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Assistant Commissioner for Patents

Assistant Commissioner for Patents

Box Comments - Patents

Washington, D.C. 20231

Attn. Hiram H. Berstein

Re: Changes to Implement the Patent Business Goals

To Whom It May Concern:

As a former examiner and a registered practitioner for a combined eleven and one-half years, I felt compelled to provide my own personal comments regarding the Advance Notice of Proposed Rulemaking Changes to Implement the Patent Business Goals printed in the Federal Register on October 5, 1998 (Vol. 63, No. 192). Specifically, I would like to address Item 9, which imposes limits and requirements on information disclosure statement submissions. Please note that the views expressed in this letter are only those of the undersigned and are not necessarily those of Price, Heneveld. Cooper, DeWitt & Litton or its clients.

As set forth below, I oppose the proposed changes that would require personal review by a registered practitioner of each cited reference and requires a statement of relevance for each cited reference. Noting that the PTO recognizes it will receive much opposition to this proposed rule and has requested alternative approaches to reducing the burden of excessive IDS submissions, I have also set forth a possible solution to the problems faced by the PTO regarding excessive IDS submissions. I believe my proposed solution will not only solve the problems expressly stated by the PTO in the Advance Notice, but will also clarify other inconsistencies that arise from the manner by which information cited in an IDS is now treated by examiners and the PTO.

Both as an examiner and a practitioner, I have often struggled with the perpetual conflict that arises when examiners are instructed to deny consideration of a reference, and the requirement that examiners conduct a thorough and complete search of all the relevant prior art, not to mention their duty to do their best to ensure that each patent that issues is valid.

I also question whether any requirement by the PTO that a cited reference in an IDS submission not be considered by an examiner for failure to comply with the proposed rules conflicts with 37 CFR 104 that requires "the examiner shall make a thorough investigation of the available prior art relating to the subject

Assistant Commissioner for Patents

Box Comments - Patents

Page 2

December 7, 1998

matter of the claimed invention." By requiring that an examiner deny consideration of a citation, the PTO appears to be suggesting that an examiner need not consider all pertinent prior art (particularly art believed to be pertinent by the applicant). I also question how examiners are advised to handle a situation where a patent that must be denied review for failure to comply with the new proposed rules renders the claimed invention unpatentable. Are examiners instructed to deny consideration of a non-complying citation and issue an invalid patent? If not, are the examiners not required to at least review all cited references to avoid this from occurring? If examiners are so required, do not the proposed sanctions of "denying consideration" become meaningless?

I have also often questioned why references submitted in an IDS are treated differently from references the examiner reviews while conducting his/her search. From experience, I know that many examiners treat references cited in an IDS no differently than they treat any other reference that they review while conducting their search. While conducting a search, examiners select only those patents that are particularly pertinent to the claimed invention, while leaving the remaining references in the shoes. Only the selected pertinent patents are cited on the face of the patent. On the other hand, provided that an applicant meets all the procedural requirements for an IDS, all references submitted regardless of how pertinent are also cited on the face of the patent. Often, references submitted in an IDS are less relevant than references the examiner reviews during their search but does not select for citation on the front of the patent.

Patent examiners often do not, and should not be required to, give any more thorough consideration to a patent submitted in an IDS than they would otherwise give to a patent they come across in the shoes while conducting their search. Clearly, examiners are trained to quickly recognize the pertinence of any particular patent. Accordingly, I propose that examiners should treat references submitted in an IDS no different than they treat references they come across in conducting their own search. Specifically, the examiner should always be required to at least conduct a typical cursory review of each cited reference and select those that are particularly pertinent for citation on the front of the patent and to disregard all the other references cited.

To ensure that there is some record of what references were submitted, applicants would still be required to submit a PTO 1449 form or its equivalent, which could be modified to include two different designations to be entered by the examiner on the form. In particular, the PTO 1449 form could include a column for the examiner to check that he/she has reviewed the cited reference and another box for the examiner to check to identify those references that are sufficiently pertinent to be cited on the face of the patent. To the extent the PTO still wishes to deny "consideration" of certain patents, examiners would still perhaps have the option of crossing off a reference and hence not review it.

While an IDS submission citing hundreds of patents certainly places a burden on the examiner and the PTO, examiners typically search through hundreds and even thousands of patents in conducting their routine searches. Despite the fact that the number of patents an examiner may have to search for a

Assistant Commissioner for Patents

Box Comments - Patents

Page 3

December 7, 1998

particular invention increases substantially each year, the PTO has not considered these additional references to significantly increase the burden on the examiner in conducting the required search. If the PTO did consider such additional patents to be burdensome, the PTO would have consistently increased the time allotment per disposal each successive year to account for the added burden. To prove my point, I randomly selected class 711, subclass 146 and searched for all patents issued during 1997 and 1998. The results of the search on the PTO's Internet database showed that during this truncated two-year period, ninety-nine patents were added to this subclass alone. Typically, examiners search between five and twenty subclasses for each application. Even with only five subclasses, this represents approximately 250 additional patents an examiner may have to search for each application each successive year. It is incomprehensible how the PTO can now say that more than ten references submitted in an IDS is excessively burdensome on the examiner. Furthermore, applicants often submit this many patents to compensate for the fact that the file integrity of the patent shoes is only about 80 percent.

While I recognize that the PTO is trying to make examiners more effective by providing for patent searching at their computers, I have spoken with many examiners in the non-chemical arts that still find the latest system to be much slower and less efficient than manually searching the patents in the shoes. Accordingly, many of these examiners only use the present electronic searching system to supplement their manual searches. As a consequence, the supplementing of the prior searching techniques using the electronic searching database actually adds to the time required for an examiner to perform a complete and thorough search.

For the reasons stated above, I strongly suggest that the PTO reconsider whether the difference in an applicant citing ten or less patents and an applicant citing fifty to one hundred patents provides any additional and significant burden on the examiner relative to the increasing burdens that are imposed on them each year. Certainly, in addition to the increasing number of patent references an examiner must consider, there are other sources of information examiners are now requested to search by the PTO, such as commercial databases and other information on the Internet. All this additional information certainly imposes additional burdens on the examiner that the PTO is simply choosing to ignore

To discourage applicants from citing an overly excessive number of patents, I suggest that the PTO consider sending out a notice or otherwise including a form paragraph for the examiners to use in their Office Actions that warns applicants of the existing court cases that have held that applicants can be guilty of inequitable conduct and their patents unenforceable when it is discovered that one of the excessive patents they cite was particularly relevant and buried amongst many non-relevant references. Certainly, the fact that a patent may be unenforceable is the most significant and effective incentive for a practitioner to reconsider flooding the PTO with irrelevant references. The sanctions that the PTO is currently proposing pale in comparison to having an unenforceable patent. Certainly, a practitioner who floods the PTO with three thousand references in an IDS without pointing to the particular relevance of any one reference, may not only commit inequitable conduct and render a patent unenforceable, but expose them to malpractice claims by the applicant.

Assistant Commissioner for Patents

Box Comments - Patents

Page 4

December 7. 1998

I also believe that the added requirements suggested by the PTO unduly complicate the filing of an IDS, which is already very complicated, particularly for a pro se applicant, to meet all the requirements that currently exist. In the PTO's last major rule package of December 1, 1998, the PTO stated that their objective in passing those rules was to eliminate complex rules and reduce the burden on the American public. Why is the PTO now trying to unduly burden the American public with more complex rules that make it much more difficult for an applicant to simply attempt to meet their duty of disclosure per Rule 56? Conceivably, the existing rule and those now proposed by the PTO could make it so complex to simply file an IDS that applicants will be unable to comply with their duty of disclosure. If applicants in fact have this duty of disclosure, why then is the PTO tryingg to discourage applicants from complying?

Instead of adding to the already complex myriad of rules relating to the submission of information in an IDS, my proposal would be as effective as those proposed by the PTO and additionally address the concerns outlined at the very beginning of my letter - namely, references before the examiner would be treated the same, regardless of whether they are merely in the shoes and part of the examiner's search or included in an IDS. Further, the conflict between the PTO's primary mission to issue valid patents and for examiners to conduct a thorough search would not conflict with any rules that would require an examiner to deny consideration of a pertinent reference merely for failure to comply with the complex rules. My proposal would also eventually reduce instances where excessive IDS submissions are submitted by educating those who abuse the system of the potentially undesirable impact of their actions, while giving them a chance to rectify the situation by withdrawing references or pointing out the particular pertinence of the cited references. This should prove at least, if not more, effective than the PTO's present proposal, since the PTO's proposal would not actually prevent someone from submitting thousands of patents. My proposal would also reduce the burden on the examiners to the extent they felt compelled to give any additional consideration to any reference submitted by the applicant than they would otherwise give to a patent they come across in the shoes. Significantly, my proposal would allow examiners to discard patents submitted in an IDS that they do not consider to be particularly relevant, such that the excessive piles of papers that have to accompany some of these patent applications may be eliminated.

I would also suggest that the PTO consider enabling applicants to file electronic copies of U.S. patents rather than paper copies once the PTO's patent image database is available on the Internet. Applicants could submit a PTO 1449 form in electronic form with hypertext links to the images of the cited patents in html format, such that an examiner may quickly go through the list of references and review the patents using the Internet browser software they already have on their desktops.

Lastly, I wish to emphasize that the quality of examination is highly dependent upon the quality of the search and the amount of potentially pertinent information that the examiner is able to consider. The amount of information that may be pertinent that an examiner is forced to weed through is growing at an exponential pace, and the PTO should give serious consideration to providing additional examination time to account for all this additional information.

Assistant Commissioner for Patents

Box Comments - Patents

Page 5

December 7. 1998

I was quite concerned to see that the PTO was basing most of their rationale for implementing the rules on the "business goal" of reducing examination time. I am curious where this goal came from. While it may be a goal that is supported by many practitioners, I do not believe that any practitioner would support reducing examination time at the expense of obtaining a high quality patent. Frankly, I found the fact that the PTO was trying to justify these proposed changes based upon "business goals" to be a bit unnerving in view of the PTO's attempts to become a government corporation. Previously, I have not given much credence to those who opposed the PTO becoming a government corporation because I simply did not believe the PTO would become more concerned with raising revenues than issuing a quality patent. I must now give the fears of those opponents much more credit. If the PTO persists to base their rationale for requiring rule changes upon "business goals," I will write to my U.S. senators and representatives to advise them that they better take seriously the claims of those opponents that the PTO will no longer be concerned with issuing a quality product but instead more concerned with operating as a business.

Respectfully submitted,

Terry S. Callaghan

Registration No. 34 559

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