These comments submitted by Shell Oil Company are responsive to the proposed changes to the Rules of Practice before the Patent and Trademark Office published in Vol. 63, Number 192 of the Federal Register (pp. 53497-53530) on October 5, 1998. Please contact Todd F. Volyn at (713) 241-1194 or firstname.lastname@example.org if you have questions or comments.
1. Proposed Changes Permitting Delayed Submission of Oath and Declaration (37 CFR 1.52, 1.53). Permitting the delayed submission of an oath or declaration is not objectionable. However, the detailed statements about inventorship that would be required to delay the submission of an oath or declaration are not desirable.
The rationale behind the statements that would be required by the filing attorney are not clear but it appears that the Office is concerned that a mechanism exists for ensuring that applications are filed on behalf of actual inventors. In our view, this objective would be met by merely requiring the attorney to state that to the best of the attorney's knowledge and belief the inventors are the first, true, and actual inventors. The patent statutes expressly permit filing the oath after the specification has been filed "within such period and under such conditions...as may be prescribed by the Commissioner." 35 USC 111. Thus, the Office is not compelled to require any particular act to properly accept and prosecute an application up until a notice of allowance is granted.
Imposing the proposed requirements on attorney representation can adversely impact the patent system. Defining the parameters of an "inventorship inquiry" that would satisfy the rule will take years of litigation and will provide another unnecessary route to collateral attacks on patents based on claims of inequitable conduct and the like. This will render the fate of many patents uncertain while the law is being defined. Injecting this degree of uncertainty would come without any countervailing benefit since the administration of satisfying inventorship requirements is left largely to the discretion of the Office and such requirements must be met before a patent can issue in any event. 35 USC 111(a)(4). Multiplying the degree of uncertainty of the enforceability of patents diminishes the respect given to otherwise valid patents and ultimately damages public confidence in the integrity of the patent system.
Accordingly, while we do not object to the ability to delay the filing of an oath or declaration, we do not see any benefit in requiring the attorney to assert more than that inventorship is believed to be correct. The proposed requirements of indicating that a copy of the application has been sent to named inventors along with a notice of the inventor's obligation under 37 CFR 1.63 are not unduly burdensome or problematic but neither do they appear necessary and thus are not advised either.
2. Proposed Change Limiting the Number of Claims in an Application (37 CFR 1.75). We oppose the imposition of a limitation on the number of claims in an application.
That adequately claiming an invention is a matter left entirely to the inventor is firmly established in the law. 35 USC 112. Yet the Office seems to take the position that presenting a large number of claims amounts to "excessiveness". The Office notes that examining a large number of claims is difficult, time consuming, and costly. We do not quibble with this assessment. However, the Office provides no justification or rationale for assessing "excessiveness" beyond mere numbers of claims. Indeed, the Office cannot provide any such justification since the number, type, and style of claims necessary to fully vest an applicant with all of the property to which they are entitled will vary from invention to invention. Assessing just how many and what types of claims are needed to adequately define such property is also a determination which is not within the PTO's purview. The Office's job is to determine whether or not the claimed invention meets the standards of patentability, not whether the applicant has obtained "enough" property.
We do not disagree that unnecessary multiplicity of claims can lead to confusion. The Office has long had a procedure for dealing with "multiplicitous" claims. MPEP 2173.05(n). Proper exercise of this rule appears adequate to the task of minimizing such confusion. However, as the courts have admonished, "the rule of reason should be practiced and applied [with respect to rejections based on multiplicity] on the basis of the relevant facts and circumstances in each individual case." In re Chandler, 138 U.S.P.Q. 138 (CCPA 1963). This view has been taken in Chandler and related cases because courts are sensitive to artificial limitations being placed on legitimate property interests. Id. The Office should take note of this rationale and not avoid the admonishments and concerns of the judiciary by creating a rule to circumvent it. Such an act would be inconsistent with its rule making authority. 35 USC 6(a).
No compelling case has been made that the relatively small number of applications containing more than forty claims significantly reduces the overall productivity of the PTO. Moreover, it would seem that the necessity of handling petitions by applicants seeking permission to exceed the claim limits would itself consume PTO time and resources. The additional fees generated by applications with large numbers of claims are also believed sufficient compensation for the time and effort required for examination of the additional claims. If it is not, we are confident that the Office knows how to address such a situation. Any burden imposed by the number of claims of a patent in litigation is a matter to be dealt with in that context- it is quite possible, indeed it is routine practice, that a patentee would voluntarily reduce the claims litigated to avoid jury confusion or hostility. Here too, though, the scope and content of the property that the patentee chooses to enforce is a matter solely for the patentee's own discretion. The Office should have no say, helpful or otherwise, in such matters.
The proposed remedy of filing successive continuation applications as an avenue to achieve complete coverage of an invention would actually introduce more confusion into the patent system. Instead of one patent containing a multiplicity of claims, there would be a multiplicity of closely-related patents, each with a separate file history and possibly examined by different examiners. For those inventions requiring additional claims for complete coverage, multiple continuations is not a reasonable alternative.
If the Office enacts the proposed rule then it should not include Markush claim elements within its count. Markush claims enable applicants to define a class of patentable material where it is difficult to do so using conventional nomenclature or taxonomy. Penalizing applicants for using this tool will encourage gaming. For example, one could expect to see a class defined within a specification by the recitation of any number of elements which might otherwise be Markush elements. The claims would then merely include the class name as the claim element. The examiner would then still be required to examine precisely the same number of elements. They would merely exist in the description rather than the claims. Other yet unknown mechanisms for avoiding such problems can be anticipated and we do not see that this would advance the interests of the Office or the public.
3. Proposed Change Harmonizing Standards for Patent Drawings (37 CFR 1.84). Adoption of the PCT drawing standards would be helpful since a single standard could be applied on a nearly global basis. Some effort will be required to adjust to this change but the move toward a single standard will ultimately accrue to the benefit of all practitioners and the general public.
4. Proposed Change Permitting Printing Patents in Color (37 CFR 1.84). Color drawings or images have the potential for better identifying and distinguishing inventions. This is particularly true in the case of imagery products themselves such as micrographs and spectrographs. Permitting color reproduction of such drawings and images can only be helpful to applicants and the general public.
The payment of an additional fee to defray the increased cost associated with this practice is reasonable. The extent of the fee will have some impact on how often the procedure is used. The Office should be mindful to set the fee so that color image are in fact used where they are needed or helpful. The size of the fee should not discourage such applicants from using this new option.
5. Proposed change imposing limits/requirements on information disclosure statement submissions and permitting refusal of information disclosure statements (37 CFR 1.98). We oppose adoption of the proposed rules and offer several alternatives.
There are two competing interests defined by Rule 56 and by case law on inequitable conduct: (1) The public's reliance on a thorough examination and proper patentability determination as embodied in the examiner's desire for a complete but concise collection of the information relevant to patentability, and (2) the patentee and attorney's need to dispel what could later be construed as concealment of any relevant information from the examiner.
The conflict is complicated by case law that imposes a harsh penalty on attorneys and patent owners for failure to cite all relevant prior art. The natural reaction of the applicant is to err on the side of disclosure of everything to the PTO and to avoid any statement about the relevance of any individual item. The fear of the potential for "deception" inherent in any statement made by one who has an obligation of advocacy on behalf of the applicant is palpable among practitioners. It appears that the Office itself appreciates this dilemma since it simultaneously advises that "When in doubt, it is desirable and safest to submit information" and "It is desirable to avoid the submission of long lists of documents if it can be avoided." MPEP 2004. More importantly, the courts take that view that "A patent attorney should be encouraged to err on the side of inclusion, thereby providing as much prior art as possible." Litton Systems v. Honeywell, 1995 U.S. Dist. LEXIS 729 (Dist. Cent. Ca. 1995).
We appreciate and regret the difficulty this causes for the PTO, but penalties for omission of a potentially relevant disclosure are too great for the inconvenience of the PTO to be the determining factor in the rule-making proposed in this area. More particularly, the following difficulties with the proposed rules are noted.
a. Any limitation placed on the number of references acceptable to the Office would be arbitrary. This proposition is axiomatic. The difficulty posed by arbitrary limitations is that they are guaranteed to be inappropriate in particular instances. Whether ten or twenty or thirty references are likely to be relevant will vary with the industry, technology, and invention. Imposing an additional requirement on attorneys when they exceed a particular number of references is bound to affect some particular areas of practice more severely than others. There is no principled reason for doing so.
The appropriate standard for determining whether or not a
reference should be considered without some justification (i.e., a statement
of relevance by the attorney) is whether the reference is material and, at least according to current practice, whether it is cumulative. This compels a decision based on the content of the material not whether it is the tenth or eleventh reference cited. The quantity of materials submitted has little relevance by itself. Cf., Mollins v. Textron, 33 U.S.P.Q. 2d 1823 (Fed. Cir. 1995) (Vast amount of prior art submitted proved to be unhelpful to applicant).
The Office seems to believe that the additional
"explanation" requirements are warranted because the attorney or applicant is free to chose which ten references do not require an additional statement. This does not comport with actual practice. Hard as one might try, it is difficult to judge when the next relevant reference will surface. It may well come after the applicant has already disclosed the allotted ten references. Depending upon when it is found, the applicant may have to pay significant petition or refiling fees to get the Office to consider it. This is compensation enough. Requiring applicants to pay these additional fees and expose themselves to the uncertainties of prosecution history estoppel and other problems associated with making statements is inapposite to the view that disclosure of material references should be encouraged.
b. The interpretation of prosecution history cannot be controlled by the PTO; this unnecessarily burdens the patentee and practitioner with risk. The existing rules do not require that a practitioner admit that a particular reference is material to the patentability of the invention. This point was addressed in comments to proposed changes to 37 C.F.R. 1.56 in 1992 (making filing of disclosure statements mandatory, but eliminating the requirement that a concise statement of the relevance of each item of information listed in an information disclosure). At that time, a concern was raised that submission would be taken as an implied admission of the prima facie unpatentability of a claim. This was addressed by adding a statement to the rule indicating that submission of an information disclosure would not be considered to be an admission that the information cited in the statement is material to patentability (57 FR 2021, reply to comment 11). Now, the proposed rule not only requires a statement that could be viewed as an admission, it requires that the practitioner to provide a unique description of each citation's relevance to each independent claim. Regardless of the disclaimer of rule 97(citation is not an admission of unpatentability), it will certainly be difficult to argue later that a claim is patentable over a reference after applicant made such a statement.
The courts will take their own view of statements made by an applicant irrespective of the PTO's characterization and limitations of the use of any such statement. Rarely is this helpful to a patentee. Patentees can expect more opportunities for collateral attacks on the enforceability of their patents. They can expect new more far reaching arguments for inequitable conduct. Thus, in an effort to improve administrative efficiency, the Office will further diminish the certainty of patent protection. In the aggregate, this would be detrimental to the patent system.
c. The rules would improperly change the roles of examiner and attorney. The Office is statutorily obligated to examine patent applications. 35 USC 131. While not accurately characterized as an adversarial process, the roles of examiner and attorney are structured so that their interaction should ultimately fulfill the Offices obligation both to ensure that patents are not unjustly denied and that they are not unjustly issued. MPEP 2001.04. The courts readily recognize that this process is "interactive" and requires assertive, specified actions by both examiner and attorney. Cf., In re Oetiker, 24 U.S.P.Q. 2d 1443 (Fed. Cir. 1992)(Examiner cannot act in a perfunctory manner and must actively participate along with attorney during prosecution; pro forma argumentation is not enough).
In short, it is well recognized by both the Office and the courts that it is the examiner's job to propose valid arguments against patentability when they exist and it is the attorney's job to explain why such arguments are improperly taken when this is the case. Requiring attorneys to create a strawman argument against patentability so that they can then show how this argument is overcome would upset this established practice. The attorney's own statements relating to the meaning and impact of the references cited by the attorney would likely often be attacked as misleading. In effect, a whole new route to unenforceability can easily be created.
The courts have been trying to discourage unjustifiable attacks on patents based on charges of inequitable conduct. See, Mollins v. Textron, 33 USPQ 2d 1823 (Fed. Cir. 1995). Thus, the new rules would encourage a practice which is discouraged by the courts. Initial characterizations of the cited referenced are best left to the examiner, not the attorney.
d. The duty imposed on the attorney and applicant are
unclear.. The rules would require a practitioner to certify that he has
"reviewed" the submitted reference. It is impossible to determine what it
takes to comply with this standard. Does "review" require thorough reading
or complete understanding? Must the practitioner "review" the entire
reference or is the "relevant portion" enough? It will likely take years to
develop and clarify the meaning of this requirement through litigation. This would further diminishes the certainty of the patent system. While it is preferable not include any such requirement, at a minimum, the rules should contain some definition of what it takes to comply with this duty.
While we would favor no change to the existing practice, we suggest some alternatives for addressing the problems noted by the Office. The first proposed alternative is greatly favored over the two.
a. Alternative giving examiner discretion. Case law supports the notion that citation of a relevant reference buried in a host of marginally references can support a finding of inequitable conduct. Penn Yan Boats Inc. v. Sea Lark Boats Inc., 175 U.S.P.Q. 260 (S.D. Fla. 1972) aff'd 178 U.S.P.Q. 577 (5 th Cir.), cert. denied, 414 U.S. 874 (1973) (Submission of references was accompanied by misleading characterization of references). The Office should not be engaged in determining whether or not attorneys have intended to mislead the Office through the submission of voluminous references. However, when it appears that a submission of material references is being buried in a sea of marginally meaningful references, the Office could have some recourse to address the situation.
A rule could be constructed which compels the examiner to make a good faith assessment of the cited references. Where the examiner cannot find the relevance of a document the examiner could include a statement to that effect in an office action (not on the merits). Ensuring that this is done in good faith could be accomplished by requiring the Examiner to provide a concise statement of what he views the reference to suggest or address.
The attorney would then have several options. The attorney
could do nothing. In this case, the examiner could decline consideration of
the reference. The attorney could concisely point out the section or
portion of the reference believed to be relevant or submit a concise
statement of the relevance of the reference as a whole. In this case, the
Examiner would be required to consider the reference. Lastly, in unusual
cases, the attorney could petition the Commissioner and assert that the
reference is relevant on its face or otherwise address the propriety of the
This practice would satisfy the objectives of the Office and the bar. Few practitioners desire lengthy prosecution histories filled with arguments that could imply misrepresentations of material facts. Thus, giving the examiner the discretion to raise the issue of the propriety of a submission should in itself discourage some of the abusive practices cited.
Where a legitimate disagreement exists, the procedure would provide
practitioners with a number of options. Admittedly, each comes with its
potential problems. However, they also provide practitioners with a means
to establish a record showing the absence of intent to deceive even if the
reference is not ultimately considered.
Finally, the internal mechanism for evaluating examiner performance can be used to ensure that examiners do not abuse their discretion and routinely objecting to legitimate submissions. First, doing so would inevitably lengthen prosecution, which would detract from whatever indicators of efficiency they would otherwise obtain. The Office might also consider including some performance standard for correctly or incorrectly making judgments about the materiality of references under such a system.
b. Alternative requiring a concise statement of relevance. The examiner could also be required to consider each citation above a prescribed number if the relevance of each citation is described. However, if this approach is taken the description should be limited to the formerly required "concise statement of the relevance of each item listed", not the requirements of the proposed rules for the reasons discussed above. Along these same lines, an examiner could be required to examine a "reasonable number" of references, considering the complexity of the invention and the nature of the prior art, and if more than this number of references are cited, then applicant would have to specify some prescribed number of references (e.g., ten) believed to be the most relevant, and the remaining would be examined only if the "concise statement of the relevance of each item listed" is provided. These approaches could also be combined with a rule providing the examiner with authority to exercise discretion as noted in alternative (a) above.
c. Alternative utilizing a two tier approach. In this alternative approach two different levels of submissions would be established. Level I information would be that submitted by the applicant in good faith as the most relevant prior art. Level II information would be any additional items which the applicant wished to place on the record for the purpose of full disclosure. Level II items would not be automatically included in the prior art "considered" by the examiner (unless the examiner chose to review them or they were of record as a result of the examiner's own search), but the fact that the items were made known to the examiner would be of record in the file wrapper.
6. Proposed Change Requiring a Handling Fee for Preliminary Amendments and Supplemental Replies (37 CFR 1.111). Handling fees should not be charged for preliminary amendments. Preliminary amendments are ordinarily filed to expedite prosecution. They permit rapid filing of applications that contain some undesirable characteristic in the form in which they were originally prepared. An attorney finding prior art or other information which makes amendment of the claims necessary or desirable and files a preliminary amendment to account for the finding is actually assisting the office in narrowing the search required and the scope of the examination.
Charging an extra fee for preliminary amendments would be counterproductive. The added fees for preliminary amendments will probably, as desired by the PTO, discourage their use. Thus, the Office can expect that some applicants will forego the opportunity to narrow the scope of the search and examination at the outset of prosecution opting instead to let the prosecution take its course. In the aggregate, this would more likely extend the time of prosecution rather than reduce it as the Office desires.
7. Proposed Change Creating Alternative Review Procedures for Applications Under Appeal (37 CFR 1.192). While we support the concept of an independent review of certain rejections prior to an appeal to the Board, we believe that the current proposal should be redesigned for greater simplicity and to ensure that applicants who pay a fee for the review get value for it. Without more detail on how the reviews would be conducted, it is difficult to see how the proposal would achieve the PTO's goal of reduced pendency and provide benefits to applicants not achievable in a direct appeal.
Specifically, we raise the following issues concerning the proposed review procedures which should be addressed in the Rules. With respect to the pre-brief review:
1. What form would the reviewer's decision take? Would it be in a document which included the reasons for the decision? Would the document be provided to the applicant? Would it be available to the Board in a subsequent appeal?
2. Should the applicant be required to pay a fee for a reversal of a rejection which "plainly fails to establish a prima facie case of unpatentability"?
3. Why limit the review to a single claim? What if the same type of unsustainable rejection is applied to more than one independent claim? For example, a type of rejection which applicants are sometimes forced to appeal is a 112 rejection for "undue breadth" of a claim. If such a non-statutory rejection is applied to more than one claim, should the reviewer not make a finding that all rejections in the application based on the same rationale are improper for the same reason?
4. What if the reviewer finds the rejection improper, but believes that a different rejection of the claim is prima facie sustainable?
5. Is the reviewer limited to the evidence of record in the prosecution, or may the reviewer use additional evidence or assert a different rationale to support the rejection of the claim? Would the applicant be informed of this additional evidence or rationale and allowed to rebut it? Would the examiner of record be informed of this additional evidence or rationale and allowed to use it in making a subsequent rejection? Would the Board be informed of the reviewer's reasons for sustaining a challenged rejection in any subsequent appeal?
6. As noted in the PTO's comments, appeal time frame considerations would require additional rule-making. It is believed better to include all necessary rule changes in a single proposal rather than adopt related rule changes piecemeal.
7. The proposal states that the examiner would be "generally expected" to withdraw a rejection found by the reviewer to lack merit. What if the examiner disagreed with the reviewer's finding?
With respect to the post-brief review, the procedure outlined appears to be an opportunity for an examiner to receive in-house assistance in shaping the PTO's arguments on appeal, rather than a review of the rejection by an objective third party. As such, it would appear to duplicate the current conference which can be held prior to the submission of the examiner's answer in accordance with MPEP 1208, except that it would be paid for by the applicant. We strongly emphasize that any pre-appeal procedures which involve payment of a fee by the applicant should be designed not only with the PTO's pendency goals in mind, but also with the objective of providing the applicant with an effective procedure for review of a rejection. The timing of the review after applicant's brief and before the examiner's answer provides an opportunity for the examiner (with the assistance of the reviewer) to drop weak rejections and to buttress or add stronger arguments, possibly making portions of the applicant's brief moot or less effective in addressing new points of emphasis.
In keeping with an applicant's goal of obtaining as objective a review as possible, we believe that the reviewer should be a primary examiner from a different art area selected at random from an available pool of primary examiners.
In view of the applicant's need to weigh the advantages of pursuing a review rather than a direct appeal and the fact that a fee would be involved, we believe that any review procedure should be uniform throughout the PTO. (Of course, there is nothing to preclude individual technology centers from establishing their own internal procedures to reduce unnecessary appeals to the Board.)
Shell Oil Company