Information Disclosure: Less is More for PTO?

The PTO hopes to change the disclosure requirement of Rule 56. The PTO does not want more references – it already has millions stored in its electronic databases. Rather, the PTO wants practitioners to perform a preliminary search and distinctly point out the closest features of the prior art. In tension with the PTO's desires are the multiple cases finding patents unenforceable due to applicants failure to submit relevant prior art to the PTO. Based on those cases and on the increased potential value of patent rights, patent applicants have dramatically increased the number of references cited in each application. (See first chart on right showing rise of references over time). In my sample of 500,000+ patents issued 1971-2008, the average number of references cited on the face of patents rose five-fold – from fewer than five in 1971 to more than twenty-five in 2008. On the other hand, it seems that the increase of prior art is largely due to patent applicant activity. In particular, on their own, examiners only discover [cite] around six or seven references – even when the applicant submits no prior art at all.

This result is shown in the second chart which compares the number of references cited in issued patents from 2006-2007 where the applicant filed an information disclosure statement (IDS) versus those where no IDS was filed.

I don't have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line).

Comments

[curious]

"Rather, the PTO wants practitioners to perform a preliminary search and distinctly point out the closest features of the prior art."

Sounds like the PTO wants to impose two new requirements on inventors -- a search and a search analysis.

And that sounds a lot like what we pay the PTO to do and what they are expert at doing.

[query]

What % of the documents cited are non-English?

Can the PTO get the cited publications into their system so that they are word searchable by the examiners and so that they are readily available to other examiners? (Maybe there are copyright problems with doing that?)

[patent fan]

When you say that "the PTO wants pratitioners to perform a preliminary search and distinctly point out the closest features of the prior art" are you referring to the proposed rules? What is their status? I remember there was a 20 or 25 reference threshold limit that caused a change in disclosure requirements when the threshold was exceeded.

See also "The U.S. Patent and Trademark Office's Proposed Information Disclosure Statement Rules: Too Novel and Nonobvious" available for free on http://www.indianalawjournal.org.

[curious]

"the increase of prior art" is due to Applicants trying to comply with Federal Circuit law.

[just wondering]

Dennis, I wonder how the number of pieces of prior art which the examiners cite today compares with the number which they cited in years past.

[Malcolm Mooney]

""the increase of prior art" is due to Applicants trying to comply with Federal Circuit law."

Not really. It's more like applicants not having time so they are forced to pretend to "comply".

The submisssion of references is mostly an unthinking act. You submit most non-book references cited in the post-filing publication that the applicant is aware of, plus every patent that has already been cited in any remotely related application that the applicant has previously filed, plus all the foreign searches and any litigation docs.

Does any prosecutor spend the time reading all that stuff? Only if asked to by the client or if it is actually relied on by an Examiner in an office action.

A great deal of inequitable conduct does not arise from applicant's *hiding* prior art. It arises from applicants telling ridiculous stories about what is disclosed by (and what is not disclosed by) the cited prior art. In that regard, it really is the Examiner's job to be able to separate the baloney-shovellers from the forthright.

Some of the Examiners are very good at this task. Quite a few of them are worthless. Who's to blame for the vast discrepencies in perceived Examiner competency at the PTO?

[anonymous]

"It's more like applicants not having time so they are forced to pretend to "comply"."

true, true, true

it's much more cost effective to just cite everything without thought and, until the USPTO passes its new IDS rules that make it more cost effective to sift, the flood of references will continue

[dcpatentassociate]

"examiners only discover around six or seven references"

you means to say examiners only cited around six or seven references.

[XamineR]

"examiners only discover around six or seven references"

LOL, you mean 40+ right? D, you my good man are hilarious.

[AllSeeingEye]

Much more germane, than the last IDS related article, which was perhaps a prelude to this one.

Mooney scribbles:

"The submisssion of references is mostly an unthinking act. You submit most non-book references cited in the post-filing publication that the applicant is aware of, plus every patent that has already been cited in any remotely related application that the applicant has previously filed, plus all the foreign searches and any litigation docs.

Does any prosecutor spend the time reading all that stuff? Only if asked to by the client or if it is actually relied on by an Examiner in an office action.

A great deal of inequitable conduct does not arise from applicant's *hiding* prior art. It arises from applicants telling ridiculous stories about what is disclosed by (and what is not disclosed by) the cited prior art. In that regard, it really is the Examiner's job to be able to separate the baloney-shovellers from the forthright.

Some of the Examiners are very good at this task. Quite a few of them are worthless. Who's to blame for the vast discrepencies in perceived Examiner competency at the PTO?"

What a stilted view of patent practice. "A mostly unthinking act"? Maybe for you, but not for anyone who knows what they are doing. If you are a practitioner, which I highly doubt, you must have had some terrible training. And what's this about submitting "litigation docs?"

The problem is, when the applicants and their attorneys get into the business of Examination, then there becomes a stronger legal argument for accountability on the part of the attorney for failure to cite a reference that may have unwittingly come into the attorney's / applicant's remote orbit. That duty already exists in muted form vis a vis Rule 56, but if the Rule is strengthened, then it will create undue burden on the attorney / applicant when a reference that, for example, the PTO finds is relevant, was not cited by applicant when, for example, it was listed by the Examiner in a questionably related case.

[Hoping for some sanity in the PTO]

As a biotech patent attorney, I have a real problem with trying to decide whether to NOT cite in an IDS any reference we have cited in the patent application. In the background, we may cite to a 1980 article about making proteins. If we do NOT cite this in an IDS, are we going to be hammered during litigation for trying to hide the ball? There is a huge downside for not citing a reference, and no upside for not citing a reference. The Fed. Cir. has made it this way with their decisions.

Of course, a competent examiner will find the relevant art even without an IDS. Australia stopped asking for any prior art...

If the IDS rules change and applicants are required to "distinctly point out the closest features of the prior art," it will be the end of biotechnology as we know it today. The cost will dramatically increase for prosecution, likely several fold. No matter how much time is spend trying to comply with the rules, what are the chances of finding an expert 10 years later who will disagree with your characterization? At $500+ per hour, you will have no lack of experts willing to testify that you mislead the patent office by how you characterized the prior art.

Without patent protection, biotech start-ups do not get any funding. Without patent protection, new drugs do not go through clinical trials. Do we want any new medicines, or are we happy that we've already solved all current and future medical problems?

[anon]

new IDS rules = end of biotechnology

The sky is falling. LOL

Patent rules may change patents, but it won't be the end of biotechnology.

Seriously, the US should dump rule 56. It is not required by statute and no other country has this silly requirement. The USPTO is headed in the wrong direction, but the world won't end.

Of course, CERN's Large Hadron Collider may end the world. But that is a different story.

[MaxDrei]

Tell me, Sanity, does your employer see any issue, with over-broad claims, that should never have issued? It is evident from your post that you see such claims as yours more or less as of right but, if you want them for yourself, you have to let the competitors have them too. Is a system of registration only, unexamined rights, the way to run a patent system, in the best interests of its stakeholders ?

[T]

"The PTO does not want more references – it already has millions stored in its electronic databases."

"I don't have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line)."

Dennis -

I don't understand the second quote in light of the first.
If the PTO doesn't want more references, isn't the solution for the PTO not to ask for, nay not to require them? What form of insanity is it for the PTO to require that any reference that might conceivably be combined by someone with any other reference in an assertion of "obviousness" be submitted, while at the same time complaining that too many references are being submitted?
Isn't the whole examination processes predicated on the assumption that the examiner will find the relevant art? If that assumption isn't valid, doesn't that mean that the whole patent system is a farce?
Accordingly, just drop the requirement that the applicant submit art, except art they are aware of that would clearly invalidate the pending claims.

T

[JNP]

I am surprised there has been no reference to reexams. Yes, I agree with the veteran posts about the disconnect between the Federal Circuit and the desires of the PTO. Although I am too lazy to dig through my files at the moment, most of us are well aware of the relevant case law that has arose in the past from the CAFC regarding "quantity over quality" when it comes to inequitable conduct, presumption of obviousness, etc. In short, the CAFC has more then once has the opportunity to consider the question of whether a patentee "buried" a material reference in a box of prior art and upon consideration, not found such practice inequitable, but rather preferred. I have worked at two large corporations that considered this quandary some years ago with respect to establishing internal practice and after rather in-depth legal consideration, the CAFC decisions on this matter always led to the mass reference conclusion.

That said, the Patent Office ignores it's own actions and precedent. I am sure there is more than one practioner on this site that has been the "victim" of an unreasonable reexam request. As of now, the PTO will grant just about any reexam petition that finds some obscure, un-cited reference combined with a virtual "cut and paste" of the first Office Action rejection of the original prosecution. Thereafter begins about 2-3 years of uncertainty and panic as a competitor is allowed to enjoyable watch as the patentee wiggles in panic stricken anxiety hoping that the PTO does not decides that it's own prior conclusions may have been inappropriate. Regardless of the patentability of such matters, we are all well versed in the "consistency" of PTO thought and I doubt anyone on this site would enjoy such an experience. As long as the PTO is willing to grant just about every reexam petition that comes in the mail, I am citing every reference I can find and doing a comprehensive search to make sure the pile is big. Further, as long as the CAFC is punishing, rather then rewarding patentees who submit low volumes of prior art, I am following the CAFC lead. The PTO has it's head in the sand with this IDS stuff. If they have a problem with IDS volume, they should curtail their reexam culture and call the CAFC judicial staff, not punish practioners with poorly considered, knee-jerk solutions. There idea of a solution is something I would expect from Congress, not a patent office.

[Leopold Bloom]

"What form of insanity is it for the PTO to require that any reference that might conceivably be combined by someone with any other reference in an assertion of "obviousness" be submitted ..."

I missed that requirement - where do I find that?

[dudette]

I don't have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line).

The answer is to delete Rule 56 and get rid of inequitable conduct.

[T]

LB

37 CFR 1.56

§ 1.56 Duty to disclose information material to patentability. - Patent Rules

§ 1.56 Duty to disclose information material to patentability.

(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. 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. The Office encourages applicants to carefully examine:

(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and

(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.

(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the applicant takes in:

(i) Opposing an argument of unpatentability relied on by the Office, or

(ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:

(1) Each inventor named in the application;

(2) Each attorney or agent who prepares or prosecutes the application; and

(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.

(e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.

Specifically:

The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98.

What does "all information" "material to patentability" mean if not every possible 103 reference?

[edstirling]

I think it's that examiners only have time to read 6 or 7 references. In a typical case, I usually tag 50 to 100 references based on pictures in a preliminary search, then after reading the claims again I pick out the ones with teh most compelling drawings to print out, and I end up reading maybe 6 before I realize that I've already spent my 16.1 hours allotted for both counts, and I spend about 3 hours VOT writing my first action. Any further prosecution before disposal requires more VOT, maybe some "sick" leave during fourth quarter.
What kills me is the exorbitant fees that some attorneys charge, and how lazy they can be. At 400 dollars an hour and 10 dollars a word, or whatever it is, it's not too much to expect that claims be at least error-free. If you ever get a 112 2nd rejection because you didn't proofread claims after doing a half-assed cut and paste job, please pick another vocation, 'cause you're wasting an awful lot of time and money. I've seen this about 4 times this week already.

[anon]

Drop 1.56. And get EPO to do the reference searches.

[StoopidQ]

Ed,

It is a lot easier to critique an application than to write one. It is easy to see errors creep in when you revise anything multiple times. But while we are on the subject, I see communications from Examiners every day with bad spelling, disagreement between the subject and the verb, partial sentences, etc... (the last communication I received had in one paragraph, quite literally, 6 spelling errors, 2 partial sentences, and a clause using a pronoun with no clear indication to what the pronoun was referring).

Also remember that a large number of practitioners are working on a tight client budget and may thus be relying on others to proofread.

[Leopold Bloom]

"What does 'all information' 'material to patentability' mean if not every possible 103 reference?"

Well, it certainly doesn't mean "any reference that might conceivably be combined by someone with any other reference in an assertion of 'obviousness'", as you originally suggested.

As the rule says, with respect to potential 103 art, it's only material if it's not cumulative and if "the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard." A reference describing a minor feature ("wherein the widget is red") can't possibly compel such a conclusion in the absence of OTHER information that describes the widget. Nothing in the rule (or case law) says that you have to suppose the existence of other references to determine whether a particular reference is material. Of course, once a reference describing the widget is on the table, it's another matter.

Inequitable conduct jurisprudence is screwed up enough without hysteria making it seem worse than it is.

[anonymous]

AllSeeingEye wrote, "And what's this about submitting "litigation docs?""

That's the same question that one practitioner should have asked, see page 37

http://www.cafc.uscourts.gov/opinions/04-1495.pdf

[T]

LB -

Have you read many office actions? The Bar by which examiners judge "material to patentability" is extremely low.

[patent.drafter]

"In tension with the PTO's desires are the multiple cases finding patents unenforceable due to applicants failure to submit relevant prior art to the PTO." ... seems like performing a preliminary search, combining the results with what the client already has, and providing reasoned statements of relevance and patentably distinguishable features in the claimed invention would overcome this problem. Of course, it would cost a heck of a lot of money.

"As of now, the PTO will grant just about any reexam petition that finds some obscure, un-cited reference combined with a virtual "cut and paste" of the first Office Action rejection of the original prosecution."

Doesn't even have to be un-cited. But you do have to come up with new grounds for rejection if the ref was previously cited.

[MXL]

Leopold Bloom wrote:
"As the rule says, with respect to potential 103 art, it's only material if it's not cumulative and if 'the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard.'"

Unforutnately this is only half-correct as the CAFC interprets its own caselaw. See Dayco Products (2003). In Dayco, the court stated that there are two possible standards, the narrower and newer Rule 56 standard quoted above, and the reasonable examiner standard. The reasonable examiner standard defines material information generally as any non-cumulative information that a reasonable examiner would have considered important in deciding to allow the application.

However, the court decided the case without deciding whether the old reasonable examiner standard or current Rule 56’s definition of materiality is applicable in cases where patent applications were filed after January 17, 1992 (the date of the current language of materiality in Rule 56).

Therefore, until the CAFC rules otherwise, we have to assume that the broader reasonable examiner standard will likely apply in cases that we are currently prosecuting.

[McKesson]

The increase in citing reference in my experience is due to an increased fear of an inequitable conduct claim. Prosecution practitioners often work on very tight budgets and don't have the luxury to read through and ponder each line of each reference - the way litigators with a blank check do. If we are tasked with reading and deciding whether or not to submit a reference then we should be held to a standard of unintentional error if we miss a nuance - instead of inequitable conduct.

It used to be so much fun to be a patent attorney ... those were the days ...

[in-house]

Posted by: MaxDrei | Sep 18, 2008 at 06:01 AM "Tell me, Sanity, does your employer see any issue, with over-broad claims, that should never have issued?"

I chuckle everytime I read a statement like the above. There are no "over-broad claims" or "overclaiming" by practicioners. Your statement begs the question.

Until you realize that claims in issued patents are valid unless otherwise determined by reexam or a court, you will always cry foul. The rules of the game are easy. Learn them.

[Leopold Bloom]

"The reasonable examiner standard defines material information generally as any non-cumulative information that a reasonable examiner would have considered important in deciding to allow the application."

Agreed, but I still don't think that this standard suggests that every conceivable secondary reference that might be applicable against a hypothetical primary reference is material.

[Marylena Finch]

MXL - CAFC has been using the reasonable examiner standard pretty consistently since. See Star Scientific (2008) and McKesson (2007), which discuss only the reasonable examiner test.

MM - "Not really. It's more like applicants not having time so they are forced to pretend to 'comply'." No, even if I had all the time in the world, I would still submit everything. CAFC law time and time again favors disclosure and punishes only the withholder. What is the prudent course of action? Submit.

[MaxDrei]

Well, in House, from my desk in Europe I'm glad to read from you that you had a laugh about my contribution upthread, and that US Rules are "easy". I'm happy to receive your education how things are in the USA. I'm less impressed by your command that I am now to "Learn them!" Is this always the tone you take, with outside counsel?

[MXL]

LB -- I agree with your statements in theory. However it really comes down to whether a reference is cummulative or not. And, unforutnately, there is case law (I have forgotten which one) that says that even if two references disclose the same basic information, the one that discusses that information longer is more relevant and thus should have been disclosed despite the presence of the other, shorter, reference. I think the court in that case even compared the number of columns in each reference when addressing whether the non-cited reference was cumulative...

[Better Patent (Examination) Quality]

In response to JNP,

Do you think that with In re Swanson, references on an IDS not only do NOT immunize you against Reexam, they provide a starting point for "an appropriate context of a new light" to shine upon in establishing a substantial new question of patentability? Since the references are listed, but most have no comment on how they were evaluated by the Examiner, who knows what 103 or 102 possibilities lurk therein?

Hmmm, would it be proper to ask the examiner to put in writing for the record that all identified material has been thoroughly and completely evaluated?

[T]

LB wrote:

"Agreed, but I still don't think that this standard suggests that every conceivable secondary reference that might be applicable against a hypothetical primary reference is material."

Unfortunately, accused infringers will thing so.

The rule says:

(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim

"other information" - not other information know by the applicant, not other information of record, "other information"

....and the office's standard for "establishes a prima facie case of uppatentability" is quite low. See 9 of 10 office actions on your docket or mine.

[Malcolm Mooney]

hoping "In the background, we may cite to a 1980 article about making proteins. If we do NOT cite this in an IDS, are we going to be hammered during litigation for trying to hide the ball? "

Um ... no. If a paper from 1980 is a material reference to claims in a newly filed application, then your claims are most likely anticipated.

"If the IDS rules change and applicants are required to "distinctly point out the closest features of the prior art," it will be the end of biotechnology as we know it today."

Lighten up, Francis.

[Malcolm Mooney]

"(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application"

This is your answer, applicants and patentees. As we practitioners who have been on both sides of the battle in litigation, re-exam and/or prosecution know, this is where the rubber meets the road when confronted with charges that a references was intentionally "withheld."

And this is why it is a good idea to include not just the references you know are material, but also a few others: to create a soft downy pillow of potential cumulativeness.

[Malcolm Mooney]

Marylena: "No, even if I had all the time in the world, I would still submit everything."

Except that you never submit everything. Nobody does. You submit a subset of everything.

What did you really mean to say?

[patent game show]

Let's play a game of determine inequitable conduct or not.

Facts -
In application A, an IDS is filed naming a user guide for a program created by company X, who is the assignee of application A. The IDS lists no publication date for the user guide, and includes only 20 pages of the 200 page user guide. The Examiner locates a version of the same user guide in another application filed by company X which is now a patent, in which company X submitted an IDS listing the publication date as more than a year prior than the filing of application A, and containing 150 of the 200 pages of the user guide. The Examiner uses the 150 page user guide submited in the now issued patent to reject all claims of application A under 102(b).

Question -
Inequitable conduct or not?

[Leopold Bloom]

"Inequitable conduct or not?"

That's easy. Maybe.

[curious]

was there intent?

[T]

Not.

From 1.56:

The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98.

There is only a question if inequitable conduct if the examiner DOES NOT find the 150 page reference.

[ZimZam]

"I don't have the answer, but I do know that virtually no one reads all the references when more than thirty are submitted (except in litigation down the line)."

The standard is 'consider' not 'read'. I consider all cited references, just like I consider all of the patents in a subclass during a "flip" search.

[curious]

I think that the PTO solicitor says that the standard is "read".

[Jonesie]

Of course there are more references cited per application. The simple fact is, there is more prior art today than there was 30 years ago, and finding it is much easier. There are more patents issued, US applications are now published, there are more accademic publications, and everything is easier to find thanks to the internet. Of course we cite more prior art.

[Leopold Bloom]

"There is only a question if inequitable conduct if the examiner DOES NOT find the 150 page reference."

Or if material information is in the 50 pages that the examiner has not seen. I stand by my original answer: Maybe. But isn't that always the answer in this game?

[tps]

It is possible, as Jonesie suggests, that the increase in citations per application is due to a combination of a greater number and, especially, availability, of material references, rather than an overabundance of caution on the part of practitioners. It would be interesting to compare the timing and magnitude of the increasing trend from Dennis' first figure with PTO/court decisions and rules interpreted as urging greater disclosures (e.g., Dayco & McKesson are fairly recent when compared to the entire temporal scope of the graph).

Also, the second figure, though consistent with the conclusion that examiners cite fewer references than practitioners, does not support that contention very strongly. Two important caveats that come immediately to mind are: 1) perhaps examiners have an easier time finding more material references to cite when they have some to go on from a submitted IDS, 2) perhaps applications for which no IDS has been submitted represent a truly different population of applications, for which fewer material references actually exist, on average.

[guest]

No one reads all the references in an IDS ONLY? This also happens when some attorneys that only search of claim language in the references and do not read them!

[Malcolm Mooney]

"I stand by my original answer: Maybe. But isn't that always the answer in this game?"

Yes, except for when the answer is "career death".

[Row Row]

You can't get hit with IC until the application issues.

T is correct, no IC in your scenario. Would be nice though.

"The simple fact is, there is more prior art today than there was 30 years ago, and finding it is much easier."

Um, about that ... the simple fact is also that the amount of RELEVANT prior art today isn't that much higher if you don't count cumulative disclosure.

[curious]

"Cumulative" is in the eye of the beholder

[Row Row]

Cumulative reference is cumulative.

[anonymous]

Why not require that each applicant submit, for example, 5 and only 5 references -- and the patent gets a presumption of validity only with regard to those 5 references in any combination?

[anonymous too]

"Why not require that each applicant submit, for example, 5 and only 5 references -- and the patent gets a presumption of validity only with regard to those 5 references in any combination?"

Because the applicant will want to submit the best 5 references they can find at the time, but may later find much better references.

[anonymous]

Exactly.

Let the applicant decide best allocation of resources for a pre-examination search on a case by case basis.

If they find a better one later down the path, tough cookies....or maybe let the applicant submit a super-IDS listing any references greater than the 5 freebies, but in the super-IDS, the applicant has to characterize each reference with respect to claim elements, etc., as in the various new IDS and claims rules.

[clever pseudonym]

"... and the patent gets a presumption of validity only with regard to those 5 references in any combination."

Which means what, exactly? You're talking about the presumption of validity in litigation, right? Do you really think that this supposed presumption makes any significant difference in most cases?

[AllSeeingEye]

To annon, thanks for the link. In that situation, since the patent application was a continuation of a patent under litigation, I would say that's a bit of a no brainer. But point taken.

Mooney scribbles: "Um ... no. If a paper from 1980 is a material reference to claims in a newly filed application, then your claims are most likely anticipated."

Sorry Mooney, wrong again. You don't practice do you? Materiality does not automatically mean anticipation. You must know all about career death - you talk about it all the time. Your career may have died before it took its first breath.

[anon]

clever pseudonym wrote: "You're talking about the presumption of validity in litigation, right? Do you really think that this supposed presumption makes any significant difference in most cases?"

Are you suggesting that we should drop the presumption of validity since the USPTO does not read the references?

[curious]

"Materiality does not automatically mean anticipation." I agree

[GP]

Anybody want to do an under/over with me on how long before the U.S.S.A government nationalizes all patents?

I'd go 28 months out.

Why stop with insurance companies, banks, and auto manufacturers?

Seriously?

Patents aren't useful in a fascist state anyway.

Tough sh-t Hank Rearden.

[AllSeeingEye]

I've said it before, given that the PTO is a government agency, aren't patents, in a strong sense, already "nationalized"? If the government wants to use your patented technology, they pretty much can. If you have a more detailed version of your apocalyptic vision, please share it.

[AnnoyedExaminerSickOfMountainsOfCitedReferences]

Anytime I open up a new application that cites more than 40-50 documents (which is too dang often, let me tell you) I include the following statement in my Office Actions:

****
Appplicant should note that the large number of cited references have been considered by the Examiner in the same manner as other documents in Office search files are considered by the Examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is respectfully requested to point out any particular reference which they believe may be of particular relevance to the instant claimed invention in response to this Office Action.
***

If Applicant ignores this request when responding, in my next action I then go on to cite the various sections of the MPEP and related case law that expressly says when submitting a large IDS, Applicant is encouraged to point out those references material to patentability and that expecting the Examiner to "find a needle in a haystack" is illustrative of bad faith. I've only had one instance where after doing this Applicant continued to ignore my request. In that situation, I sent out a rule 1.05 requirement and called the attorney to warn him/her that if they ignored the request again they would recieve a notice of non-compliant amendment.

[T]

Rule 1.05? What does that say?

[MaxDrei]

Annoyed, don't blame the attorneys. They do what they do to protect their clients from adverse inferences, downstream, in the courts. The USA is still a country that follows the "Rule of Law" no? Blaming the attorneys would be like blaming the derivatives traders for the present mess in the financial system. Instead, hold responsible those who make the Rules by which the legal "Game" is played. No, wait, I mean those who elected those who make the Rules. No, wait, I mean those who failed to educate those who voted for those who make the Rules. No, wait, I mean the parents of those who failed to educate those who elected those who make the Rules. Anyway, not the attorneys. If you want an attorney to blame for the present ennuie, take the one who, prompted by monstrously w'cked criminal acts, wrote for POTUS the opinion that the USA has the exclusive right to ignore the Geneva Convention, and "Customary Law".

[hp684]

annoyedexaminersickofmountainsofcitedreferences... is yet another examiner that thinks the ramblings in the mpep are "law".

yea... riiight.

probably the same hard case examiner always telling me how I need to follow the MPEP's "suggested format for specification sections and their titles".

bunk.

when that crap is received, a response respectfully requesting citations to an actual applicable law/statute - that's all that is ever required. anybody but a chimp knows that.

[AnnoyedExaminerSickOfMountainsOfCitedReferences]

See MPEP 704.10-704.12

"Information which may be required under 37 CFR 1.105 is that information reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111 (including a reissue application), in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding."

MPEP 609.04(a)(III) also says the following:

"Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability"

In view of this, I make the argument that since a large number of documents have been submitted on the record, it is requested that Applicant point out any references or documents of which they are aware (out of the large list of documetns cited in the IDS of course) that are "highly relevant" to patentability. I remind applicant that this is in accord with dicta from "Molins PLC vs Textron, Inc" stating that forcing the Examiner to find "a needle in a haystack" is "probative of bad faith" and in accord with a subsection of the MPEP entitiled "Aids to Compliance With Duty of Disclosure".

[AnnoyedExaminerSickOfMountainsOfCitedReferences]

Hey hp684, here's some case law for you --- Molins PLC v. Textron, Inc. Read: http://www.altlaw.org/v1/cases/411236

[T]

Ah, Rule 1.105, not 1.05.

You should read the whole rule. It refers to submission of requested documents and information such as whether a Commercial data base could be searched and whether a search has been performed.

It doesn't require the applicant to comment on cited documents, which, as your pasted paragraph indicates, is not required.

[AnnoyedExaminerSickofMountainsOfCitedReferences]

Yes, T -- I mean rule 1.105 but the lingo is usually rule "105" so sorry for the confusion.

I have consulted 2 TQAS on this matter for a particular application that cites more than 200 references (patents and NPL) and is related to more than 20 copending applications all filed around the same time. In this case, it was deemed that it would expedite prosecution if Applicant pointed out only those references deemed "highly relevant" due to the nature of the jumbo case and its relative and due to the nature of the subject matter claimed. If you read the rule closely in combination with the duty to disclose, the request under 1.105 is proper in such a situation. Applicant could technically respond by saying "We believe all references cited are 'highly relevant'" without pointing to any particular one, but they are then making such a statment formally on the record (and if such is found not to be true they could, for lack of a better way to phrase it, shoot themselves in the foot). This way too, it is clear that the Examiner (me) attempted to gain Applicant's cooperation in efforts to improve the quality of examination and in efforts to expedite prosecution etc. etc.

[T]

I understand your frustration. However, the office should keep in mind that applicants have to fend off accusations that information was withheld.

Additionally, one should keep in mind that if an applicant thought any of the information was "material to patentability" they would have no reason to file the application.

Instead, the applicant submits art they are aware of that someone might twist, over interpret and take out of context in a accusation of materiality.

If the 200 cited documents were material, they would turn up in your own search, right?

[Post Toasties]

Annoyed--so it sounds like you and others at the PTO believe that no rule or statutory changes would be needed to require applicants to submit a concise summary of the relevance of submitted references, or at least that's where it sounds like things are heading, especially in view of Mr. Toupin's reported plans to propose such a thing. This seems to be similar to the approach the PTO took with the Continuation Rules package--we can just read things the way we want to get the results we want. I sympathize with the current plight of examiners, but don't think that trying to get practitioners to make admissions against interest is the way to go with the current state of patent law--too much risk to patents being declared invalid for inequitable conduct (and there would be more because the 'characterization' of the reference would of course be scrutinized during litigation). Change Rule 56 and the IC standard and it might work, eventually.

[MaxDrei]

In my experience, haystacks hardly ever contain needles. I would expect, therefore, that it might be difficult to prove that there was any "needle", let alone that somebody had any intent to hide it. The prior art documents are all different blades of grass, of different significance, with one being a marginally better "starting point" for exploring validity than any of the others. Seldom will you find a blade of dried grass so different in kind from all the others that it can be categorized as a "needle".

[pds]

To echo a few commenters above. Rule 1.105 relates to the submission of information, not for comments on information. Since the references have already been cited, the information has already been submitted. It is the Examiner's JOB to sort through the information and make his/her independent decision as to what is material and what is not.

As to your quote regarding "applicants are encouraged to provide a concise explanation," note the use of the word "encouraged" instead of something like "shall" or "required."

The fact that certain applicants have positively responded to your requests is likely because they have determined that it is less of a hassle to respond to the request than to take you to the mat for abuse of your position.

Your simple "encouragement" could very well put the patent rights of the applicant at risk. Unless applicant perfectly characterized all the references (which, of course, is totally up to debate), any potential infringer is going to allege inequitable conduct if a resultant patent is ever litigated. In fact, your request all but guarantees that inequitable conduct will be alleged, even if your request wasn't responded to.

Good job, in your efforts to "improve the quality of examination and in efforts to expedite prosecution" you have seriously compromised the potential validity of the patent.

BTW: This is why many practitioners absolute detest the possibility that applicants may be required to both provide a search AND characterize the prior art. First, despite all the money that will be spent on the search and the characterizing, the examiner is going to provide his/her own search, which means a large percentage of this money is likely to be wasted. Second, any search that misses a really good reference or any mischaracterization of the references (or even omission) is going to result in an accusation of inequitable conduct.

[Cite Right]

Annoyed -

before citing references, you should read them, lest they make the point against you.

"Thus, the court's finding in this regard is clearly erroneous, and the determination that the method of disclosure constituted inequitable conduct cannot be sustained."
from Molins PLC v. Textron, Inc. - paragraph 45.

I believe this type of examination is what raises the ire of most prosecutors on this site.

[in-house]

MaxDrei - Please don't infer anything from my terse response. I value your viewpoint from a EU perspective. I too constantly struggle with what should be patentable and what has been allowed as a patent. Reality tells me these are two different things. I myself was recently reminded of the game US practitioners are forced to play. Once I re-realized that prosecution is a game, my discomfort and stress abated.

Also, you misinterpret my point. It is not that the US rules are not easy and you do not understand them. Quite the contrary. From what I read you have a better grasp of US prosecution rules than some US practitioners I have met. The point is that once the realization is made that prosecution itself is a game (an unfair one at that) it becomes easier to reach your goals and reduced your stress levels.

Regarding my treatment of outside counsel, yes my email is consistent with how I treat some outside counsel - those that don't realize the game of prosecution. Counsel that see prosecution as an academic exercise, argue technical points of law to an Examiner, fail to realize how the count system effects an Examiner's actions, and generally fail to see how prosecution impacts my business are of no value to me.

Truely valuable outside counsel are those that know how to "game the system" by obtaining patents of broadest possible scope (without "overclaiming") in the shortest amount of time.

[MaxDrei]

Thanks in House. Just a pernickety point of law. I can't comment from an EU perspective. The European Patent Office has 34 Member States (plus another 5 Associate States). It is not an EU institution. The European Union has only 27 Member States (for the time being). The EU isn't very good at patents. In fact it's a basket case (anybody know the origin of that expression?). At least, that's how I see it.

[Tensin]

"Rather, the PTO wants practitioners to perform a preliminary search and distinctly point out the closest features of the prior art."

If by "distinctly point out" the PTO means to the level that the examiner's "distinctly point out" the prior art features cited in their first office action, I see many of my ISD analysys merely alluding that "It's in there somewheres."

[mark]

For those who remember this far back (early 80's), the PTO used to require that an IDS include a "brief description of the relevance" of each reference cited. This served as a check on the number of references cited and enabled an examiner to better identify the better references to focus on. At some point, the PTO dropped this requirement because it wanted more references. The PTO proposal for a detailed search analysis (aka, the applicant writing his own office action) is overkill, but the PTO should reconsider restoring the old rule.

[Malcolm Mooney]

SmallPeeingGuy: "Materiality does not automatically mean anticipation."

That's nice. You just beat on that strawman all weekend and exercise your other wrist for a change.

[MaxDrei]

I remember that Rule. Folks in Europe still prepare such a thing, automatically, and are mystified when told that it's, well, actually....just not the thing we do today. Reality is somewhere well over the horizon, we conclude.

[Just an ordinary white rabbit(TM)]

Dear Sour kraut Max,

Re: “In fact it's a basket case (anybody know the origin of that expression?).”

Why, that would be you!, No? (õ¿Q).

(I could not resist no matter how I tried.)

[MaxDrei]

Not sure that a "basket case" is anything to laugh about. When one knows the real origin. Still, Rabbit, I do confess that your offereing did raise a smile.

[curious]

back in the early 80's the PTO had a "Fraud Squad"

[Just an ordinary white rabbit(TM)]

Max, I aim to please. Humor, the best medicine. Very few attorneys, especially patent attorneys, laugh a lot. It must be the law school that kills their sense of humor, but I have a proposed solution -- perhaps we can patent it:

Title: Patent Law Humor Restoration
Abstract: To restore the natural humor lost as one works through law school, especially patent law school, print the text books on Cannabis paper; as each student successfully finishes a course, he rolls the pages and smokes them.

They don't call me the white rabbit for nothin'. Go ask Alice.

[Just an ordinary white rabbit(TM)]

When she’s ten feet tall

[Leopold Bloom]

"Very few attorneys, especially patent attorneys, laugh a lot."

I'm just wondering how you could possibly know that. Maybe it's just when they're around you? (õ¿Q).

(I could not resist no matter how I tried.)

[EG]

Max,

The etymology of "basket case" (from the Wikipedia):

The term originated from WWI British English, indicating a soldier missing both his arms and legs, who needed to be literally carried around in a litter or "basket."

[query]

white rabbit -- you meant "toilet" not "cannabis" didn't you

[Just an ordinary white rabbit(TM)]

Leo,

No, its not me. Me and my boss, everyone says -- We are.. two wild and crazy guys!

* * * * *
query,

I never tried toilet paper – how is it?

[Just an ordinary white rabbit(TM)]

EG,

I think Max knew that; I think we all did. A bit depressing don’t you think? We were trying to have some funny fun. I mean, after all, it is Friday afternoon.

So tell me, do you ever laugh?
Please try this:
Sit back. Pour a drink. Light ’em if you got ’em. Play with yourself a little and try writing a joke. You’ll thank me in the morning.

[Just an ordinary white rabbit(TM)]

Oops, I can see it now, another word in the spam filter, “play” (¢¿©)

[anon]

I agree and disagree with the below comments. I think you have to have an idealistic approach, otherwise "gaming the system" can result in inequitable conduct. On the other hand, I agree that it is important to understand what works and what does not work.

in-house wrote: "prosecution itself is a game (an unfair one at that)... Counsel that see prosecution as an academic exercise, argue technical points of law to an Examiner, fail to realize how the count system effects an Examiner's actions, and generally fail to see how prosecution impacts my business are of no value to me. Truely valuable outside counsel are those that know how to "game the system" by obtaining patents of broadest possible scope (without "overclaiming") in the shortest amount of time."

[curious]

anon

also, I find that it is useful to be in frequent contact with the client to ensure that the scope of claims being pursued are commercially valuable to the client in that the client's product (method) may have changed and/or in view of a recently introduced competitor's product

[Gideon]

Somebody wrote:
"The U.s. still applies the rule of law, right?"

Given the events of the last few weeks, I'd say, "no."

An Examiner wrote that he includes the following if an IDS is too large:
"Applicant is respectfully requested to point out any particular reference which they believe may be of particular relevance to the instant claimed invention in response to this Office Action."

I'd respond as follows:

"Applicants believe that the claimed invention is patentable over all of the documents in the IDS. Applicant does not differentiate based on "relevancy." Applicant understands the law to mean that claims are either patentable or not patentable over art, with "relevancy" not a legally relevant (wink) measure."

If I got a jerk-off "please point to the best art" form paragraph from the Examiner, like the one above, I'd be operating from the premise that I'd be appealing the 1st final anyway.

[left coast]

An Examiner wrote that he includes the following if an IDS is too large:
"Applicant is respectfully requested to point out any particular reference which they believe may be of particular relevance to the instant claimed invention in response to this Office Action."

Maybe my response would be that Applicant would be pleased to so point out if Examiner can point out where in the statues, rules or case law there is any such requirement for Applicant to do so.

(or maybe it is just late on Friday and I am tired, especially after listening to all of the financial news, and I would respond differently after a good nights sleep)

[anon]

Rule 1.105 is a nightmare to respond to. At least it is not used very often.

[Michael Valentine Smith]

Above, "T" blathered:

Additionally, one should keep in mind that if an applicant thought any of the information was 'material to patentability' they would have no reason to file the application.

Instead, the applicant submits art they are aware of that someone might twist, over interpret and take out of context in a accusation of materiality.

If the 200 cited documents were material, they would turn up in your own search, right?"

All the response really this needs is:

"What a load of CROCK"

But, I have to say more (like always ;) ).
You say that "if an applicant thought any of the information was 'material to patentability' they would have no reason to file the application."

As pointed out "material" does not mean "anticipate" nor even "make obvious".

Two, you clearly have not seen many of the B$ claims that are filed every day. Take a look at some PGPubs & see some of the carp we have to deal with. More & more these days the initial claims are so broad that reading them would give you no real idea what the invention is. And often those claims read on the definition of a whole subclass, or worse.

Three, when the app does file an IDS (often from a foreign search or related case) it is clear that the claims are not revised or reevaluated in view of that art. So, basically, an office action is wasted for the applicant & they are no closer to getting a patent. Even if you don't want to amend the claims, at least ADD some that actually reflect the invention and are not anticipated by the art that you submit (& should know that they are anticipated because that is what the foreign search told you).

"T" further recites "If the 200 cited documents were material, they would turn up in your own search, right?"

Answer, "No, not necessarily." Are they patents? Are they properly classified Foreign? What language? Do we have access to where they are found? NPL? etc...

Now, enough with that. Personally, & my opinion only, I think that having the applicant perform a search & fully characterize (or whatever you want to call it) the prior art is a bad idea. I think that the examiners should do this & also it avoids the inherent appearance of a potential conflict of interest that comes up with an applicant doing it. As well as the potential problems for attorneys discussed above.

What I would like to see is not so much a characterization of what you are citing, but tell us WHY you are citing the reference. It might be something as simple as being cited in a related case or the reference shows a conventional "widget" making system or such. Just SOMETHING rather than a list of a couple hundred references.

I would also like to see it be mandatory that the applicant cite/list other related applications/patents. Particularly by one or more of the same inventors. The applicant is the one that is in the best position to provide this info. We have ways to pull it up (eDAN, EAST PALM), but they are not always complete nor is there any easy way to distinguish between inventors with the same name.

Enough for now.

MVS

[e6k]

The one reason that I am very much for applicants doing a search and characterizing the prior art is: The Lulz. 3/4 of my applicants would characterize the prior thus: "Ref 1 shows xyz but fails to show j, and while ref 2 shows j used in the same kind of device it would not have been obvious to modify Ref 1 with 2 because of lmnop reasons (despite rstuv motivations being present). My OA would consist of regurgitating the applicants characterizations back to them pointing out the motivation. Done and done, lulzing my way to the gym and flirting with the good looking girls on my floor. After I googled the invention, plugged inventor name search in and found the proper classification and typed it into East that is. I searched all that, riiiight.

[KCBrooks]

I believe the answer to the inequitable conduct problem is political. Patent prosecutors must understand that we have an interest in patent litigation that is separate and apart from the two parties litigating the patent. I propose a national patent prosecutor's insurance program. It will come to any prosecutor's defense during patent litigation when a prosecutor is deposed. The result of the centralization of responsibility and money will result in a de facto lobby group to advance the interests of patent prosecutors before Congress. Moreover, there would always be a threat of a counter suit against one of the parties in the patent litigation on behalf of the patent prosecutor should traditional litigation torts arise.

It seems readily aparrent to me that once the prosecutor comes to the litigation with a substantial organization behind the prosecutor it will no longer be easy pickings for a defendant who willfully infringes a patent and simply wants to invalidate the same for business purposes.

In short you can analyze this situation until you are blue in the face. This is not an academic situation. When there are billions of dollars at stake and the parties in the litigation will stop at nothing to advance their position . . . patent prosecutors need protection and a voice. Only a nationalized organization the mission of which is to uphold the integrity of the profession by providing an adequate defense of patent prosecutors will ensure this.

Remember, the party advancing the patent's validity always sees a silver lining should they fail to prevail in that regard . . . that silver lining is the patent prosecutor's errors and omission insurance.

[curious]

interesting proposal, KCBrooks

[AllSeeingEye]

Mooney, you do enough beating for everyone on the board. Its easy to tell when your buttons have been pushed - you actually quote your own offensive post. Personally you should be embarrassed to call attention to your own idi0tic statement, much less try to create some kind of smoke screen. Its like e6k saying that the atoms come out of the wire.

I'll say it again in case you still don't understand:

Materiality in a reference does not automatically mean that the reference is obviating or anticipatory.

Pretty much every practitioner learned or should have learned that in patent kindergarten.