I am opposed to the proposed changes to the Information Disclosure Rules which would require a statement that each citation has been personally reviewed by the attorney/agent, and the "unique description.'
As a practical matter searchers "dump" marginally related patents in their search results to cover themselves. Attorneys, in turn, put these in the IDS to avoid any chance of being accused of withholding information. Most attorneys review these "marginal" patents only to the extent they need to reach a justifiable conclusion that the references are not prior art which would negate filed claims. They do not want to bill their clients for the time it would take to exhaustively read each one, which would be significant, and would be extremely hard on small entities and individual inventors. The "personal review" required by the proposed rule, would carry an implication that the citation had been exhaustively reviewed. forcing honest attorneys to spend the time. to do it, and waste their clients money, and dishonest attorneys to lie about it
The "unique description" proposal is unwise, because any failure by the attorney to perfectly analyze a cited reference, and then distinguish it, would be labeled as fraud on the patent office, and ALL future infringement actions would be bogged down by a a comprehensive, word by word review of the attorneys' analyse of each cited reference to see if the attorney correctly complied with this new requirement. Furthermore, the proposal presumes that the law concerning 35 USC 112, Para, 6, is settled and understandable, which it is not. What would result is the attorney would feel obligated to file long-winded discussions of why the claims in prosecution are not affected by various means and process clauses which, depending on the current case law, may or may not literally cover some of such claims. By the time the attorney has tried to cover himself from an accusation of fraud by fully discussing all of such possibilities, he or she will have unnecessarily added many hours to the client's bill, which is unfair to small entities and individuals in particular.
I realize that examiners generally need help. I would recommend a pre-first office action option for the examiner to call the attorney, after advance notice, and have an informal discussion of the cited references, without an interview summary. If, after that discussion, the examiner needs further help he could require a written analyse of cited references which he feels should be explained by the attorney. This would allow the examiner to perform his own cull of the obviously tangential, followed by a second cull after this informal, unsummarized review, and then have the remaining cites addressed in more detail only If necessary.
George S. Gray
Registered Patent Attorney
4659 Everhart, Suite 102
Corpus Christi. TX 78411