Patent Practitioner Ethics Update

In a recent presentation, PTO Discipline Director Harry Moatz repeated his statements regarding a practitioner's duty to make reasonably inquiry prior to submitting any papers to the USPTO. "Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper." The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). That section requires that submitted papers be submitted only for proper purposes and that any claims made be legally warranted. Section (b)(1) requires that all statement made be believed to be true and that no statement "covers up by any trick, scheme or device a material fact." Section (b)(2) goes on to require that the person filing the paper actually make "an inquiry reasonable under the circumstances" to ensure that the paper is not being presented for any improper purpose and that the contentions are "warranted by existing law or by a nonfrivolous argument [to change] existing law."

Mr. Moatz provides several examples that could be seen as failure to make a reasonable inquiry: (1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors. (2) Burying a reference material to patentability among a large number of cumulative references. (3) Filing an application with one or more claims unpatentable over a combination of prior art references cited by applicant in the specification.

37 CFR § 11.18 (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that— (1) All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and (2) To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office; (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law; (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

In his presentation, Mr. Moatz listed the primary complaints that he receives against patent practitioners. They include:

• Neglect.
• Lack of candor (Either to client or the PTO).
• Failure to make reasonably inquiry.
• Failure or delay in filing application
• Failure to respond to OA (even when client has not paid)
• Misuse of the certificate of mailing
• Insufficient funds
• Failure to pay issue fee
• Failure to revive
• Failure to turn over files to new attorney
• Failure to communicate with client

Additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment.  Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of "any" crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days.  The new rules also provide for “disability inactive status” when a practitioner is judged legally incompetent.

Notes:

• File Attachment: moatz08.pdf (373 KB) 

Comments

[question]

"Burying a reference material to patentability among a large number of cumulative references."

There is a family of related applications filed in the U.S. and worldwide and litigation has just settled on one of them where additional prior art was brought to the patentee/applicant's attention. There are about 100 pieces of prior art now. How do we cite them, fellow patent prosecutor bloggers?

[curious]

Do patent examiners have an ethical duty too? If not, why not?

[Malcolm Mooney]

"Mr. Moatz provides several examples that could be seen as failure to make a reasonable inquiry: (1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors."

That seems very reasonable. I would go further and include any publication submitted by the applicant in an IDS, regardless of authorship, and regardless of when the IDS is submitted relative to presentation of the claim. I would also allow sanctions in instances where the claim reads on any device and method published in the art for more than 10 years prior to the filing of the application.

Sanctions should be immediate and sufficient to put an end to the sloppiness, say, $1,000 fine per violation and a mandatory six month "cooldown" period prior to any further Examination of the application.

[Malcolm Mooney]

"Section (b)(1) requires that all statement made be believed to be true and that no statement "covers up by any trick, scheme or device a material fact."

Oops. They left out "willful ignorance." That's a big hole for most inventors to crawl through because "nobody knows what the claims really mean."

[John prosecutor]

You are a tough man there, Mr. Mooney.

[pds]

Ah .... hypocrisy is alive and well at the USPTO.

Of course, none of this is new since much of what was stated in the presentation has already been stated before.

If only the USPTO applied the same standards (e.g., misrepresentation of material facts, lack of candor, neglect, "repeatedly making the same mistakes," "wastes [client's] resources," "handling a legal matter without adequate preparation") to themselves as they did their Examiners and the BPAI ... they could cut payroll about at least 50%.

[curious]

PDS, I agree with you. (For example, look at page 17 of the slip opinion in In Re DBC, No. 2008-1120, where the FedCir explained to the BPAI the error it made in claim interpretation.)

"If only the USPTO applied the same standards (e.g., misrepresentation of material facts, lack of candor, neglect, "repeatedly making the same mistakes," "wastes [client's] resources," "handling a legal matter without adequate preparation") to themselves as they did their Examiners and the BPAI ... they could cut payroll about at least 50%."

[pds]

"Sanctions should be immediate and sufficient to put an end to the sloppiness, say, $1,000 fine per violation and a mandatory six month 'cooldown' period prior to any further Examination of the application."

Come on MM ... we expect greater irrationality out of you than this. The fine should be $10,000 for every claim rejected based upon prior art cited by the examiner -- immediately payable upon issuance of the office action containing the rejection.

Moreover, an inventor forfeits one finger for each independent claim found finally rejected based upon prior art submitted by the inventor. Once an inventors is out of fingers, the inventor is legally prophibited from being an inventor and will be struck as a inventor from all current applications. However, if the (prohibited) inventor is a coinventor of a patent, that patent will be held invalid for not naming all of the inventors.

The USPTO will televise the punishment (once a week) on pay-per-view. The proceeds will not go to funding more examiners -- instead it will be used to fund the "Torquemada" branch of the USPTO -- intended to ferret out practitioners and inventors who did not read all of the references. Tests will be given on each reference cited, and if the practitioner and/or inventor doesn't pass, the reference will not be deemed not submitted, and the patent will be held invalid for failure of the practitioner and/or inventor to meet their duty of candor.

Really, it isn't hard to come up with these ideas -- one just needs to get worked up in a lather over patents, inventors, and patent practioners, such as with Messieurs MM and Moatz, read a couple books on the punish practices in Stalin Russia as a primer and go from there.

There are plenty of ways to muck up the patent system in the US -- this is just one of many of them. Simple ....

[SF]

This is a backdoor attempt to force applicants to do the same analysis that they would have to do for the 5-25 Claim rules and for the over-20-references IDS rules.

The USPTO is trying anything and everything to force applicants to do their homework, so to speak, before filing. This isn't necessarily a bad thing (that applicants have some clue about patentability before filing). But the current law just isn't tailored to forcing applicants to their homework.

The USPTO should abandon their useless attempts to prove they have authority that everyone knows they don't and, instead, lobby Congress for explicit authority.

[pds]

Still -- this is all just bluster until OED actually tries to discipline a practitioner because, e.g., the practioner didn't read the ENTIRE Japanese reference cited by an examiner in a counterpart Japanese applicatio, which was subsequently submitted to the USPTO in an IDS.

If that happens, all I have to say to OED is "good luck with that ... "

[Malcolm Mooney]

Is it really that difficult for practitioners to draft claims that aren't anticipated by (1) the inventors own publications or (2) well-known inventions published more than 10 years ago?

To me, it seems like the bare minimum that should be expected. The only reason I can imagine that people would get so upset about being sanctioned for their failure to clear this ankle-high hurdle is that they might actually have to think before filing a pile of worthless crap.

I understand that this is more difficult in some fields than others.

[David Stein]

"(3) Filing an application with one or more claims unpatentable over a combination of prior art references cited by applicant in the specification."

Riiiight. Because if an examiner can make some ridiculous leaps of logic to combine 47 different elements in 19 references to hold my claim obvious (and without showing any motivation to combine... thanks, CAFC!), not only should my client's application be rejection, but I should be disciplined and maybe debarred.

It's true that Harry Moatz has warned the patent bar to take submissions seriously. But most of the examples he's provided before (e.g., at AIPLA presentations) were clear violations of ordinary practice, like submitting 1,000 references in an IDS. This example threatens ordinary practitioners with sanctions for performing ordinary practice.

Folks, let's face it: the USPTO has declared war on the patent bar. Is it any coincidence that this warning closely follows the announcement of an annual "practitioner licensing fee" (starting at $118, but likely to ramp up) and swirling rumors of new USPTO CLE requirements?

The USPTO has demanded for years that its client base submit fewer applications. It tried whittling down on continuations, but that effort failed. It has succeeded in throttling business method applications and cutting back on software applications. Now it's getting personal... it is going to begin cutting back on the number of practitioners.

I predict an upcoming decline in the USPTO bar exam pass rate, and/or newly increased requirements for sitting for the bar exam. Wait and see.

- David Stein

[John prosecutor]

"well-known invention", Malcolm?

[annon]

if there is a 102(b) in the IDS it should be made first action final. then applicants would read the references and not submit broad independent claims.

[curious]

David Stein says "Folks, let's face it: the USPTO has declared war on the patent bar"

I agree. And the reason is that the Patent Office has a horrible backlog due to mismanagement and/or poor management. And the best defense is a good offense.

I would like to see a graph of the number of examiners with more than five years experience working at the Patent Office each year for the past twenty years. I would like to see a similar graph of the number of examiners who have left before spending five years, each year for the past twenty years.

[JohnDarling]

"If that happens, all I have to say to OED is 'good luck with that ... '"

I think they are quite aware that their chance of successfully "proving" an "offense" that would merit "sanctions" are less than zero. My guess is that they are hoping the threat of having to defend oneself against a malicious investigation/prosecution will act as a deterrent. Of course, they are ignoring the practitioners' obligation to follow the law and protect the clients' interests. The realities of practice are not their concern.

Some unfortunate practitioner will probably be made the test case. Let's hope he/she fights back with the ferocity this type of thuggery deserves.

[Just an ordinary criminal]

Ironically, I just mailed the notice to OED about the speeding ticket I received a few weeks ago. I wonder how many practitioners even realize that they now need to report any criminal conviction (even if for a minor traffic offense) to OED.

[Just an ordinary criminal]

Ironically, I just mailed the notice to OED about the speeding ticket I received a few weeks ago. I wonder how many practitioners even realize that they now need to report any criminal conviction (even if for a minor traffic offense) to OED.

[Malcolm Mooney]

"if there is a 102(b) in the IDS it should be made first action final. then applicants would read the references and not submit broad independent claims."

Another good solution.

Re allegedly obvious inventions: nobody will ever be sanctioned for filing an obvious claim, ever, so no point in wasting time discussing it. Unless of course you just want to create a distraction or need an excuse to whine and complain about the PTO.

But sanctions for filing a claim anticipated by the inventors own publications? Or an old, well-known publication (say, one that is cited more than a dozen times in the literature)?

Hell yes.

[fisher ames]

Would using an obsolescent US PTO govt. mailing address for your official bar membership records (public) also qualify as "sloppiness"?

[jim jones]

Just an ordinary criminal, a speeding ticket is a civil offense in a majority of states.

[David Stein]

jim jones wrote:

"Just an ordinary criminal, a speeding ticket is a civil offense in a majority of states."

No, it's still a crime. It's an action brought by a state or city for violating a statute. The attorney who represents the state is a prosecutor, not a plaintiff's attorney.

However, in many states (including Ohio, my home state), ordinary speeding tickets are "minor misdemeanors."

- David Stein

[Tazistan Jen]

It seems like our various ethical obligations are on a collision course with themselves . . .

[for what it is worth]

"US President-elect Barack Obama is expected to nominate New Mexico Gov. Bill Richardson to head the Commerce Department"

[David Stein]

curious wrote:

"I would like to see a graph of the number of examiners with more than five years experience working at the Patent Office each year for the past twenty years. I would like to see a similar graph of the number of examiners who have left before spending five years, each year for the past twenty years."

Excellent points.

One aspect of the patent examiner compensation package that I've NEVER understood: the USPTO encourages examiners to attend part-time law school - and pays tuition reimbursement. I know that's a nice perk, and bully for the examiners... but isn't the USPTO essentially paying for more experienced examiners to find better jobs? What kind of labor principle is at work here?

===

"The reason is that the Patent Office has a horrible backlog due to mismanagement and/or poor management. And the best defense is a good offense."

That's exactly how I see the situation, too.

This reminds me of that debacle in Boston two years ago over Comedy Central's surreptitious placement of some LED devices around town as an advertisement - remember that? When the Boston PD arrested the two employees on "terrorism" charges, the public sharply criticized and ridiculed the arrest as outrageous and the charge as bogus. The Boston PD responded by ramping up its rhetoric - practically characterizing the employees were Al Qaeda operatives! This was an obvious PR facade - trying to focus the blame on the employees - and any hint of "oops, maybe we screwed up" would have caused the dam holding back the public backlash to burst.

The USPTO is using the same tactic. PTO management has completely failed to reduce the backlog, and it is afraid of pointed inquiries into its management failures by the GAO and Department of Commerce. So it is seeking to cast the blame on applicants and the patent bar... and also to address its failures by throttling the number of incoming applications.

The only aspect that surprises me is the relative lack of backlash by patentees and the patent bar.

- David Stein

[curious]

David Stein writes "The only aspect that surprises me is the relative lack of backlash by patentees and the patent bar."

Where is the AIPLA when we need it?

[Just an ordinary criminal]

Jim Jones:

I don't know if an ordinary speeding ticket is merely a civil offense in a majority of states. However, in many states a speeding ticket is indeed a "criminal offense" and therefore reportable to OED. For example, I believe that speeding tickets are considered criminal offenses in Illinois and Ohio. And all I said in my original post is that criminal convictions must be reported.

[real anonymous]

"That section requires that submitted papers be submitted only for proper purposes and that any *claims* made be legally warranted."

No it doesn't, at least not any more, by a literal reading at least. Old 37 CFR 10.18 used to require EXACTLY THAT ("The *claims and* other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;"), but it was never applied or enforced. The express prohibition against unwarranted or frivolous "claims" has apparently been *deleted* from new 37 CFR 11.18 by the rulemakers at the PTO ("The *[deleted]* other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;"

Of course, it is impossible for any applicant to know with certainty that "claims [are] legally warranted" in any final sense. Such would require proving a negative ("there is no prior art that could invalidate my claims"), which is impossible. What the PTO regulators should have said (and what could have been effectively enforced) is "The *claims and* other legal contentions therein are, after reasonable inquiry, believed to be warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;"

But as it is, as with all current PTO regulatory changes, it's one step forward, two steps back with the new 37 CFR 11.18.

[Just an ordinary criminal]

David - a speeding ticket is definitely classified as a civil offense in some states. For example, in Florida the code clearly states that an ordinary speeding ticket is a "noncriminal traffic infraction."

[6]

"Still -- this is all just bluster until OED actually tries to discipline a practitioner because, e.g., the practioner didn't read the ENTIRE Japanese reference cited by an examiner in a counterpart Japanese applicatio, which was subsequently submitted to the USPTO in an IDS."

I just had an attorney admit to me on the phone that she had not read the entire reference. The reference has 6000 claims and is over 300 pages long, but does that really matter?

[Just an ordinary criminal]

Also, David, something is not, ipso facto, a crime simply because it violates a statute, nor the fact that the state is (or is not) represented by a "prosecutor." There are all sorts of civil enforcement actions brought due to a violation of federal, state or local laws.

[Just an ordinary white rabbit(TM)]

Dear Just an ordinary criminal,

Have you signed up for?,

Criminals For Gun Control part 1 Home Invasion:

http://www.youtube.com/watch?v=3L3kMuN8sjk&fmt=18

[Malcolm Mooney]

"I just mailed the notice to OED about the speeding ticket I received a few weeks ago."

95 mph in a school zone.

[smashmouth football]

In Maryland, traffic violations (including speeding in violation of Md. Code, section 21-801.1(a) of the Transportation Article) are generally misdemeanors, i.e, crimes. See Id. 27-101(a). (Obviously, vehicular manslaughter is an exception, because it is a felony. See section 2-209(d) of the Criminal Law Article. There are also a few regulatory-type violations that are civil.)

I had to research this issue last winter (for reasons I have to refrain from disclosing), and very few states treat speeding tickets as civil violations. Maybe Wisconsin does IIRC, you'll have to look it up. But in any event, only a small minority of states.

[fast ass driver]

I think Dennis made an error, its not ANY crime that OED wants you to report, its any SERIOUS crime. Harry made a reference to look at your state law to determine what that is. And driving fast did not live up to that threshold inquiry.

What concerns me more is the change of address stuff he mentioned. As far as I know, that material is not in the slides.

David Stein says "let's face it: the USPTO has declared war on the patent bar."

I concur. Yesterday, there was a question to some of the TC directors as to (1) what is "patent quality" and (2) if there is anything we can do to help, what is it? Their response was File an Accelerated Examination request and do exhaustive patent searches. They didn't even bother answering what patent quality was. That being said, my interpretation is that patent quality is the extent to which you hold their hand while doing their job.

[David Stein]

Just an ordinary criminal wrote:

"A speeding ticket is definitely classified as a civil offense in some states. For example, in Florida the code clearly states that an ordinary speeding ticket is a 'noncriminal traffic infraction.'"

:shrug: OK, I'll accept that it varies by jurisdiction. Traffic law isn't my thing. ;) But unless it's explicitly classified by state statute as a non-criminal offense, it's probably criminal.

However, I doubt that even in Florida, speeding tickets are treated as "non-criminal" offenses in every aspect. For example, the Florida BMV/DMV most likely tracks your speeding tickets and can suspend or revoke your license if you get too many in a short period. That's not the case for truly non-criminal offenses, like parking tickets: you can rack up thousands without impacting your driving privileges (as long as you pay them all.)

===

"something is not, ipso facto, a crime simply because it violates a statute, nor the fact that the state is (or is not) represented by a 'prosecutor.'"

Here's law.com's definition of the term "prosecutor": "generic term for the government's attorney in a criminal case."

Where a government is acting in a private capacity - e.g., in a contract dispute between a city and a construction company - it is represented by a plaintiff's attorney. Lots of differences here - including ethical standards: the plaintiff attorney's ethical standard is zealous prosecution of the state's case, whereas a prosecutor's ethical standard is to seek justice (or some such nonsense. ;) )

===

"There are all sorts of civil enforcement actions brought due to a violation of federal, state or local laws."

But that's the other side of the coin: some criminal offenses can be enforced by citizens. These statutes create a civil cause of action, whereunder any individual may sue a violator.

- David Stein

[Paul F. Morgan]

One has to wonder if the moving force behind Harry Moatz threatening everyone with disciplinary actions for not reading and understanding hundreds of thousands of technnical words in all the references the CAFC forces everyone to put into every IDS is the PTO's present Chief Counsel (who has never practiced patent law) (and reportedly comes from the patent-hostile FTC) who has pushed so many other unrealistic practitioner rule restrictions and punishments, Mr. Toupin?

[Just an ordinary white rabbit(TM)]

Notice!, Notice!, Notice!:

“Just an ordinary” is hereby and forever more Jaoi™’s (my owner’s) trademark.
Is that fair?

If you want to use “Just an ordinary”, please contact me or my boss via a comment on Patently-O.com – permission to use it may or mayn’t be freely given depending on something or other.

[Just an ordinary criminal]

FAD - You need to read the final rules. The reporting requirement is for conviction of ANY crime - not just "serious" ones (37 CFR 11.25(a)). Once you report the conviction, the OED Director then determines whether or not the crime constitutes a "serious crime" warranting an interim suspension. As for the definition of a "serious crime", that is defined in 37 CFR 11.1 (generally, a felony or any crime involving fraud, deceit, interference with justice, etc.). Moatz probably mentioned checking with state law as to whether or not something like a speeding ticket is considered a "crime" in a particularly state. Also, in the comments published with the final rule, the PTO said that they would not exclude minor offenses from the reporting requirement. Instead, the comments published with the final rules clearly state that any criminal conviction must be reported to OED, and 37 CFR 11.1 defines a "crime" as "any offense declared to be a felony or misdemeanor by Federal or State law in the jurisdiction where the act occurs."

[Humorless Democrat]

I'm going to suggest to dictionary publishers that they use Harry's latest fulmination to illustrate the meaning of "pathetic".

[broje]

"Their response was File an Accelerated Examination request and do exhaustive patent searches."

Same speech at the ABA IP Law Section Leadership Conference last year. I found it packed with anti-patent folks. I got in an argument with one law prof who asserted that electrical circuits aren't patentable. Our organizations have been infiltrated by the enemy.

Here is another concern. Am I gonna get disbarred if the Examiner very wrongly misinteprets the inventor's previous work to reject some claims, but allows others, and the client forces me to take the allowed subject matter?

[MaxDrei]

"The polluter pays" is a good maxim. Everybody has a common interest in minimising pollution. Seems to me that poor quality examination pollutes the patent system. Seems to me that knowingly taking untenable claims to issue, with a view to asserting them, is polluting the system. Control mechanisms to minimise such pollution exist (in other countries), wherever there is consensus that such pollution has to be kept at bay. Self-interest ought to be enough and can be built into the system, if the will is there. Such controls don't feature an Office of Harry Moatz. In any jurisdiction where the patent system offends the public nose, the public will sterilize it.

[Malcolm Mooney]

"(2) Burying a reference material to patentability among a large number of cumulative references"

In other words, don't cross Harry Moatz without first combing the waters.

[David Stein]

Humorless Democrat wrote:

"I'm going to suggest to dictionary publishers that they use Harry's latest fulmination to illustrate the meaning of 'pathetic'."

Harry's schtick does have a bit of "ooga booga" quality to it. But I think he's probably being pressured by two things:

(1) Implicit - or maybe explicit - pressure by higher management to bully practitioners into the PTO's agenda (as SF points out above), and

(2) The constant need to demonstrate that his office has value - much like the TSA using its "terror alert" system to prove its own value. (Anyone notice that the TSA's "threat level" for airports has been stuck on orange - the highest level below "an attack is actually occurring" - for several years?)

As in many scenarios of government administration, the tail wags the dog here. If a regulatory office looks like it's sitting around doing nothing, its budget is going to be cut in short order... but if looks like the world's last line of defense against an army of evildoers (in this case, the members of the patent bar ;) ) then it's probably going to receive even more resources.

- David Stein

[Just an ordinary criminal]

David - civil enforcement actions are NOT just brought by "citizens" or other private parties. In fact, the majority of them are brought by federal, state and local governments. Examples would include things like actions for environmental infractions, FTC actions, etc. In most instances, "citizens" and other private parties don't even have standing to bring a civil enforcement action on their own. Also, at both the state and federal levels, civil enforcement actions are often handled by the same folks who handle criminal matters (e.g., the DOJ, state AGs, etc.).

[Just Visiting]

Isn't this the exact same stuff Moatz told us months ago?

With regard to anticipation = misconduct, Moatz's view that avoiding Festo is an unbreakable requirement is silly. It's the practitioners/clients judgment call whether taking a chance on DOE due to Festo is too high a price to pay when a) the DOE likely won't be available for 1000 other reasons, b) there is an argument that the claims are arguably allowable over the reference, and c) the analysis in a close requires costs money. The PTO is simply not positioned to make the call that a cost/benefit analysis of the practitioner/client was improper. Are broad Festoed claims clearly better than narrow, non-estoppelled claims? Is the PTO also going to decide that my claims were too narrow?

Further, if Japanese client believes Japanese reference X ought to be submitted, and the only thing I can read is the English abstract, then don't I have to submit the thing because of the client's Rule 56 duties? Wouldn't reasonable inquiry allow me to rely on my client's statements rather than reading the thing myself.

This stuff doesn't get less silly when repeated.

[JohnDarling]

"I just had an attorney admit to me on the phone that she had not read the entire reference. The reference has 6000 claims and is over 300 pages long, but does that really matter?"

No, it doesn't matter. You're not required to give that reference any more consideration than you would have if it had been one of the results of one of your famous 5 second Google searches.

So what's the problem?

[Im In Ur PTO Rejecting Ur Patents]

Keep going PTO and us examiners will be out of work too. Nice.

[Malcolm Mooney]

"With regard to anticipation = misconduct, Moatz's view that avoiding Festo is an unbreakable requirement is silly."

Your bizarre misrepresentation of Moatz's view is noted.

[zebra]

Who's up for a friendly game of chicken with the OED? Here's how the game starts:
1) Thousands of practitioners go out and commit a criminal offense (e.g., a speeding violation).
2) Report the incident to the OED in GREAT DETAIL (e.g., 30 pages), BUT ... take great care in crafting this report so that the nature of the offense remains obscure unless the entire report is read.
3) Relish in your mind the image of someone else (say the poor OED slobs) having to read a reference in its entirety to determine whether or not a serious offense has been reported.

[6]

"So what's the problem?"

I had heard that there was a requirement somewhere that all references cited (or at least the ones used in a rejection) had to be read through in their entirety before an attorney was to file a response. Is this not so?

[Just Visiting]

"Your bizarre misrepresentation of Moatz's view is noted"

I believe I've posted a fairly reaonsable interpretation of the junk I see on slides 41 and 50 of Moatz's presentation.

[David Stein]

zebra wrote:

"Who's up for a friendly game of chicken with the OED? Here's how the game starts:"

Except the OED won't read it. It will sanction the submitting attorney for unethical conduct in "burying" the reporting in a needlessly prolific submission.

This is not a level playing field. The OED issues our licenses, charges us licensing fees, and disciplines us for unethical conduct - not the other way around.

Here's my legal advice for you today: When you're riding a bicycle, don't play chicken with a tank.

- David Stein

[anonymous]

"I just had an attorney admit to me on the phone that she had not read the entire reference."

well, la dee frickin' da!!

like you couldn't do the same for virtually every reference in every ids

you and moatz both know that reading the entire reference is not necessary to know whether a reference is material or, more to the point, whether some over-agressive defendant will assert that it's material in litigation

rather than manufacturing some b.s. ethical obligation to read a reference, why not get congress to overrule the b.s. obligation to disclose so that applicants won't cite everything under the sun?

[Jeff Spangler]

At a recent firm where I worked, only about a third of the Registrants had the firm's business address and phone number on the OED Roster.

[PhilS]

To some extent, I agree with Mr. Moatz' comment about filing an IDS with a large number of references. However, in terms of determining where the line is drawn between patentable and unpatentable subject matter, Mr. Moatz is clearly off base. As patent attorneys, we have a duty to our clients to pursue the broadest protection possible (i.e., "zealous representation of the client".) In most cases, the line between patentable versus unpatentable claims is impossible to define with any precision. In short, this is another case of a non-patent attorney attempting to lay blame on the practitioner for diligently pursuing what is legally required of him or her under the ABA model rules and most state bar requirements.

[Malcolm Mooney]

"In most cases, the line between patentable versus unpatentable claims is impossible to define with any precision."

My crap detector just exploded.

[GP]

"I would go further and include any publication submitted by the applicant in an IDS, regardless of authorship, and regardless of when the IDS is submitted relative to presentation of the claim. I would also allow sanctions in instances where the claim reads on any device and method published in the art for more than 10 years prior to the filing of the application."

Dennis, nice work. I'm sure that you got the desired BP increase out of every Patent Attorney who reads this blog - except me.

;)

[AllSeeingEye]

"My crap detector just exploded"

You probably pulled a Barney Fife and pointed it at yourself (again).

Maybe you should be fined $1000 every time you post something annoying.

[GP]

MM Wrote: "My crap detector just exploded."

You know Dennis, I was just lamenting to my wife that everything you buy nowadays is made like crap and will break/fail soon after it's too late to return it.

I guess I shouldn't be surprised by this news that crap detectors are, too, unreliable crap.

[DramaQueenDetector]

"pile of worthless crap"

Doesn't that rhyme with Mooney?

[question]

I wonder how Malcolm can get anywhere near his "crap detector" without it exploding?

[gejrmmot]

Forcing the applicant to take over the examiner's job seems a brilliant idea, i.e. ease the backlog of applications and then a house-sweeping work is done.

Great, but not practical.

[JohnDarling]

"I had heard that there was a requirement somewhere that all references cited (or at least the ones used in a rejection) had to be read through in their entirety before an attorney was to file a response. Is this not so?"

Are you talking about a requirement for applicants and practitioners, or for examiners?

I would be thrilled if the examiner actually read the entire reference they were applying. I get so much, "Claims 1-20 are anticipated by Smith. See abstract." that it's comical.

To answer your question, no, it is not so.

Don't believe everything you hear. Especially when it's the babbling of those who don't know what they are talking about.

[Pat Tentlyo]

"the PTO's present Chief Counsel (who has never practiced patent law) (and reportedly comes from the patent-hostile FTC"

Actually, Mr. Toupin came from the ITC, not the FTC . . .

[Just an ordinary inventor(TM)]

Pat, Great pseudonym, very creative.
I should know, "cause I'm an inventor.

[Anon Anon]

MM = Harry Moatz.

[Erik]

So now we get to argue with both the Examiners AND the OED about what is a legitimate 102(b) reference. I think that a practitioner has no business practicing if they are submitting claims they know to be anticipated. But how in the world will you ever know? Come on people! How often have you received a lame or even good 102(b) rejection using submitted references which was just wrong. Let's not make practitioners even more afraid to practice honestly.

This job is hands down the most enjoyable I have ever had. However, if the trends continue I may start looking for other lines of work.

[6]

"Come on people! How often have you received a lame or even good 102(b) rejection using submitted references which was just wrong"

Well idk about that, but I just found a 102b the other day, so I do know that this sht happens. And it's one of those that spells the claim out in no uncertain terms. That one happened to be in the case with 600 refs on the IDS. Maybe I should report him for burying the reference? Get a little aaaaa, sanctions?

[Znutar]

Speaking of the duty of candor, anyone following the McKesson decision by cross-citing Office actions in related patent applications or in unrelated patent applications covering similar technology? Did you read ALL of the Office action before citing it? Even the boilerplate about the art unit's FAX number? Better know that FAX number - it will be on the quiz.

Help us, Mr Richardson.

[curious]

Every few years I get an OA where the examiner has given a new broad interpretation of a piece of prior art which I made of record and made a 102 rejection using it. This interpretation had not occurred to me or the inventor and has enough merit that instead of fighting it I amend the claims. And now some of you want to punish me.

[Malcolm Mooney]

"Speaking of the duty of candor, anyone following the McKesson decision by cross-citing Office actions in related patent applications or in unrelated patent applications covering similar technology?"

Of course, in every application on the docket. Every competent prosecutor is doing that. Anyone who doesn't is playing with fire and risking malpractice, and that includes not putting previously issued patents into re-exam to make sure that those office actions are cited. BOOGA BOOGA!!!!

/typical kneejerk reactionary prosecution attorney garbage off

[6]

"This interpretation had not occurred to me or the inventor and has enough merit that instead of fighting it I amend the claims. And now some of you want to punish me."

While I do have pity for you not being able to read and interpret claims and references, it has gotten to the point where you really need to learn to or gt fo the system, we have people waiting in line behind you. Lots of them. I mean come on, you're supposedly a professional. Are you telling me that examiners best you at claim/reference construction/interpretation? No wonder firms want to hire us.

JD you ready for the hearing? I still need to get some directions to the court, I suppose I'll goggle them. Is there any good places to park around there that you know of?

I'm going to bring my big finger hand with GO PTO! on it, maybe we can get the wave going!

[6]

"BOOGA BOOGA!!!!"

Actually I just had an RCE filed to get me to consider a reference/OA from another case. It was a fairly close reference, but no cigar.

[Malcolm Mooney]

6, you should drop a note in your next Office Action stating that you appreciate the remarkable candor and sense of duty demonstrated by the Applicant.

They'd appreciate that.

And just to be clear: if I knew of a very "close" reference and OA cited in an application concerning technology "closely" related to an application I was prosecuting, then I'd cite it in an IDS. But that's a far cry from instituting a system for identifying such references and OAs just because of what happened to that arrogant weiner in the McKesson case.

[JohnDarling]

"JD you ready for the hearing? I still need to get some directions to the court, I suppose I'll goggle them. Is there any good places to park around there that you know of?"

Leave your car at home. McPherson Square stop is your best option.

[Question for Malcolm]

Malcolm writes "includes not putting previously issued patents into re-exam to make sure that those office actions are cited."

Malcolm, can reexam cure a duty of candor problem in an issued patent?

[query]

If my memory is correct, under the proposed continuation/claim rules you could not file an RCE to have additional art considered if you were over the continuation limit.

[Tazistan Jen]

Anyone hearing rumors about our new patent office team?

[Malcolm Mooney]

"Malcolm, can reexam cure a duty of candor problem in an issued patent?"

I think it could go a long way towards covering up any *perceived* problem and encouraging a potential licensee to settle rather than attempt to tank the patent on inequitable conduct grounds in district court.

Is that what you mean by "cure"? Because as far as I know, there is no "cure" for this disease which affects most, if not all, patent applicants in the United States.

[Patent_Medicine]

"I would also allow sanctions in instances where the claim reads on any device and method published in the art for more than 10 years prior to the filing of the application."

Actually, it's EXTREMELY EASY to draft claims that are 100% anticipated by the prior art, even if one HAS done a search.

I once inherited an application already under examination on a "new" (you can see where this is going), highly efficient bicycle wheel. The first action included a 102 rejection based on a 100-year-old patent on a car wheel. Basically, when automobiles were new, people tried out all kinds of different things, and then the industry settled on some standards, like wheel sizes, axle hubs, etc. All the other technology (and some really good ideas) fell by the wayside. All that stuff has now effectively become "unknown" to even experts in the field.

All except this one senior examiner who knew EVERY SINGLE wheel patent ever issued, worldwide. I later read an article about him in the Washington Post. Amazing guy.

Although that was a weird situation, this is going to become an ever-increasing problem as the volume of knowledge continues to explode. I suspect that it will eventually become impossible to draft claims that are 100% free of art. There will be too much stuff to search and review. And besides, your search is only as good as the database is indexed.

By the way, who gets hit with IC in that bicycle case? Me? I was an associate who hadn't even touched the case. The long-gone tech spec who actually wrote it? The partner, who had been told by the client that he wouldn't be paid for a lot of partner review time?

(The application was abandoned and the client, a small company, quickly went under, BTW)

[curious]

yes, sometimes applicants get stung by prior art patents (probably "paper" patents) which are 50 or more years old and which the inventor was not aware of (even though Dudas claims that inventors are "all knowing" as far as prior art goes)

[broje]

Minds of an urban legend about an Examiner at the USPTO who's claim to fame was that he rejected a claim over a bible verse about some device moses or isaac or solomon or david or some such used to flush out the pig sty. Under Moatz, I guess that practiner would be disbarred, in addition to going to hell.

[broje]

Plus, now he has the duty to read the ENTIRE bible, just to traverse rejectin over the one bible verse. Kill me now.

[pds]

"Minds of an urban legend about an Examiner at the USPTO who's claim to fame was that he rejected a claim over a bible verse about some device moses or isaac or solomon or david or some such used to flush out the pig sty."

Not an urban legend -- I saw a case (I didn't prosecute it through) in which the examiner cited to an article that referred to an old (couple hundred years??) periodic table. The Examiner cited the periodic table for the proposition that a particular element had some property. The problem (for the examiner) was that if you read the complete article, the article said ... this periodic table was wrong about this particular property and instead of being X (like that stated in the old periodic table), the property is actually Y.

If I recall correctly, it took a couple of responses before the examiner actually relented -- put another way, the examiner maintained the rejection (and the Examiner's position) despite the evidence to the contrary.

The problem with keyword searching ....

[Malcolm Mooney]

"as the volume of knowledge continues to explode. I suspect that it will eventually become impossible to draft claims that are 100% free of art."

This makes absolutely no sense. The more prior art that is readily available, the more difficult it will be to draft claims that don't read on the prior art?

I suppose that will be true in fields that are "used up" and obsolete, and it may be meaningful to practitioners whose expertise lies in drafting vaguely worded baloney claims intended to read on computer-implemented stuff that other people will actually make and sell (without reading the patent application).

But for us grown-ups, the access to the prior art makes it easier, not harder, to draft non-anticipated claims.

[curious]

patent-medicine wrote: "All except this one senior examiner who knew EVERY SINGLE wheel patent ever issued, worldwide. I later read an article about him in the Washington Post. Amazing guy."

less likely to have examiners these days who are intimately familiar with the art in their technology since they depend on keyword searching as opposed to "shoe" searching.

[George]

Do any state bars require submitting speeding tickets?

What, exactly, is the relationship between speeding and the ability to practice patent law in an ethical manner?

[pds]

"But for us grown-ups, the access to the prior art makes it easier, not harder, to draft non-anticipated claims."

Come on MM ... most of us are convinced that the closest thing you've come to a registration number is when you got your booking number at the R. J. Donovan Correctional Facility.

If you were ever in a position to write claims (and actually think about what you were doing), you wouldn't be spouting the nonsense you do on a daily basis.

Regardless, you will never be confused with anybody who has actually had to write claims for a living.

BTW: The real problem drafting non-anticipated claims isn't about having access to prior art, the real problem lies in the fact that no patent attorney can predict the convoluted ways an examiner will interpret/mangle the claim language in order to make an assertion of anticipation.

I think every time an examiner issues an office action, Noah Webster spins in his grave.

[6]

"(The application was abandoned and the client, a small company, quickly went under, BTW)"

Serves them right, if their only claim to fame and glory was reinventing 100 year old tech then the entire company may as well have never been formed.

"less likely to have examiners these days who are intimately familiar with the art in their technology since they depend on keyword searching as opposed to "shoe" searching."

With every passing year I know more and more about the things seen in my art. Shoe searching or keyword searching, you still see a sht ton of art.

"real problem lies in the fact that no patent attorney can predict the convoluted ways an examiner will interpret/mangle the claim language in order to make an assertion of anticipation."

You're supposedly a practicioner, and you just did predict it. Indirectly that is. You predicted that they would interpret/mangle the claim language in order to make an assertion of anticipation. If it can be done, it likely will be done. You know this. Start drafting with it in mind already.

[6]

Me and Noah are like this ||. I would never make him roll over in his grave. He does compliment me regularly on my astounding vocab and comprehension of how words are used though. :)

[Malcolm Mooney]

""real problem lies in the fact that no patent attorney can predict the convoluted ways an examiner will interpret/mangle the claim language in order to make an assertion of anticipation."

That's not the real problem. The real problem is that individual Examiners in a given art group, even within the same subunit of an art group, treat identical claims VERY differently. It's as if one of them received a "policy memo" from a superior and the other one didn't, or failed to read it. It's not a question of claim interpretation but simply a question of what is deemed allowable. And I'm talking vastly different takes, where a very narrow dependent claim is rejected by one Examiner while another examiner issues not only the narrow dependent claim but independent claims that are about as broad as an applicant could hope for. And yes it's the same art that's being cited in both instances.

That is effed up. That is where the real work at the PTO needs to be done: improving consistency.

[pds]

"You predicted that they would interpret/mangle the claim language in order to make an assertion of anticipation. If it can be done, it likely will be done. You know this. Start drafting with it in mind already."

Ye ah right ... I'm to draft claims based how some examiner (for many of whom English is a second or third language) is going to mangle it.

Sorry Charlie ... these I'll just take to the BPAI unless the examiner comes up with something really good (unlikely, but it does happen). I don't let incompetence at the USPTO change my claim drafting strategy -- I just work around it during prosecution.

You've consistently exhibited this misplaced attitude consistently throughout your posts -- so let me disabuse you of this attitude ... the "universe" of patent law isn't centered around the goings on in Alexandria. A patent's time at the USPTO is just one (hopefully short) step in the entire process. As patent attorneys, we need to keep our eye on the big picture -- and the big picture usually doesn't include your claim construction failings.

FYI -- some of the easiest cases to prosecute (and take to the BPAI) are when an examiner blatently tries to stretch a claim interpretation. The harder ones are where the examiner uses a bad interpretation and never tells the applicant about the bad interpretation.

[pds]

"That's not the real problem. The real problem is that individual Examiners in a given art group, even within the same subunit of an art group, treat identical claims VERY differently. It's as if one of them received a "policy memo" from a superior and the other one didn't, or failed to read it. It's not a question of claim interpretation but simply a question of what is deemed allowable. And I'm talking vastly different takes, where a very narrow dependent claim is rejected by one Examiner while another examiner issues not only the narrow dependent claim but independent claims that are about as broad as an applicant could hope for. And yes it's the same art that's being cited in both instances.

That is effed up. That is where the real work at the PTO needs to be done: improving consistency."

Did the aliens take MM and replace him with somebody having some good insight?

I've got to stop posting today because I think I'm hallucinating.

I'm afraid to read what 6K might write -- like he actually allowed an application.

Yikes!!!

[curious]

I just marked this day on my calendar -- I agree with Malcolm -- on his "consistency" posting.

[curious]

somebody stole Malcolm's moniker?

[Noice above Law]

great - now 6 is coddling the dead and hearing voices.

wait - why am I not surprised?

[AllSeeingEye]

Mooney didn't get the memo...

Bill Lumberg said he should move his stuff to the basement, Storage B, I believe it was.

I guess he didn't get the "you are a worthless pile of crap" memo either.

[Malcolm Mooney]

It's the real me.

Fixing the problem of inconsistency is not about poor Examiners necessarily, but about poor supervision of Examiners and art units. There is no technology that is moving so fast that the prevailing issues can't be identified in advance and uniform requirements and guidelines instigated and applied (to be revised only when CAFC or Supreme Court decision dictates). And I'm not talking about providing one or two vague guidelines or ridiculous "Examples" to applicants and examiners. I'm talking about ten or twenty examples that cover the spectrum of possibilities along with indications as allowable or not.

Just freaking do it, for cripesakes. It's okay to be wrong. I expect the law to change and I expect the PTO to be imperfect. I can factor in what I believe are the most likely changes when I draft my specification and claims. And I can live with some Examiner inconsistency at the margins. But not vast philosophically inconsistent differences in what's allowable given essentially the same support in the specification. I mean, really.

[AllSeeingEye]

"improving consistency"

hobgoblins, little minds,

Mooney can't deal with variations. The day every examiner issues the identical rejection will be the day humans are no longer necessary at the PTO or the patent bar for that matter.

I would gladly replace Mooney with a machine. His posts are pretty predictable. Just randomly pick from the following list of words: crap, worthless, doo doo, satin panties, white wine, crack pipe, piece of paper, clearly, scribble, garbage, means plus fx, baloney, trivial, mundane.

These words may unwittingly also describe his life.