The following comments are from the Minnesota Intellectual Property Law
The following comments are from the Minnesota Intellectual Property Law
Association. At the end of the text, I have included files of these
comments in Word 97 files. If there are any problems with the receipt of
this message, please contact me. Any questions regarding the comments may
be addressed to Mark Goldberg as chairperson of the PTO committee of MIPLA
Summary of MIPLA Comments on ANPR by PTO
The Minnesota Intellectual Property Law Association has studied the Advance
Notice of Proposed Rulemaking (ANPR) published for comment by the PTO in the
Federal Register on October 5, 1998 and present our comments for
consideration in the following paper. The PTO stated in the ANPR that there
were no plans for public hearings to discuss the proposed changes to patent
practice. We believe that the PTO is proposing such fundamental changes to
patent practice that public hearings are essential in order to understand
the concerns of the PTO's customers and the significant long term effect
that the proposed changes would produce.
While MIPLA endorses a number of the proposed changes, there are several
matters that cause us particular concern and we point those out on this page
to emphasize our concern.
1. In Proposal 4, the PTO has proposed a limit of 40 claims total and 6
independent claims. This proposal would require a statutory change rather
than mere administrative rule making. MIPLA urges the PTO to reconsider
this proposal and if necessary to adjust the fee structure to deal with
problems in cases with unusually large numbers of claims.
2. Proposals 9 and 10 concern Information Disclosure Statements. These
proposals would increase the costs to the applicant, increase the likelihood
of allegations of inequitable conduct and are not likely to relieve the
PTO's workload as desired. The proposed requirement that each IDS include a
statement that each citation has been personally reviewed is both unclear
and apt to foster allegations of inequitable conduct. The requirement that
applicants specifically comment on every reference in excess of ten in
relation to each claim would increase the costs of patent prosecution and
foster further allegations of inequitable conduct. MIPLA urges the PTO to
continue the current policy of encouraging submission of documents rather
than implementing these burdensome requirements. Creative use of such tools
as electronic submission of references (esp. U.S. patents) would
significantly assist the PTO.
3. Proposal 10 sets forth an authority to reject an "unduly burdensome"
IDS. The absence of any standard for making this rejection makes the
proposals unfair to applicants.
MIPLA Comments to the Advance Notice of Proposed Rulemaking by the
The Minnesota Intellectual Property Law Association (MIPLA) is a nonÂprofit
organization formed to promote the development of intellectual property law
and enhance the professionalism of its more than 600 members. The membership
is made up of attorneys practicing in patent, copyright, trademark, and
trade secret law, and law students with interests in these areas of law.
MIPLA commends the Patent and Trademark Office (PTO) for its efforts to
increase the level of service to the public and to raise the efficiency and
effectiveness of their business processes. We have studied the Advance
Notice of Proposed Rulemaking (ANPR) published for comment by the PTO in the
Federal Register on October 5, 1998 and present our comments for
We believe the proposed rule changes include some very good policy and
procedure changes to streamline paperwork and alleviate existing problems in
processing. We also strongly disagree with some of the suggested changes,
which we believe will negatively impact the quality of examination and
validity of patents issuing under such rule changes.
The PTO stated in the ANPR that there were no plans for public hearings to
discuss the proposed changes to patent practice. We believe that the PTO is
proposing such fundamental changes to patent practice that public hearings
are essential in order to understand the concerns of the PTO's customers and
the significant long term effect that the proposed changes would produce.
Our comments are addressed to each of the specific proposed changes.
1. Simplifying request for small entity status (37 CFR 1.27)
MIPLA favors this rule change, which would eliminate the need for special
forms and permits simple assertion of entitlement to small entity status.
2. Requiring separate surcharges and supplying filing receipts (37 CFR
The proposed rule change seeks to address the added costs involved with
processing of missing parts, and particularly with processing separate
submissions of missing parts in nonÂprovisional applications. The proposed
change also aims to provide multiple filing receipts that are updated upon
missing parts submissions. To accomplish these tasks and provide the
corrected filing receipts to the file, the PTO proposes to assess separate
surcharges for each missing part, for example, one for missing
oath/declaration, another for missing fee, another for missing inventors
We appreciate the need to address the problem of multiple submissions of
missing parts and the suggestion of assessing the added costs to those
applicants causing the need. However, we suggest the problem might be solved
in an alternative manner, without the need for confusion as to the
appropriate fee to be paid.
The suggestion to provide corrected filing receipts is welcomed, as we
recognize the need for affirmation that the applicant's correct filing
information is registered in the PTO's file. Under the old rules, a filing
receipt was not issued until all of the missing parts were submitted and
approved. Following the new rules, an official filing receipt is issued
when an application is filed with the minimum information needed to obtain a
filing date, but in the absence of much needed information for the correct
filing receipt. We suggest a better approach to the problem of multiple
filing receipts would be to provide notice of "filing date accorded",
perhaps in the missing parts notice, and prepare the formal filing receipt
only upon submission of all the needed missing parts.
The PTO's suggested payment of separate surcharges for "each missing part"
appears to be problematic and confusing with regard to when a separate fee
might be charged. For example, the surcharge of $130 would be accorded for
the missing fee, another for the missing declaration. But what if the
documents are filed, but are incomplete? What if the names are missing?
The addresses? We suggest a more direct approach might be to apply the
surcharge to each submission of missing parts. If, for example, the
applicant complies with the missing parts notice with a complete first
submission, one surcharge would apply. If the applicant provides the
missing parts with multiple submissions, a surcharge would be required with
each individual submission. We suggest that this would be more easily
accounted for by both the applicant and by the PTO, and would prefer such a
system even if the amount of the surcharge were increased.
In summary, MIPLA suggests the PTO goals of reducing the number of
submissions of missing parts in a single case, allocating costs to the
applicants, and providing accurate filing receipts to the file might be more
easily achieved by (1) acknowledging file date on the missing parts notice;
(2) providing a formal filing receipt only upon submission of all missing
parts; and (3) requiring a surcharge with each submission of missing
3. Permitting delayed submission of an oath or declaration, and changing
the time period for submission of the basic filing fee and English
translation (37 CFR 1.52, 1.53).
The PTO has asked for comments on permitting delayed submission of an oath
or declaration, and changing the time period for submission of the basic
filing fee and English translation. MIPLA has the following comments and
suggestions regarding Proposal 3.
Summary of Concerns
MIPLA is concerned about the burdensome and complicated nature of the
proposed statement required of the registered practitioner in connection
with permitting delayed submission of an oath or declaration (3)(a)Â(d).
Inventorship is often determined by an inÂhouse attorney or by a foreign
attorney or agent. Also, many organizations consider patent applications to
be confidential business documents and would prefer not to mail copies of
the application outside the organization.
MIPLA is also concerned that the proposed period of 1 month from filing for
submission of the basic filing fee and English translation is too short.
Summary of Suggestions
MIPLA suggests requiring the oath or declaration be filed within 3 months of
filing, without the need for any statement from a registered practitioner.
MIPLA has concluded that it is not practical to require the filing fee and
translation be filed within 1 month from the date of the filing of the
application, especially without the receipt of a Notice to File Missing
Parts. MIPLA suggests that this proposal by the PTO be modified to one
month from the date of the filing receipt in order for the applicant to be
able to reference the appropriate filing date and serial number.
Permitting delayed submission of an oath or declaration
Section 3(a) of the proposal would require a statement from a registered
practitioner that an inventorship inquiry has been made. In
foreignÂoriginated cases where the practitioner is acting as the U.S.
associate to a foreign attorney in direct contact with the client, it is not
practical that the practitioner make the inventorship inquiry to the client.
The same problem arises where the application is handled at the direction of
an inÂhouse attorney (whether or not a patent practitioner) Â the
inventorship inquiry is often handled by the inÂhouse attorney. The duty of
conducting an inventorship inquiry should be considered satisfied by the
direction given by an inÂhouse attorney or foreign principal attorney or
Section 3(b) of the proposal would require that a copy of the application be
sent to each inventor. Currently many organizations have the inventors
review the application together at a meeting held at the organization in
order to retain control over copies of the application, which are considered
confidential business documents. Many organizations dislike the requirement
of sending copies of the application outside the organization, particularly
when an inventor does not work for the organization. Sending a copy of the
application to each inventor seems unnecessary given the requirement that
the inventors need only read and understand the application and be appraised
of the duty to disclose. US practitioners should also be able to rely on
the representation of a foreign patent attorney that the inventors have been
given an opportunity to review the application and have been apprised of the
duty to disclose.
Rather than creating potential new problems by requiring a statement from a
registered practitioner, MIPLA would suggest setting a time period for the
oath or declaration to be filed, such as within 3 months from filing.
Time period for submission of the basic filing fee and English translation
The PTO is proposing that a time period of 1 month from filing be set for
submission of the basic filing fee and English translation. This period
seems too short to MIPLA and MIPLA suggests setting the time period as 1
month from the mailing of the filing receipt.
The application needs to be identified by application number when filing the
fee and/or translation after filing. The return postcard is not reliable
because there have been instances where the application number on the return
postcard and on the filing receipt have not been in agreement, particularly
in National Phase cases. The filing receipt provides the earliest reliable
indication of the application number, and should be used to trigger the time
period for filing the fee and/or translation.
4. Limiting the number of claims in an application (37 CFR 1.75)
The PTO is considering a change to the rules of practice to: (1) limit the
number of total claims that will be examined (at one time) in an application
to forty; and (2) limit the number of
independent claims that will be examined (at one time) in an application to
six. In the event that an applicant presented more than forty total claims
or six independent claims for examination at one time, the PTO would
withdraw the excess claims from consideration, and require the applicant to
cancel the excess claims.
Summary of MIPLA Position
MIPLA opposes the PTO's proposal to limit the number of claims in an
application. MIPLA recommends no change to the current rule 37 C.F.R.
§1.75. The proposed rule change can be divided into two segments: (1) a
limit on the total number of claims, and (2) a limit on the total number of
independent claims. Neither segment should be implemented.
The proposed limit on the total number of claims (40) is overly restrictive.
Current 37 C.F.R. §1.75(b) (Rule 75) adequately addresses the PTO's
concerns. Rule 75(b) states: "more than one claim may be presented provided
they differ substantially from each other and are not unduly multiplied."
This provision should be enforced in the event that the PTO is presented
with applications in which the claims that are presented provide
unsubstantial differences from each other.
Article I, Section 8 of the Constitution provides the power to the
legislative branch of the government "To promote the progress of science
and useful arts, by securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries." A limitation
upon the number of claims would have a serious impact upon the rights of
inventors to obtain the exclusive rights to their discoveries.
Where certain inventions require being claimed using a multitude of claims,
the importance of that invention and the adequacy of the patent protecting
that invention should not be minimized by an arbitrary claim limit imposed
by the PTO. An applicant, not the PTO, is in the best position to decide on
the claim strategy that will best protect its intellectual property rights.
The number of claims should be reasonable as the case may permit and not be
limited by a fixed number.
Furthermore, Section 131 of 35 U.S.C. requires that the "[c]ommissioner
shall cause an examination to be made of the application and the alleged new
invention." The proposed change to 37 C.F.R. 1.75 would automatically
withdraw any excess claims from consideration, in other words, claim 41 and
independent claim 7 would be ignored. Contrary to the Commissioner's
statement, this is beyond the ruleÂmaking power of the Commissioner and a
violation of 35 U.S.C. 131, which requires an examination of the claims.
Congressional intent reflected in the fee structure of 35 U.S.C. 41(a)(1)(B)
does not limit the number of claims in any way, and in fact encourages
Applicants to present the claims as they see fit.
The published comments to the proposed rule change identifies "less than 5%"
of applications as containing an excessive number of claims. Yet, the PTO
proposal would revamp Rule 75 based on only a small minority of cases. None
of the filing statistics presented in the published proposal identify the
types of claims normally presented in applications the PTO views as
containing an excessive number of claims. Presumably, these applications
include sets of claims that may be subjected to restriction requirements by
the PTO (e.g., article and process claims). Hence, if claims in an
application are subject to restriction, the PTO could continue its
restriction practice under 37 C.F.R. §1.141 either under the current version
of the rule or under the "presumptive election" that the PTO now proposes.
Thus, Rule 141 already addresses at least some of the PTO's concerns
relating to excessive claiming.
Additionally, the proposed rule change is likely to result in more work for
the PTO because applicants that would normally file a high number of claims
in an application will simply resort to filing separate original
applications that contain claim sets that otherwise might be filed as
continuation and/or divisional applications. In these circumstances, the
overall processing and examination burden on the PTO would increase because
the proposed rule change will precipitate a higher volume of original
application filings to obtain the full benefit of the applicant's claim
strategy. The PTO's own published comments to the proposed change to rule
141 recognize this.
An applicant who is unable to limit him or herself to forty total or six
independent claims in a single application may effectively obtain
examination of additional claims in another application. "As the PTO would
expend more of its scarce processing and examination resources on ten
applications containing forty claims each than the PTO would expend on a
single application containing four hundred claims, the PTO's objective is
not to have applicants to spreadÂout excessive numbers of claims among
multiple applications to increase fee revenue." [From the Federal Register
Online via GPO Access, October 5, 1998, page 53508]
Although the PTO claims to not seek an increased revenue flow from
additional filings, the likely result of the proposed change to rule 141 is
an increased number of filings.
Another issue raised by the proposed rule change is whether the redrafting
of dependent claims into independent form in response to an objection raised
by an examiner would require the filing of a continuation application when
the rewritten claims expand the total number of independent claims to more
than 6. The PTO proposal fails to recognize and address this issue. Any
such requirement for filing continuation applications based on these
rewritten claims would again be burdensome on both the applicant and the
PTO. The extension of independent claims beyond 6 imposes no burden on the
Examiner, since the claims have already been examined, and most would be
prima facie allowable. The proposed rule change would limit the applicant's
ability to convert dependent claims to independent claims based on the
restriction to six independent claims. Additional filings will only inflate
the total number of pending applications that the PTO will have to process
and examine, and the need for preparing and filing additional applications
adds unnecessary expenses to the applicant's costs for obtaining a patent.
Although the PTO proposes to provide for a petition procedure for waiver of
the 40 claim limitation in certain situations, the implementation of a new
petition procedure would also require a dedication of PTO resources and
still would deprive the applicant of the ability to ultimately decide how
best to claim his/her invention.
If the PTO wishes to reduce the number of patent claims, it should consider
a noÂcost approval of multipleÂdependent claims. The fees imposed by the
PTO have discouraged the use of multiple dependent claims by most
applicants. The number of claims could be greatly reduced by eliminating
the multiple dependent claim fee and the additional dependent fee costs
imposed by the PTO.
Additionally, the PTO should consider adoption of the "unity of invention"
test, rather than the old and unworkable restriction practice. Reasons:
many dependent claims are simply repeated for altered dependency trees, and
permitting noÂcost multipleÂdependent claims counted as a single claim
reduces the examination and handling of such claims. The unity of invention
would permit a single inventive concept to be advanced in each application,
rather than plural concepts expressed as the same class of invention.
In conclusion, MIPLA recommends that no change be made to Rule 75. For the
reasons set forth above, the PTO proposal does not clarify how the PTO would
benefit from the proposed modification of the current rule. If the issue is
whether the PTO is being fairly compensated for applications containing a
larger number of claims, then the current fee structure could be changed to
charge certain applicants for the examination of a large number of claims in
a single application. Furthermore, the PTO could encourage the use of
multiple dependent claims by eliminating the present surcharge. The use of
multiple dependent claims might prove to be advantageous in the efficient
examination of applications. However, trying to limit the total number of
claims in a single application is likely to result in additional application
filings as certain applicants will see the need to separate sets of claims
into different applications to comply with the 40 claim limitation while
also pursuing a claim strategy that includes more than 40 claims. These
additional filings will only serve to tax the PTO's resources further and
will render the proposed change to Rule 75 as a sham.
5. Harmonizing standards for patent drawings (37 CFR 1.84)
MIPLA fully supports the suggested rule change for harmonizing the
requirements of patent drawings in 37 CFR 1.84 with the requirements for
drawings in the PCT.
6. Printing patents in color (37 CFR 1.84)
MIPLA supports the suggested rule change deleting the petition and fee to
accept color drawings and photographs and to provide processing and printing
of patents having color drawings and photographs in color rather than in
black and white with a fee required to cover costs.
MIPLA further suggests that the PTO consider acceptance of color drawings in
computer format which would improve reproduction quality and also reduce
7. Reducing time for filing corrected or formal drawings (37 CFR 1.85)
The PTO has proposed to reduce the time period for filing formal drawings to
one month from the date of the Notice of Allowability. MIPLA feels this is
insufficient time. Some complex cases require so many sheets or are of such
complex subject matter that one month is simply too short;
some clients (particularly foreign clients) prepare their own formal
drawings that cannot be completed within one month. The short time of one
month does not seem to relate to any PTO handling problems, only the time of
application pendency. Since delay in filing the drawings will likely delay
the grant of the patent, it is the applicant, not the PTO, that suffers from
the delay. A separate problem is a concern that an examiner could retract
the notice of allowability or that the scope of the allowable claims may be
of such restricted scope that the applicant would not wish to go forward
with drawings at this point in time.
Any substantive, administrative, or procedural problems with correcting or
submitting formal drawings or the like can also result in abandonment of an
application in the special time period set by the Notice of Allowance often
resulting in unnecessary delays and expense. It is more appropriate to have
all drawing issues resolved prior to issuance of a Notice of Allowance, for
example by an Ex parte Quayle or similar type procedure, with an extensible
period of response.
8. Permitting electronic submission of voluminous material (37 CFR 1.96,
MIPLA supports the suggested rule changes which would permit the voluntary
electronic submission of large computer program listings and sequences in
only a machineÂreadable form, where the official copy is submitted in an
archival medium which can be freely accessed by the public on issuance of
MIPLA further supports the proposed rule changes that would allow submission
of provisional applications in toto in a machine readable format which can
be freely accessed by the public on issuance of the patent
In addition, where specific submissions are noted as cumbersome requiring
voluminous paper, MIPLA supports acceptance of such submissions in
Also, as noted in our lengthy discussion of Proposal 9, it would be
advantageous to be able to submit lengthy information disclosure statements
in an electronic format.
9. Imposing limits/requirements on information disclosure statement
submissions (37 CFR 1.98)
MIPLA understands that one of the PTO's goals is to reduce the amount of
paper within its office. The PTO states that it is currently running out of
space in several departments due to boxes of documents, mainly prior art
references, forwarded to the PTO. The PTO's position is that it is being
presented with voluminous IDS submissions, but it has not presented
statistics regarding the percentage of cases in which it finds this to be a
significant problem. The PTO cites its Business Goal to reduce PTO
processing time (cycle time) to twelve months or less for all inventions as
being one of the main reasons for proposing these limits on IDS submissions.
In balancing the desires of the PTO to reduce processing time while still
providing quality examination to applications, MIPLA prefers that the
quality of examination be maintained and that reduction of processing time
be a secondary goal of the PTO.
While the present proposal is an attempt to minimize paper submitted to the
PTO, MIPLA opposes this proposal to impose limits/requirements on
information disclosure statement submissions. MIPLA recommends no change to
the current rule 37 C.F.R. 1.98. If enacted, these rule changes will
undesirably inhibit the submission of information to the PTO by forcing
patent applicants to comment on every reference in excess of 10 submitted
during the course of patent prosecution. Moreover, the proposal would also
create in almost every file history a pretense for litigators to argue that
inequitable conduct took place during patent procurement.
To accomplish the purpose of 37 C.F.R.1.56, unencumbered submissions of
information to the PTO should be encouraged. Rule 56 now states: "The
public interest is best served, and the most effective patent examination
occurs when, at the time an application is being examined, the Office is
aware of and evaluates the teachings of all information material to
patentability." The PTO's comments in the proposed rule change acknowledge
the merit behind the current policies allowing the submission and evaluation
of all information believed to be material to patentability.
The public appears to have taken the view that it should submit, in
compliance with 37 CFR 1.97 and 1.98, even questionable citations in order
to ensure that applicant is viewed by the courts as having satisfied the
duty of disclosure requirements. MPEP 2001.04 points out as to
noncompliance with 37 CFR 1.97 and 1.98 that ``the applicant will have
assumed the risk that the failure to submit the information in a manner that
will result in its being considered by the examiner may be held to be a
violation'' by the courts. MPEP 2004 adds: ``When in doubt, it is desirable
and safest to submit information. Even though the attorney, agent, or
applicant doesn't consider it necessarily material, someone else may see it
differently and embarrassing questions can be avoided.''
As is exemplified in the above quotation, past PTO comments and rule changes
made clear that a policy of encouraging the submission of information to the
PTO was important to the United States' patent system. For example, a theme
intertwined throughout the PTO's reasons for changing the duty of disclosure
requirements in 1992 to those reflected in the current rules was that of
encouraging the submission of information to the PTO. In fact, in response
to a comment questioning whether relevant art would be withheld from the PTO
under the current rule, the PTO stated that it envisions "most applicants
will wish to submit the information, however, even though they may not be
required to do so, to strengthen the patent and avoid the risks of an
incorrect judgment on their part on materiality or that it may be held that
here was an intent to deceive the Office." The PTO further stated: "If the
Office does not have needed information, meaningful examination of patent
applications will take place for the first time in an infringement case
before a district court. Courts will become increasingly less confident of
the Office's product if they get the impression that practitioners and
inventors can routinely withhold information from the Office, or that
practitioners and inventors can make up their own minds about what is
patentable." Without identifying any reasons that invalidate the foregoing
concepts underlying the current duty of disclosure , the PTO now seeks to
impose burdensome requirements in the filing of Information Disclosure
Statements that will inhibit the disclosure of the same relevant information
the PTO had formerly sought to include when considering the ultimate
question of patentability.
The present proposal includes three specific requirements relating to IDSs.
The first proposed requirement relates to a statement in an IDS that each
citation has been personally reviewed by the registered practitioner who
represents an applicant, or by at least one inventor where the applicant is
not represented by a registered practitioner. MIPLA foresees such a
requirement would lead to countless inquiries into inequitable conduct both
in the PTO and during litigation.
The second proposed requirement relates to supplying a copy of each cited
U.S. application. If the cited U.S. application is later abandoned, a
petition to expunge the cited application must be submitted to remove the
application from the file. The PTO would then need to consider whether the
U.S. application is indeed immaterial to patentability of the invention such
that it can be expunged. (see MPEP 724.05). The need to act on petitions
to expunge could be more burdensome on both the PTO and applicant than the
current rules, which do not require submission of coÂpending U.S.
applications when cited in an Information Disclosure Statement. As the PTO
continues to become an even bigger user of electronic documents, any burden
on an Examiner to obtain a copy of an application should be minimized or
The third proposed requirement outlined in this proposal relates to
supplying a unique description of each citation's importance relative to
each independent claim, or specific dependent claim(s) if that is why it was
cited. The following exceptions would apply, however: (1) ten citations or
less are exempt from the description requirement, and (2) citations from
foreign patent offices and PCT searching and examining authorities also do
not require description provided the search report or office action in the
English language is also submitted. Specifically, the description of each
citation would have to set forth a teaching or showing of a feature relevant
to the claimed invention which is not taught or shown by other citations in
the IDS or is taught in a different manner. Furthermore, the description of
each citation would need to be unique to that citation. In other words, an
applicant would not be permitted to provide a description of a citation that
is merely cumulative to that of the other citations.
Stating the importance of each cited reference relative to each claim for
which it is cited will potentially require a colossal effort by the
applicant depending on the number of references submitted and the total
number of claims in the pending application. For those applications with a
large number of claims and IDS submissions comprising a large number of
references, the disclosure process could require several lawyers and
significantly increase the cost of the patent process. Furthermore, where a
reference is cited for a multitude of claims, a large volume of paperwork
will be needed to adequately state the importance of the citation relative
to each claim. These requirements appear to serve the dubious purpose of
having the applicant perform the initial examination of his/her own claims
in light of the references cited in the IDS. The proposed change would
require the attorney or agent not only to review the references, but to
effectively provide the examiner with descriptions of the references that
would likely serve as a basis for rejecting the pending claims. While this
may ease an examiner's burden, it adds a significant and unreasonable burden
to the applicant and to the attorney or agent of record. Moreover, these
"unique" descriptions would not take into account possible future changes to
the claims made during the course of prosecution. Hence, each of the
required "unique" descriptions would potentially be valid only for the
claims pending at the time the IDS is submitted. Submission of claim
amendments will lead cautious practitioners to update the uniqueness
description, thereby multiplying the amount of paper submitted to the PTO.
The end result of this proposed change in the rule will lead to submission
of multiple uniqueness statements applying each reference to each claim.
Thus, for cases involving many claims and many references, the Examiner
would have to review an even more voluminous IDS than under the current
The PTO has recognized that a reference's materiality can be viewed
differently by different people:
"Even though the attorney, agent, or applicant doesn't
consider it necessarily material, someone else may see it differently and
embarrassing questions can be avoided''. [From the Federal Register Online
via GPO Access, page 53512]
Like the requirements of materiality, opinions on a reference's uniqueness
to individual claims will often differ. Placing one practitioner's
statement of uniqueness within an Information Disclosure Statement will
serve only to further the interests of those seeking to challenge issued
patents based on grounds of inequitable conduct by allegations that the
attorney or applicant provided false statements of uniqueness during
prosecution. Because of the contentious nature of patent litigation,
uniqueness statements in the file histories of issued patents will
undoubtedly be second guessed and used to raise issues of whether the
practitioner misrepresented a reference or provided a misdirected "unique"
description of the reference. Hence, the eventual utility of the proposed
uniqueness statements will be to serve as road maps for the patent litigator
seeking to establish a case of inequitable conduct. With every statement of
uniqueness in a file history potentially available as a grounds for
attacking the enforce ability of a patent, the practitioner will be put in
the position of second guessing every statement made in an IDS, resulting in
overly cautious updates to earlier submitted uniqueness statements.
Although the uniqueness statements may provide some initial benefit to the
PTO, the proposed requirement carries a huge potential for stirring up
additional litigation issues relating to inequitable conduct and causes
significant concern among the members of the patent bar that they will run a
higher likelihood of being caught up in such issues should their clients
decide to assert their patent rights.
Although the examiner's burden in the review of lengthy Information
Disclosure Statements is appreciated, that burden should not be used to
justify the imposition of even more severe burdens on the patent applicant
or the patent attorney. Since 1992, the PTO has now come full circle. In
the past, as discussed, the PTO sought to encourage the disclosure of
information. But, with the burdensome proposal to change Rule 98, the PTO
now seeks to allow disclosure only with the risk of creating opportunities
in every prosecution file for patent litigators to use in an attempt to
escape liability for infringement by maligning the attorney or agent
responsible for patent prosecution.
The PTO should adhere to the policy of encouraging the submission of
information to: (1) strengthen the patent through the statutory presumption
of validity, (2) reduce the risks of an incorrect judgment on an applicant's
or practitioner's part with respect to materiality or uniqueness of a
citation, (3) reduce risks that it may be held that there was an intent to
deceive the Office, and (4) avoid the possibility that Courts will become
increasingly less confident in the PTO's product. Submission of documents
to the PTO in an IDS is an important part of our patent system.
The proposed rule change would permit the submission of ten references or
less without the requirement for a description of those ten references.
Setting the number at ten is arbitrary and no specific justification for it
can be found in the PTO's proposal. In complaining about the effects of
burdensome submissions, the PTO describes IDS submissions that include
hundreds of references. Consequently, the proposed number ten appears to be
well below what the number the PTO actually considers to be burdensome. In
addition, university publications and the like are often difficult for
Examiners to find during their art searches, and the submission of these
types of references should continue to be encouraged. Ultimately, the
proposed rule changes will undesirably encourage patent filings in the
absence of thorough preliminary art searches, thus placing all the burden on
the PTO to search and uncover the most pertinent art. In the absence of an
applicant's participation in assessing the art, the presumption of validity
for the issued patent will be diminished.
There are numerous reasons why more than 10 references may be cited in an
IDS, including (a) citation in similar (although not necessarily related)
U.S. applications, and (b) citation by a third party as relative prior art
to a similar or related U.S. or foreign patent in litigation, validity
proceedings, oppositions, reÂexaminations, and the like. For example, where
a patent is asserted against a defendant in litigation and that defendant
cites prior art as relevant to the patent in suit, the patentee/applicant
ought to be able to cite the prior art in the stillÂpending divisional or
continuation application without having to characterize the references
anymore than as characterized by the defendant. To do otherwise adversely
affects litigation strategy because the comments may be made available to
the defendant giving the defendant an unfair advantage over the
patentee/applicant/plaintiff in the litigation. Moreover, often the
references are cumulative or simply background to the invention.
Nevertheless, because they are cited in litigation, they ought to be
considered, without requiring the applicant to characterize the references.
Similar circumstances occur in foreign litigation and oppositions. It is
suggested that such references be excluded from the requirement of
explanation of pertinence, provided that the application or litigation from
which the references were cited is identified in the IDS. It is further
suggested that an IDS citing such references cannot be excluded from
consideration, even though voluminous, cumulative, or multiplied. An
obligation could be imposed on the applicant to keep the Examiner appraised
of the status of the validity challenge and of the references particularly
relied on by the third party or the finder of fact.
Where several applications are directed to similar subject matter, whether
related (parent/child) or not, references cited by an Examiner in one case
ought to be citable in another case without requiring an explanation of
relevance or risking nonÂconsideration. Examples of similar cases include
cases directed to similar subject matter as claimed in the present
application, whether filed the same date or not. The applicant might,
however, be required to identify the similar and related applications from
where the references were cited.
As a minimum, U.S. patents should be excluded from this rule because they
are searchable by Examiners electronically. Using key word searches, the
Examiner can easily determine the materiality of a U.S. patent reference.
This revision will severely minimize the amount of paper
submitted to the PTO and will greatly reduce the storage problem within the
MIPLA invites the PTO to propose at least one method for electronic
submission of lengthy Information Disclosure Statements. Electronic filing
with use of hypertext links to data bases would be one way to reduce the
amount of paper that is involved.
Whatever the purpose behind the proposed modification of the existing rules,
the PTO must consider the impact that the proposed modification will have on
patent applicants. Any rule relating to the submission of prior art should
encourage the unencumbered submission of information to the PTO to ensure
the applicant's patent application is wellÂexamined and that the patents
issuing from such applications are strengthened by a rigorous examination
process. Unfortunately, the current PTO proposal would only hinder this
10. Refusing information disclosure statement consideration under certain
circumstances (37 CFR 1.98).
MIPLA opposes the PTO's proposal to reserve the PTO's authority to refuse
consideration of information disclosure statement submissions in "unduly
burdensome" circumstances. MIPLA recommends that no change be made to
37C.F.R. 1.98 ("Rule 98"). Many of the reasons outlined with respect to
Proposal 9 hold true for this proposal as well.
As already stated above with respect to Proposal 9, the PTO needs to
continue its policy of encouraging applicants in their submission of
information in order to: (1) strengthen the patent, (2) reduce the risks of
an incorrect judgment on an applicant's or practitioner's part with respect
to materiality or uniqueness of a citation, (3) reduce future issues over an
intent to deceive the Office, and (4) avoid the possibility that Courts will
become increasingly less confident in the PTO's product. An applicant's
submission of documents to the PTO is an important part of the United
States' patent system. If we are to continue the requirements under 37
C.F.R. 1.56 ("Rule 56"), we should not undermine the policies behind that
In the present proposal, the proposed change to Rule 98 is unduly vague,
rendering it impossible to follow. In the absence of a specific standard by
which the public can judge what the PTO will consider to be "unduly
burdensome", the PTO's proposal adds another layer of uncertainty to the
disclosure process. The proposal is rendered even more uncertain by the
PTO's representation that this unduly burdensome standard will apply even if
the IDS submission complies with all of the requirements set forth in the
above discussed Proposal 9. Consequently, the applicant will be forced to
guess whether its IDS submission will be considered sufficient. Moreover,
such a standard lends itself to the subjective preferences of individual
examiners. Consequently, the proposal, if enacted, runs a high risk of
being abused by the imposition of different and inconsistent preferences for
the submission of art to different examiners.
Although the plight of the examiner in the consideration of lengthy IDS
submissions evokes sympathy, perhaps the better way to handle the issue is
to provide more support for those examiners burdened by such submissions.
The PTO should consider hiring more examiners for those art units most
heavily burdened by these IDS matters. Another suggestion is to have PTO
management monitor the handling of Information Disclosure Statements so that
workloads can be adjusted for those examiners considering voluminous IDS
submissions. The PTO needs to provide such examiners with the credit they
deserve for dealing with such submissions. In other words, the handling of
the IDS issues facing the PTO are best handled internally, and not by
imposing the burdensome requirements inherent in the current proposals 9 and
11. Providing no cause suspension of action (37 CFR 1.103)
The PTO is considering adding an additional suspension of action practice,
under which an applicant may request deferred examination of an application
without a showing of "good and sufficient cause," and for an extended period
of time. The applicant would be required to waive the confidential status of
the application under 35 U.S.C. 122, and agree to publication of the
MIPLA has no objection to the PTO's proposed suspension of action.
12. Requiring a handling fee for preliminary amendments and supplemental
replies (37 CFR 1.111)
The PTO is proposing handling fees for preliminary amendments not filed with
the application and for supplemental amendments filed in supplement to a
previous amendment already filed. Excluded would be supplemental amendments
to amendments after final rejection.
Preliminary amendments, including a preliminary amendment to a CPA should be
permitted within 3 months of the filing date, just like an IDS in a newly
filed case. The extra burden on the Examiner occurs only where the
amendment arrives during or after the Examiner has considered the
application, and the amendment causes a change in the Examiner's strategy.
Therefore, any handling of the application due to the filing of supplemental
and preliminary amendments should reflect only the cost of handling by the
clerical staff. Moreover, since the preliminary or supplemental amendment
presumably places the application in better condition for examination, the
cost of handling the application by the clerical staff should be more than
offset by the savings in consideration by the Examiner.
Perhaps an alternative solution would be to allow the practitioner to check
a box in the filing papers to indicate whether a Preliminary Amendment may
be filed in the future, thereby allowing the Examiner to proceed or wait for
the Preliminary Amendment.
MIPLA suggests that a time limit for the submission of a preliminary
amendment without fee correspond with the term for submission of an
information disclosure statement without fee Â three months or before first
action. This will allow the applicant to submit amended and/or new claims
during the same time period presently allowed for the submission of an
Information Disclosure Statement, and presumably before the examiner picks
up the case for initial examination. The time period for submission of a
preliminary amendment without fee should be commensurate.
13. Changing amendment practice to replacement by paragraphs/claims (37 CFR
MIPLA supports this proposal in part.
MIPLA supports the PTO's proposed rule change that would require submission
of replacement claims or paragraphs, along with a markedÂup copy of the
changed paragraphs or claims. MIPLA agrees that this would facilitate
efficient examination of applications. As an alternative, the PTO could
require submission of replacement sheets, along with a markedÂup copy of the
changed paragraph or claims. This practice would be similar to the current
MIPLA does not support the PTO's proposed rule change with respect to the
requirement of numbering all paragraphs in a specification. When numerous
changes are made, this could become unduly burdensome on both the applicant
and the PTO. While this change may facilitate examination of electronically
filed applications, the PTO is ahead of its time with respect to this issue.
This portion of the proposed rule change should be tabled until
electronically filed applications are in place.
14. Providing for presumptive elections (37 CFR 1.141)
MIPLA opposes the PTO's proposal for presumptive elections. MIPLA
recommends no change to the current Rule 37 C.F.R. 1.141, but recommends
that the PTO strive to enforce the current Rule more accurately and
consistently. Most preferably, the PTO should be moving to the same unity
of invention rules now used in other countries of the world as well as in
the European Patent Office. Most examiners understand the unity of
invention rules for the reasons discussed below, and those examiners that do
not understand can be trained in this area.
In addition, all Examiners should be reminded of MPEP 821.04 and In re
Ochiai and In re Brower. This may obviate the need for proposed changes to
Rule 141. The presumption in the present proposal that applicants have
constructively elected the invention first presented in the
claims is unacceptable because of uncertainties existing in the manner in
which some examiners practice the current restriction guidelines. In many
instances, the first claimed invention may NOT be the invention that the
applicant wishes to pursue first, especially where the PTO divides the
claims in an unexpected manner. The applicant should retain the ability to
elect a claim set to pursue and to traverse the restriction requirement as
may be appropriate.
Any extensive change in the PTO's restriction practice may result in US
applicants choosing first to have their applications examined under the
preliminary examination procedures of the Patent Cooperation Treaty (PCT)
followed by entry into the US PTO at about the 30th month following the
earliest priority date. Under this process, the applicant would then be
entitled to the Unity of Invention Rules applied to the application under
the PCT. Automatic restriction/election is undesirable in that it provides
the applicant with additional incentive to avoid the PTO's restriction
If promulgated, the proposed rule ought not to apply to applications filed
prior to the effective date of the rule change. This will permit applicants
to elect inventions and species where the most favored invention or species
had not been first presented.
15. Creating a "rocket docket" for design applications (37 CFR 1.155).
The PTO is considering special expedition of certain design patent
applications on the basis of payment of a fee of $900.00 and performing a
MIPLA was not aware that design applications were examined in groups of 10
or 20. It is unfair that this practice exists, both to the public and to
the applicants. All design applications should be examined in the order of
filing, and not delayed in order to fill a group. Design applications are
easy to search and therefore hiring additional design application examiners
should allow each design application to be examined in the order of filing.
Applicants should not have to pay a surcharge and perform their own search
in order to obtain the examination for which they have already paid.
16. Requiring identification of broadening in a reissue application (37 CFR
The PTO is considering a change to 37 CFR 1.173 to require reissue
applicants to identify all
occurrences of broadening of the claimed invention in the reissue
application MIPLA is strongly opposed to this proposal. No change is
recommended to 37 C.F.R. 1.173.
This appears to be an attempt to have a portion of responsibility for an
application's examination diverted from the PTO to the applicant. MIPLA
prefers to leave the responsibility for examination of reissue applications
and determinations as to broadening occurrences with the PTO. It is
important to maintain this determination with a central authority that is
not afflicted with individual biases that may be intimately associated with
asking the applicant to be responsible for critical judgment calls that
affect examination of an application. An applicant should not be penalized
simply because the claim was broadened in some unintentional way.
This rule change would open the door for further claims of inequitable
conduct against an applicant or their registered representative. No change
should be made to the current Rule 173.
17. Changing multiple reissue application treatment (37 CFR 1.177)
The PTO is considering an amendment to 37 CFR 1.177 to streamline the
processing of divisional (or multiple) reissue applications.
MIPLA favors this change to multiple reissue application practice.
18. Creating Alternative Review Procedures For Applications Under Appeal
(37 CFR 1.192)
Summary: The PTO is considering alternative review procedures to reduce the
number of appeals forwarded to the Board of Patent Appeals and
The PTO is proposing an optional review process by which a different primary
examiner will, for a fee, review the rejections of one claim, after Notice
of Appeal but before the Appeal Brief, to ascertain whether or not a prima
facie case of unpatentability has been established by the original examiner.
The reviewer may consult with the original examiner. If the reviewer
believes the original examiner has failed to meet the prima facie case of
unpatentability, the original examiner will, presumably, issue a new
rejection. The reviewer will not have the authority to overrule the
original examiner. The date of filing the appeal brief runs from the date
of notification of completion of the review. It is not clear that under
this proposed review process, the PTO advises the applicant of the findings
on the review.
The PTO is also considering another alternative review process after the
filing of the Appeal Brief to review the entire final rejection to determine
if prima facie case of unpatentability has been established. Presumably,
the procedure is similar to the first, and could lead to a withdrawal of the
final rejection by the original examiner.
Since the appeal reviews under consideration would not be by either the
Board or a Federal court, the issuance of a patent as a result of a decision
reached during such an appeal review to withdraw a rejection would not
entitle the patentee to a patent term extension under 35 U.S.C. 154(b)(2).
While MIPLA is supportive of efforts to expedite the resolution of appeals,
the proposals raise some concerns.
1. MIPLA suggests that detailed results of the review be made available
to the applicant. If an applicant is to use this procedure, the results of
the review should be communicated to the applicant. Preferably, the
reviewer should provide a written report that provides the applicant and the
original examiner with at least some detail of the review including reasons
why the original rejection fails to present case of prima facie
unpatentability, whether or not followed by the original examiner.
2. The PTO seeks comment as to whether a uniform procedure for review
should be established throughout the entire Corps or whether each group
should be free to establish its own procedures. To establish consistency
within the PTO, MIPLA believes that the review process should be on
uniformly handled throughout the PTO, and not conducted using an adÂhoc
approach on a groupÂbyÂgroup basis. In the absence of uniform practices in
the PTO, an appellant in a new art area will have no basis for evaluating
the value of the review process in a particular group thereby diminishing
the appellant's incentive to participate in the proposed review. Moreover,
uncertainties in the review procedure conducted by a given group may also
adversely affect the applicant's rights.
19. Eliminating preauthorization of payment of the issue fee (37 CFR 1.311)
Summary: The PTO is considering amending 37 CFR 1.311(b) to eliminate the
option of filing an authorization to charge an issue fee to a deposit
account before the notice of allowance is mailed.
MIPLA does not object to this proposal.
20. Reevaluating the Disclosure Document Program
The PTO is seeking public comment as to the value of the Disclosure Document
Program, presumably in an effort to see if that program should be eliminated
altogether. The PTO is specifically asking for feedback as to any benefits
the program provides, and particularly whether it meets any needs not
addressed by the Provisional application practice and whether or not there
have been any instances where an inventor believed a Disclosure Document
provided more benefits, such as patent protection, that it actually does.
MIPLA encourages elimination of the disclosure document program. First, the
program offers no real value to patent applicants. The advent of the
provisional patent application allows applicants to potentially secure
priority dates at a reasonable fee and eliminates any real need for the
disclosure document program. Second, the disclosure document program
presents a danger to the public lacking full information on the purpose and
benefits of the program. Some applicants believe they are getting some sort
of patent protection by submitting documents pursuant to this program when
in fact they only help secure a conception date. Also, the danger exists
that an applicant will assume that filing under the disclosure document
program avoids forfeiture of patent rights under section 102(b) or
forfeiture of foreign patent rights under the "absolute novelty"
requirement. In reality, filing of disclosure documents does nothing to
avoid patent barring activities. The disclosure document program is both
unnecessary and dangerous and should therefore be eliminated.
MIPLA provides the following answers to the questions posed in this
6) Only anecdotal.
21. Creating a PTO review service for applicantÂcreated forms
MIPLA supports the creation of a PTO service for review of
applicantÂcreated forms, for a fee. This service might be expanded, for
example, to approve of computer formats for submission of materials
contemplated in #8 above.
<<Summary of MIPLA Comments on ANPR by PTO.doc>> <<MIPLA Comments December
4 submitted to PTO.doc>>