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Bernstein, Hiram

Bernstein, Hiram

From: Imerkel@intprop.com

Sent: Friday, December 04, 1998 5:24 PM

To: Regreform

Subject: FW: Comments to ANPR

This email comprises a previously submitted email without any formatting therein, in case the previous email cannot be read properly.

>This comment is provided in response to the proposed "Changes to Implement the Patent Business Goals" in Proposed Rules, 63 FR 192 (October 5, 1998). In particular, these comments are directed to item 9, "Imposing Limits/Requirements on Information Disclosure Statement Submissions".

>The proposals cited in item 9 would add the following requirements with regard to Information Disclosure Statements (IDSs):

>(i) Each citation must be personally reviewed by the attorney/agent who represents the application (or the inventor if the inventor is not represented);

>(ii) A copy of each U.S. Patent application cited in the IDS must be provided; and

>(iii) A unique description of each citation's importance >relative to each independent claim, or specific dependent claim(s) if that is why it is cited, with the exceptions of: (a) any IO citations; and (b) any art cited in a corresponding application by a foreign patent office provided that a search report or Office Action in the English language is also submitted.

> The stated goals for these changes appear to be: (i) to reduce the number of citations in IDSs received in a given application by providing an incentive to cite only the most relevant citations and by eliminating the marginally related or unrelated citations-, (ii) to make the information received in large IDSs as useful to the Examiner as effectively possible. In particular, the unique descriptions are intended to provide guidance from the applicant to the Examiner as to what is actually shown or disclosed in the references. This will presumably lead to a better quality examination because the Examiner will have a better understanding of why the applicant considers the citation to be relevant.

> Requirements (i) and (iii) are extremely burdensome to applicants, both -in terms of cost and the time required to prepare IDS's. The duty of disclosure itself, as it exists today, is already a huge burden which is borne only by applicants for patent in the United States (as opposed to the applicants for patent in every other country known to this responder, in which there is no duty of disclosure), The need to constantly be aware of other pending applications while preparing a response in a particular application (in order to cite art from the particular application into the other applications, if appropriate) is an enormous procedural and substantive nightmare. For example, a reference which is not particularly important in one application (but is cited by the Examiner) may be of higher relevance in a copending, possibly even unrelated application. The suggested new requirements serve to substantially increase this onerous burden,

> While the burden of large IDS submissions on the Patent Office is appreciated, the suggested changes add to an already enormous burden borne by applicants. Discussed below are several suggested modifications and/or alternatives to these requirements which would still serve the stated Patent Office business goals of providing information useful to the Examiner and reducing the number of unrelated submissions while being substantially less burdensome to the

> applicant.

Modification to requirement that attorney/agent personally review citations

> The requirement that applicants' attorney/agent personally review the citations in an IDS will increase applicant legal fees Significantly. Everyone substantively involved in the preparation and prosecution of the application has a duty to disclose information material to patentability to the Patent Office. Any one of these people (inventors, persons associated with the assignee, etc.) may discover a citation. Therefore, it should be sufficient that the IDS include a statement that one or more persons substantively involved in the preparation and prosecution of the application has personally reviewed the citation. This will allow an inventor, for example, to avoid fees for the attorney/agent's time reviewing a citation which the inventor has discovered and reviewed prior to providing the citation to-the attorney/agent.

> Furthermore, requiring that citations be personally reviewed by the attorney/agent unfairly penalizes applicants who choose to be represented by an attorney/agent before the Patent Office. Those who chose not to be represented may have an inventor make the statement, so those who chose to be represented should be afforded the same opportunity.

> Modifications/Alternatives to the Unique Description Requirement

> 1. There should be no requirement to compare the citation to the claims. While it is understandable how a description of the teachings in a citation provides information useful to the Examiner, requiring the applicant to compare the citation to the claims is effectively a requirement that the applicant examine the claims with respect to the citation. It is solely the Examiners role to determine if the claims patentably distinguish over the prior art, as set forth in 35 U.S.C. 131 and MPEP 701. The goal of providing guidance to the Examiner regarding the reasons for submission of a citation is fully served by providing a description of the teachings of the citation. At most, if the description of the teachings of the citation does not make it clear which claims may be affected, an indication of exemplary claims that might be affected should be more than sufficient.

> 2. There should be no requirement to distinguish the claims over the citation. Even more burdensome than comparing the citation to the claims is the requirement to distinguish the claims over the citation. This requirement is set forth in the Proposed Rules after the examples of ways to describe a citation, as follows: "In each situation, an additional explanation of how each independent claim (or dependent claim(s), if the citation was for same) patentably defines over the citation." While the requirement to compare the claims to the citation effectively requires the applicant to provide an examination of the claims with respect to the citation, the requirement to distinguish the claims over the citation effectively requires the applicant to respond to a rejection that has not even been made. For example, a citation may teach a feature of a claim but there may be no motivation to combine the citation with other references to arrive at the claimed invention. Accordingly, there may be no requirement to distinguish the claims over the citation.

> The burden of providing distinguishing arguments additionally creates file wrapper estoppel Which unnecessarily reduces the scope of protection provided to the applicant. (See, e.g., Litton Systems, Inc. v. Honeywell, Inc., 46 USPQ 2d 1321 (Fed.Cir. 1998) in which file wrapper estoppel was found with respect to comments made in an IDS to distinguish the claims over the citations in that IDS). The requirement to distinguish the claims over citations would require the applicant to create file wrapper estoppel simply to comply with the duty of disclosure.

> As the above three paragraphs illustrate, the requirements to compare the citations to the claims and to distinguish the claims over the

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citations go far beyond simply providing information to aid the Examiner in determining patentability of the claims over the citations and actually -require that the applicant make-that determination. The :Patent Office cannot abandon its statutory role in determining the patentability of inventions by adding these requirements.

> 3. The number of citations which may be made without comment is too low. Up to 20 claims may be pending in an application without the payment of any additional fees. Furthermore, in many cases more than 20 claims are pending. As each claim typically recites additional inventive features, additional citations may be required to comply with the duty of disclosure for each and every pending claim. Since the number of claims which may be submitted for the cost of the basic filing fee is 20, the number of citations which could be provided without comment should be at least 20. Furthermore, it would be more equitable to index the number of citations which do not require description to the number of claims in the application. The applicant already must pay fees to have claims in excess of 20 pending in an application, compensating the Patent Office for the additional time which may be required to examine some additional references.

> As another alternative, the Patent Office could allow citations in excess of ten to be provided with the description: "This citation is related to claim X", as long as that description has not previously been used for another citation. Again, the Examiner would be provided with an indication of the reason for citing the citation without unduly burdening the applicant.

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4. The number of U.S. Patent citations should be unlimited. While it may be difficult for the Examiner to adequately search every printed publication, the Examiner should be capable of thoroughly searching the patents granted by the Patent Office. If the Examiner has performed a thorough search, he/she should already have considered any U.S. Patent citations provided by the applicant. In the very least, patents which fall within the field of search used by the Examiner should not count against the number of citations which may be provided without comment nor should a description thereof be required. If the Examiner were required to provide the field of search in the first office action, applicants could determine which patents need not be described.

> Additional Comments

The duty of disclosure should end at the payment of the issue fee. Currently, long delays are frequently experienced between the payment of the issue fee and the issuance of the patent (9 months to one year is not out of the ordinary) These delays are completely out of the control of the applicant. Unfortunately, if additional art is discovered in this time period, it is not possible to get the art considered under the current rules but the duty to disclose the art still exists. Accordingly, in this situation the applicant is faced with three extraordinarily unpalatable choices (t) if the art appears to be somewhat marginal in view of art already of record in . the case, do not submit the art ' (ii) submit the art and allow the case to issue without consideration of the art or (iii) withdraw the case from issue and file a CPA for consideration of the IDS. Choice (i) is not palatable because, even if the art is somewhat marginal, a defendant at trial will surely make a long and expensive issue out of the lack of submission. Choice (ii) is not palatable if the art turns out to be relevant, as the claims in the patent can be invalidated by art residing in the file wrapper itself Choice (iii) is not palatable due to the added costs of the petition to withdraw from issue and the CPA filing fee, as well as the additional delay in the issuance of the patent. Ending the duty of disclosure at the payment of the issue fee would remove this burden at an equitable time (i.e. at the point after which art will not be considered in the application).

> Thank you for the opportunity to comment on these proposed > changes, and for your attention to my comments.

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> Sincerely,

> Lawrence J. Merkel

United States Patent and Trademark Office
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