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Assistant Commisioner for Patents

Assistant Commisioner for Patents

Washington, D.C. 20231

Attn: Hiram H. Bernstein

Dear Sir:

This is in response to the request for comments in the Advance Notice of Proposed Rulemaking entitled "Changes to Implement the Patent Business Goals."

I would particularly like to comment on item 9, "Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98)", and on item 10, "Refusing information disclosure statement consideration under certain circumstances (37CFR 1.98)".

In brief, and as discussed in further detail below, it is respectfully submitted that (a) the requirements suggested in item 9 would impose an unnecessary burden on applicants; and (b) the USPTO should implement a rule refusing consideration of an unduly burdensome information disclosure statement.

1. GENERAL DISCUSSION.

It is agreed that the examples of unduly burdensome information disclosure statements cited in the proposed rulemaking are egregious, and that the USPTO should make a change to guard against such abuses. However, it is respectfully submitted that the vast majority of applicants currently craft their information disclosure statements in good faith, in an attempt to (a) be as helpful as possible to the USPTO, while simultaneously (b) represent the best interests of their client. Further, in representing the best interests of their clients, it is respectfully submitted that the vast majority of applicants seek to obtain prompt issuance of valid patents: A goal consistent with the mission of the USPTO.

Unfortunately, and regardless of how hard or how well applicants attempt to comply with their duty of disclosure, applicants must face the possibility of being accused of "inequitable conduct" if their issued patent is tested in court. Thus, if an applicant cites many references, the applicant may well be accused of "burying" the relevant references in an unduly burdensome information disclosure. If an applicant cites few references, the applicant may well be accused of concealing pertinent references. Finally, if an applicant characterizes the references submitted, the applicant may well be accused of mis-characterizing those references.

It is respectfully submitted that, since the USPTO strives to issue valid patents (MPEP Section 2001.04), the great variety of situations which these patents must face if they should be enforced, as enumerated above, should be considered in the proposed rulemaking.

The current guidelines in MPEP section 2004 have the advantage of being flexible. These guidelines include a suggestion of "when in doubt, it is desirable and safest to submit information" (item 10) and a statement that it "is desirable to avoid the submission of long lists of documents if it can be avoided.". The problem with these guidelines is that little is mandatory, and their is no safeguard for abuse.

The proposed guidelines appear well suited to cutting down on large dumps of information, but are not well suited to those situations where the best course is for an applicant to submit a moderate number of references (e.g., ten to twenty) with little comment.

2. SUGGESTIONS.

It is submitted that the USPTO can achieve the goal of cutting down on large dumps of information, while still retaining some flexibility in the manner in which that information is submitted. Some suggestions follow.

First, it is suggested that the USPTO simply implement item 10, and that Examiners be empowered to refuse consideration of an information disclosure statement consideration when it is unduly burdensome. This would provide both examiner and applicants with flexibility in the form of their information disclosure statements. More importantly, where an applicant in good faith provides references in a form that is unduly burdensome, it simply provides the applicant with feedback from the USPTO. The applicant should have an opportunity to then provide the information in a more acceptable form.

Second, it is suggested that the USPTO provide options for the manner by which information can be submitted. For example, the USPTO should authorize the submission of up to ten references without comment, and then require: (a) that applicant comment on all references in excess of twenty, and (b) that applicant comment upon what they consider to be the most relevant references. For example, an applicant who submitted 30 references would then be required to comment on the 10 most relevant, and could submit 20 as less relevant without comment. An applicant who submitted 100 references would be required to comment on the 80 most relevant, and would only be able to submit 20 without comment as less relevant. Note that, by simultaneous operation of these two requirements, those who seek to submit a large number of references would still be required to characterize the majority thereof.

Third, it is respectfully submitted that the proposed requirement of a "statement of personal review of each citation" will not have the effect of screening out marginally related and unrelated citations." One could make a cursory review, reach no decision, and simply submit the reference, with minimal comment. On the other hand, the diligent applicant who made a careful review and offered extensive comment could find themselves extensively questioned during the discovery phase of patent litigation.

3. CONCLUSION.

It is agreed that the USPTO should do something to alleviate the situations described in the proposed rulemaking. Under the current system, the fees paid by applicants who attempt to be most helpful in their information disclosure statement submissions effectively subsidize review of burdensome submissions by those applicants who do not attempt to be helpful. However, the rules proposed in item 9 of the proposed rulemaking are extremely inflexible, and go to the opposite extreme of the guidelines currently in existence. Because this opposite extreme would be most burdensome on those who have attempted (and will continue to attempt) to comply with the spirit of these rules, it is hoped that the USPTO will adopt a more flexible approach to complying with the duty of disclosure in its final rule.

The rule proposed in item 10 is a safeguard against abuse (unintentional or otherwise) and should be implemented.

The views expressed herein are the current views of this author only. They should not be attributed to the authorÂ’s firm, or to any clients of the firm.

Respectfully submitted;

Kenneth D. Sibley

Registration No. 31,665

_____________________________________

Kenneth D. Sibley

Myers Bigel Sibley & Sajovec

Suite 250, 111 Corning road, Cary, NC 27511

PO Box 37428, Raleigh, NC 27627

Telephone: 919-854-1400

Fax: 919-854-1401

email: ksibley@carolinapatents.com

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Last Modified: 7/4/2009 4:56:50 PM