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December 4, 1998

December 4, 1998

Box Comments—Patents

Assistant Commissioner for Patents

Washington, D.C. 20231

VIA

INTERNET

To Whom It May Concern:

 

The following comments relate to the PTO Notice on Planned Rule Changes published October 5, 1998, Docket No. 980826226-8226-01, RIN 0651-AA98, "Changes To Implement the Patent Business Goals." The comments are mine as a private citizen and patent attorney, and do not necessarily reflect the beliefs and/or opinions of my employer, Cypress Semiconductor Corporation.

The specific patent business goals recited in the Notice are noble and worthy. I hope the Patent Office someday achieves them. However, I am not certain that the proposed rule changes will do so. Furthermore, I am very concerned that the proposed rule changes will dramatically change the way in which U.S. companies protect their intellectual property.

I am most concerned about Topics 4, 9, 10, and 14. The gist of these proposed rule changes is that the PTO intends to reduce cycle time and align fees by refusing to either (i) allow applicants the full protection to which they are now entitled or (ii) do the work necessary to examine the application. These proposed rule changes will:

  • make patent protection much more expensive for applicants;
  • make patent enforcement more difficult for applicants;
  • discourage applicants from complying and/or seeking to comply with the duty to disclose material information;
  • not necessarily achieve the desired effect in those cases identified as being problematic for the PTO;
  • discourage seeking patent protection for intellectual property; and
  • result in less revenue for the PTO.

 

There may be better ways to achieve the PTO’s desired business goals. I suggest:

  • Adopting the PCT "Unity of Invention" standard for restriction practice;
  • Charging greater fees for patent applications having more than six independent claims or more than forty total claims; and
  • Charging fees for more than a certain number of items in an Information Disclosure Statement.

 

The "Unity of Invention" standard for restriction will streamline

prosecution because issues of patentability will be narrowed (usually to

one),

Topic 4 -- Limiting the Number of Claims in an Application (37 C.F.R. 1.75)

The law appears to be silent with regard to the number of claims in an application. Applicants generally benefit from having as many claims as they want because of the presumption that each claim stands independently. It would therefore appear to be within the ability of the PTO to limit the number of claims. However, this will not necessarily achieve the PTO’s business goals of reducing cycle time, exceeding quality expectations or aligning fees.

Having as many claims as possible to draw from for enforcement purposes helps patent owners protect their property rights without forcing them to resort to prosecutorial cleverness for adequate protection. Applicants can rest assured that the effort to get the patent is not complicated by issues that may have arisen in another application. Filing second, third or more copies of the same application in order to protect one’s invention with an adequate number of claims introduces a number of risks, such as examination by a different Examiner (who may have different standards for patentability), a mistake or oversight with regard to a filing event in one application that was handled differently in another, etc. Extracting multiple maintenance fees for such duplicative patents, in exchange for no incremental work by the PTO, is not particularly fair to patent owners. Furthermore, the PTO already collects extra fees for claims above a certain number. Applicants gladly pay them where appropriate. The precedent for raising fees for extra claims would appear to favor this mechanism for compensating the PTO for extra work in their examination.

On the other hand, one can easily modify nearly any group of claims containing more than six independent or more than 40 total claims so that they are limited to six independent and 40 total claims, without sacrificing scope or introducing vagueness/indefiniteness. For example, one may simply adopt principles of Markush claiming to cover alternatives that are conventionally claimed separately. In addition, one may rewrite two independent combination/subcombination claims as one independent subcombination claim and one dependent combination claim to reduce the total number of independent claims. Consequently, it is not clear that arbitrarily limiting the number of claims in an application will necessarily reduce the burden of examination.

The proposed rule change does not appear to consider the reasons why applicants include more than six independent or more than 40 total claims in an application. Revising the rules to address the reasons behind large numbers of claims should be more effective for meeting the PTO business goals.

Applicants typically file excess claims to ensure adequate protection. Price is rarely an object when an invention is sufficiently important to justify excess claims. The costs of additional patents, on the other hand, include considerably greater attorney’s fees, issue fees and maintenance fees (about $15,000 on average for Cypress patents). Applicants should be permitted the choice as to the number of patents with which they protect their invention. Applicants’ rights appear to be arbitrarily taken away from them by limiting the number of claims.

Arbitrarily limiting applications to six independent claims does not necessarily reduce PTO workload. Applicants submit multiple independent claims generally for three reasons:

(1) More than one aspect of an invention is claimed (e.g., apparatus, method of making, and method of using);

(2) Applicant’s representative wishes the PTO to pay particular attention to a claim that is in a combination/subcombination relationship with another independent claim; or

(3) Applicant wants to claim more than one invention in the hope that the PTO will let them do so.

 

The excess work burden falls on the PTO only in case (3), when the PTO permits more than invention to be claimed. In case (1), when the argument(s) for patentability are essentially the same, the burden of examination is the same, whether the claims are independent or not. Case (2) specifically addresses the PTO’s reputation for only examining independent claims. A search of the prior art in either case (1) or (2) will typically result in the same art, regardless of the aspect of the invention being searched, when applicant relies on common limitations for patentability. The PTO will have the same number of claims to examine for definiteness, regardless of whether the claims are independent or dependent. The PTO workload is therefore increased only in case (3), where different claim limitations may be relied upon for patentability and where very different issues of definiteness and/or enablement may arise because the claims are not only independent, but may not overlap in the areas relied upon for patentability.

Under existing statutes and rules, the burden is on the PTO to restrict applications where appropriate. Current restriction practice is somewhat arbitrarily and subjectively applied, does not necessarily require logical reasoning or even factual support, is easily petitioned, and can be embarrassing to the Examiner. The "unity of invention" standard would certainly help the PTO apply restriction in a more objective manner that would reduce its burden of examination in applications having multiple independent claims.

Topic 9 -- Limiting Information Disclosure Statements (37 C.F.R. 1.98)

The spirit of this proposed rule change will have a chilling effect on both the duty of disclosure and on simply filing patent applications. This proposed change should be carefully considered second, third and fourth times in light of all the comments from PTO customers before enactment.

The duty of disclosure is generally recognized as a good thing. Few people know more about relevant material than inventors and their representatives. Patentees also benefit from a higher quality examination and a stronger patent when they put all relevant material before the PTO. The problem arises in that relevance is somewhat subjective. It is very difficult, if not impossible, to predict what a court will consider "relevant to a reasonable Examiner." Therefore, applicants can ensure validity only when they submit all material that anyone could possibly consider relevant. Information can be safely considered cumulative only when it is exactly the same as something else. Any potentially relevant information known during the course of prosecution must be submitted to avoid potential accusations of fraud. This practice will not and cannot change, regardless of whether or not this proposed rule is enacted.

The proposed rule change will not reduce the PTO workload, only increase it. It makes an exception for the first 10 items in an IDS. Consequently, if one wishes to file 100 items of information, the easy way around this rule is to file 10 separate IDS’s rather than one. Processing ten separate filings rather than a single filing surely increases the PTO workload, but does nothing to help minimize the Examiner’s workload.

If one complies with the spirit of the proposed rule, the Examiner’s workload still is not reduced. Rather than simply having to read just the application, claims, and items of information, the Examiner should also read the applicant’s description of the information. Otherwise, the PTO is simply requiring applicants to prepare materials serving no use to the Examiner. To be as safe as possible, however, applicants will simply regurgitate the information and the claim limitation(s) without modification whatsoever, then state that the information is important to the claims simply because of what the information and claims recite. Consequently, the Examiner will have to read the claims and the information at least twice. However, because applicants provided no particular insight as to why the information is relevant (nor should they, as it is not good practice for applicants to voluntarily create file wrapper estoppel), Examiners will still have to examine the application without assistance from the applicant. This will be the case whether or not applicants describe the relation of the information to the claims. Applicants who go beyond the simplest description not only create their own file wrapper estoppel, but also provide the examining corps with the rope with which their client may be hung. The percentage of examiners that do not appreciate the fact that an obviousness rejection can be rebutted with arguments and/or evidence is unfortunately greater than zero.

Forcing applicants to describe the importance of each item of information (in excess of ten items) relative to each independent claim or specific dependent claim will result in a plethora of grounds of fraud for issued patents where applicants took the duty of disclosure sufficiently seriously to comply with it. This will make patents considerably more difficult to enforce, as unscrupulous infringers would be able to depose the prosecuting attorney and each inventor for hours if not days questioning each statement in such IDS’s. This in turn will drive up the costs of litigation and discourage owners of valid patents to enforce their patents.

Finally, the costs to applicants of complying with the proposed rule are enormous. The attorney time alone for preparing an IDS with 25 items of information (a far lower number than the "not infrequent" examples provided in the Notice, and frequently submitted or exceeded in Cypress applications) could exceed the cost of preparing an application or an amendment. Rather than risk losing rights for an invention in an existing application, limited financial resources will be spent where they must (in the existing application), and subsequent inventions which would otherwise be protected by filing a new patent application will go unpatented. Needlessly, the PTO will not see a dime for the additional work that the Examiner must do.

The comments above are merely the tip of an iceberg of problems that this proposed change would cause. Rather than raise the costs of obtaining patents, increasing the workload of the examining corps, reducing the enforceability of valid patents, and misaligning PTO fees, the PTO should consider permitting applicants to file a certain number of references per application for free, then charging a fee for each item of information beyond that number. Applicants will pay (or suffer the consequences), the PTO will be compensated for its additional work, and validity and enforceability of issued patents will be maintained.

I note that "unity of invention" should reduce the total number of potentially material items of information. Often, many references are filed in an application claiming multiple inventions that would not be material if only one invention is claimed.

Topic 10 -- Refusing IDS Consideration (37 C.F.R. 1.98)

"Unduly burdensome" seems to be an arbitrary and subjective standard for something as important as IDS consideration. I do not think I could ever endorse a rule that allows the PTO to refuse to do its job if, for any reason at all, it thinks the job is more than it wants to do. Please specify what "unduly burdensome" means in objective terms. I probably still will not endorse it, but at least it might pass Administrative Procedure Act tests of scrutiny.

Topic 14 -- Presumptive Elections (37 C.F.R. 1.141)

As mentioned above, current restriction practice is somewhat arbitrarily and subjectively applied, does not necessarily require logical reasoning or even factual support, and is easily petitioned. Making the current standards presumptive will take away applicants’ intellectual property rights without due process and should actually increase cycle time at the PTO. Many inventions have more than one aspect to them (e.g., composition of matter, apparatus, intermediates therefor, combinations thereof, method of making, method of using, etc.). Skilled practitioners can draft claims to these various aspects of the same invention, while still complying with the standards for restriction. However, in most cases, the practitioner first presents the claim that is easiest to draft, or that they feel is strategically most important, or that they subjectively feel is central to the invention. Inventors and assignees typically do not like to review or change the claims, as claims are typically written in "legalese" and are typically considered to be the realm of the practitioner.

To the contrary, the assignee/patent owner is the person best able to decide what aspect of the invention is most important for their business needs to protect, should they be forced to choose one. Assignees and inventors do not usually review applications before filing to ensure that arcane patent rules are adequately addressed. Patent practitioners typically do not request the assignee to do such a review, nor would either party be likely to change its practices after the rule changes because of the gross inconvenience and lack of legal requirement. Current restriction practice, however, forces the practitioner to ask the assignee to choose the most important aspect of the invention, a practice essential to assignees’ due process rights. Putting this burden on practitioners and assignees effectively takes away the assignees’ intellectual property rights without due process.

Furthermore, the proposed rule change will not necessarily reduce cycle time or decrease examination burdens. Applicants will be more likely to fight restriction once they realize that they will not be permitted to pursue the aspect of the invention they wish to protect (assuming it was not the first independent claim). One cannot assume that every application puts its most important claim for business purposes first. Even if this was the case, business conditions change, and what may have been most important originally may not be by the time an examiner picks up the application for examination. Even further, if applicants cannot get back into examination that subject matter to which they are entitled under the proposed rule, applicants will be more likely to file a petition to get the right to claim that to which they are entitled by regulation. Under the current rules, applicants typically do not file petitions after the close of prosecution to reclaim subject matter previously restricted out.

Finally, under current rules, the burden is on the PTO to at least provide reasons and/or examples in support of restriction, even if the reasons and/or examples make no logical sense, or have no factual basis. It is not clear that this requirement will continue under the proposed rule change. If it does not, applicants will be more likely to protest inappropriate restrictions or failure to appropriately rejoin restricted aspects of an invention through the petition process, perhaps just to find out why restriction was required. Successful petitions (of which I am confident there will be many) will result in additional examination requirements for the previously unexamined subject matter. This, in turn, will effectively increase Examiner and supervisor workload, as well as decrease application cycle time.

The "unity of invention" standard would certainly help the PTO apply restriction in a more objective manner, thereby reducing protests of inappropriate or arbitrary restriction and reducing examiner/supervisor workload and application cycle time. Applications will be more likely to be drafted in a manner consistent with presenting a single invention, thereby minimizing the need for restriction in the first place.

Conclusion

Without being completely facetious, the PTO can reduce cycle time, align fees and even exceed customers’ quality expectations by eliminating examination altogether, and moving to a patent registration system. Fees will closely correlate to amount of paperwork processed to merely print and/or publish the patent. Furthermore, the burden will be on the patentee to ensure that the claims are valid. Consequently, the "customer" cannot complain about inadequate, arbitrary or inconsistent standards of examination. Cycle times will be minimal if "examination" is limited to making sure the parts of the application are present, then passing the application to issue.

Less facetiously, it appears for now to be in the public’s interest to continue with the examination process, but at the same time strive to achieve the PTO’s stated business goals. However, as stated above, the gist of the proposed changes to 37 C.F.R. 1.75, 1.98 and 1.141 is that the PTO intends to reduce cycle time and align fees by refusing to either (i) allow applicants the full protection to which they are now entitled or (ii) do the work necessary to examine applications. These proposed rule changes will:

  • make patent protection much more expensive for applicants;
  • make patent enforcement more difficult for applicants;
  • discourage applicants from complying and/or seeking to comply with the duty to disclose material information;
  • not necessarily achieve the desired effect in those cases identified as being problematic for the PTO;
  • discourage seeking patent protection for intellectual property; and
  • result in less revenue for the PTO.

 

Rather than adopt these rule changes which will adversely affect the patent system and achieve results opposite to those of the PTO’s desired business goals, I suggest:

  • Adopting the PCT "Unity of Invention" standard for restriction practice;
  • Charging greater fees for patent applications having more than six independent claims or more than forty total claims; and
  • Charging fees for more than a certain number of items in an Information Disclosure Statement.

 

My suggested changes will streamline prosecution, thereby reducing the burden of examination and increasing cycle time, and better align fees commensurate with the work done by the Patent Office for things in which PTO compensation may not be adequate and where applicants may be willing to more adequately compensate the PTO for the additional workload.

Respectfully submitted,

 

Andrew D. Fortney, Ph.D., Esq.

Registration No. 34,600

Senior Corporate Counsel/Director of Intellectual Property

CYPRESS SEMICONDUCTOR CORPORATION

United States Patent and Trademark Office
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