Evaluating Supplemental Examination

By Jason Rantanen
As seen in the recent Powell v. Home Depot case that Professor Crouch wrote about last week, the net effect of a weakened inequitable conduct doctrine post-Therasense is an increase in the ability of applicants to engage in troubling behavior during patent prosecution.  My colleague Lee Petherbridge and I expressed this concern shortly after Therasense issued, particularly warning about its consequences for patent prosecutors who are arguably worse-off post-Therasense, caught between clients who may be more interested in playing fast and loose with the rules and their own ethical and legal responsibilities.
Therasense was not the only significant development in the area of inequitable conduct this year, however.  The creation of a mechanism for supplemental examination in the Leahy-Smith America Invents Act further alters the landscape of inequitable conduct, and not necessarily in a positive way.  In a short essay recently published in Michigan Law Review First Impressions, Professor Petherbridge and I examine the supplemental examination mechanism created by the AIA and conclude that it may jeopardize American innovation, job creation, and economic competitiveness.
A copy of the piece is available via SSRN.

33 thoughts on “Evaluating Supplemental Examination

  1. 32

    If a student does not write a supplemental examination after receiving permission to do so, it is not necessary to withdraw the application formally. No mention of the application will be made on the student’s academic record. The application fee will not, however, be refunded nor will the student be permitted to apply again for a supplemental examination in the same course at a later date.

  2. 30

    Hmmm… I perceive.

    A new machine is useful unless it isn’t.

    A different machine is new, unless it is old.

    A different machine is useful, unless it is Maple Syrup.

  3. 27

    It has been awhile, but Ned and I are in agreement on something once again.

    The entire amount of budget, manpower, and ink wasted on patent debates would be much better served if we loosed the system open and provided patents upon registration. I think the first step has now been accomplished with a switch to First To File.

    Take 1/20 of the current USPTO budget, and proably far less and devote it fully to developing a easy information access system cataloguing and cross-cataloguing all registered patents and let those so very few that end up being contested be fought in court between the parties that actually have stakes in the matter. Then take 1/10 of the remaining and beef up the proper judicial pay and training to handle any small increase in litigation.

    Mr. President, if you really want to unleash innovation and put money into the right area, go to a full registration only system.

    However, this move will mostly eliminate the graft and innovation tax that Congress has come to depend on.

    Patents should be easy to get. We should want patents easy to get. For every patent that goes out the door, information comes in. The Patent Office should be spreading that information rather than taking its time to squelch it by becoming entrained in the negative mindset of denying patents. Take the “NO” out of innovation.

    Yes I do realize that litigation may increase, but the payoff and wealth transfer will more than offset that litigation level – even a TEN-fold increase in litigation, even a TWENTY-fold increase in litigation can be easily met with less than half the funding structure in place to run the current Patent Office.

    Yes I do realize that the AIA calls for several new Offices to be opened – but just what those Offices do can still be met with a registration only system – and still far more cheaply than what we have today.

  4. 26

    simple, the 1% that are litigated correspond to a very high degree to the 1% that are asserted.

    Now, with respect to the unasserted, the 99%:

    I have no idea why we spend any money, time or effort at all even examining these. Put them on the shelf or pile or warehouse, as the case may be, to gather dust and look pretty. If, and when the time comes to take them off the wall and out of their frames to assert them, let’s examine them then. But not before.

  5. 24

    The allegations by academics that many patent attorneys are going to suddenly dramatically change their professional conduct and ethical standards, based on a Fed. Cir. decision and the AIA, to widely engage in deceptive tactics that would, among other things, prejudice judges and juries against their clients in litigation, is unsupported by any evidence, and frankly insulting.

    Here’s a tissue, Paul.

  6. 23

    risk their registrations

    How many times has an applicant lost his/her registration in, say, the past ten years bb?

    As everyone knows, the risk is minimal to non-existent.

  7. 22

    The idea that Therasense somehow makes it easier to get away with things is nonsense.

    LOL. So what was the case about, sockie?

  8. 20

    Let me see if I can explain this in terms we all understand… Maple Syrup needs French Toast. So Maple Syrup although second in command loses First ie. Pancake… So there is nothing more to say. Maple Syrup is the Catalyst. no matter who makes the French Toast!

  9. 17

    Also, practicioners are really going to risk their registrations for ONE application for ONE client?

    Yeah, right.

  10. 16

    reduction of inequitable conduct and provisions for corrections are bad?

    … Spoken like people not making patent malpractice insurance payments.

  11. 15

    One could more appropriately question the absence of

    Or even question when academics put forth findings but keep the data off-limits and say, merely, “trust us with these results.”

    But if you do that, you might have your posts removed from blog message boards…

  12. 14

    The allegations by academics that many patent attorneys are going to suddenly dramatically change their professional conduct and ethical standards, based on a Fed. Cir. decision and the AIA, to widely engage in deceptive tactics that would, among other things, prejudice judges and juries against their clients in litigation, is unsupported by any evidence, and frankly insulting.
    One could more appropriately question the absence of an effective pre-publication peer review system by actual expert practitioners for academic legal publications, unlike science or even economics.

  13. 13

    I suppose academics need to artificially generate controversies so that papers can be written and learned conferences attended.

    Not just academics, and not just for papers and conferences – there is almost always ulterior motives to be obtained. Look into the history of the perjorative Troll.

  14. 12

    simple,

    Yes – but that was covered in the article and the vocal minority do not feel the need to actually read the articles prior to commenting,

  15. 11

    The idea that Therasense somehow makes it easier to get away with things is nonsense. The CAFC finally made a bright line rule putting an end to decades of inequitable conduct charge abuse – and in search of a story people are bringing up red herrings. But for, simple.

    I suppose academics need to artificially generate controversies so that papers can be written and learned conferences attended.

  16. 10

    Why would anyone think that “6’s mother” is ping/anon/shilling?

    Maybe the self-congratulatory first paragraph with the back-handed compliment to Jason, and the reference to prior discussions with 6. It’s very easy to confuse one troll with another, sockie. You understand that as well as any of them, I’m sure.

  17. 9

    There is no really good reason to withhold highly material references. None whatsoever.

    Isn’t the fact that actual patent litigation rates (patents in suit divided by existing patents) are far less than 1% provide a good reason?

  18. 7

    Assume art not before the examiner is asserted to invalidate a patent in court. The defendant is entitled to an instruction that the reference has not been considered by an examiner. I assume the jury will give the reference a lot of scrutiny and, in case of doubt, not simply rely on the expertise of the PTO in having looked at it already.

    If the claims are ultimately held invalid, what difference does it make that the applicant intentionally withheld the reference? None. But it does make a difference to the other claims if he did, as they now may be held unenforceable.

    The benefit of having an examiner review the most pertinent reference(s) is that such a review entitles the patent owner a favorable jury instruction and as well immunizes him or her from reexamination over that or similar references. There is no really good reason to withhold highly material references. None whatsoever.

    I do not fully understand all the angst exhibited by certain academics.

  19. 6

    sockie: Has there been a plague of inequitable conduct charges in litigation? Yes.

    LOL. It’s nothing compared to the plague of obviousness, lack of subject matter, and enablement charges, though! Judge Rader is getting upset by all the deciding he has to do.

    the courts were dealing with that, for example by requiring inequitable conduct to be plead with greater specificity

    Actually, the CAFC went quite a bit farther than that, which was certainly reflected in the “comments on this blog.”

    The AIA just about eviscerates inequitable conduct,

    For years the sockpuppets/blogtrolls here have been maintaining (1) that the defense is not needed because nobody ever engages in it and (2) it’s the PTO’s job to examine patents, not the applicant’s.

    The AIA just about eviscerates inequitable conduct, effectively throwing out the baby with the bathwater.

    It’s the dream of patent trolls everywhere, isn’t it? Now all Congress/courts have to do is eviscerate obviousness and the eligible subject matter requirement and finally America’s small businesses will be able to create jobs again!!!!!

  20. 5

    ping/anon/shilling:

    Therasense set forth a but-for test of materiality — related to patentability, a province of the PTO. The best place to understand what the PTO would think of a reference is by asking it directly. I am not sure the architects of the AIA were intending to provide this procedure as an adjunct to Therasense, e.g., to take an accusation of IC based on the withholding of a reference back to the PTO for its opinion, but it does make sense in that context.

    As most people may appreciate, knowing of a reference and appreciating its materiality are two different things. If we are to stop the flood of irrelevant references to the PTO, we need practitioners to be able to not file references of which they are aware without undue risk that that act will forever doom the patent. This new procedure takes us a long step in that direction.

    Regarding MS and removing the varioius “intent” sections from the statute, the movers and shakers wanted to remove these sections long before MS became active. MS may have approved or disapproved. But I think their opinion was not the reason for the removal of the “intent” sections. This was on the agenda, I believe, since at least 1990, and perhaps before that.

  21. 4

    Jason, not a bad article for a professor – it’s a reasonable summary of the problem, and it didn’t put me to sleep, although people who work in the trenches caught this one right away, even if the comments on this blog don’t reflect that.

    6, you are a complete dunderhead (but your friends on this blog already know that, don’t they?), as you completely missed Jason’s point. Those of us who said the AIA was a sellout to Micro$oft said so not on the basis of the change to FTF, but on the basis of the addition of supplemental examination and the removal of “deceptive intent” from everywhere in the statute where it had previously appeared. The AIA gives license to liars to abuse the system, almost without penalty (although some exceptions still exist, as mentioned in Jason’s article, but their applicability will be limited). Want to hide prior art? No problem, just file for supplemental examination later, b/c there is no more inequitable conduct.

    6, I’m so tired of explaining things to you, but I’ll do it once more: the issue isn’t whether or not additional examination is a good thing. The issue is that requesting supplemental examination not only remedies innocent or good faith oversight in failing to disclose prior art, but, as Jason explains in the article you obviously didn’t read, supplemental examination is going to provide a way to whitewash an applicant’s wrongdoing in hiding art from the office in the first place. Has there been a plague of inequitable conduct charges in litigation? Yes. But the courts were dealing with that, for example by requiring inequitable conduct to be plead with greater specificity. The AIA just about eviscerates inequitable conduct, effectively throwing out the baby with the bathwater.

    Please stop telling people you’re my son.

  22. 3

    There’s a critical difference, 6, between “a little more examination” (your words) and “the supplemental examination mechanism” (Jason’s words).

    I can’t speak for Jason but I highly doubt he believes that “a little more examination” per se would have the ill effects referred to in his comment. His concern is that the mechanism implemented by the AIA for allowing “a little more examination” may be exploited by applicants to achieve results (e.g., an increase in low-quality patents) that are not generally considered desirable (of course, patent trolls may beg to differ …).

  23. 2

    What LAW is this to which you refer?

    “Besides the kinds of information described above, the law also demands that patent applicants bear the reasonable costs of providing information that relates to issues of novelty and obviousness. The underlying philosophy is the same: patent applicants are more knowledgeable about their inventions, and how those inventions situate in the body of existing knowledge, than a patent examiner or subsequent reader could ever hope to be. Moreover, there is some information pertinent to the patentability of the claims an applicant seeks that may be uniquely within the control of the patent applicant. The cost of contributing such information to the patent creation process might be very low or even trivial for a patent applicant, but it may in practical terms be infinitely expensive for the patent office to provide during the ex parte process of patent prosecution.”

  24. 1

    Oh yes, a little more examination will jeopardize American Innovation, job creation, and economic competitiveness.

    Here’s a hint, when the entire conclusion of your paper appears absurd from a mere sarcastic rewording thereof there is a problem with your conclusion.

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