A large number of US patent applications have corresponding applications being examined in various office actions around the world. Although the major Patent Offices generally give no legal deference to the decisions of another Office, it makes sense that the decision of a first-examining Office would at least inform the analysis of the second-examining Office.
On that note, is it a regular practice of patent applicants to highlight the positive actions of other offices (such as the allowance of parallel claims)? Are there certain worldwide offices where this type of submission is more common?
Nice from Medicine. Pointed in the desired direction, and given enough latitude, EPO counsel will get for you a claim to the same subject matter (but which is worded somewhat differently) that often is wider and usually stronger (than the claim text written in the USA) against post-issue validity attacks in Europe.
It’s getting that latitude out of domestic outside counsel that is so hard. For corporate Applicants based outside Europe, I usually find in house counsel much easier to work with, to get claims that are optimal for Europe (but differ in their text from the ones written for the USPTO). Why are wide claims for Europe a problem for domestic out of house counsel, I wonder?
“…is it a regular practice of patent applicants to highlight the positive actions of other offices (such as the allowance of parallel claims)? Are there certain worldwide offices where this type of submission is more common?”
To answer Dennis’ question:
I routinely share the US claims and arguments with our EP counsel, to show what we’d like, what we got, and to demonstrate what we might reasonably expect. They use the information to inform their dealings with the EPO. But MaxDrei is right — claims drafting is so different that U.S. claims can only be used as a guide as to what the applicant wants. They’re not submitted to the EPO.
Patentgrrl is also correct: Mexico frequently just issues the EP claims. In fact, the examiners ask for them outright.
Australia and Canada don’t do this, but their examination is frequently so long delayed that they often mine the US & EP prosecution. I don’t consider it lazy on their part — they do their own searching and rejections in cases where the prosecution was clearly off.
It’s probably also worth bringing up Hong Kong here as well. For the reasons Patentgrrl brought up re: China, it’s generally better to do HK through the EP route (for as long as it’s available to us).
“Even though the foreign laws don’t apply here.”
Um, no.
Try to keep up with the subtlety “what’s up”, novelty and nonobviousness only apply to the standard that US law says so. Foreign findings mean diddly on their own accord. Now a reference may satisfy the legal standard in more than one jurisdiction, but that’s a very different happenstance than merely saying that a reference that satisfies a foreign country’s law on novelty and nonobviousness will satisfy the US law as well.
Try not to be lazy and make such assumptions.
They should be coming to their conclusions independently of any other patent jurisdiction.
It’s their patriotic duty as Americans to reject good art and good ideas if they come from foreigners.
The very limited viewpoint of INANE and most of the regular commentators seems to be that examination is only about allowance.
Really? That’s the message you get from everything I’ve said here? I think I see where the “very limited viewpoint” is now.
I don’t need a US examiner to tell me the claims are valid or are not valid in the US based on a Canadian examiner’s opinion of whether the claims are valid in Canada.
If the US examiner can read your OA response and still maintain his own independent opinion, don’t you think he can be appropriately critical of what some Canadian has to say?
If, as you say, examination is about “producing a legal document that will stand up to a court challenge”, shouldn’t you be addressing every possible reasonable argument against patentability with the examiner? Even if it does come from some filthy Canadian?
“…cause foreign law doesnt govern US Patent prosecution?
Simple enough, no?”
novelty and nonobviousness do govern, if a foreign examiner finds evidence of lack of novelty, then the claims lack novelty. Even though a foreign examiner found the evidence. Even though the evidence comes from a foreign country. Even though the foreign laws don’t apply here. The claim still lacks novelty.
yet patent attorneys should just go ahead and file in this country, ignore the fact that the claims lack novelty, then complain because the claim gets predictably rejected.
Les and Cy, Many thanks for your most helpful comments. I greatly appreciate them. It is very clear. Thanks again, Nina
KAPPOS
“Specifically, it would require applicants in any application that claims the priority date benefit of a foreign application to submit a copy of the search report, if any, and the first action on the merits from the foreign office together with arguments explaining why the claims in the U.S. application are patentable in the U.S. given the positions taken by the foreign office.”
More evidence of Kappos morphing into Dudas right before our blood-shot, rheumy, eyes. I have not heard anything that absurd since Jon-boy packed his brief case and left the building.
The only thing relevant about the foreign priority document — PCT or Paris Treaty — is whether or not it is a disclosure of the claims of the US application that claim priority from it.
What the foreign examiner said or didn’t say has no bearing whatsoever on the US applicant’s right to the foreign priority. The applicant is entitled to that priority by statute and by treaty. And Kappos has no more authority to abridge that entitlement by putting these conditions on it than Dudas had authority to cut the legs out of the Section 120.
Somebody get the GSK suits on the line. . .
BABEL BOY:
in a national phase examination, the examiner is required to repeat verbatim the PCT International Preliminary Search Report and leave it at that, but iff the claims were found to be unpatentable.
INANE:
What part of that bothers you?
JASON K.
The way I see it, U.S. patent examiners should be obligated to issue rulings according to U.S. laws which regulate the patent system. They should be coming to their conclusions independently of any other patent jurisdiction.
Thank you, Jason. Well put. If the applicant pays for examination in 10 different jurisdictions, he should get 10 different examinations.
The very limited viewpoint of INANE and most of the regular commentators seems to be that examination is only about allowance. Examination is primarily about producing a legal document that will stand up to a court challenge within the country being examined.
I don’t need a US examiner to tell me the claims are valid or are not valid in the US based on a Canadian examiner’s opinion of whether the claims are valid in Canada.
That’s the part that bothers me, INANE.
Les,
Why would you ever assume that an examiner can do the job that they are paid to do?
That is just crazy talk.
Do people even think before they propose things?
So… there are 10 applications in 10 foreign countries to which I am claiming priority (in case some flaw is found in the earliest claim). Each foreign office eventually cites a document in its own language. Arguments are presented in each application distinguishing the claims from those individual document..
Along comes this rule…Now, the examiner sees that those documents (which I IDSed) are not relevant….nevertheless, I have to submit a response to a non-existent office action explaining why each of the 10 documents is irrelevant on its own….oh and plus for good measure, even if they were combined in some sort of 10 way 103 rejection….
Oh oh oh….plus this is such a good idea, all the other countries adopt it….so now I have to that the documents that are cited in the U.S. and explain why they are irrelevant in 10 other countries in 10 other languages….
Yeah…that’s workable,
How about this. We assume that examiners can do a search and go with that….that is the assumption the whole system is based on isn’t it?
“together with arguments explaining why the claims in the U.S. application are patentable in the U.S. given the positions taken by the foreign office”
…cause foreign law doesnt govern US Patent prosecution?
Simple enough, no?
From the boss man himself:
“The (three-track) proposal would enhance worksharing by synchronizing USPTO examination of applicants first filed overseas to follow overseas examination—thereby ensuring the overseas patent office work product is available to the USPTO examiner when she undertakes her work. Specifically, it would require applicants in any application that claims the priority date benefit of a foreign application to submit a copy of the search report, if any, and the first action on the merits from the foreign office together with arguments explaining why the claims in the U.S. application are patentable in the U.S. given the positions taken by the foreign office.”
Of course, why should anyone explain why claims are patentable, given that somebody thinks the claims are not patentable. That’s just examiners being lazy….
Texas, if the whole point of “equity” is “clean hands” and telling the judge as honestly about that which hurts your case as that which helps it then the answer must be, YES, surely.
How about the other way around though? What if you tell the PTO about all the negs but never mention the +ves? (Don’t worry. Only joking, cos I think this is all so funny).
Is it inequitable conduct to, as a matter of practice, cite all positive opinions and withhold all negative ones?
Cy –
While your definition of essential seems reasonable, it is not the definition applied in the rule.
In any event, your point is well taken. As I would never rely on an incorporation by reference for “essential” material, there was an assumption of –non-essentialness– in my reply.
Les, your answer to Nina is right in the essentials. But I can’t let some of your dicta pass, as I believe it is incorrect. You said, “You could have just as easily incorporated an article from a technical journal or a chapter from a text book.” In fact, according to 37 CFR 1.57, essential material can be incorporated by reference only from a patent or published application.
It seems to me that if incorporated material is needed to support a patent claim in litigation, then that material is essential.
“Bilski is coming today. I can feel it. 6 and MM will not be happy, because it won’t do anything to kill software patents. ”
LOLOLOLOL. I can feel it too, but I can’t feel that I’ll be terribly disappointed. Business methods going down today will be victory enough for now. There really should be another case that deals the deathblow to much o software nonsense. If Bilski just so happens to incidentally get a few of them now so much more the merrier.
“Bilski is coming today. I can feel it. 6 and MM will not be happy, because it won’t do anything to kill software patents. ”
LOLOLOLOL. I can feel it too, but I can’t feel that I’ll be terribly disappointed. Business methods going down today will be victory enough for now. There really should be another case that deals the deathblow to much o software nonsense. If Bilski just so happens to incidentally get a few of them now so much more the merrier.
Nina –
Foist of all, your original question, and subsequent restatements are all crystal clear. It is the thinking of the respondents (present company excepted) that has been foggy.
The answer to your question is YES, the information that was incorporated by reference is still available to support your patent.
You could have just as easily incorporated an article from a technical journal or a chapter from a text book. The fact that the application did not become a patent has no bearing on what information was published in that document. If you sited it because it has a great explanation of what a flux capacitor is and you didn’t think it appropriate to burden your other application with that explanation as the flux capacitor is a side issue in your time machine application, then the explanation is incorporated by the reference. (in the U.S. anyway…some foreign jurisdictions do not allow such incorporation by reference.)
Bilski is coming today. I can feel it. 6 and MM will not be happy, because it won’t do anything to kill software patents.
Dear Pharma Patents, thank you very much for your note. The second app has been issued as a patent so it is too late to add the info. Is the information in a published abandoned application that has been incorporated by reference in its entirety in the now patent considered valid information to support the claims of the patent, should the claims ever be challenged? Are there conditions when it is or when it isn’t? Thank you very much, nina
Mexico will generally just accept claims allowed by the US or by the EPO.
I am starting to do it. In fact, I will be starting to file PPH cases regularly.
The USPTO is (ironically) more restrictive than in the past, particularly with respect to 101, in comparison to the EPO.
Further, in regard to recent decisions regarding Rule 56, it may be mandatory to file PH of foreign jurisdictions.
Best,
Bolts and nuts, or information on prior art, would do a greater favour instead of just the final outcome. The reasons being : (i) different patents law (ii) different court interpretation of the patents law (iii) possible different interpretations of prior art by different examiners (iv) limitations of patent databases available to patent examiners at different patent offices (v) possibility of introducing (ranging from lethal to milder) errors, where conforming of the pending claims with the claims granted overseas is allowed
Singapore has a hybrid system where an applicant can rely on the granted claims in another “corresponding” jurisdiction. The US qualifies, and is the most common. Also, we have found that the Office Actions in other countries are quite influential in Singapore, and in Malaysia as well.
Nina, the answer is “it depends.” If your second app is still pending you may want to consider to amending it now to include whatevery info you want from the earlier abandoned app. Its always easier to “fix” an application while its still pending than to try to make an argument in court.
I occasionally see reference to the preliminary opinion of the ISA, usually to argue against a rejection or restriction. I don’t give it much weight, though, since a lot of offices (especially Japan and Korea) almost exclusively cite domestic patent documents, and I’ve never seen NPL cited in a search report from any foreign country.
Mr. Lebowski,Thank you so much for your response to my question. Unfortunately, my question wasn’t clear. There is some important information in the specification of the published abandoned application that is not in the specification of the patent. It is information that could be helpful to clarify my claims if I needed to defend them. Can I use the information in a published abandoned application (incorporated by reference in its entirety) to defend my claims? I apologize that I do not have the legal language. Thank you for your help.
Nina
I wish I could help you sarah (I really do).
Your case intrigues me, almost as much as you do,
Alas, tis not to be,
The ping your think you know, tis not me.
Godspeed to you through your ordeals and your plight,
Keep the faith. Persevere. Fight the good fight.
Hey Ping,
Someone was in my Barn, uninvited I might add. They made a mess. Dumped a lamp on the floor. And dropped a few bags down from the rafters as they exited. The Ladder was repositioned. Oh my oh my!Looking for something no doubt. One thing was snapped up, oh Shucks! But being the original is only a minor problem, that’s okay. Because I have copies. And believe me, I have plenty of the same letter.
Happy Fathers Day PINGALING! Being Fathers Day I will be nice.
Careful Jason K.,
Your on-point and careful analysis may spawn some anti-Jason K posters who may end up eating their words. I know that you are the sensitive type and the guilt of having made others eat crow may be trouble your gentle soul.
As an earlier comment mentions, in Israel it’s possible to piggy-back off the allowance of a corresponding application in certain other jurisdictions. Some local practitioners discourage this, ostensibly because the patent would enjoy a lower presumption of validity, but really because they can bill more if the application undergoes substantive examination (such as it is) in Israel. (In fact, there is no presumption of patent validity in Israel beyond the normal presumption of validity of any admininstrative action – although if the patent has survived an opposition, it’s going to harder to challenge it.) I wrote a blog post about this last fall – link to iliplaw.com.
Even if you’re not going the piggy-back route, I think most practitioners here would tell the ILPTO of positive examination results elsewhere. And under a new ultra vires requirement promulgated by our over-zealous-but-soon-to-be-out-of-office Commissioner, beginning July 1 applicants will be *required* to present foreign examination reports to the ILPTO, as well as their responses thereto. Jury’s still out on whether this is actually going to be implemented, because it’s beyond the Commissioner’s power to make this demand, and because it’s impractical, and mostly because it stands to raise the cost of patenting in Israel to the point where many entities will just forego filing applications in Israel.
Nina, you answered your own question: the earlier application was already published. That means its file history is open for everyone to see – including adverse parties in court. The incorporation by reference into your later patent is irrelevant. The interesting question is, what if the earlier application went abandoned without ever being published? Then the incorporation by reference into the patent would force that earlier application file history open.
i am an inventor and have a question- If one of my patents includes an “incorporation by reference in its entirety” for a published application of mine that has since been abandoned, is the information in the source application still usable in court should I ever need it if this patent gets challenged?
thank you,
nina
I can imagine parallels between this and the debate over the U.S. Supreme Court using foreign court decisions to “inform” their own reasoning on how to interpret the Constitution and our own Congressional laws.
The way I see it, U.S. patent examiners should be obligated to issue rulings according to U.S. laws which regulate the patent system. They should be coming to their conclusions independently of any other patent jurisdiction.
If they happen to independently come to the same conclusion X, as other patent offices – fine. But that would still illustrate why the proclamations of other patent offices should be irrelevant.
If they happen to alter a conclusion that they otherwise would have reached based on the conclusions of a foreign patent office, then I think its fair to argue that there is indeed a “laziness” factor at work.
In Australia, it is common practice for examiners to check the USPTO and EPO online records for examination reports issued in corresponding cases. If the Australian claims are substantially the same as the searched/examined foreign claims then the examiner will normally issue an adverse report stating that s/he agrees with US and/or EP prior art rejections.
While differences in the law (particularly with the US) may result in the applicant pursuing different claims in Australia, it is not uncommon to respond with similar remarks and/or amendments as in the foreign case.
If these have resulted in allowance in the US or Europe, then certainly we would point this out to the examiner.
With regard to some of the other comments, it is easy and trite to accuse examiners of laziness, but of course there is no way to tell how hard an examiner may have searched for additional art. The fact is that if claims have already been searched by the USPTO and the EPO, it might be very difficult to find any better art.
As someone who regularly prosecutes corresponding applications in 30+ countries, it is quite common to submit allowed claims to foreign offices, particularly the EP claims. I tend to submit the US claims less often because the claims are not optimal due to restriction practice in the US and the EP allowance tends to be more persuasive where the IPRP was compiled by an EP examiner.
However, the persuasiveness of the allowed claims is very much jurisdiction dependent. Your first office action in Mexico, for example, will likely be a request that the applicant conform the claims to an issued patent in the EP or the US. Other countries allow you to bypass local examination and, instead, request grant based on an issued patent or allowance in a major jurisdiction (e.g., in Singapore, it’s far preferable as it’s a crap shoot what office they will use to examine the claims for “local” examination). Others may consider it persuasive with respect to novelty or inventive step particularly if the allowance was from the EP and the EP did the search at the international stage. But they will give zero weight to the EP or US claims where they have a high bar with respect to clarity or written descrption. Good luck with your EP or US claims in Eurasia, Taiwan or China for example.
Is there are post regarding submitting negative decisions from foreign offices to the USPTO. The USPTO does not address this.
This is a very interesting post.
In Argentina, a non PCT country, the local PTO has implemented different administrative procedures to speed up the substantive examination of patents, which is a very real problem undermining the value of seeking patent protection.
These administrative procedures have had little impact but still are better than nothing.
Overall, substantive examination reports issued by the EPO are given higher deference than U.S. ones, but this is an administrative practice not supported by regulations.
However, it is my understanding that increasing backlogs to examine and grant patents, budget cuts at the PTOs and the rationale that public costs could be diminished while greater efficiency could be achieved by international cooperation implementing procedures to share examination among
So it seems difficult to dismiss the idea that such cooperation is based only on theory and will not see the light in the next years.
Mariano Municoy
Section 17(c) of the Israel Patent Law allows an Applicant to rely on a corresponding patent that has issued from an approved examination authority, to obtain a patent in Israel by conforming the claims to those issued, without substantial examination in Israel for Novelty, Unity of Invention, Enablement and Inventive Step.
The list of approved examination authorities whose examination procedure is acceptable for invoking section 17c, currently includes: Australia, Austria, the United States Patent Office (USPTO), Germany, Denmark, the UK, the Russian Federation, Japan, the European Patent Office (EPO) , Norway, Canada and Sweden.
A similar option is provided for positive PCT Written Opinions.
ping what I was hinting at (but was too polite to say on this channel till you goaded me into it) was those claim construction provisions of the law in the USA that are a bit “special”, and unique to the USA, like for example those relating to M+F recitations in claims. So, that cherished M+F claim that gives an ROW Applicant optimal scope of protection and intimidatory power everywhere he goes with it will likely get him no respect in the USA. So, he should best write special claims, just for the USA.
So what, I hear you say. Where’s the harm in that?
And I say, the harm for Americans is that Americans write US-style claims for their ROW filings.
So, no, I’m not recanting.
if the same law applies?
ping you don’t get it. Not surprising.
I generally do not cite a foreign allowance in a US application unless it is a PPH application. I just don’t think it would matter, and might annoy the examiner.
On the other hand, for foreign applications, I generally do note if claims have been allowed in a major jurisdiction (EP, US, JP, etc.). That can be pursuasive in foreign countries. In fact, some foreign examiners will do their own searching, find claims allowed elsewhere, and suggest that you amend your claims accordingly. (Mexico comes immediately to mind, but other countries do this as well).
I wouldn’t do it outside of a PPH context. It seems insulting to the examiner and might alienate him. You are sort of telling him you don’t value his independent judgment very much.
Maxie,
Is that a sign that you have abandoned at least one of your Quixotic windmills (universal patent law)?
Let’s get one thing straight, shall we? A claim that is optimal for the USPTO is (usually)rubbish for ROW, and vice versa. So, whatever concordance there is over art, and objections, jurisdiction by jurisdiction, the cure is going to be different, as between the USA and the ROW.
At least in the past, I recall instances of informing the Canadian Office of an allowance of the corresponding US case and having allowance of the Canadian case follow. Otherwise, informing another Office of allowances in other Offices isn’t done to my knowledge, probably because it doesn’t influence the other Office at all as the standards for patentability differ another between the various Offices. It may also potentially backfire if the patent obtained is litigated later, with the accused infringer arguing that the patent was obtained not on the merits, but simply by virtue of accepting an allowance from an Office that doesn’t use the same patentability standards. My 2 cents for what it’s worth.
They are not even bound by what another U.S. examiner has done.
They’re not even bound by what they themselves have done.
A positive action in a foreign office will give me extra confidence in defending the same claims over the same art, but I wouldn’t expect it to be persuasive to the examiner. I generally trust the examiner to consider the foreign-cited art and draw his own conclusions, since that’s his job.
? If there was a search report or examination on a foriegn equivalent while any U.S. equivalent, continuation or divisional is still pending, you need to cite it therein to the USPTO, to avoid a subsequent charge of inequitable conduct, anyway. MPEP 2000, etc.
But as I recall there considerable U.S. case law that foreign office actions are not persuasive of whether U.S. claims are valid or not, so I would doubt if what any foreign examiner has done [other than maybe to provide prior art to consider] would be that pursuasive to a typical U.S examiner. They are not even bound by what another U.S. examiner has done.
“Positive actions in other offices only really makes sense if”
the same law applies.
Positive actions in other offices only really makes sense if the same or very similar art has been applied…
Indian law requires that prosecution positions for corresponding applications be informed to the IPO.
I’ve never had an Applicant highlight the allowance of a claim by a foreign office. They typically send a copy of foreign office actions with IDSs, but I wouldn’t call that highlighting a positive action since they send them whether the action was an allowance or a refusal. Besides, once they start amending the claims, it’s unlikely that the foreign claims will be equivalent to the US claims anyway.
I have had the opportunity to make this argument several times recently, once over the phone. I’m getting the impression that it won’t be found persuasive. The attitude is…”my art’s better”. Of course, in actuality, the situation is, –the U.S. examiner does not understand the application, the cited documents or both, as well as the EPO–.
“Or are you simply characterizing all examiners who don’t search as “lazy” and all examiners who do search as “incompetent”?”
Any examiner that doesn’t do whatever makes Babel’s life the easiest is lazy and incompetent in his eyes. Babel gets paid the big bucks to complain, not to skillfully prosecute applications. Geez, IANAE. Next you’ll be expecting him to actually read the references in the IPER or something.
Predicted Babel response: “I don’t need to read the references in the IPER because all examiners are lazy and incompetent, thus the references cannot possibly be relevant”
Sorry Babel but your understanding is awry. Have you ever seen a FAOM from the EPO when the WO-ISA was also from the EPO. It is two lines long. It says: our objections are all in the WO-ISA. You now have 4 months to get a full answer in to us. As IANAE writes:
What part of that bothers you?
When the WO-ISA is from the USPTO, is it any wonder that the EPO feels obliged to do its own “supplementary” search?
What part of that bothers you so much?
in a national phase examination, the examiner is required to repeat verbatim the PCT International Preliminary Search Report and leave it at that, but iff the claims were found to be unpatentable.
In the event of a favorable IPER, IBILE requires the national phase examiners to search until they finds something to base an obviousness rejection on
What part of that bothers you?
If the applicant has already received an indication that his claims are unpatentable, and he has done nothing to remedy that problem, what sane examiner would do anything other than reiterate the prior rejection?
On the other hand, if the examiner searches further and finds a reason to reject a claim, should he not be making that rejection?
Or are you simply characterizing all examiners who don’t search as “lazy” and all examiners who do search as “incompetent”?
Many countries in Asia will adopt granted EP claims on payment of a fee; or, if you feel your EP claims were narrower than deserved, you can still demand examination there.
It is a by-law of the International Brotherhood of Incompetent and Lazy Examiners that in a national phase examination, the examiner is required to repeat verbatim the PCT International Preliminary Search Report and leave it at that, but iff the claims were found to be unpatentable. The rule is particularly harsh with respect to EPO examiners, who face mandatory flagellation if they so much as hint that they may have done any independent analysis.
In the event of a favorable IPER, IBILE requires the national phase examiners to search until they finds something to base an obviousness rejection on and then notify the other national phase examiners in all designated countries.
But to answer the question — in a response to an office action I will always indicate in some conspicuous manner — like the title of the document — that a particularly perceptive examiner in another country has allowed all the claims. Where the other examiner has rejected all the claims, I either keep mum or suggest that he has a learning disability.
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