Comments on PTO Advanced Notice on Planned Rule Changes
Attn: Hiram H. Bernstein
Fm: Greg Caldwell@bstz.com, Roland Cortes@BSTZ.com, Tarek Fahmi@BSTZ.com, James Go@Bstz.com, Thomas Hassing@BSTZ.com, Dan Ovanezian@BSTZ.com, Charlie Shemwell@BSTZ.com, Judith Szepesi@BSTZ.com
Re: PTO Advanced Notice on Planned Rule Changes, Topic (9) ôImposing limits/requirements on information disclosure statement submissions (This submission sets forth the opinions of the authors and does not necessarily represent the views of Blakely, Sokoloff, Taylor & Zafman LLP and/or any of its clients.)
The stated goals and impact of the proposed change to 37 C.F.R. 1.98 regarding new requirements and/or limits on information submitted as part of an information disclosure statement (IDS) are:
To raise the efficiency and effectiveness of the PTOÆs business processes to make the PTO a more business-like agency and increase the level of the PTOÆs service to the public.
Rather than meeting this goal, however, the proposed rule change will have the effect of dramatically decreasing the level of the PTOÆs service to the public and increasing the uncertainties regarding patents issued by the PTO.
Under the proposed rule changes, Applicants would be required to (1) include a statement by a registered practitioner (or inventor) that each item being submitted has been personally reviewed to determine its relevance, and (2) include a detailed statement comparing each item being submitted (in excess of 10) to the relevant claims of the application. (A further requirement regarding the submission of copies of pending applications cited in IDSs seems reasonable and is not addressed further herein.) In so far as the PTO is seeking to reduce the volume of material it must contend with, the requirement for personal review by an applicant or his/her representative for relevance seems reasonable. Requiring such a screening review prior to the submission of any material would presumably achieve the goal of eliminating unnecessary references from consideration. Having determined that a reference was not material, a practitioner would be relieved of the need to include it as part of an IDS submission. Although this may lead to questions in later proceedings regarding how this determination was reached, such questions seem to be inevitable whenever any particular reference is not submitted.
Further requiring Applicants to particularly point out differences between the claimed invention and each of the cited references, however, seems to be an unduly burdensome shift in the relative roles played by each of the participants in the application process. At present, Applicants pay fees to the PTO to, among other things, have claims of pending applications examined against the prior art, including references submitted with IDSs. Now, the PTO is considering having Applicants pay additional fees to their representatives (it is noted that there does not appear to be any suggestion that fees for late submitted IDSs will be eliminated even if the requisite statements are provided) for examining the patentability of their own applications. Those Applicants who undertake to perform a detailed search of the prior art are, in effect, penalized by having to pay for the search, having to pay again to have the search results examined by a practitioner so that the required relevancy statement and unique descriptions can be prepared, and potentially having to pay a third time to have a PTO examiner consider the search results. Rather than incur these multiple payments, it is not unreasonable to expect Applicants to forgo such searches in the first place. This may lead to an overall decline in the quality of applications being submitted to the PTO and will further increase suspicion that relevant prior art was not uncovered or considered by the examiner during the application process. This result may be especially prevalent in the case of small entity Applicants due to the disproportionate financial impact of having prior art searches reviewed by a practitioner. The additional cost associated with practitioner review of search results may cause small entity Applicants to forgo such a benefit in favor of either personally reviewing prior art or not performing a search. Large entities that can more readily absorb this additional cost would have an advantage over small entity Applicants by being able to afford a higher quality patent. This result seems contrary to the policy of providing a small entity status in order to encourage individual inventors, small businesses, and nonprofit institutions to seek patent protection by alleviate the financial burden of obtaining a patent.
Improving efficiency (usually defined as a measure of work done or energy expended in relation to energy supplied) should not come at the expense of diluting the certainty that attaches to patents issued by the PTO. If the proposed rule change is implemented the burden of examining each reference (Here it should be understood that this statement applies to each reference in excess of 10) cited in an IDS against the claims of an application will be shifted from a PTO examiner to the applicant or his/her representative. As a result, PTO examiners may no longer feel the need to independently consider such references in detail. Indeed, where lengthy references are presented, an examiner may consider such an examination to be ôunduly burdensomeö and decide instead to rely on the ApplicantÆs characterization of the references. Thus, if one considers the combined effects of the proposed revisions to Rule 98 (i.e., those affecting the manner of IDS submissions covered in Topic 9 together with those permitting examiners the luxury of ignoring ôunduly burdensomeö references covered in Topic 10), one can quickly see that it will be Applicants themselves, and not the examiners, who will be determining the patentability of their own applications.
To avoid this undesirable situation, the following proposal is advanced. First, the requirement that applicants submit relevant prior art should be maintained in its current form, with the exception that a personal review and certification of relevancy requirement as outlined in the currently proposed rule changes should be adopted. The requirement for personal review/certification is expected to cut down and/or eliminate the information ôdumpsö referred to in the commentary to the currently proposed rule changes.
Second, the search function of the PTO should be separated from the examination function, and separate fees required for each processing stage. This would mirror current practice under the Patent Cooperation Treaty and would provide an early indication to Applicants of the possibility of obtaining a patent, without requiring a detailed explanation of any particular reference. By early weeding out of applications in this fashion, examiners would be left with only meritorious applications that could be examined relatively quickly in light of the art already uncovered. Any further IDS submissions after the examination process has commenced (e.g., by the Applicant electing such a procedure and paying the necessary fees) would come in under the personal review/certification requirement and so it is expected that only art of relevance would be provided. Examining applications in light of such additional references would not be unduly burdensome and, in any event, could be separately supported by requiring fees for the consideration of such references.
By dividing the search and examination functions, the PTOÆs goal of reducing processing time could be realized. At present, it is noted that similar search functions are often required for applications submitted under the Patent Cooperation Treaty, and the results of such searches often need to be communicated to Applicants within three months of the receipt of a PCT application (e.g., where a PCT application is filed near the end of the priority year from the filing of a corresponding domestic application). Because such service is currently being provided by the PTO, there does not appear to be any reasons why it cannot be provided under the new scheme proposed herein.
During the search phase, the PTO should be required to consider other art submitted by the Applicant (under the personal review/certification standard discussed above). No such submissions should be permitted, however, other than concurrently with the filing of an application. This will prevent processing delays.
The product of the search phase should be a search report similar to that provided by a Search Authority for PCT applications. Thus, only a cursory designation of the relevance of a reference (e.g., anticipatory by itself or in combination with other references) against specific claims of an application need be provided at this stage. Formal defects in an application need not be examined at this point.
After having an opportunity to review the search report, an applicant would have time to consider whether a full examination of the application is desirable. In those cases where no examination is elected, the PTO has met its goal of processing applications within 12 months.
For cases where examination is requested, no processing time is accrued during the period when the Applicant is making this decision. When the examination request is received by the PTO, examination may commence forthwith, having already had the benefit of a search and a preliminary report of the relevance of each cited reference. No new art would need to be considered at this point, because of the requirement that IDS submissions take place concurrently with the filing of an application before the search phase. If any new references had been uncovered by the Applicant, and these references were determined to be material to patentability, they could be submitted together with a fee, for consideration by the PTO. It is expected that the fee and personal review/ certification requirements would keep such submissions small, imposing no undue burden on PTO examiners. The examination function could thus be conducted rapidly and within the 12 month processing period.
This scheme is believed to be superior to that proposed by the PTO because it keeps the beneficial aspect of the personal review/certification process, which will limit the volume of IDS submissions, without requiring Applicants to become their own examiners. Patents issued by the PTO retain their trustworthiness because Applicants and others are assured of quality, unbiased examinations with reference to art uncovered during through search procedures. Further, PTO processing time is reduced because unmeritorious applications are weeded out early, allowing examiners to concentrate on applications of merit, and having the benefit of preliminary patentability studies attached to search reports.