Radio Systems Corp. v. Accession, Inc. (Fed. Cir. 2011)
Accession is a small private New Jersey corporation. Its owner, Thomas Sullivan, is also the sole employee and named inventor of the company’s patent. Accession makes and sells a pet door (the “Wedget”) that installs within a sliding glass patio door. Accession’s Patent No. 7,207,141 issued in April 2007 and claims this “portable pet portal insert for use with a sliding patio door.” Radio Systems is headquartered in Tennessee and makes pet-related products, including a patented electronic pet access door (the “SmartDoor”).
The personal jurisdiction holding in this case will be discussed in a different post, but here I wanted to bring up the interesting facts regarding Accession’s ex parte contact with the USPTO regarding Radio System’s pending patent application. Judge Bryson explains the facts as follows:
On August 20, 2009, Accession’s counsel left a voice message with the PTO examiner for the [Radio Corp] SmartDoor application, alerting the examiner to the existence of Accession’s ‘141 patent. On the same day, Accession’s counsel telephoned Radio Systems’ counsel and stated his position that the SmartDoor infringed the ‘141 patent and that interference proceedings would be warranted between the ‘141 patent and the SmartDoor application. Later that day, Accession’s counsel left a voice message with Radio Systems’ counsel indicating that Mr. Sullivan should be named as a co-inventor on the SmartDoor application. On August 25, 2009, Accession’s counsel sent an e-mail to Radio Systems’ counsel asking whether Radio Systems had brought the ‘141 patent to the attention of the PTO. The next day, the PTO examiner returned the phone call of Accession’s counsel. As a result of that conversation, the PTO withdrew the notice of allowance previously issued for the SmartDoor application. On August 28, 2009, Accession’s counsel sent an e-mail to Radio Systems’ counsel informing him of the communication with the examiner.
Of course, third-party contact with an examiner is expressly prohibited under the Manual of Patent Examining Procedure unless expressly authorized by the applicant. Further violating procedure, the USPTO Examiner then returned the telephone call and based upon the information learned issued a “Notice of Withdrawal from Issue.”
Once an examiner learns of important prior art it, that examiner should use the prior art. Here, the examiner cited the Sullivan patent as prior art against claim 17 of the SmartDoor application and indicated that the “pertinent prior art document” had been disclosed in a telephone conversation with Accession’s patent attorney on August 26, 2009. In response, Radio Corp cancelled claim 17.
In its brief, Accession attempted to rebut the argument that its attorney had done anything wrong – writing that:
Nothing in the record could establish that the Patent Office considered Accession’s contacts to be “wrongful.” Indeed, after the first contact, a voicemail left by Accession’s counsel with the patent examiner, the Patent Office reached out to Accession’s counsel and subsequently took action it believed appropriate. That action did not include sanctions against Accession. There is nothing in this record (or elsewhere) suggesting that the Patent Office found Accession’s counsel’s actions to have violated any rule, policy, or law. Further, the record demonstrates that the sole purpose of the contacts was to alert the Patent Office to the fact that the Radio Systems pending application was deficient.
What should happen here?
I am sorry Ned – is your last response at all to the point of the rule as I outlined? Did you find some fact pattern that would allow the time rule to actually be suspended? Help me out – I thought we were sticking to the actual facts.
And actually, I have been pretty clear about the “what” that I have thought you were incorrect on. Just read my posts – they are rather straight forward.
And to answer your last question, the kettles of fish are more alike than they are different (hence my comment about the rather non-humorous point – you keep believing how you believe and you choose to act accordingly and it will be your name we see on Tuesday).
Listen Hard, you and others said I was wrong, but did not say about what. I have respectfully tried to point out to that you have been taking me way out of context to prove your point.
Now, if we talk about a meretricious interloping do-gooder who had no business tossing prior art over the transom without ever explaining why he could not have filed the prior art within the proper time frame, as in the case of disciplined agent, we have a whole different kettle of fish from the case at bar, do we not?
“contacted the PTO within a very short period of time after being hired. (Hired late June, contacted the PTO early August.) I think that is prompt enough. He was hired well after the rule period for filing prior art had elapsed.”
So you agree then that his contact was after the period allowed by rule?
I hope that you are not suggesting that applicants can get around timing rules by simply hiring new counsel. I am pretty sure the rules do not have any such exceptions as “But I just hired new counsel.”
I also hope that you see the (rather non-humorous) facts of the case at discipline, wherein the regaistered patent agent fully believed that he was acting appropriately – yet was simply wrong in what he believed.
I thus refute your aspersion that I have created a strawman – the rule is the rule and applies to the world at large regardless of whether they hird counsel one day too late or had counsel on staff from the get-go. In fact, Ned, your dependency on this factor is a bit of a red herring, if you don’t mind my saying so. It is you that have made assumptions about just what is “prompt enough.”
Ping, the attorney in the case at bar, not the case where the attorney was discipliene, contacted the PTO within a very short period of time after being hired. (Hired late June, contacted the PTO early August.) I think that is prompt enough. He was hired well after the rule period for filing prior art had elapsed. Your posts continually assume the attorney could have contacted the PTO within the "window." That assumption is your strawman for all your arguments. But it assumes facts not in evidence. Ned
Ned,
Trying so hard to weasel now is all a bit sad.
Plus, you state “ under the circumstances of this case where the attorney acted promptly” – the problem is, the attorney did not act promptly – as promptly is defined by rule to be the two month window, and the attorney (just as in the fact pattern provide by Ned is wrong) acted outside that window. I did read the decision to discipline. I suggest that you re-read that decision. Plus, the attorney did far more (and you commented on this extensively) than merely “inform all parties.” repeated calls and having a discussion with the examiner – much like in the decision to discipline – is more than “inform.”
“that did not comply with 37 C.F.R. § 1.99.
Mr. Derényi erroneously interpreted the patent rules as permitting his submission of prior art beyond the permissible two-month period.
when he subjectively came upon information that might be relevant to the ongoing examination of the
other person’s application.
On one occasion, information submitted by
Mr. Derényi contained annotations and other markings.
Additionally, he spoke directly with the patent examiner assigned to the application on several
occasions.”
These are hardly “none of these compelling facts involved here.”
Note: all of the following illicit ex parte communications occurred beyond the two month time limit (there was no prompt action)
Accession’s counsel left a voice message with the PTO examiner
Accession’s counsel telephoned Radio Systems’ counsel and stated his position that the SmartDoor infringed the ‘141 patent and that interference proceedings would be warranted (obviously not a request for the applicant’s permission or an attempt to comply with 37 C.F.R. § 1.99).
Accession’s counsel left a voice message with Radio Systems’ counsel indicating that Mr. Sullivan should be named as a co-inventor (similarly, not a request for the applicant’s permission or an attempt to comply with 37 C.F.R. § 1.99).
Accession’s counsel sent an e-mail to Radio Systems’ counsel asking whether Radio Systems had brought the ‘141 patent to the attention of the PTO (similarly, not a request for the applicant’s permission or an attempt to comply with 37 C.F.R. § 1.99).
the PTO examiner returned the phone call of Accession’s counsel. As a result of that conversation, the PTO withdrew the notice of allowance previously issued for the SmartDoor application. (this is the equivalent of the “annotation and other markings'” of a submission – a conversation requires give and take – both parties exachanging information).
Accession’s counsel sent an e-mail to Radio Systems’ counsel informing him of the communication with the examiner (Still not a request for the applicant’s permission or an attempt to comply with 37 C.F.R. § 1.99).
I would say that all along people opposed to your vies have made a compelling case.
Your choice not to see that case only reflects on you.
Yes, that’s right – even handed, balanced and rational viewpoints are just so boring.
Malcolm, I think this was a warning shot only.
Expect harsher results in the future.
check my reply supra
check my reply to the initial post on this date.
Check my reply just above.
About what?
You might search above as long as you want, but I limited my remarks to a call to the examiner when the caller’s attorney knew of facts suggesting willful fraud on the PTO, or when the claims might be interference, under the circumstances of this case where the attorney acted promptly, informed all parties, and suggested to the applicant that the claims in his application were interfering with his client’s patent.
If you read the decision to discipline, there are none of these compelling facts involved here.
What bothered me about the discussion in this thread so much was that it was divorced from the facts and was primarily an academic discussion about improper contacts. The question we should have been discussing all along was whether the facts in this case justified the contact.
“But just to be clear: does publication of one’s name in the gazette, by itself, constitute a ‘disciplinary action’?”
It’s a public reprimand, so I guess it does.
It could be worse, the guy could be like Ned and be spouting off on a widely read blog, and then be proven wrong. Time and time again.
More people probably read Patently-O than the OG. So Ned should consider this his public reprimand.
Admission? Unbalanced? Criticism? Superior?
Boring. Sorry. Yawn.
The OG is published every Tuesday. You might want to check it out.
I do check it out occasionally, mainly in response to requests to prove that the USPTO issues a few crxppy patents on a weekly basis.
Disciplinary actions by OED are just some of the fascinating reading you’ll find.
But just to be clear: does publication of one’s name in the gazette, by itself, constitute a “disciplinary action”?
“In Europe, people don’t file prior art. They hold it back for inter Partes proceedings.”
An interesting admission, coming so close on the heels of the critical posting of:
“One would think it might welcome observations, from experts in the field, on the degree to which the Examiner can rely on the blandishments of Applicant’s zealous advocates during ex Parte examination on “the merits”.”
What then, MaxDrei, should casual observers take from this evidence of your unbalanced criticism of the US patent system?
Is not what is good for the goose, also good for the gander?
Why no criticism of this European tendency to hold back that art which is best for examination?
Perhaps this tendency of not having the best art (or even of not wanting to have the best art) in front of the examiner, add something to the notion of the US patent being superior?
As you now hope, with the MS v i4i decision, we will now see more “but for” art being laid before the Examiner than held back for later – in essence, the C&C standard, which you still rail against, is a good thing, in yet another way. Perhaps we can see you championing the C&C standard in Europe? One can dream, can’t one?
“My question: other than this gazette announcement (which few of us would ever have encountered, I suppose, had someone not been kind enough to reproduce it here)…”
You’re welcome. The OG is published every Tuesday. You might want to check it out. It’s full of interesting stuff, like reissue application filings, ex parte and inter parte reexams, etc. Disciplinary actions by OED are just some of the fascinating reading you’ll find.
From June 14, 2011 Official Gazette:
Notice of Reprimand
Eugene F. Derényi of Ottawa, Ontario, Canada, registered patent agent (Registration Number 52,409). The United States Patent and Trademark Office(“USPTO” or “Office”) has publicly reprimanded Mr. Derényi for violating 37 C.F.R. § 10.23(b)(6) (engaging in conduct that adversely reflects on a practitioner’s fitness to practice before the Office) by making third party submissions in another person’s patent application that did not comply with 37 C.F.R. § 1.99.
On four occasions, Mr. Derényi filed papers in another person’s published application without the applicant’s consent, outside the allowable time period, and without submitting adequate justification to permit the out-of-time filing. Mr. Derényi erroneously interpreted the patent rules as permitting his submission of prior art beyond the permissible two-month period. He mistakenly believed that the patent rules permitted him to file the submissions, while monitoring the examination on the USPTO’s public Patent Application Information Retrieval System, when he subjectively came upon information that might be relevant to the ongoing examination of the other person’s application. On one occasion, information submitted by Mr. Derényi contained annotations and other markings. Additionally, he spoke directly with the patent examiner assigned to the application on several occasions. Mr. Derényi mistakenly believed that these contacts with, and third party submissions to, the examiner were permitted. In short, Mr. Derényi’s interaction with the Office violated rules pertaining to a third party’s involvement in another person’s application during the USPTO’s ex parte examination process.
So apparently Eugene Derenyi is incapable of reading plain English.
My question: other than this gazette announcement (which few of us would ever have encountered, I suppose, had someone not been kind enough to reproduce it here), is that all the punishment the USPTO is going to dish out to Mr. Derenyi? No suspension of his reg number for a limited time? Nothing else?
I hope Dennis picks up on this. It seems like an appropriate follow-up post.
Good. With BRI and PoE, submission of relevant prior publications prior to examination on the merits ought (at least in theory) to have a greater de-railing effect than after issue, when there will be a narrow claim construction that is vulnerable only to C+C evidence.
In Europe, people don’t file prior art. They hold it back for inter Partes proceedings. But they factor in the point that, in Europe, they can get issued patents revoked on the PoE.
Perhaps with MS v. 4i we will now see more “but for” art being laid before the Examiner rather than held back for later.
I have no problem extending the time period for response from two months to three months and then with fees to the maximum of six months.
However, we should distinguish the submission of art and an actual response to office action – as the submission of art explicitly calls for only the submission of art and not for third party commentary on that art. So your premise of needing time to develop any type of patentability opinion or compose observations is off the mark.
Notwithstanding such an error, I still would have no problem with expansion of repsonse time of up to four additional months.
I have no problem extending the time period for response from two months to three months and then with fees to the maximum of six months.
However, we should distinguish the submission of art and an actual response to office action – as the submission of art explicitly calls for only the submission of art and not for third party commentary on that art. So your premise of needing time to develop any type of patentability opinion or compose observations is off the mark.
Notwithstanding such an error, I still would have no problem with expansion of repsonse time of up to four additional months.
I posted mine below, before I saw yours above.
I welcome anything that encourages folks to give emerging A publications the attention they ought to receive. Thus, the EPO gives an Applicant 6 months from publication of its search report and patentability opinion, to decide whether to pay the EPO to do its examination on the merits.
I think 3rd parties need just as long to file such observations on patentability as spring to their minds when they are reviewing the A publications of their competitors. Two months is deliberately far too short.
I can see that comment on whether the law makes sense or not is boring for you. Much more fun for you is to beat up another contributer. I’ll leave you to it then.
This 2 month cap is effective to extinguish all informed and effective 3rd party observations on patentability, before they are even composed. How long does it take, to review emerging A publications and then compose effective observations on patentability? As long as to respond to a FAOM, perhaps? Three months shall we say?
What does this 2 month cap, plus C+C after issue, do for public confidence in the Presumption of Validity? The whole thing is a joke. Oops, you call it a “strong patent system” don’t you, and the reason why the 20th century belonged to America.
“is not the Examiner free just to ignore them?”
You miss the point – in order to determine whether or not they are rubbish, the examiner would have to, well, examine them. That examination is clearly against the rules.
And does this not make a nonsense of the idea that the PTO is at all interested in anything that might have a bearing on the presumption of validity of the patents it duly issues?”
Not at all – the art can be submitted – but you have to follow the rules (specifically the timing rules). IN fact, having such timing rules should make people more attentive to the patent system and make people more inclined to do a little something that forms the basis of even why the patent system exists (that little somethign has to do with dissemination of the disclosures submitted by applicants).
“But if the observations are rubbish, is not the Examiner free just to ignore them?”
Even determining that they are rubbish would require the examiner’s time. That’s the whole point of Rule 99. Give the public a limited time in which to submit information, and don’t permit comments from those submitting the art. And this decision from OED makes it clear: if you miss your Rule 99 opportunity, you’re done. Wait until the patent issues, and if you have an issue with the patent, file a 3rd party request for reexam.
Ned is wrong. He was told that over and over and he insisted he wasn’t wrong.
Ned is wrong.
I’m sure he’ll come back with a Supreme Court decision from 1817 that says he’s right, but he’s wrong.
Wrong. Wrong. Wrong. Wrong.
Many thanks, that contributer. I can see why the PTO wants no truck with 3rd party submissions of relevant prior art during its examination on the merits. It gives the Examiners more work and is a temptation to 3rd parties to use, to delay the issue of patent rights to their competitors.
But if the observations are rubbish, is not the Examiner free just to ignore them?
And does this not make a nonsense of the idea that the PTO is at all interested in anything that might have a bearing on the presumption of validity of the patents it duly issues? One would think it might welcome observations, from experts in the field, on the degree to which the Examiner can rely on the blandishments of Applicant’s zealous advocates during ex Parte examination on “the merits”.
From June 14, 2011 Official Gazette:
Notice of Reprimand
Eugene F. Derényi of Ottawa, Ontario, Canada, registered patent agent
(Registration Number 52,409). The United States Patent and Trademark Office
(“USPTO” or “Office”) has publicly reprimanded Mr. Derényi for violating 37
C.F.R. § 10.23(b)(6) (engaging in conduct that adversely reflects on a
practitioner’s fitness to practice before the Office) by making third party
submissions in another person’s patent application that did not comply with
37 C.F.R. § 1.99.
On four occasions, Mr. Derényi filed papers in another person’s published
application without the applicant’s consent, outside the allowable time
period, and without submitting adequate justification to permit the
out-of-time filing. Mr. Derényi erroneously interpreted the patent rules as
permitting his submission of prior art beyond the permissible two-month
period. He mistakenly believed that the patent rules permitted him to file
the submissions, while monitoring the examination on the USPTO’s public
Patent Application Information Retrieval System, when he subjectively came
upon information that might be relevant to the ongoing examination of the
other person’s application. On one occasion, information submitted by
Mr. Derényi contained annotations and other markings. Additionally, he spoke
directly with the patent examiner assigned to the application on several
occasions. Mr. Derényi mistakenly believed that these contacts with, and
third party submissions to, the examiner were permitted. In short,
Mr. Derényi’s interaction with the Office violated rules pertaining to a
third party’s involvement in another person’s application during the USPTO’s
ex parte examination process.
A third party is permitted to submit patents and publications in another
person’s published application within two months of the date of publication
of the application or prior to the mailing of a notice of allowance,
whichever is earlier. See 37 C.F.R. § 1.99. Any submission by a third
party beyond the time limits set forth in 37 C.F.R. § 1.99 is permitted only
with the applicant’s consent or upon a showing that the patents or
publications could not have been submitted to the USPTO earlier. See 37
C.F.R. § 1.99(e). Moreover, a submission under 37 C.F.R. § 1.99 shall not
include any explanation of the patents or publications or any other
information. See 37 C.F.R. § 1.99(d). Highlights, marking, and annotations
are likewise prohibited. See Manual of Patent Examining Procedure (MPEP)
§ 1134.01. Finally, the involvement of a third party ends with the filing of
the submission, and the third party should not contact the Office or submit
any other inquiries. See MPEP § 1134.01.
The USPTO considers the filing of a petition or other paper on behalf of
a party having no standing in an application, and not otherwise authorized
by the patent rules of practice, to be a petition or paper presented for an
improper purpose. See 37 C.F.R. § 11.18. Filings by a third party in
published applications other than those expressly permitted under 37 C.F.R.
§ 1.99 may be referred to OED for appropriate disciplinary action. See “Third
Party Attempts to Protest or Otherwise Oppose the Grant of a Published
Application,” Official Gazette (April 22, 2003) (publicly available at
link to uspto.gov)
This action is taken pursuant to the provisions of 35 U.S.C. § 2(b)(2)(D)
and 37 C.F.R. §§ 11.20, 11.26, and 11.59. Disciplinary decisions regarding
practitioners are posted at the Office of Enrollment and Discipline’s Reading
Room located at: link to des.uspto.gov.
May 23, 2011 MARIA C. CAMPO
Acting Deputy General Counsel for General Law
Office of General Counsel
United States Patent and Trademark Office
And shrieked at the top of his/her lungs, “Oh my, I never!”
Seriously, should the Examiner have also ignored the reference? If so, how does that serve the interests of the public, or the interests of judicial economy? If not, then would you really punish the discloser for violating the letter of a USPTO procedural rule, while acknowledging that the disclosure itself had substantive value to the public and the patent system? I think this case is just another indication of USPTO procedural rules and policies that frustrate rather than serve the public interest.
Can anyone logically defend the current system that enables a third party to file a protest only while an application is secret, but after it publishes, bars all protests, except for the toothless and useless Rule 99 submission? That is, except that it insulates the USPTO from having to do the work of dealing with protests and more prior art?
Wouldn’t it really be more efficient and fair to enable protesters to effectively submit their references and arguments against patentability while the original application is pending, rather than requiring them to wait until the application issues and then file a reexamination request (that now will be granted only if they can show “a new technological teaching that has not been previously discussed on the record during original prosecution”) or requiring them to challenge validity of the issued patent in Federal Court, but then with a presumption of validity?
As for this case, I think these Radio Systems people have nothing to complain about, despite the violation of rules by Accession’s counsel. If the reference is really that good, they were saved from getting an invalid patent that would have drained them of hundreds of thousands of dollars in litigation, only to learn that the patent is invalid in the end after all.
I’m with you, TF. I read all the posts, and checked all the cited rules and statutes. I don’t see it either. Several posts mention rules apply to ex parte proceedings, others have mentioned rules of conduct that apply to proceedings before a tribunal. None of these apply to this situation.
With all due respect, my comment was posted after having read each of the preceding posts.
Having read those posts, I fail to see any that cites a rule that was violated by Accession’s counsel. My question for those villifying the conduct of Accession’s counsel, is simply:
WHAT RULE WAS BROKEN?
I can understand a patent applicant not being amused that another would bring to the attention of an examiner relevant prior art that the examiner missed. I do not understand the basis (if, in fact, there is any) for claiming that the one who brought the art to the examiner’s attention has violated a legal or ethical rule. If, in fact, there is any such basis, I would like to know what it is so that I and the other patent attorneys I counsel can avoid any such violation.
CAN ANYONE CITE A RULE OR ETHICAL STANDARD THAT WAS VIOLATED BY ACCESSION’S COUNSEL? (or are the posts here mere rants and raves?)
I cite the rule itself:
From rule 1.131:
“Prior invention may not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in § 41.203(a) of this title, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this title; or”
and
§ 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
Note, the patentee in reexamination cannot suggest an interference.
Big stinking hole in our laws and procedures, n’est-ce pas?
Why is “rule” in quotes in your hypo?
Question, during reexamination, the examiner cites a reference not a statutory bar disclosing and claiming the same invention.
You file an affidavit demonstrating prior invention.
The examiner rejects your affidavit based on the “rule” that 131 affidavits cannot be used to overcome a reference claiming the same invention because an interference must be declared. You respond by observing that the patent office has NO JURISDICTION to either declare or adjudicate an interference between two patents and that he has no LEGAL grounds for maintaining the rejection given the proofs of prior invention.
Who wins on appeal?
“PIMPIN’ RIG this”
PIMPIN’ RIG this
PIMPIN’ RIGth is
PIMPIN’ RIGht is
PIMPIN’ is RIGht
PIMPIN’ is Right
PING is Right
ping is Right
The code O 6 is revealed.
There is no question the owner of interfering patent has a right of action against the owner of the other patent that interferes. Today the right of action is provided by statute. But historically the right of action was in equity. The case law even historically required that the second patent actually issue. I haven’t read the cases as to why the courts refused to enjoin the Commissioner from issuing the interfering patent, but I believe it has to do with ripeness. However, given all the developments in law since, I believe I could get a TRO against the Commissioner from issuing a patent that clearly interfered with my own, where the remedy I sought was the consideration by the Commissioner of whether the there were grounds for interference in fact. If he decided that in his opinion, given knowledge of my patent and the claims of the pending application, that there was no interference in fact, his opinion would be entitled to deference. The problem we have here, is that the Commissioner has blocked the examiner from receiving the information about the potential interference at all, under a rule that clearly does not apply or should not apply to these facts.
As to your second question about how there could be an interference between two patents were one is prior art to the other, I think the answer is that there can be interference, but the second filed patent will quickly be declared invalid in the interference.
Given all of the above, it is a wonder that the patent office does not provide a procedure for third parties to file a protest against the issuance of a patent that contains interfering claims and would rather learn about it by having a lawsuit filed against the Director.
“So please explain to me”
Careful IANAE, all ya gonna get is a conclusory statement of Ned’s position and an invitation to read cases.
Cause thats how Ned does his esplaining.
Yeah, the way that Ned (mis)reads cases all that amounts to his Ned’s version of the handwaivy thingie with no real explanation.
“I don’t really see the problem here”
Then open your eyes and read all teh posts here.
Geesh.
I don’t really see the problem here, regardless of whether the Accession (company) contact was an attorney or not.
Someone mailed potentially relevant prior art to the examiner of a published application.
The Examiner had every right to ignore it, and there was nothing the “someone” could do if the examiner did ignore it. Given the apparent relevance of the submitted art, the examiner decided not to ignore it. Issuance of a ‘bad’ patent was potentially avoided.
Certainly, the MPEP counsels examiners to ignore third-party submissions (and examiners aren’t likely to improve their productivity by considering third party submissions, especially the potentially large ones that “the big boys” can submit).
Given that patent examination is ex parte (i.e., NOT an inter partes procedure), no OED or state bar rule appears to have been broken. (In fact, the OED rule most potentially relevant to the discussion so far regarding “impropriety” appears to be 10.23(c)(12):
§ 10.23 Misconduct.
(c) Conduct which constitutes a violation of paragraphs (a) and (b) of this section includes, but is not limited to:
(12) Knowingly filing, or causing to be filed, a frivolous complaint alleging a violation by a practitioner of the Patent and Trademark Office Code of Professional Responsibility.
Other than potentially representing his/her client poorly (e.g., examiner considers art, issues patent anyway; potentially greater burden to prove invalidity of issued patent), what did Accession’s counsel do wrong?
The rules already provide that third party don’t have a _right_ to have their submissions considered, and examiner’s don’t _have_ to consider their submissions (outside narrowly delineated circumstances). What’s the harm here?
Your silly assumptions and proposals have been so thoroughly refuted by MM, IANAE, broje, etc. that I’m not going to waste any more time than it takes me to finish this post.
Ned: The PTO has no legal authority or right to issue a second patent on the same invention.
I think you’ve solved both your problems right there. It’s a cloud on the second patent, not the first, because the second one would be the improperly issued one. Also, it sounds like a pretty good basis for invalidating the second patent later on if it ever becomes problematic.
And really, this is all a flimsy rationalization because it turned out the whole sordid affair was resolved by the simple expedient of canceling claim 17. It’s clearly a case of a vindictive patentee griefing a third party who didn’t want to pay him royalties.
If you assume the issuance of an interfering patent is a harm to the patent owner per se,
But I don’t assume that. Because I don’t see the harm, and I don’t see the interference.
So please explain to me (1) what the actual harm is, or on what basis it’s reasonable to consider it a harm per se, and (2) how two patents can interfere if one is prior art against the other.
And even if I did assume that, I’m curious as to why any “harm” of this type would entitle anybody to a remedy. Lots of patents get issued that are immediately problematic for lots of other people in one way or another, and none of those people are entitled to any sort of “fundamental” right to prevent it from happening. Even if the patents happen to be invalid.
“The attorney should not have interefered with Radio Systems statutory right to a patent unless.”
unless…
…just what is the get-out-of-jail-free card to be played? Just what is the ends-justify-the-means rationale to be so liberally applied here?
See my post above – rules and consequences…
Ned-O-gram,
Review your last statement and apply it to yourself.
Awfully funny just who needs to “Got to school”
Ya gotta love this – I poke Sunshine with my pointy stick and if he dont answer I get the last best word and if he do answers he shows how d_umb he is and I still get the last best word.
Life is good.
“You’re not allowed to assume things you know aren’t true.”
You are also not allowed to assume things you don’t know aren’t true.
Any ASSumptions are not allowed.
What should be done. That is easy. The USPTO should be happy that they are not sued under the Federal Tort Claims Act for gross negligence that amounts to an intentional act that would have caused serious damage to Acession’s business. In return they should thank the attorney for his efforts in protecting the integrity of the patent system. However, Accession could be sued by Radio Systems for violating its statutory rights granted under Title 35. I love these simple fact patterns. The attorney should not have interefered with Radio Systems statutory right to a patent unless.
“should have allowed the patent he knew was invalid”
Go back to counting Justices – something ya can do with both hands.
IF the examiner did what he was supposed ta do he woulda truly ignored the reference – thus, that references would not have been examined and whether or not that reference impacted patentability would be moot.
You are assuming de facto that the supplied reference makes the patent invalid.
Bad ASSumption.
Two patents on the same invention? See the Senate (or was it the House) report on interfering patents in the legislative history of the Patent Act of 1836 reprinted in Chisum.
Also, the existence of a patent of another issued by the PTO to the same invention is a cloud on title.
Irreparable? Until and unless the other patent is voided, one’s own patent is impaired by the cloud. The PTO has no legal authority or right to issue a second patent on the same invention. It harms the exclusive right of the first patentee, is unauthorized by any statute, and is ultra vires by any measure.
You’re not allowed to assume things you know aren’t true.
And then the examiner should have allowed the patent he knew was invalid to issue. Just another day in the big city.
The damage is done and is substantially irreparable if the interfering patent issues.
What damage to the owner of the first patent has in fact occurred and why is it “substantially irreparable”?
ping, the way to talk at times suggests that you have not attended law school, or are at least unfamiliar with what such schools teach.
ping, when damage has not yet occurred, but will occur, is an issue of ripeness.
Got to school.
Casual, I’m not so sure whether the issue is whether the to-be-issued application was invalid, which is a matter of general public interest, or whether the patent owner was objecting to the issuance of an interfering patent, which is an entirely different kettle of fish.
The facts here suggest the problem was of the interfering patents variety. This justified the approach to the PTO.
If the issue was only prior art, the interference may not have been justified.
Now remedies wanted on assumed per se basis? And the assumption of an actual interference is on whose word…?
I dunno Ned, seems ta smack O certain due process, er um, (D)ue (P)rocess issues.
If you assume the issuance of an interfering patent is a harm to the patent owner per se, then the patent owner has a right to stop it before it happens. This is fundamental.
IIRC, the examiner will not invoke an interference until he is willing to allow the claims.
From the point of view of the patent holder, I would suggest still that his interests in intervening are not ripe until the interfering claims are allowed.
IANAE, about the relevant dates in this case, I might tend to agree with you that the ‘141 patent may have been a statutory bar. But the OP by Dennis does not have these additional facts. I am not sure that the Federal Circuit’s summary of the facts is sufficient to resolve the issue of whether the 141 was a statutory bar.
“to address concerns that 3rd parties would do this after applications started being published on a routine basis”
See my observation above.
“The patent owner should not be left without a remedy until the damage occurs”
Um, I dont know – ya mean that there are remedies before damage occurs? So if I think I might be damaged I canget a remedy?
Yeah baby ! my main man is back in the saddle.
The posse has been quite lost without ya, IANAE.
Hmmm, maybe that was the reason for the long hiatus – tryin to lose the posse hanger-oners…
But the PTO has a great deal of discretion in promulgating administrative rules for registering and sanctioning practitioners, doesn’t it?
Absolutely. 35 U.S.C. 122 (which says NOTHING to practitioners or to the general public) gives the Director power to develop procedures to prevent pre-grant oppositions/protests. The PTO used this authority to develop specific rules that tell PTO staff how to behave. They could have issued rules that expressly proscribe certain contacts, under penalty of sanction, but they did not.
And surely you must agree that the PTO would have a remedy if the practitioner called all day every day, refusing the take the Examiner’s “no” for an answer. What is there to prevent the PTO from sanctioning the practitioner for calling in the first place?
There are already rules of conduct addressing behaviors that are intended merely to harass, delay, etc. In fact, 35 USC 122(c) was passed to allow the PTO to address concerns that 3rd parties would do this after applications started being published on a routine basis. But one out-of-school phone call that the examiner was supposed to ignore in the first place doesn’t rise to the level of harassment. Certainly that call was intended to delay issuance, but it was not merely to delay.
Once again, I’m not excusing or forgiving Mr. Watov’s conduct – it’s not my place to do so. I’m simply arguing that the PTO has no real basis for a sanction. If they consider that to be a problem, they’re already empowered to fix it, as far as I can tell.
The second filer in reexamination would have to seek a remedy in the courts or would have to file a reissue application and seek an interference. Reexamination does not provide an adequate remedy all around.
But Accession was the first filer. Accession’s patent was prior art. So your argument is that Accession was justified in breaking the rules because otherwise Radio Systems would be without remedy because they’d have a choice of two remedies? Very magnanimous of Accession, but not very plausible.
Ned: The patent owner needs a remedy through PTO procedures to request an interference after a pending patent application has been allowed.
Why?
Let’s crazy up the facts a little, and suppose that Radio Systems’ patent was subject to non-publication. So Accession first finds out about it after it issues, and Accession’s patent has also issued by then, leaving no progeny. Even on those facts, does Accession have a problem? Would the problem depend on Accession being the junior filer with a strong case for prior inventorship? Or are you simply not pleased with the available remedies because they involve a lot of court time? Because I note that the two parties are currently in litigation over Accession’s approach to the situation.
“None of these support the PTO’s assertion that there is a “statutory prohibition” on a phone call from an attorney. I would not take the aggressive approach that Mr. Watov did, but I don’t think there’s a very strong basis for a sanction.”
That is a point I have been thinking about. But the PTO has a great deal of discretion in promulgating administrative rules for registering and sanctioning practitioners, doesn’t it? And surely you must agree that the PTO would have a remedy if the practitioner called all day every day, refusing the take the Examiner’s “no” for an answer. What is there to prevent the PTO from sanctioning the practitioner for calling in the first place? But I doubt the PTO will want to sanction a practitioner for calling once, especially where it appears that the Examiner not only failed to rebuff the contact and notify the practioner of the prohibition as instructed, but allegedly responded int he prohibited manner. I would think the PTO would want to save its sanctions for practitioners who ignore the warning once it has been given.
Ned: But, consider this: the potential for issuing interfering claims becomes “ripe” only after the PTO issues a notice of allowance. Up until that time, there can be no interference declared.
I think you have that backward. The time for an interference is before allowance, when at least one of the two applications still has prosecution open. Preferably within a year of the publication of Accession’s patent/application (which it wasn’t), when there would still have been time to copy a claim to provoke the desired interference. But certainly during the 10 months or so when the claims were sitting in the public record awaiting a first action.
I’m also not really sure what good an interference would have done. Accession’s patent was published long before Radio Systems’ priority date. Shouldn’t Accession be satisfied with their own patent being prior art? What more could an interference do, besides give Radio Systems a chance to improve its date?
Besides, the examiner only thought Accession’s patent was good enough to kill claim 17 (which it anticipated). If the reference can’t anticipate the remaining claims, it’s worthless in an interference.
And you still haven’t explained what the harm would be to Accession, unless you mean the loss of a chance to provoke an interference, which they had plenty of time to do before allowance, and which was no real advantage to them anyway. It sounds like Accession was simply looking for a sneaky way to grief a competitor who declined to take a license on their terms, and was polite/naive enough to give them a serial number before the patent was a fait accompli.
The patent owner already has a remedy to submit the patent under 1.99.
Even if the patent owner was not vigilant, and did not submit within 2 months of publication, who is to say what the Office would consider sufficient explanation for why it could not be submitted earlier? For example, what if the allowed claims are different from the published claims? There is a republication procedure that would allow the applicant to republish after amending claims, and wouldn’t that reopen the window for submission under 1.99? Should the patentee be deprived of the opportunity to submit the art under 1.99 simply becasue the applicant chose not to pay for republication? Given that the electronic file wrapper is public, is it not reasonable for the office to accept any 1.99 submission within two months of an amendment by the applicant?
What, in your mind, is sufficient reason for why a reference could not be submitted within two months of publication?
After the interfering application issues, there is no really acceptable remedy. If the patent owner is a second filer, there is no basis to request a reexamination. If he is the first filer, invoking a reexamination is simple. However, the patentee under reexamination now has no adequate remedy. The PTO could not accept his 131 affidavit because the claims are interfering. The second filer in reexamination would have to seek a remedy in the courts or would have to file a reissue application and seek an interference. Reexamination does not provide an adequate remedy all around.
The available alternatives are on the whole ridiculous. The patent owner needs a remedy through PTO procedures to request an interference after a pending patent application has been allowed.
Welcome back IANAE. I missed jousting with you.
You may have a point there about timing. But, consider this: the potential for issuing interfering claims becomes “ripe” only after the PTO issues a notice of allowance. Up until that time, there can be no interference declared.
Think about filing for a TRO in court. The judge would say that you are arguing hypthetical cases unless and until the PTO states on the record its intention to allow the claims.
So, you suggest the “proper” remedy is to sue in the DC district court and seek a TRO against the director?
Really?
Remember, I recommeded that the PTO adopt a procedure to handle this situation.
Ned: The patent owner should not be left without a remedy until the damage occurs.
He’s not “without remedy”, he’s out of time for his remedy. An interference could have been provoked as soon as the most recent claims were filed, which must have been months before allowance. With a little insight, an interference could have been provoked as soon as the application was published.
My client shouldn’t be without remedy if he thinks of a really clever argument seven months after the mailing date of a rejection. And he’s not, really, he’s just too late. Should have acted earlier. The system has no sympathy for him, and rightly so.
Ned: What was the alternative that could have prevented the application from issuing?
That’s a pretty loaded question, the way you posed it. One obvious alternative is to do nothing and let the patent issue. What would the actual harm be? Would the fact of the patent issuing somehow invalidate Accession’s patent in a way that the published application with the public file wrapper and the exact same claims pending could not have done? Would he infringe this newly-issued patent? Well, it’s either valid or not, and there’s more than one way to skin that cat even post-grant. Has he been threatened with litigation once the patent issues? What is this “immediate palpable damage” you’re on about?
And even if (arguendo) there’s no lawful remedy, is that any reason to break the rules? You’re not entitled to a remedy merely because a competitor is about to get a patent. Even if that patent would cost you money.
Said, all this goes to show is that the PTO really needs to provide a remedy for the owner of an interfering patent to prevent the issuance of an interfering application after notice of allowance. The damage is done and is substantially irreparable if the interfering patent issues.
Malcolm, I assume the statements of the attorney quoted in the opening post are correct. The claims of the application interfered with the claims in the patent; as well there appeared to be a problem of inventorship which also could be resolved in an interference and not ex parte.
The issuance of an interfering patent has long been recognized as a harm to to the owner of the issued patent to the same invention. The law provide a court procedure for interferences in court between two issued patents. But there is no obvious way get the two patents back into the PTO where the interference should be conducted in the first place.
Reexaminations are no remedy because the PTO had no ability to conduct interferences between issued patents. If the patent owner is a junior party, he has no basis for a reexamination in the first place. If the applicant is the junior party, he cannot request an interference with the issued patent to save his patent. He simply goes down in flames.
Rule 99 does not allow the PTO to consider “prior art” after NOA. Now, if there were wiggle room here to require its consideration, and if the “prior art” could include later-filed applications or considerations of inventorship, then I would agree that such is preferable.
But there is an obvious hole in PTO procedures regarding interfering patents and applications where the patent owner has no obvious remedy.
Assuming for the sake of THIS argument that the issuance of an interfering patent harms the patent owner, what alternative does the patent owner have, really?
Last time I checked, the Federal courts were still open.
Yeah, sure. See you in court on this one. The attorney was trying to prevent immediate palpable damage to his client by the PTO issuing an interfereing patent. Thee PTO rule did not provide an adequate remedy. He acted as best he could under the circumstances to protect his client.
TINLA, the PTO has no authority to declare an interference between issued patents. The damage would have been done.
The patent owner would have been left with a 291 action. But that remedy assumes damage. The patent owner should not be left without a remedy until the damage occurs. That is nonsense.
Malcolm, after notice of allowance? WILL it be considered? Can it be considered?
What, correct me if I am wrong:
1) Rule 99 requires a submission prior to NOA; but the need for an interference presents itself after a NOA. Prior to that, the issue is not “ripe.”
2) A reexamination is no remedy if the now issued patent has an earlier filing date.
3) A reexamination is no remedy for the now issued patent if he cannot swear behind the other patent claiming the same invention if the patent reference has an earlier filing date.
4) The PTO cannot declare an interference between two issued patents.
Assuming for the sake of THIS argument that the issuance of an interfering patent harms the patent owner, what alternative does the patent owner have, really?
Explain.
One alternative was to file a Rule 1.99 submission in accordance with the rules.
What, we are listening. What was the alternative that could have prevented the application from issuing?
“There was no alternative.”
Dumbest. Statement. Ever.
Contacting a Group Director to inform the Group Director that an issued patent recites a claimed invention that violates the laws of physics is different from what the Accession attorney did in this case which was to interfere with the prosecution of a competitor’s patent application in a manner that directly and unambiguously violated rule 122(c).
Rambling: I agree with Ned Heller and Paul Cole: the attorney in this case did the right thing.
All three of you are off on some warped “end justifies the means” trip. Ned still hasn’t explained how Accession’s rights in its own patents would in any way have been impacted by the issuance of Radio Corp.’s patent.
And as an aside, the Blacklight Power case is a rather dramatic joke given the USPTO’s issuance of patents on homeopathic treatments, which equally lack a scientific basis and which contradict all of the well-controlled scientific studies demonstrating that homeopath practitioners are quacks, at best, or frauds.
1. Initial contact: I don’t thing the following raises any issues: “On August 20, 2009, Accession’s counsel left a voice message with the PTO examiner for the [Radio Corp] SmartDoor application, alerting the examiner to the existence of Accession’s ‘141 patent.” Accession’s counsel only used publically available information and it wasn’t a submission requiring the Examiner to act.
2. PTO examiner and Accession’s counsel conversation. Yea, they both are screwed. PTO examiner can’t prove he did not communicate confidential info and, if he communicated confidential info, Accession’s counsel received it. PTO examiner’s impressions are confidential unless put in a public document.
So much for the golden future, I can’t even start I’ve had every promise broken, there’s anger in my heart
you don’t know what it’s like, you don’t have a clue if you did you’d find yourselves doing the same thing too