven by the US attorney, who wants to avoid diverging statements concerning the same claims.

    Why is it that some EP applications were withdrawn right in the middle of oral proceedings, when it became clear that a negative decision was just about to be taken? I know personally a couple of cases where this happened, the reason was apparently, again, to maintain the pretense before the USPTO that formally no refusal of the foreign application was pronounced.

    The incident reported initially in this thread reminded me of an experience I had.

    Many years ago my phone rang at the EPO. On the line was an US patent attorney that wanted to speak with a certain examiner who had handled a certain application. This examiner was no longer with the EPO, and the attendant had forwarded the call to me, probably thinking that all those bloody foreign names sound all the same anyway, and mine started with the same letter.

    Normally I would have had no reason to speak to a non-EP based party, first or third party or otherwise, except in the context of PCT procedures.

    I was curious, and listened to what he had to say. He told me he represented a party who was harassed or sued on the account of the US counterpart of the EP application he was interested in, and he wanted to know more about what happened in the EP procedure.

    It quickly became clear to me that he was on a fishing expedition, and I wasn’t about to volunteer any opinion or non-public information. Even if I wanted, there isn’t much I could have told him, as it wasn’t my case, and that was before the days examiners had access to electronic files. I told the US attorney that the application was no longer pending (public information), explained him in a generic fashion the meaning of the symbols in the search report (generic information), and that he could obtain a copy of the wrapper by filing a request (no secret here either).

    After I hung up I checked out the guy’s story, and it did check out. I looked at the search report, the claims, and the documents. The US had granted the patent exactly as filed. The cover page of the patent mentioned none of the EPO documents, signaling that no IDS had been filed. (I only understood this much later). The EPO documents were very good, and the applicant had quietly abandoned the procedure. Why in hell had he pursued the US procedure, and sued on the basis of that lousy patent? Duty of candor my foot.

  91. 95

    Are you implying that […]

    I was only teasing you, but you took the bait, hook, sinker, line and part of the rod. Next time I’ll put smilies. I do hope you’re doing this job for the money, and not only for the glory of it all. :-)

    But you are the one on the inside.

    WERE, not ARE. Wer lesen kann…

    Tell me, does it hurt a prospective Opponent to file Art 115 observations before the ED is through with the case. I think not.

    No, IMO, it doesn’t hurt. The decision to file observations and the timing would probably depend on the circumstances, though. If the examiner’s documents and analysis are strong I might wait a bit to see what happens. I would write the observations in the language in which I expect the applicant or his representative to have the weakest knowledge, like in OPPO, for tactical reasons. The examiner might be compelled or tempted to reword the observations as formal objections in a communication under Art. 94(3) in the language of the proceedings, instead of merely referring to them without making them his own. I might then be able to see how well my thinking is followed.

    If possible, I’d also wait until the 2 year delay set in the new version of Rule 36 has expired, to avoid seeing a gazillion “divisionals” being spawned, just in case.

    An advantage to Art. 115 observations is that you can raise issues of clarity (Art. 84), which are out of bound in OPPO under Art. 100, or must be disguised as Art. 83 objections.

    Visser and Singer+Staude consider that Art. 115 observations should be limited to “patentability”, which the authors understand as meaning strictly issues under Art. 52-57 EPC. I cannot concur at all in that restrictive view. I can find nothing to corroborate this interpretation in the travaux préparatoires, excepted the comment by Roscioni on p. 89/108 regarding “bonnes moeurs”, and the comment on provisional Art. 86 on page 78/108. These were formulated at a very early stage, around 1962 (and thus only in French and German). If these reservations had made it in the final consensus, Art. 115 would surely reflect them.

    A footnote in Singer+Staude referring to Teschemayer in the Münchner Gemeinschaftskommentar hints that there are dissenters to the restrictive interpretation. I currently don’t have access to the original, the book is unfortunately out of print.

    In any case, Art. 115 should be considered together with Art. 114, “Ermittlung vom Amts wegen”. If the observations make sense, it shouldn’t take much time for the ED to appropriate them. Otherwise, it has enough discretion to ignore them, without being accountable to the third party.

    To tell you the truth, in all my years at the EPO I can’t remember ever seeing any Art. 115 observations in any files of which I was a member of the ED. I think the instances in my entire directorate could be counted with the fingers of one hand, with several to spare.

    That doesn’t mean that such observations aren’t filed, if you look at the BoA database you will find a few dozen decisions were the third-party evidence was decisive in the decision.

    I always think it is irrelevant to the final outcome what the ED (or the OD) thinks. In the end, the only thing that counts is what DG3 thinks.

    Your lack of consideration for ED and OD decisions is abundantly clear from your countless comments… In fact, I’m a bit surprised that you show some deference for DG3 decisions, I thought that you only respected Bundespatentgericht or House of Lords decisions because there was no way at that point to prolong the procedure. [Smiley: :-) ] This lowly worm nevertheless thinks that he created the stuff on which DG3 decides, selecting the relevant elements, arguing the case, and ensuring that due process was respected.

    But you and I are only guessing, right?

    Only making hypotheses from the available facts, but Ned seems to confirm my hunch.

  92. 93

    It is a wonder that somehow Radio was able to twist this case into some sort of referendum on Accession when the facts are particularly damning to Radio.

    I wonder if Accession could have done anything differently to prevent that from happening?

  93. 92

    Any rule preventing a member of the public from speaking to an examiner about a published application and making reasonable and straightforward factual representations must be plainly unconstitutional

    I guess sequestering juries is unconstitutional as well?

  94. 91

    Good point there Max.

    If they are going to discipline the examiner, it should be for issuing the patent if he was fully informed of the what appears to be fraud on the PTO.

    It is a wonder that somehow Radio was able to twist this case into some sort of referendum on Accession when the facts are particularly damning to Radio.

  95. 90

    what, I am asking a hypothetical question of what you would do if a member of the public called up and told you the story as it is discussed in the Federal Circuit — where Accession had disclosed its patent application number to Radio two or so months prior to Radio filing an application disclosing and claiming the same invention as allowed to Accession, where the application number was disclosed during licensing discussions.

    What would you do given that Rule 56 prevents the issuance of a patent involving intentional fraud on the PTO. Simply close a blind eye and issue the patent?

    Really?

  96. 89

    must be plainly unconstitutional.

    Only in Ned-IMHO-land.

    Otherwise ya gotta do more than declare it thusly.

  97. 88

    Such an individual is perfectly capable of making his or her mind up as to whether what is being said is relevant or useful or not.

    And such a person is presumed to be able to follow directions, such as DO NOT EVEN LISTEN.

    And presumably you, being the consumate professional, would know how to read and I wouldn’t havta keep on saying these things over and again.

  98. 87

    As I understand it

    Um, you don’t. For instance there is no right to yell a word similar to “conflagration” in a building wherein a film or other presentaion is being made and there are a number of people.

    Also, see above about learning what terms mean prior to posting.

  99. 86

    what, I did take a look and it does appear that claim 17 of the Radio application and claim 47 of ‘141 have same overall claim structure and have the same point of novelty. The ‘141 has a number of detailed claim limitations that claim 17 did not have. Claim 17 was therefor broader. But the point of departure over the prior art appeared to be the same.

    Accession disclosed its application number to Radio in January according to the Federal Circuit. Radio filed its provisional application in March. The subsequent non provisional disclosed and claimed the same invention as appeared in the ‘141.

    This is more than just that the ‘141 was prior art to the Radio application. Something stinks, as they say, in the State of Denmark.

  100. 85

    Agreed, but in spades where the application involves claims interfering my patent, covers my prior public use; or involves active fraud on the PTO based on facts known only to me.

  101. 84

    Surely, if you think I mean “status quo” and not “quid pro quo“, then you should not be making comments on a Patent Blog (you need to be understanding what Quid Pro Quo means).

  102. 83

    Uhm, maybe you’re not aware that attorneys in the U.S. have to operate within the rules of professional conduct. So yeah, we love our 1st Amendment right to free speech, but that doesn’t mean we get to say whatever we want without consequence.

  103. 82

    Surely, you meant to write “status quo” and not “quid pro quo“, isn’t it???

  104. 81

    Paul, if I understand this thread aright, it is not addressing any freedom to speak, more whether there is freedom to listen.

  105. 80

    “Tell me what you would do if you, as examiner, group director, or Commissioner, were you informed of actual IC such as here were an invention was disclosed to the applicant in confidence, the invention then appeared in a subsequently filed application, claim were made to it, and the same subject matter was being claimed in a patent of the disclosing party, which patent was known to the applicant and which patent was never brought to the attention of the examiner?”

    Where are you getting these “facts”? The Fed. Cir. decision states that Watov “informed the examiner of the existence of the ‘141 patent.” Where are you getting all this stuff about the examining being informed that there was “actual IC” because of disclosure in confidence, and then subsequent applications claiming the same invention? Do you have any evidence that Watov told the examiner this long story?

    You’re on a witch hunt. You’re an absolute disgrace to the patent bar. On the flimsiest of facts, you’ve convicted an applicant and their counsel of “willful fraud” and “actual IC.” What the h#ll is wrong with you?

  106. 79

    As I understand it, the First Amendment to the US constitution provides for freedom of speech.

    That freedom should permit any person to telephone a US Examiner to make him aware of the state of the world, including any published reference that might be detrimental to patentability.

    The Examiner, having a degree in science and possibly also in law, is to be presumed to be an individual of some maturity and discernment. Such an individual is perfectly capable of making his or her mind up as to whether what is being said is relevant or useful or not.

    Any rule preventing a member of the public from speaking to an examiner about a published application and making reasonable and straightforward factual representations must be plainly unconstitutional.

  107. 78

    “Given the prior knowledge of the locking mechanism of ‘141 when Radio filed its provisional application on Feb. 6, 2007, it is very interesting that the two patents would disclose and claim the same invention, don’t you think?”

    No. Claim 17 of Radio Systems’ app was rejected by the examiner as anticipated by Accession’s ‘141 patent. That doesn’t mean that Radio Systems and Acession are claiming the same invention in the sense that one or more counts for an interference could be written. But I haven’t studied either application in depth enough to know whether a count could actually be written. Feel free to post one if you think there is.

    “As to what constitutes ‘fraud,’ the facts on their face and are suspicious. The duty of disclosure seems to have been violated at a minimum.”

    Debatable. Under the definintion of “material” in Rule 56, Accession’s 141 patent is arguably material, but if Radio Systems had a good faith belief that its claims were patentable over Accession’s ‘141 patent, there’s no intent. The ‘141 patent’s alleged anticipatory effect on one claim doesn’t make the materiality factor that high.

    “But the facts here suggest a lot more than just failure to disclose prior art.”

    A lot more? A lot more what? What exactly are you implying?

    “I am going on the facts as described in the Fed. Cir. opinion and as describe above by Dennis.”

    And based on just those facts alone you have no qualms posting an unequivocal statement that Radio Systems committed “willful fraud” on the PTO?

    You are the reason that the PTO does not “investigate” fraud. Every knucklehead practitoner like you would swamp the PTO with your half-baked allegations.

    BTW, Accession’s ‘141 patent was issued on April 24, 2007 and primarily classified in 49/169. The examiner of Radio Systems’ application searched 49/169 on June 15, 2009 and should have seen the ‘141 patent, and thus arguably “considered” the ‘141 patent.

  108. 77

    Nobody seems to be addressing the “express written consent” requirement

    Wake up there Jeff – I done considered this on this and on the sister thread.

    Now to your observations:
    1) sure (not only that but if Microsoft succeeds in reducing C&C to only that which be “considered”, my dump-truck plan reaches fruition).
    2) meaningless. Scoring “points” with the examiner be just like Drew Carry’s “Whose Line Is It Anyway”
    3) done observed already.

  109. 76

    Sure it does, ping. Sure it does.

    Table for three is ready – table for three – Dr. Mengele, Sir Duffas and Ned, your table is ready.

    (psst – dont forget that the “fraud” is actually alleged fraud and the alleger is this “ultruistic” whistleblower)

  110. 74

    Nobody seems to be addressing the “express written consent” requirement, instead tacitly treating 35 U.S.C. 122(c) / 37 CFR 1.291 as though it were a complete prohibition on post-issuance protests. Has anyone considered the ramifications of actually seeking that consent from the applicant? At first the idea that an applicant would ever grant consent seems like a joke, but maybe it is not if you consider that:

    (1) The more references (and arguments?) the Examiner considers before allowing the application, the stronger the patent will be against invalidity attacks. This appears to be true whether or not Microsoft is successful in reducing the burden of proof of invalidity based on reasons/references not considered (or apparently not considered) during prosecution, as regardless of what the burden is, it should be harder to meet the burden based on a reason or reference the examiner has clearly already considered;

    (2) By granting the consent and thus appearing (or actually being!?) candid, the applicant might score points with the examiner;

    (3) In the event that the applicant refuses consent to file the protest and does not disclose a reference on which the protest is based, and somebody later establishes in litigation that said reference was material, wouldn’t the fact of the refused consent make for a strong inequitable conduct case? Could the same be said if the applicant refuses consent to file a protest containing arguments, but submits the reference anyway in a supplemental IDS, and the examiner allows claims over the reference, arguably overlooking the significance of the submitted reference, which would have been clear to the examiner had they seen the would-be protester’s arguments?

  111. 73

    “Now the patent is blessed with a strong presumption over those references…”

    Maybe so, but “those references” don’t even necessarily have to be on point.

    Here’s a hypothetical:

    Anti-patent corporations BigCorpA and BigCorpB both desire a weakened patent system. They come up with a plan where BigCorpA cites every publication by BigCorpB in every patent application of BigCorpB, and vice versa. Now the examiners who examine these applications have all their time taken considering all these references, and consequently less time on SmallGuy’s applications.

    Anyone that thinks this is a myth needs a reality check. This might be an extreme example, but I have no doubt similar strategies currently, and will continue, to infect the system.
    Unless safeguards are built in, you should most definitely expect BigCorp to come up with devious strategies.

    In fact, if they paid me enough (and I had nothing better to do), I would consider doing it for BigCorp myself, just to teach all these polyannas and naysayers how to bend the rules proper.

  112. 71

    The reasons that the peer-to-patent program was/is such a failure are similar.

    Actually, that be a failure cause certain windmill chasers can tbe bothered with doing something that might actually make a change and insist instead on be otching on mere message boards O blogs. Not naming names but starts with “sun” and ends in “shine”.

  113. 70

    Sure it does, ping. Sure it does.

    I don’t believe the Commissioner or Congress or anyone else would intentionally provide a rule, or interpret a rule, whereby a practitioner who became aware of active fraud on the PTO could not report it to the Office.

    Now we speak here of disbarring the attorney who reported the problem to the PTO. Fat chance that. But the thinking behind this notion is appalling to me. Penalize an attorney doing his duty? Come on.

  114. 69

    Criminy, this 56-Merry-go-round again Ned?

    How many times are ya going to trot this out when the very first time I rubbed your nose all over your errors on Rule 56?

    You be creating out of whole cloth this duty-to-inquire and ignoring the law and rule against even looking at improperly brought stuff. The improperly brought stuff is only alleged – why is this so difficult for you?

    You be trooting out 56 as if the mere alleging of fraud be not only enough ta supercede law and rule, but that the accuser somehow magically be automaticaly correct.

    It just aint so.

    And what part of “ignore” means first examine and then if not on point ignore? The whole point about the improper delivery is that it be improper and it dont even get looked at – AT ALL

    But in contrast, let me quote me from teh sister thread:

    However, even if this does apply, there be serious problems here, as this be a shallow and ultimately false protection. Let’s say the opposing counsel and examiner did what I think is supposed to have been done – not even look at the suggested reference until the applicant allows it. Let’s say the applicant, for whatever reason, says “No, you do not have my permission to look at the reference.” What now? As has been shown here – there are so many ways around this that the guidance is clearly a sham. But for arguement’s sake, let’s say that the reference is ignored by all for the moment. At a later time, after the application has passed to issue and the patent holder goes to enforce the patent, there be a cloud on that patent – the reference the applicant said not to look at. In effect, the reference will be, must be looked at, for no other reason than to dispell inequitable conduct – a question of did the applicant bury a reference is fair game throughout the life of the patent.

    The underlying problem is the move to forced publication. The intent of the guidance is to somehow afford protection to the applicant because forced publication done breach that veil of confidentiality and the Office did not want those with lots of money to be able to game the system in comparison to those who dont have money (yup – sport O kings). Those with lots of money can bombard the Office with their searches. Those without money cannot do the same and ya going to be dammm sure that those with lots of money wont be applying that same scrutiny to their own applications.

    Its an issue of fundamental fairness – but the answer arrived at just dont work.

    Once again, why buy the cow when you can get teh milk for free?

    Reply Apr 26, 2011 at 08:40 AM

  115. 68

    ping, the information of which he is aware is not “alleged.” But he has a duty to report what he knows so that the examiner can react accordingly.

  116. 67

    ping, come on. The discussions I speak of occurred circa 1994. The statute was enacted 5 years later.

    I have a good idea who it was though who advocated full publication and an open record. I don’t think it was me, but it might have been.

    So, ping, I apologize. I regret some of the positions I then advocated. I must admit, I have changed my views somewhat on may issues of patent law since. Once I even favored first-to-file, just for example.

  117. 66

    information of active fraud

    Again Ned-O alleged active fraud – and note who was doin the alleging.

  118. 65

    I must have missed that

    Of course ya missed it – part O the posse problem is not seein what ya dont want ta see (It dont take no AllSeeingEye – only a brain capacity ta rise up out of 2D circles.

    On this very thread – and in direct response to you:

    TINLA IANYL said in reply to Malcolm Mooney…
    Reply Apr 27, 2011 at 11:02 AM

  119. 64

    OK, what, explain rule 56. It commands the examiner not to allow patent applications where there was willful IC.

    Tell me what you would do if you, as examiner, group director, or Commissioner, were you informed of actual IC such as here were an invention was disclosed to the applicant in confidence, the invention then appeared in a subsequently filed application, claim were made to it, and the same subject matter was being claimed in a patent of the disclosing party, which patent was known to the applicant and which patent was never brought to the attention of the examiner?

  120. 63

    OK, ping, are you suggesting that one, as a licensed member of the patent bar, have no duty to disclose to the PTO information of active fraud he is aware of while the PTO can still act? Are you suggesting that?

  121. 62

    ping, you have a point there. But, I think the Accession attorney had enough to report to the commish the facts he was aware of at that point. They were quite damning.

  122. 61

    what, I am going on the facts as described in the Fed. Cir. opinion and as describe above by Dennis. But thanks for the reference to the application number.

    A quick review of claim 17 of the application and claim 47 of the ‘141 does illustrate that they are claiming substantially the same subject matter: a pet door flap lock comprising a shoulder or channel into which the flap is inserted to lock the flap.

    Given the prior knowledge of the locking mechanism of ‘141 when Radio filed its provisional application on Feb. 6, 2007, it is very interesting that the two patents would disclose and claim the same invention, don’t you think?

    As to what constitutes “fraud,” the facts on their face and are suspicious. The duty of disclosure seems to have been violated at a minimum. But the facts here suggest a lot more than just failure to disclose prior art.

  123. 60

    actually someone done already post the “fact pattern” that there is a question.

    I must have missed that. Please tell me, Mr. AllSeeingEye: what is the question?

  124. 59

    The reasons that the peer-to-patent program was/is such a failure are similar.

    “However, some PTO staff will willingly buy into unfounded scare stories threatening extra work for the PTO…”

    Well, considering how many of them believe, mistakenly, that they are overworked and underpaid, this should not come as a surprise. If the PTO had spent the past 10 years actually working on the applications that were filed, instead of proposing ridiculous and illegal rules to avoid working on the applications, or to force applicants to do the work for them, we probably wouldn’t have the backlog we have now.

  125. 58

    I was long gone

    Sooo, now you say that you were involved early in the taking of the Quid without paying the Quo (and throwng out the “prior art” red herring), but absolve yourself of any responsibility because you did not stick around long enough to finish the job and protect the value of the cow when glasses of milk were to be handed out for free?

    Your rat-abandoning-the-ship does not inspire any better view of your involvement with (and thus culpability for) the rape of the Quid Pro Quo.

  126. 57

    Ping, I don’t know what you mean by that. What we were discussing at the time was publishing just enough information to describe the contents of the application for prior art purposes. There was back and forth between the Office and the AIPLA about whether an abstract was sufficient. There were a lot of discussions and a lot of variations discussed. By the time we eventually enacted the law, I was long gone from active participation in the discussions.

  127. 56

    Dennis,

    The America Invents Act proposes a new mechanism for pre-issuance submissions, but even with this proposed change, a submission after a notice of allowance is simply too late.

    Still, Rule 501 submissions remain available.

  128. 54

    There’s no question that the reference at issue in this case was, in fact, material to the patentability of claim 17. Do you doubt that?

    There’s no question

    Um, actually someone done already post the “fact pattern” that there is a question. With that, the rest O your post becomes meaningless.

    (It helps ta actually read the posts)

    Uh yes, that is certainly true.

    Ya shoulda just stopped there and thanked me.

  129. 53

    I think it’s far more common, but still relatively rare, for applicants to get one of those “Here’s a reference you may be interested in citing” registered letters from a competitor (often hiding behind some law firm specially engaged for the purpose of sending the letter).

  130. 52

    Point taken SteveW.

    It come down to what “considered” means, dont it (and if C&C survives)?

  131. 51

    “The examiner had a duty of inquiry.”

    What???!!!!!

    Where do you get this nonsense?

  132. 50

    The alleged potential flood of third party art submissions in pending applications has not, and will not, occur, for the reasons noted above, summarized here:
    Relatively few companies bear the cost of sufficiently monitoring published applications of others for their claim scope, especially if unexamined, and have sufficiently relevant prior art in hand without paying for a prior art search, in order to be aware of, or able to, cite that art.

    Even if the 3d party has have both of these, they may well decided not to risk strengthening rather than weakening the patent, and perhaps even losing a future inequitable conduct defense against ALL of the claims. Especially with the option of a more effective reexamination after the patent issues in which the cited art may not be so easily ignored or amend over.

    A 3d party art submission that fails to get all potentially infringed claims rejected may be setting that 3d party up for a future willful infringement accusation.

    However, some PTO staff will willingly buy into unfounded scare stories threatening extra work for the PTO, even if already factually disproven by the PTO’s own prior experiences in issues like this for which the PTO has not kept good statistics. If anyone has actual statistics on the numbers of Rule 99 prior art submissions, protests, or public use proceedings I have never seen them, but senior PTO officials have privately admitted to me in past years that they have all been quite rare, in their experiences.

  133. 49

    Hmmm. I’m not sure that even a bad faith competitor would want to dump a bunch of references on an Examiner that is going to half-axed look them over and check the reviewed box. Now the patent is blessed with a strong presumption over those references (and maybe a stronger presumption depending on how Microsoft comes out).

  134. 48

    Malcolm, you think me hypocritical? After a full discussion, and I appreciate it Malcolm, you convinced me then.

    But here the Feds summary of the facts seems to be an obvious case of fraud on the PTO. I do not know what the Accession attorney said to the examiner, but if he said what the Feds said in their opinion, the examiner should have asked the applicant a few searching questions at least.

    That all I suggested. The examiner had a duty of inquiry. If the MPEP tells him he has to ignore evidence of fraud, the MPEP is wrong.

  135. 47

    So does this mean that ya actually agree with me that it depends on the actual facts and that just because one side says the reference be relevant dont make it so

    Uh yes, that is certainly true. But the situation I’m referring to (a hypothetical one, mind you) is quite a bit worse than “one side says the reference be releveant.” There’s no question that the reference at issue in this case was, in fact, material to the patentability of claim 17. Do you doubt that? There’s no question that Radio knew about the reference. Do you doubt that? There’s no question that the relevance of the reference was at least brought to Radio’s attention. Do you doubt that? The only question (under Star Scientific or whatever that p.o.s. case is) is whether Radio could reasonably have believed that the reference wasn’t material or was cumulative. It doesn’t seem like a difficult one to resolve on summary judgment. We’re talking pet doors here.

  136. 46

    Well Sunshine, it seems we have moved from “perfect for summary judgment” to “it would seem like a pretty good candidate.”

    So does this mean that ya actually agree with me that it depends on the actual facts and that just because one side says the reference be relevant dont make it so?

    You can line up with wtvlfdt to thank me when it be quiet here.

  137. 45

    Depending on the actual facts, sj may indeed not be the proper course at all.

    Had this patent issued without the reference being cited, it would seem like a pretty good candidate, ping. It’s hard to imagine a better case, absent a letter accidentally sent from the patentee to the defendant admitting the conduct.

  138. 44

    And for an over reaction in the opposite direction….

    allegedly anticipated one or two claims. The rest of Radio Smarts’ allowed claims were unaffected

    Ya probalby gonna remember at some point in time that the number O claims affected has no relevance. In IC, even one claim affected kills the entire patent.

    Ya can thank me later when people arent looking.

  139. 43

    Also see the actual law on this (since you were so involved, I shouldnt havta point it out to you).

  140. 42

    known willful fraud. That is what the Accession patent attorney did here.

    Um, thatta be alleged willful fraud. See above.

  141. 41

    perfect for summary judgment

    Um, no.

    Just because one side say the reference be relevant dont make it so.

    Depending on the actual facts, sj may indeed not be the proper course at all.

    Think substance Sunshine, substance.

  142. 40

    Your insistence on spouting nonsense about “fraud” and “bad faith” and “intentional misconduct” is ridiculous.

    YOU OBVIOUSLY HAVEN’T EVEN REVIEWED THE FILE WRAPPER!!!!

    I will post the serial number for you for a third time: 11/971,553.

    GO REVIEW IT!!!!!!

    This super awesome Accession patent that Mr. Watov informed the examiner of allegedly anticipated one or two claims. The rest of Radio Smarts’ allowed claims were unaffected.

    You’re a complete joke.

  143. 39

    I believe I was the first one to bring the issue to the attention of the Commissioner

    Sooooo,

    Do we blame you for not pushing hard enough to prevent the spoilage of Quid Pro Quo?

    Moo much?

  144. 38

    So Mr. Watov had actual knowledge of willful fraud (not sure what that is, I guess it’s different than unwillful fraud) committed by Radio Systems? And you know this how? You haven’t even reviewed the file wrapper of Radio Systems application.

  145. 37

    There was an obvious problem here that the examiner actually granted the patent after being informed, apparently, of facts sufficient to put him on notice of willful fraud on the patent office.

    The unsworn testimony of some random third party??!?!

    LOL, Ned. You’re the same guy who did backflips for a month trying to defend the mealy-mouthed jokers in the Therasense case, who were cross-examined in front of a highly respected judge and given every opportunity to explain themselves.

    Now you’re saying that any third party dxxche can call up an Examiner with some “info” about a reference and create a Rule 56 issue at the PTO? Give me a flippin break.

  146. 36

    May I bring to everyone’s attention the following portion of rule 56,

    “However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.”

    There was an obvious problem here that the examiner actually granted the patent after being informed, apparently, of facts sufficient to put him on notice of willful fraud on the patent office. There was a problem here. The problem was that the patent issued when it was apparently procured by fraud.

  147. 35

    What’s the joke, Ned?

    Patent leather is absolutely correct. That’d be a case of IC perfect for summary judgment.

  148. 34

    While all you guys here are attempting to come up with ways of hanging the Accession attorney at the nearest yardarm, I will like to point out that the original Supreme Court cases on duty the disclosure were on cases exactly like this where the Supreme Court said that it was the duty of members of the bar to bring to the attention of the Commissioner known willful fraud. That is what the Accession patent attorney did here. He had a duty to do so. He should be rewarded, not condemned.

  149. 32

    Malcolm, I was wondering when you were going to make the observation that what happened here appeared to be a per se violation of the duty of disclosure that not only warranted a rejection of claim 17, but a suspension of all prosecution pending an investigation of whether there was an intentional violation of the duty of disclosure.

    Once upon a time, the Commissioner would not grant a patent on an application where there was willful fraud. I wonder why that did not happen here.

  150. 31

    Fairfly, I believe I was the first one to bring the issue to the attention of the Commissioner when we were first considering publication of patents. I was then chair of the AIPLA patent law committee, and suggested, in a meeting with patent office executives, that there would be a lot more protests, public use proceedings and post-allowance notices of material prior art that would force the filing of RCEs that would generally muk up ex parte prosecution and could potentially inadvertently authorize pre-grant oppositions. At the time, we did not know exactly how the patent office was going to publish applications and/or whether the prosecution history would be available for public inspection even while the prosecution was underway. Still, my observations proved to be prophetic because full publication became the norm, and the full prosecution history became available real-time. Had the Commissioner not acted and requested the new law authorizing a ban on submissions of prior art, public use proceedings and protests, the US world of patent prosecution may have turned out to be quite different after the publication of patents.

    All that being said, there remains a problem. It is really necessary for the owner of an issued patent to bring the fact of interference to the attention of the Commissioner. There is also a real problem in the prohibition against public use where the public user himself is not authorized to file public use proceedings after the claims are allowed, exactly at the moment when the public use proceedings would be most relevant.

    These two particular situations are vastly different from the general case because of the immediacy of the harm to the protesters should the patent issue. They warrant special consideration.

    I wonder whether the new post-grant opposition will allow an interference in some fashion.

  151. 30

    Why couldn’t Accession’s attorney simply send a registered copy of the reference to Radio Systems’ attorney explaining the relevance. If the latter didn’t submit it to the USPTO, then I think Accession has a strong case of patent invalidity for inequitable conduct.

  152. 29

    Also, it is not admitted that they thought the reference was material to the claim. When they cancelled the one claim of the application that the Examiner rejected over the new reference, they pointed out several differences between the claim and the reference, and stated that they were merely cancelling the claim to expedite allowance of the many other claims.

    While I have not reviewed the teachings of the reference to determine how credible the explanation is, I will certainly refrain from leaping to the conclusion that they considered the patent relevant to the claim, such that they had a duty to submit the reference.

    I guess we will never know what a Court would have determined, since the applicant was deprived of the opportunity to defend the allowed claim in the appropriate forum. Whose to say that an interference would have been granted, or that a court would have found infringement of the patentee’s door of that one claim of the applicant’s application? I’m a little bit uncomfortable with the DC’s assumption that the claim should not have issued, and that a good result was obtained. At first glance, it would appear that the applicant had an allowed claim that distinguished over the reference, but the applicant was unfairly forced to cancel it to get the other claims issued without further delay resulting in loss of patent term.

  153. 27

    What is the next logical step for a lawyer who must represent his or her client with vigor?

    Um, stay within the rules…? I be pretty sure that “with vigor” dont mean “anything goes.”

  154. 26

    It does not seem advantageous to bring the art to the examiner’s attention while the claims are still malleable enough to be amended

    Rm, shhhhhhhh.

    ;-)

  155. 25

    Interesting idea: I had not thought of it till you suggested it.

    That’s called being too self absorbed.

  156. 24

    Why stop there? If the results could in any conceiveable way be “beneficial” to anybody, why not just green light an open-ended means?

    Um, something about the basics behind the rule of law being terribly violated comes ta mind…

  157. 23

    When rules in-place frustrate beneficial ends, the proper solution may well be to change the rules.

    I like this thought. What concern is it of anyone’s how I achieve my results if my ends are beneficial?

  158. 22

    Having difficulty following your thinking, Fairfly. Sorry.

    Are you implying that I (as representative to the Applicant) could generate more income for myself, and condition my client into paying more for my services, if I were to bombard the EPO Examiner with anonymous 3rd party observations on patentability? Interesting idea: I had not thought of it till you suggested it. I will bear it in mind from now on.

    But you are the one on the inside. Tell me, does it hurt a prospective Opponent to file Art 115 observations before the ED is through with the case. I think not. I always think it is irrelevant to the final outcome what the ED (or the OD) thinks. In the end, the only thing that counts is what DG3 thinks.

    Sorry, can’t help you on observations at the DPMA.

    In the USA, I gather that competitors do not monitor the cases of their competitors as they go through examination at the PTO, for the reason you give, willful infringement of a patent which, it is discovered, they did actually know about. Better to shut your eyes and put your head in the sand, for what you fear might very well never come to pass.

    As to USPTO Rules surviving from pre A publication time, what you write makes sense to me. Some Applicants at the USPTO still arrange for there to be no publication till the patent issues. But you and I are only guessing, right?

  159. 21

    There is the added benefit that the customer will be less likely to question the attorney’s fees when the patent is a granted title ready for litigation, instead of a mere potential threat which could go away by itself. N’est-ce pas, Monsieur Maximilien?

    Early submissions could possibly also come back to haunt the third-party in the wonderful US system of willful infringement and treble damages…

    It seems to me that the drastic rules concerning third party submissions may be a leftover from the days where applications remained secret until granted. When publication at 18 months was introduced the rulemakers may have been overly prudent. Or maybe they are afraid of examiners being corrupted?

    The Germans started publishing pending applications only in the 1960s. Any experiences from that side?

  160. 20

    Big, I am thinking that, within the USPTO, attention is paid, to how the EPO manages its workload. But I confess to you, that might be me, just wishful thinking.

  161. 19

    Whoa whoa whoa, ALLEGED examiner.

    6, no need ta put that in, as it be redundant (it be inherent – all examiners are ALLEGED examiners).

  162. 18

    the last thing I’m going to do is dump a huge pile of references on him

    Not to be cy nical, but this statement ignores the human condition to the point of being, well, d_umb.

    Cy, cmon dude, ya gotta at least live up to your moniker. Cut out the rose-colored views that just are not based in reality.

  163. 17

    Max, you assume that Americans actually pay attention to what other jurisdictions say and do. As far as I can tell, Americans don’t pay attention to how others do thing, and tend to re-invent the wheel without bothering to learn from what others have to say about things – why learn from other people’s mistakes when you can repeat those mistakes yourself, at great cost to the economy?

    (Exception that proves the rule: the AIPLA report on patent oppositions that issued in the mid-2000’s. That report, while not explicitly citing to opposition procedures in other countries, de facto addressed many of the benefits and shortcomings of other countries’ opposition systems. But has anyone in Congress paid attention to that report?)

  164. 16

    Well said Red. That encapsulates 30 years of experience at the EPO with Article 115 of the EPC, that provides for observations on patentability of pending claims by members of the public. Thus, there are very few such observations filed at the EPO, even though most competitors know what their competitors have got pending at the EPO, they can file prior art at any time, anonymously if they wish, free of EPO fee and estoppal and res judicata (so they can file their best art during examn on the merits and then, after issue, oppose using the very same materials).

    Course, there are occasionally special situations where Art 115 observations have a role to play, during ex parte exam on the merits. I imagine, Red, there could be many more such special situations at the USPTO. The USPTO wrote its restrictive Rules in full knowledge of the EPO’s long experience over the years and, presumably Dennis, it knew exactly why it needed all those restrictions in place.

  165. 15

    Better yet, wait for issue, so that the claims are frozen into invalidity, then if approached by the patentee, quietly bring the art to his attention. He will then leave you alone, and go after his other (and presumably your) competitors. It does not seem advantageous to bring the art to the examiner’s attention while the claims are still malleable enough to be amended in a way that both avoids the art and covers you.

  166. 14

    35 U.S.C. 301 permits a third party to anonymously submit prior art after the patent issues.

    Given the current statutory set-up, Accession should have waited for the patent application to issue and then file the prior art and argument with the USPTO. Any routine due diligence search would have uncovered the invalidity of claim 17. A well-crafted post-issuance argument might support a hint of inequitable conduct. If Radio Systems did not like the third-party argument, it could re-exam on its dime.

    Accession made Radio Systems aware of the patent during licensing negotiations. Radio Systems refused to play by the disclosure rules. What is the next logical step for a lawyer who must represent his or her client with vigor? Exactly what happened.

  167. 13

    I would permit a patentee to file a protest with respect to an allowed application for the purpose of requesting an interference.

    I would permit a public use protest to be filed after a notice of allowance by one practicing the public use.

    In all other cases, the where the direct interests of the protester were not at stake, but only the general interest of the public, strict limits on interference with ex parte prosecution are not only acceptable, but are necessary for orderly prosecution.

  168. 12

    “Why, they’ve done nothing wrong.

    The case hadn’t issued, so they still could have cited the reference.

    Really, for someone who claims to know the rules so well…

    I wasn’t going to bring this up, but since someone else already called you on this one MM, I’d also like to note that this is another bad “rule” or “interpretationlol” of the lawl which leads to this “policy” or whatever, and is just a waste of time. In other words, yet another rule I find offensive to the system itself.

  169. 11

    The pending patent reform legislation will provide a somewhat longer time period for third parties to submit prior art than 37 C.F.R. § 1.99.
    However, both said Rule 1.99 and its predecessor unrestricted protest system*, has been so rarely used as to clearly demonstrate the error in assuming that many third parties even want to merely cite art into an ex parte application. Among other practical reasons, it can result in strenghtening, rather than weakening, the patent’s enforceability for all claims allowed over the cited art, even if the examiner simply ignores the cited art. Furthermore, a reexamination [or an interference, where available] is a far more effective way to use good patent or publication prior art against patent claims of another.

    *Before U.S. applications were published at 18 months, many of them could be identified from the publication of their foreign equivalent application’s priority document, and thus a protest filed against the pending U.S. parent application.

  170. 10

    bja Why, they’ve done nothing wrong.

    The case hadn’t issued, so they still could have cited the reference.

    Really, for someone who claims to know the rules so well…

    So your understanding of the rules is that I can sit on a reference that I’ve known about for years and wait until the case is allowed, and THEN submit the reference in an IDS? My understanding is that I would need to restart prosecution to get that reference in.

    Of course, I suppose I could always just phone the examiner from a borrowed cell phone, claim that I was somebody else, and tell the examiner about the art …

  171. 9

    Why, they’ve done nothing wrong.

    The case hadn’t issued, so they still could have cited the reference.

    Really, for someone who claims to know the rules so well…

  172. 8

    “Why is that the logical conclusion? If I really want an examiner to seriously consider a reference in a competitor’s case, the last thing I’m going to do is dump a huge pile of references on him.”

    Sounds like your motivations are sincere. But it’s the logical conclusion for anyone that wants examiners’ time to be eaten away considering unreasonable numbers of references. Someone interested in doing this would be, for example, a large anti-patent corporation that desires weakened patent rights, and likely more invalid patents.

  173. 7

    The Examiner had a verbal conversation with the patent attorney and concluded that the prior art rendered the pending claims invalid. The patent applicant had previously been made aware of the prior art but had failed to inform the Examiner of its existence.

    Seems like the attorney for these Radio Systems folks should also use be sanctioned by the OED.

  174. 6

    Bullet (3) seems like a bad idea the way it is stated because it is easy to extend to the logical conclusion of mass data dumping in competitors’ files.

    Why is that the logical conclusion? If I really want an examiner to seriously consider a reference in a competitor’s case, the last thing I’m going to do is dump a huge pile of references on him. Rather, I’m going to send him a carefully selected reference or two, just as I would in a re-examination request.

  175. 5

    Those look like pretty reasonable ideas to me. I suggest one change – on your last point, I suggest that the submission should be stuck in the file but ignored by the examiner. If someone later wants to address that material in a re-examination request or in litigation, then fine.

  176. 4

    “The USPTO would likely be well within its powers to expand the document submission program in a way that (1) allows for submission of explanations; (2) extends the timing of submissions; and (3) reduces or eliminates the fee associated with the submission.”

    Bullet (3) seems like a bad idea the way it is stated because it is easy to extend to the logical conclusion of mass data dumping in competitors’ files.

    With certain limitations, it may be a good idea. For example, the first 10 references submitted by the third party are free, while references over 10 would require a heavy fee. Limitations against shell companies or anonymous submissions would also be helpful.

  177. 3

    DC The USPTO would likely be well within its powers to expand the document submission program in a way that (1) allows for submission of explanations; (2) extends the timing of submissions; and (3) reduces or eliminates the fee associated with the submission.

    I don’t have a problem with the submission of explanations or some extension of the timing of submissions but I think such submissions should not be permitted by third parties after the Notice of Allowance. There is simply too much opportunity for game-playing in that case.

    The current IDS rules are such that applicants who become aware of material art prior to the issuance of the patent have a strong incentive to disclose such art. Along with other procedures (e.g., re-exam), that should suffice to satisfy the needs of third parties who want to see additional art introduced after a Notice of Allowance.

    Also, I think it should be mandatory that any such submissions are accompanied by a statement identifying the individual who recognized the materiality of the reference to the subject application and is therefore causing the reference to be submitted, and a statement that the materiality of the reference to the subject application was identified within the previous three months. Without that statement, the contents of the submission should simply be chucked into the trash.

  178. 2

    some patent applicants complained that competitors and others would raise the cost of patenting by filing needless oppositions

    LOL.

  179. 1

    “This approach follows a recent examiner comment on Patently-O that “what has been seen cannot then be unseen.” ”

    Whoa whoa whoa, ALLEGED examiner.

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