RE: Changes to Implement the Patent Business Goals, Advance Notice of
Proposed Rule Making
This letter is in response to the request for comments on the advanced notice of proposed rulemaking. In the interest of brevity, this response is limited in scope to Topic 9: "Imposing limits/requirements on information disclosure statement submissions." This topic is of the most significant concern.
As practitioners, we are very sympathetic to the burdens of the Patent Office, and we endeavor to reduce Office work load to the extent that doing so is in the best interests of our clients. Quite frankly, you hit the nail on the head in the last paragraph of the detailed discussion of Topic 9 in the Advanced Notice. The proposed rule definitely creates a significant burden for applicants and, as human beings, we are not infallible in our analysis of references. Any analysis of a reference will definitely be picked apart in subsequent litigation.
In spite of the issues the Patent Office is grappling with, the simple fact remains that inequitable conduct is an often used and effective defense against a claim of patent infringement. The best practice is to submit any information that might be considered material to the patent office during prosecution. You have recognized that in your comments, and we are not surprised that it has created a significant burden. Keep in mind, however, that current law with respect to inequitable conduct is not limited to Patent Office rules, and compliance already presents a significant burden to applicants.
From an applicant’s perspective, the Patent Office’s role in examining and granting a patent is only part of the total patent process. Following issuance, successful inventions face a significant possibility of infringement. The role for determining infringement is exclusively delegated to the Courts. As a result, what might be considered relevant or material is not limited to what the Patent Office thinks is relevant or material. It also includes what an accused infringer is able to convince a Court is relevant or material, often years after issuance. Therefore, the careful practitioner needs to consider what a Court will think is relevant or material, possibly years after the fact. Keep in mind that the judge hearing the case in the Court of first impression typically has very little technical training, and is very rarely (if ever?) a licensed patent attorney.
These factors dictate an even broader disclosure to the Patent Office than what the Office might consider necessary.
As stated previously, we are not surprised that the law relating to inequitable conduct has created a significant burden for the Office. It has also created a significant burden for applicants. We are both facing the same problem.
Your concerns are well founded, but the proposed rule attempts to solve only half the problem. It focuses solely on the Patent Office’s role. It does not, and can not, alter the Court’s role, which is just as important. The Patent Office can change the rules innumerable ways, but the Courts will continue to interpret issued patents according to stare decisis. Therefore, we submit that the only way to truly solve the problem is to convince Congress, a coordinate branch of government, to act legislatively and change the law of inequitable conduct in a way that would reduce the burden to both applicants and the Patent Office.
The following comments are directed to the three specific proposals.
Regarding the first proposed requirement under Topic 9, to provide a statement that a submitted reference was reviewed, what does "relevant to the claimed invention and appropriate to cite to the PTO mean?" What is the standard for relevant and appropriate? The promulgation of standards in this arena is the root of the problem we are now facing. Promulgating more standards will result in even more uncertainty. We respectfully submit that merely stating that the reference was reviewed by the inventor or the attorney is appropriate and sufficient.
Regarding the second proposed requirement, sending copies of all cited references with each IDS is certainly reasonable. We are in support of that practice if it reduces work load at the Office and correspondingly improves the quality of service to the public.
With respect to the third requirement, we are strongly opposed to forcing applicants to describe the materiality of cited references. The examiner needs to take a fresh look at the art. Often, an examiner looks at references in a different way than the applicant and sees an issue in the claim that the applicant missed. Having an applicant explain the relevance of a reference may inhibit or prevent this fresh look. In addition, forcing an applicant to place these types of statements into the record will create a fertile field for claims of inequitable conduct. Enforceability of patents after issue will suffer for it. Finally, we respectfully submit that limiting the references to 10 is arbitrary and capricious. Why not 5? Why not 15? How was the number 10 arrived at? Does it vary from group to group? There should be some basis in fact for arriving at that number.
In conclusion, we do not support enactment of the changes proposed under Topic 9. My impression is that the proposed changes are a symptom of strained resources at the Office. If that is the case, then a better approach might be to convince Congress to stop sequestering funds from the Patent Office before changes of this nature are considered.
Patent Attorneys of The B.F.Goodrich Company: