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This is in response to a Request for Comments on the proposed amendments to the Rules of Practice, specifically, to the proposed amendments to 37 C.F.R. 1.98.

As a patent practitioner, I strongly oppose the proposal to amend Rule 98 to require a separate statement of the non-cumulative nature of each references cited in an Information Disclosure Statement. If passed, that amendment will make patent prosecution practive substantially more difficult and expensive for patent applicants, and will reduce the quality of the patent examination process. Moreover, the perceived problem that the amendment seeks to redress—excessive citation of cumulative references—can be resolved via the proposed amendment that allows the PTO to refuse entry of unduly burdensome Information Disclosure Statements.

The Notice of Rulemaking indicates as follows:

The public appears to have taken the view that it should submit, in compliance with 37 CFR 1.97 and 1.98, even questionable citations in order to ensure that applicant is viewed by the courts as having satisfied the duty of disclosure requirements.

That is indeed the view of the informed public, and that view is correct in light of the law of inequitable conduct. Specifically, it is not infrequent for patent applicants and their representatives to be charged with inequitable conduct for failure to cite a reference to the PTO. Under present practice, the law dictates as a practical matter that if the inventors or their representatives are aware of a reference, then that reference must be cited to the PTO. If such reference is not cited, then almost certainly the failure to cite that reference will result in a charge of inequitable conduct.

Under the proposed new rules, applicants will be forced to spend much time reviewing the available references for "unique relevance," and even in the best cases will be forced to "second guess" the Examiner. How is the applicant to know whether a reference is of a "questionable" nature? In many cases, the Examiner will issue a rejection over a reference that the applicant deems to be of "questionable" relevance. If the applicant amends the claims of an application, must he or she re-read each of the references in the file to determine which are now "uniquely relevant" to those new claims? If the applicant in good faith deems a reference not to be "uniquely relevant" and withholds that reference, won’t the applicant be much more likely to be charged with inequitable conduct? What if there is a reference that the applicant deems in good faith to be of only marginal relevance, but that, on a more objective reading, is found to be "uniquely relevant"? Under the proposed new rules, no rejection over that reference ever would be entered, and the resulting patent would possibly be invalid.

None of these problems arise under the present rules, which are simple and straightforward. If the applicant is aware of a reference, the applicant cites the reference. If the Examinder deems the reference to be relevant to the patentability of the claims at issue, then the Examiner issues a rejection. In any case, the fact that the reference has been considered is made of record and noted on the face of the issued patent. There is no need for the applicant to spend time considering the "unique relevance" of each reference. There is no risk that the applicant will withhold in good faith a reference that the Examiner would have issued a rejection over. And there is no risk that the applicant’s decision that a reference is not "uniquely relevant" will be second-guessed by a court in subsequent litigation over that issued patent. All of these problems are introduced by the proposed new rule.

Even more problematic is the lack of exceptions to the proposed rule.

For example, the Notice further indicates:

In addition, an exception will not be made for items cited in litigation related to the application.

Simply put, this exception is unworkable. Suppose that a patent applicant is involved in litigation related to the application, and that the opposing party cites a reference and asserts that it is relevant. What is the applicant to do? If the applicant withholds the reference from the PTO, then the applicant faces a substantial risk of being charged with inequitable conduct (regardless of whether the reference is truly relevant). On the other hand, if the applicant is forced to explain the "unique relevance" of that reference to the PTO, then those statements will be deemed admissions and will be used against the applicant in the related litigation. Both of the applicant’s choices therefore would be wrong.

The proposed rule is said to stem from a few isolated instances where a large number of references was submitted to the PTO. If this is a perceived problem under the present rule, then this can be addressed via the proposed rule that would permit the PTO to refuse entry of such unusually burdensome IDSs. That rule would not affect the majority of patent applications, would not introduce new problems into the rule, and would adequately address the isolated instances of excessive citation faced by the PTO.

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Last Modified: 7/4/2009 4:52:35 PM