USPTO Policy is that “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.” 37 C.F.R. 1.56.
Can someone point me to an example of the PTO taking such action?
329 F. 3d 1358 – Dayco Products Inc v. Total Containment Inc
If they learn about an intentional misconduct after the patent has been granted can they cancel it?
Query to all: if you had to cite one 21st century case, which one would you choose? I have been faced with the situation where a client wants to withhold a reference and I say it’s relevant and we must list it. I have won the argument by saying that I could lose my registration to practice before the USPTO if I don’t list the ref in an IDS. In fact, if I get that much push back from a client, I would fire the client rather than risk my registration, even though I realize that the chance of me being disciplined is extremely small. I’d like to be able to cite a case to back me up.
If you search for 1.56 at
link to e-foia.uspto.gov
you will find a 2009 final decision wherein someone was “publicly reprimanded” for failure to disclose related litigation.
Searches for “duty to disclose” generate more hits.
double check me but:
822 F.2d 1053.
Decades ago when I was an examiner, the USPTO had an outfit that was referred to as the “Fraud Shop” where these kinds of things were reviewed. I didn’t find much about it with a quick Google search, but you might want to look there.
I was also an Examiner, and we did have the “Fraud Shop” as it was called, run by Manny Antonakas. I took a case there that had been suspected of “inequitable conduct” for the applicant failing to cite one’s own prior art, and it was investigated by the OED. The case was subsequently dropped after I assume was a mea culpa and numerous affidavits. Years later, there was an announcement that the USPTO did not have the resources to police Rule 56 cases and so ceased to do so as a policy set by management.
One product of the Fraud Shop was In re Stockebrand, 197 USPQ 857 (Comr. 1978), where a reissue application was stricken for fraud under Rule 56.
In Cebalo v. Driscoll v. Hoegerle, 5 USPQ2d 1497 (Comr. 1985), a pending application and two abandoned applications were stricken by the PTO under Rule 56 for violating the duty of disclosure. Also, in Jessel v. Newland, 195 USPQ 678 (Comr. 1977), a plant application was stricken for violating Rule 56, but the decision was reversed on reconsideration (196 USPQ 504 (1977)).
As an examiner, the only “misconduct” I am interested in is when an attorney, who is charged with the knowledge of his client, advances an argument I know the client doesn’t know to be true – such as arguing that a feature isn’t taught when their client MAKES the feature and did more than a year prior to filing.
Just in case, yesterday the Feds. decided HELFERICH PATENT LICENSING v. THE NEW YORK TIMES, link to cafc.uscourts.gov, a case where the court overturned a district court holding of exhaustion relying heavily on Morgan Envelope, a case that had relied on the fact that the toilet paper used in the dispensers was not covered by a separate patent.
In the present case, a single disclosure resulted in numerous patents that could roughly be divided between handsets and content providers. The patent holder licensed all handset providers, and the district court held this exhausted the “patent” so that the content providers, e.g., The New Your Times, did not infringe. The Feds overturned because the content patents were not subject to double patenting rejections, and in at least some cases, were the result of restriction requirements.
Given who the parties are, expect a petition to the Supreme Court.
Since the case is being returned to the D.C. would it not be a lot more efficient to decide there what appears to be some serious 101 and 103* issues for the subject claims, rather than to attempt to get yet another Sup. Ct. decision on exhaustion so recently after the 2008 decision in Quanta Computer, Inc. v. LG Electronics?
*I assume these major-scope suits were filed more than a year before IPRs became available?
Paul, 101 is a statutory ground for neither IPRs nor CBMs. Versata raised this issue in its CBM appeal, but apparently did not pursue it for some reason even though it was literally their simplest and best argument.
On 103, I would think IPRs are barred under 315(b). CBMs — is this really a financial case?
The Times may have no choice but to rely on the exhaustion issue.
I don’t understand — did the issues of 103 get litigated? The case was up on a grant of SJ of non-infringement based on exhaustion. Were the other issues waived by the defendants? That seems odd.
No, Ned misread what I had said. No invalidity issues are waived by the S.J. on infringement exhaustion [now reversed], the case is now remanded back to the D.C., where 1o1 and 103 can still be decided by the D.C.
As a historical note, good arguments have been expressed for inequitable conduct not being validly decisive for decisions under 35 USC 135, and not being decided by an administrative agency like the PTO. [Other than disciplinary proceedings against perps in the Office of Enrollment and Discipline where discovery, administrative judges, and other protections are provided]. IC is neither an issue of “priority” or “patentabilty.” It is a judicial, and judicially created, equitable defense to patent enforcement.
The PTO has flip-flopped twice in past years on whether or not “inequitable conduct” per se can even be raised in an interference inter partes trial. Of course false declarations can be impeached, and lead to adverse judgments, without calling it IC. Even raising an IC issue in the PTO is dangerous, as it is disfavored and can lead to sanctions for false IC assertions. One of the very few interferences that ever did hold there was inequitable conduct (on an allegedly falso interference paper mailing date issue) was reversed by the CAFC.
Also of historical precedent is the PTO’s failed experiment with, and then elimination of, its former “Dan Amendments””special examination group”, a.k.a. [sub silento] “the fraud & bunko squad”or “the Keystone cops”, for reissue oath investigations. That PTO group wasted several years asking reissue applicants half-baked interrogatories.
Dennis:
You might try searching at the Office of Enrollment and Discipline Reading Ro0m:
link to e-foia.uspto.gov
Re Duty to Disclose:
It seems to me that the patent office spends more time complaining that too many documents are disclosed than it does sanctioning people for failure to disclose…. while it maintains a rule that the examiner be notified and provided a copy of any document the applicants are aware of that might be combined with some unknown document against a claim in the application.
Les, have you become Jon Stewart?
I’m not following you Ned. I don’t see the funny.
But if you think I have I shot at replacing him, I’ll whip up a resume’ right away.
Maybe you left out that sarcasm sign Les…
😉
the system is basically an honor system, and an honor system where it is extremely difficult to discover a failure to disclose.
there is a two part solution for failures to disclose regarding patent applications – where an attorney has previously worked a case which can be reasonably determined as undisclosed and pertinent in another case…
keep track of every reg number that submits documents with regard to an application in the office, and add that information as a searchable field in the examiner’s search tools for that application (just like date/inventor/title/priority/etc). when this is done for all applications, you now have a robust searchable tool to dissuade certain actors from misbehavior.
of course this has a zero percent chance of being implemented as long as the agency is captured. but it certainly would cut down on one very particular type of failure to disclose issue.
Les:
On its face, “duty of disclosure was violated through bad faith or intentional misconduct” should include burying the PTO in irrelevant or marginally irrelevant prior art.
So instead of merely complaining it arguably could start “refusing” to grant.
(not sure about sanctioning.. the relevant legislation is about not granting applications… not about punishment of agents of record)
Absolutely not Anon2.
The unfortunate reality is that leaving out the marginally irrelevant items just carries too much risk, whereas the Office itself (and the “patent profanity” judge consequences) makes the dump-truck approach simply the only way to proceed.
Mind you, a dump truck approach is NOT synonymous with hiding something, so long as you take an objective approach of listing the material – like alphabetical or by date. Other than that, everything is fair game and the applicant’s representative that does not play that game is doing a disservice to the client.
Sorry, that’s just a little legal reality.
“an objective approach of listing the material – like alphabetical or by date”
right… so when one can bury a ref by using alphabetical based on the title, one chooses that. when one can bury a ref by choosing date, one chooses that. when one can bury a ref by inventors last name one chooses that. on and on and on…
this is even close to a new idea. people have been talking about that for YEARS. “objective”? thats a joke. do you really think that anyone is fooled by this sort of “objective” play?
i guess thats the thin ethical requirement legal reality we live in, eh anon?
“this is even close to a new idea”
should be “this isn’t even close to a new idea”
You may not like the fact of the thinness, not that I point it out, but as they say, Eppur si muove
unlike you, i understand that it is not a thin ethical requirement but the failure to enforce a rather robust requirement that makes this broken system move.
there is no “objective” requirement (and certainly not the brand of facade “objectivity” that you have endorsed). it is a duty of full disclosure and good faith.
those straight up scams as i have listed them do not fulfill that requirement.
as long as the PTO generally, and OED specifically, remain asleep at the wheel we will continue to live in an era not of ethical practice but one best characterized as “catch me if you can, and *wink* *wink* we both know you arent trying.”
Once again, you are merely flat out wrong.
Sorry that you don’t like it, but that is indeed it.
“Marginally irrelevant” was a bad choice of words. Caution is incredibly important especially since the rights of the client are so important which is why so many references are often provided.
That said, the “game” that is played depends upon the interpretation of “bad faith” and “intentional misconduct”. If knowingly submitting irrelevant art with a handful of relevant art were grounds for refusing to grant… then not being cautious of that risk to the client’s rights would also be a disservice.
I don’t think it was a bad choice of words, as there is a difference between supplying known irrelevant items and the mere possibility of even remote relevant items.
The point remains, better – much much much better – safe than sorry.
Back them dump trucks right on up.
Back them dump trucks right on up.
Remember: this guy pretends to care about improving patent examination.
No pretending at all Malcolm – I do care.
But I will not let the Office rules and machinations and “patent profanity” of legal reality penalize my clients.
I’d be more than happy to have the game changed – but until that happens it is simply irresponsible to expose my clients to that risk.
leaving out the marginally irrelevant items just carries too much risk,
There’s no risk at all if you have a half a brain and you make a modest effort to use it.
Nice little bubble you live in there.
Then again, you ig nored any signs of charges of inequitable conduct being an issue too.
You keep on making comments that indicate that you don’t have any real clients with patents to be enforced…
Hi Dennis: It is unlikely you will find any recent instances “since as of October 11, 1988, the Patent Office does not investigate allegations of inequitable conduct in connection with original, reexamination or reissue applications. 1095 O.G. 16. Information regarding such allegations that is provided to the Office will be placed in the file history without comment. 37 C.F.R. § 1.555(c) (1992) (“. . . no examination will be made by the Office in the reexamination proceeding as to compliance with this section [setting forth the duty to disclose]. If questions of compliance with this section are discovered during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).”) MPEP § 2010 (6th Ed. rev, 2, July 1996) (“[T]he Office does not investigate and reject original or reissue applications under 37 C.F.R. § 1.56. Likewise, the Office will not comment upon the duty of disclosure issues which are brought to the attention of the Office in original or reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications.”) 37 C.F.R. § 1.291(b) (“Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues.”)”
More info is in the “Annotated Patent Digest Section 27:27 Patent Office Will Not Investigate Non-Compliance,” including two pre1988 examples
See e.g., In re Harita, 847 F.2d 801, 6 USPQ2d 1930 (Fed. Cir. 1988) (Patent Office sole basis for rejection of claims in reissue application was alleged violation of duty of disclosure); In re Jerabek, 789 F.2d 886, 229 USPQ 530 (Fed. Cir. 1986) (inequitable conduct used as basis for rejecting claims in reissue proceeding).
I agree that it will be the rare case because the Office no longer investigates.
Two key cases: Norton v. Curtiss, 433 F. 2d 779 (CCPA 1970), and Digital Equipment Corp. v. Diamond, 653 F.2d 701 (1st Cir. 1981). Might find others based on cases citing those two.
It’s probably prompted by yesterday’s appellate result in Kim Laube v Wahl Clipper, also an inequitable conduct/attorney fee case. But both Laube v. Wahl and Intellect v. HTC rely on the other part of rule barring court enforcement of an issued patent.
I would be very surprised if the PTO had either the time or resources to actively inquire into fraud or bad faith during the pendency of a patent application (outside the standard examination process). Right after the language Dennis cited, the CFR says “The Office encourages applicants to carefully examine:…”
In short, I doubt there’s an example of a fraud/attempted fraud rejection prior to issuance, but it’d be interesting to see one if such exists.
We (EFF) wrote about an example where the applicant was less than forthcoming in his application. I won’t opine on whether this meets the level of 37 CFR 1.56, and as far as I know no investigation ever happened.
The patent was on filming a yoga class. There were clear examples of the patentee practicing the “invention” in public long before the priority date. After we wrote about it, the patentee disclaimed the patent.
Here’s our write up.
Any chance this question is related to this news:
link to brannlaw.com
the judge found that in February 2007 the inventor alerted the patents’ prosecutor to the existence of the false declarations, and suggested that litigation counsel be consulted. Yet the Niro firm went on to file lawsuits, including the lawsuit against HTC, as late as 2009. In light of the evidence presented, the judge concluded that the inventor, Intellect Wireless, the Niro firm, and attorneys Raymond Niro, Paul Vickrey, Paul Gibbons, and David Mahalek were jointly and severally liable for an amount of attorneys’ fees between $2.3 million (the Niro firm’s calculation) and $4.7 million (the amount sought by HTC). The precise amount remains to be determined by the court.
The judge’s order here: link to scribd.com
Here’s a better sanction: in addition to the fines, take the attorneys out of the game for five or six years. They can afford it. Aspen probably has at least one homeless shelter. Give them a chance to reduce the sanctions by volunteering there for a while and seeing what the lives of the real “little guys” are actually like.
I believe Prof. Crouch is referring to a sanction by the PTO, not a judge in litigation.
sockpuppet: I believe Prof. Crouch is referring to a sanction by the PTO, not a judge in litigation.
I believe it’s likely that there are continuations or continuations-in-part of the asserted patents pending at the PTO that might be affected by the judge’s finding that the inventor filed a fraudulent declaration.
Fyi, this is the same Ray Niro:
link to patentlyo.com
Also the same Ray Niro that shows up regularly at IP Whiningpuppy to impart his “wisdom” to the Big Q who diligently laps up every stale crumb and then whines that America is turning into a third world country because “not enough patents that are super easy to enforce”. What is that these patent luvvers are always telling everybody? “Follow the money.”
We’re following it, alright. Everybody is. Reap the whirlwind.
Y
A
W
N
Because money is evi1, or something.
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