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Original Message

Original Message

From: axford@fr.com (SMTP:axford@frcom]

Sent. Wednesday, October 28, 1998 1:15 PM

To: Spar, Bob

Subject: Follow Up to San Diego Talk

Bob,

Thank you again for the informative presentation you gave at the La Jolla Marriott today on the proposed new PTO rules. Thank you also for inviting me to submit my idea directly to you regarding the changes to IDS practice.

I have a substantial amount of experience with both reexamination practice and with patent litigation, and especially regarding the use of references cited during prosecution to challenge validity of a patent during reexam. I co-drafted and filed seven reexams last year after the Portolla decision, and my experiences might be of some interest.

The examiners basically said that in the face of the Portolla decision, the "materiality" standard went out the door. They said, in essence, that any new reference on which an attorney based a reexam would be considered material and not cumulative. This, they said, was because the office didn't like the holding in Portolla. They were using this very low threshhold of materiality to allow reexams of cases that deserved to be reexamined (the classical "examiner screwed up" cases) even though similar art had been cited during prosecution, but was never actually considered by the examiner (because if it was. the examiner would not have allowed the claims.)

This raises the very real problem that the new rules may establish a different threshhold of materiality during prosecution than the standard of materiality used to make a case susceptible to reexamination. Based on what I now know about the very low threshhold of establishing materiality in reexam, and the very high presumption of validity if references are cited in IDSs, in my most important cases, I am filing HUGE IDSs to make them reexam-proof.

What could help solve this problem is a couple of things. First, the standard for materiality must be the same during prosecution as it is when establishing a substantial new question of patentability during reexam. If anything, the standard of materiality should be HIGHER for establishing a SUBSTANTIAL new question of patentability. If this was the case, practitioners would not feel compelled to cite every single reference that even remotely relates to the case to avoid its potential use in a reexam.

Second, I think a lot of the desire to over-cite in IDSs could be avoided if the Examiner would issue a "search report" that listed the art THEY considered as material that was identified in their search, but not already of record in an IDS. This would serve to establish some threshhold for materiality at the level of the Examiner, which hopefully would be the same level of materiality that would be adhered to post-issuance - i.e. we as practitioners could defend the validity of our patents over newly cited art which is marginally material on

the basis that the Examiner searched a particular class and subclass, but only found the references listed on the search report to be sufficiently material to affect patentability.

In addition, if the Examiner has already determined that a reference that appeared in their search report was material- enough to make a copy of it and review it, it SHOULD be made a part of the record we rely on post-issuance. After all, if they reviewed the reference but did not base a rejection on it, this information is almost as important as knowing about the references they DO base a rejection on. If we had more information about ALL the references that were ACTUALLY CONSIDERED during prosecution, besides what gets cited in an office action (which we KNOW was considered) or what gets initialed in an IDS (which we DONT KNOW was considered, but unfortunately is presumed to have been considered), I truely believe we would be less likely to use the "kitchen sink IDS" approach.

Please let me know what you think about this concept I am very anxious and willing to explore this with you further from the practitioners point of view, and if you have established any focus groups including practitioners to help you come up with IDS rules that will be compromising yet goal-fulfilling, please let me know - I would be glad to participate.

Laurie Axford, Principal

Fish & Richardson

4225 Executive Square, Ste. 1400

La Jolla, California 92037

(619) 678-4331

fax: (619) 678-5099

email: axford@fr.com

 

 

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