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RESPONSE TO ADVANCE NOTICE OF PROPOSED RULEMAKING (ANPR) CHANGES

RESPONSE TO ADVANCE NOTICE OF PROPOSED RULEMAKING (ANPR) CHANGES TO IMPLEMENT THE PATENT BUSINESS GOALS - OCTOBER 5, 1998

The following comments are the personal views of Stephen C. Durant, Partner, Morrison & Foerster and Erwin J. Basinski, Of Counsel, Morrison & Foerster.

 

Comments in Response to Proposed Changes Imposing Limits/Requirements on Information Disclosure Statement Submissions (37 CFR 1.98)

I. INTRODUCTION

The proposed changes to the requirements on information disclosure statements under 37 CFR 1.98 are inconsistent with the statutory scheme established by Congress for the submission of applications by inventors and the examination of such applications by the United States Patent and Trademark Office (PTO). If implemented, these rule changes will significantly increase the cost of the prosecution of patent applications for many patent applicants and will add to the complexity of enforcing patents in the courts. The proposed rules changes focus narrowly on the PTO initiatives to expedite the examination of patent applications by requiring, under certain circumstances, the patent applicant to make detailed statements about the relationship between cited references and the patent claims. However, while prosecuting a patent application through the examination process, the patent applicant must be careful to avoid statements in the prosecution history that will create ambiguity as to the meaning of the patent claims or that might unnecessarily limit the scope of protection deserved by the claims. In many cases these proposed rule changes would unnecessarily obligate a patent applicant to make statements which could unwittingly create such ambiguities or limit the scope of the claims. In an attempt to prevent such claim interpretation problems from arising from submission of an information disclosure statement (IDS) pursuant to the proposed rules, many applicants will expend inordinate time and money preparing such statements. However, even such carefully prepared information disclosure statements will add unnecessary complexity to claim interpretation questions in court. Thus, any expediency to the PTO in the examination process is completely outweighed by the added costs of prosecution that will be borne by the patent applicant and by the increased complexity of claim interpretation in the courts. The proposed rules changes would tip the careful balance between the inventors’ statutory right to submit patent applications and the PTO’s statutory duty to examine the applications for patentability. The PTO could apply less onerous alternatives to solve the problem of voluminous IDS submissions. For instance, the PTO could charge the patent applicants the true cost of the examination of such submissions. For these reasons, we respectfully oppose the proposed changes with regard to 37 CFR 1.98.

 

II. THE PROPOSED RULE CHANGE IS INCONSISTENT WITH THE STATUTORY SCHEME THAT GOVERNS THE SUBMISSION AND EXAMINATION OF PATENT APPLICATIONS BECAUSE IT WOULD REQUIRE THE PATENT APPLICANT TO MAKE STATEMENTS IN THE PROSECUTION HISTORY THAT WOULD HAVE AN IMPACT ON THE INTERPRETATION OF THE CLAIMS

The statutory scheme of 35 U.S.C. requires a patent applicant to submit a specification with claims and an oath. See 35 U.S.C. §§ 112-115. The PTO is then required to make an examination of the application. See 35 U.S.C. §§ 131-135. The proposed rule changes place requirements on the patent applicant that exceed the statute’s requirements. The law does place on the applicant a duty to disclose prior art that the applicant knows is material to patentability. See FMC Corp. v. Manitowoc Co. , 835 F.2d 1411, 1415 (Fed. Cir. 1987). Under the current rules, filing an IDS provides an appropriate vehicle for the applicant to meet the duty of disclosure. However, neither the statute nor the case law impose any requirement that patent applicants comment on particular prior art references.

In Ekchian v. The Home Depot, Inc. , the Federal Circuit held "that statements made in an IDS can be the basis for a court to interpret the scope of the claims of a granted patent". 104 F.3d 1299, 1304 (Fed. Cir. 1997). The court also held "that arguments in an IDS can create an estoppel, and thus preclude a finding of infringement under the doctrine of equivalents." Id. The use of IDS statements in interpreting claims and in applying prosecution history estoppel make it particularly inappropriate for the PTO to require the applicant to make such statements. The statutory scheme has established a prosecution process in which the applicant may, but need not, respond to rejections by making statements regarding the relationship between the prior art and the claimed invention. The applicant is afforded the option of, after rejection, simply "persist[ing]" in his claim for a patent, obtaining reconsideration by the examiner, and, if his claim is twice rejected, appealing to the Board of Patent Appeals and Interferences. See 35 U.S.C. §§ 132,134. Thus the statute allows the applicant to avoid making statements that would later be used to limit the scope of the patent’s claims. In light of the litigation role of IDS statements in interpreting claims, it is inconsistent with the present statutory scheme to require the patent applicant to make any statements outside of the specification that could later be used to interpret the claims.

III. THE COST OF THE PROSECUTION OF MANY PATENT APPLICATIONS WOULD INCREASE SIGNIFICANTLY SINCE APPLICANTS WOULD EXERCISE EXTREME CARE IN THE PREPARATION OF INFORMATION DISCLOSURE STATEMENTS IN VIEW OF THEIR POTENTIAL IMPACT ON CLAIM INTERPRETATION BY THE COURTS

As noted above, Ekchian holds that statements in an IDS can impact upon claim interpretation. Therefore, any statements made in an IDS would require particularly close scrutiny by the attorney preparing the IDS. Thus the proposed rules, by requiring additional statements in an IDS, effectively mandate a significant increase in the legal fees associated with patent prosecution. Such costs would be particularly burdensome to applicants who have performed extensive prior art searches since each potentially relevant piece of prior art known to the applicant would have to not only be disclosed, but also (aside from a designated 10 references) commented on by the applicant.

IV. THE PROPOSED NEW RULES WOULD ADD TO THE COMPLEXITY OF THE INTERPRETATION OF PATENT CLAIMS IN THE COURTS

Because statements in an IDS are part of the prosecution history, courts will need to review them in performing claim interpretation. By requiring additional statements in an IDS, the proposed rules would thus further complicate the already difficult task of claim construction. Courts already must review file histories that, in some cases, are over 1,000 pages long. See J.T. Eaton & Company Inc. v. Atlantic Paste and Glue Co. , 106 F.3d 1563, 1572 (Fed. Cir. 1997) (Rader, J. dissenting) (referring to "over 1400 pages of prosecution history"). The proposed rules in effect require an increase in the amount of material that courts may have to review.

V. THERE ARE LESS ONEROUS ALTERNATIVES TO THE PROPOSED NEW RULES

As an alternative, we propose that applicants who submit over 10 references on an IDS or who submit particularly voluminous references be given the option of paying additional fees rather than making the statements required under the proposed rules. In particular, we propose:

-- A surcharge of, for example, $50.00 for each of references 10-20 submitted without the statement required by the proposed rules.

-- A surcharge of, for example, $100.00 for each of references 20 and above submitted without the statement required by the proposed rules.

-- A surcharge of, for example, $100.00 for each reference that has 100 pages or more and for which an IDS is submitted without a statement required by the proposed rules.

This proposal gives the applicant the option to choose whether to provide statements that will alleviate the burden to the PTO but might affect later interpretation of the applicant’s claims, or instead to pay the PTO for the added burden of examining a large number of references in an IDS. This proposal is consistent with the current statutory scheme because it avoids requiring the applicant to make statements outside of the specification that might impact on claim interpretation. At the same time, by providing for additional fees, this proposal addresses the concern that examination of a lengthy list of references in an IDS will unduly burden the PTO. Furthermore, by allowing applicants to avoid making unnecessary statements in an IDS, this proposal will help contain legal fees associated with submitting an IDS. Finally, because many applicants will choose to pay additional fees rather than submit extra statements in an IDS, the added burden on courts of reviewing this portion of the prosecution history will be minimized.

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