These are comments on the Advance Notice of Proposed Rulemaking dated
October 5, 1998. They are submitted on behalf of:
Gloucestershire GL12 8JR
Tel: +44 1453 524524
Fax: +44 1453 524901
Any queries may be addressed to J T Jackson.
Renishaw operates worldwide. Its US operations are handled by a US
subsidiary, Renishaw Inc of Schaumburg, Illinois. It has over 200 US
granted patents and pending applications.
COMMENTS ON TOPICS 9 & 10
We agree with the need to solve the problems and burdens caused by the
duty of disclosure, but do not believe that the PTO proposals will
have the desired result.
BACKGROUND TO THE PROBLEM
The PTO should be aware that practice under Rule 56, as it has
developed over the years, causes major problems not only for
Examiners, but also for applicants and their representatives. Indeed,
the current practice of filing voluminous Information Disclosure
Statements stems directly from applicants' attempts to cope with those
We refer to the "Background" section of the PTO discussion of the rule
change in the Federal Register. This states correctly that applicants
dump large quantities of prior art on Examiners because they are
afraid of being accused of violating the duty of disclosure under Rule
It is a regrettable fact that, if an applicant makes a judgement that
a given document is not material and need not be disclosed to the
Examiner, then during litigation opposing counsel will almost
inevitably argue to the contrary. Furthermore, whilst the applicant's
judgement may have been made in good faith, opposing counsel will
argue that it was a deliberate attempt to conceal information from the
For exactly the same reason, applicants are afraid to give Examiners
meaningful pointers as to which of several cited documents are the
most relevant, or which are the most relevant features in any given
document. During litigation, opposing counsel will always be ready to
argue that some other document or feature should have been pointed
out, and that the applicant deliberately misled the Examiner.
Given the uncertainties of litigation, nobody can be confident that
such arguments will fail. Merely ensuring that one always reviews
documents diligently, and always behaves in good faith, does not make
the problem go away. Even if the arguments do fail, the cost and
stress of countering them cannot be underestimated.
Thus, at present the only solution is to give the Examiner all the
documents, and leave him to make his own judgements about them.
The differing viewpoints of applicants and the PTO are apparent from
the third sentence of the "Background" section of the PTO's
discussion. The PTO equates a "questionable" citation with one which
is "clearly not material", and which should not be cited. To an
applicant, however, if a citation is "questionable", this means that
its materiality may subsequently be questioned. So may the
applicant's motives if he withholds it. It is therefore essential to
It is important to understand -- contrary to the view expressed in the
PTO discussion -- that most applicants do not dump documents on
Examiners because they are too lazy to review them and weed out those
which are "questionable". Someone in the applicant's organisation
will certainly have reviewed them, and formed an opinion as to their
relevance. For example, the documents may be the results of a search
performed by the applicant. It would negate the purpose of the search
not to review the results. But for the reasons just discussed, it is
too dangerous to proceed in a manner which would allow the Examiner to
benefit from that review.
Consider what happens in such a case where there is a corresponding
application in a foreign patent office, with no duty of disclosure. If
one of the documents reviewed from the search were more relevant than
art cited by the foreign Examiner, the applicant would most likely
file a copy of it, and explain its relevance. That is in the
applicant's own interest, because it strengthens the resulting patent.
Even an applicant who does not do this would be foolish if he did not
make appropriate amendments to ensure that his claims were valid.
The foreign application therefore benefits from the applicant's review
of the search results. Either the most relevant art is brought to the
foreign Examiner's attention, or at least voluntary amendments are
made. And there is no need to send the Examiner "questionable"
But fear of Rule 56 causes the same applicant to burden the US PTO
with all the documents of which he is aware. This is done to prevent
the risk that the US Examiner, or opposing counsel during litigation,
may disagree with the applicant's view that a given document is
questionable. As a result, the US Examiner receives so many documents
that he is unable to conduct the high quality examination that Rule 56
seeks to promote.
It is thus ironic that Rule 56 often has exactly the opposite of its
THE PTO PROPOSALS
The PTO proposals acknowledge that fear of Rule 56 is the root cause
of the problem, but they then do nothing to address it. By tinkering
with Rule 98, the proposals attempt to treat the symptoms of the
disease instead of the cause. Only changes to Rule 56 itself can
solve the problem.
The PTO proposals are therefore doomed to failure, no matter how
reasonable they might appear on the surface. The amended rules might
prevent the occasional case in which 500 or 1000 references are cited,
but surely these are rare. They will do little for the much more
common case with 30 or 40 references. We suspect it is these which
really take up most of an Examiner's time.
Under the PTO's proposals, applicants will still be afraid, so they
will still seek to have Examiners consider large quantities of prior
They will also now have an extra fear -- that what they say in the
proposed descriptions of the importance of each document after the
tenth will be used in an accusation (however baseless) that they
misled the Examiner. This introduction of extra fear seems a strange
way to solve a problem which the PTO acknowledges is caused by fear.
It is unacceptable to try to solve the PTO's problem by making the
applicant's problem worse.
This extra fear will have consequences when applicants draft their
descriptions of the importance of each citation after the tenth.
Descriptions are likely be filed which give the Examiner as little
guidance as possible, consistent with saying enough to ensure that the
Examiner is obliged to consider the reference. It is not difficult to
imagine a one-line description such as "Reference A shows numerous
features of the claims, including for example feature X". This still
leaves the Examiner with a lot of work to find feature X in the
reference, and to determine what else is of relevance.
Neither will the requirement that each such description be unique do
much to reduce the citation of cumulative references. Since nearly
all references are unique, a skilled practitioner will probably have
little difficulty drafting a unique description of the type
exemplified above, which still leaves the Examiner with a lot of work.
This remains true even though the PTO plans to require a description
which is unique relative to the claims.
We do not suggest that practitioners will like the idea of frustrating
the good intentions behind the rule change. But while the fear of
Rule 56 remains, that is what many will feel constrained to do.
A further consideration should be the added cost to applicants.
Practitioners will clearly charge for their skill in drafting
descriptions which ensure all references are considered, while saying
as little as possible to prevent allegations that the Examiner was
POSSIBLE ALTERNATIVE SOLUTIONS
Any viable solution must address the applicant's problems and his
fears, as well as those of the PTO.
We believe strongly that the applicant has a common interest with the
PTO, in wanting to ensure that his patent will be valid in reality,
and not merely by statutory presumption. As already happens in other
countries, a climate must be created in which an applicant will feel
able to co-operate helpfully with the Examiner to achieve this common
goal, citing and explaining material documents, whilst withholding the
immaterial, the questionable and the merely cumulative without fear of
Since we believe that the duty of disclosure under Rule 56 is the
primary barrier to such a climate of co-operation, our preference
would be for the rule and the duty to be simply abolished.
We recognise, however, that it may be unrealistic to expect this. It
may not even be in the PTO's power to abolish the duty of disclosure,
since even without Rule 56 the courts could hold that there was an
A revision of Rule 56 is therefore needed. This should be drafted to
send an extremely clear message to the courts and to trial attorneys
that the PTO views the duty of disclosure to be strictly limited. It
should be borne in mind, however, that Rule 56(b) already attempts to
do this, and has clearly failed -- patentees continue to be the
subject of accusations of failure to comply, and applicants are afraid
as a result.
The revised rule should therefore set out a different standard for the
documents which an applicant is obliged to disclose. The standard
should be clearly understandable, in that it should leave no room for
subsequent argument in court about whether any given document falls
within the rule. It follows that the standard should not involve
subjective assessments of materiality.
The standard could, amongst other things, require the filing of
documents found in corresponding foreign applications, since
compliance with this would be easy to assess.
The revised rule could encourage applicants to submit other documents
which they believe to be material, as long as it makes clear that this
is voluntary and not part of any duty. It could point out that such
submissions would strengthen the statutory presumption of validity.
It might be argued that such a relaxation in the duty of disclosure
would give free rein to the unscrupulous to obtain patents which they
know ought not to be granted. But the situation would be no worse
than in other countries, and the present form of the duty does not
result in the average US patent being any more valid than, say, its
In any case, the unscrupulous could be penalised as follows. Where a
patentee requests reissue or re-examination in view of certain
references, the PTO rules could require him to declare when the
references, and their materiality, first came to his attention. Re-
examination could then be refused if the references could have been
brought to the Examiner's attention during prosecution of the original
application. In this way, applicants will be encouraged to file
references that really are material during the original prosecution,
knowing that otherwise any resulting invalidity cannot be cured later.
If the above suggestions are adopted, there would be little need for
the detailed regulations in Rules 97 and 98 and they could be dropped
or made much simpler. These rules represent the PTO's attempt to cope
with the excessive information disclosure induced by the present Rule
COMMENTS ON POINTS OF DETAIL
The requirement that the registered practitioner should personally
review all submitted citations will clearly increase the cost to the
applicant. This will be unreasonable in many cases, especially when
there is no requirement for the practitioner to prepare a description
of the citation's importance. If, as will often happen, the Examiner
does not subsequently rely on the citation, the extra cost will be
In the case of a citation made by a foreign patent office, such a
review would serve no purpose. Whatever the outcome of the review,
the prudent practitioner will submit the reference anyway, because the
citation has already been deemed material by a foreign Examiner.
In other cases, a review will already have been undertaken by the
applicant himself, or by the applicant's foreign attorney or agent,
prior to transmission to the US practitioner. A statement to that
effect should suffice, particularly since the applicant or foreign
attorney may well be in a better position than the US practitioner to
assess the reference.
For example, it is common for a foreign attorney to send citations to
a US practitioner together with the instructions for the filing of a
new application. The US practitioner is then in no position to assess
the relevance of the citations, since practitioners do not normally
conduct more than a cursory review of the application itself at that
Furthermore, if the citation is in a foreign language with which the
US practitioner is not familiar, it is impossible for him to review it
in any detail. All he can do is rely on the foreign search report, or
on an explanation prepared by his foreign attorney client for the
purposes of Rule 98(a)(3).
There are two further improvements which could be made to Rules 56 and
97 respectively, which would partially ease the burden on both the PTO
and on applicants.
In rule 56 at present, applicants are required to disclose information
which is material to all pending claims, including all sub-claims. If
there are 20 sub-claims, it is easy to see how 20 prior art documents
could be material to their patentability, and must be submitted. Yet
if the Examiner finds that the independent claims are patentable,
there is no need to consider these sub-claims further.
We therefore suggest that Rule 56 should only require information to
be submitted when it becomes relevant to one or more independent
We appreciate that this may result in an Examiner indicating that a
sub-claim would be patentable if re-written in independent form, only
to withdraw the indication when the relevant prior art is filed.
However, this would be a small inconvenience compared to the present
need for the applicant to file (and for the Examiner to sift through)
a mountain of prior art which may never become relevant. The
applicant would anyway know of the possible objection, since he knows
of the relevance of the prior art.
The improvement in Rule 97 relates to the certificate under sub-rule
(e)(2). Except in the case of citations made by a foreign patent
office, this requires the applicant to declare that cited references
were not known to any relevant individual more than three months
previously. The alternative is to pay a $240 fee.
If taken literally, there is a conflict between this certificate and
Rule 56(a), which states: "There is no duty to submit information
which is not material to the patentability of any existing claim". A
document may have been known for more than three months, but may only
become material because of an amendment during prosecution (e.g. a
feature from the description may be inserted into the main claim).
It has been suggested that the wording of the certificate might not
need to be taken literally in such circumstances. However, it tends
to reinforce an applicant's perception that he must file prior art
references as soon as they come to his attention, even if not material
to the current claims. Otherwise, he might later be faced with the
choice of paying $240 or risking a charge of making a false
declaration. A change to the wording of the certificate would make
the position clear, e.g. by allowing for a three month period after
the making of the amendment.
COMMENTS ON TOPIC 13
In principle, we are in favour of streamlining the manner in which
amendments are made.
However, the proposed change to Rule 52, requiring that all paragraphs
in the specification be numbered, is a retrograde step.
It should be recalled that Rule 52(b) has in the past been amended to
ensure that, if an applicant conforms to the formal requirements of
the PCT, then he will automatically comply with the requirements of
the USPTO. Many other countries have similarly brought their
requirements into line with the PCT.
Many applicants rely on this. When preparing an application for
simultaneous filing in several countries, it is a great convenience to
be able to work to just one set of formal standards.
Paragraph numbering, however, has no place in the PCT rules, nor in
the rules of any other country. The requirement would run counter to
the very desirable trend for international harmonisation.
Indeed, if the PTO enforces this change in connection with the
national stage of an application originating via the PCT, then the
result will be more than just inconvenient. It will violate the USA's
obligations under PCT Article 27(1), which prohibits formal
requirements additional to those in the PCT.
As an alternative, we suggest either that the US use a system of
replacement pages, as in Europe, or that paragraphs to be replaced are
referred to by page and line number (e.g. "Please replace the
paragraph from page 7 line 27 through page 8 line 3 with the
We note the objection to the above suggestions, that they will not be
compatible in the future with entirely electronic application files
which do not have consistent page and line numbers.
However, many other changes to the rules and practice will become
necessary when electronic application files are introduced. It would
be better to make a comprehensive package of changes at that time,
rather than to make a piecemeal change now. The changes adopted for
electronic files need not alter the amendment procedure adopted now
for paper applications, just as they will not be applicable to many
other aspects of the continued handling of paper files.
In any case, we hope that the electronic file system -- including the
procedure for making amendments -- will be agreed internationally,
particularly with the European Patent Office.
J T Jackson
Company Patent Agent