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Bernstein, Hiram

From: dtoedt@awd.com

Sent: Friday, December 04, 1998 5:29 PM

To: Regreform

cc: ipyle@awd.com;MGleason@awd.com; MGross@awd.com; VSegura@awd.comTParris@awd.com

Subject: Comments re IDS Rule Changes

The undersigned propose four modifications, labeled A through D below, to proposed rule change number 9 ("Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98)").

We practice, at Arnold, White & Durkee, P.C., one of the nation's largest intellectual property-law firms, which has approximately 155 lawyers in six offices nationwide, primarily but not exclusively in the electrical- and software-related arts.

This submission represents our own present, personal views and not necessarily those of other attorneys or agents at Arnold, White & Durkee nor of any of its clients.

BACKGROUND

In our present understanding, the Office's proposal has several implications, including the following:

1. Applicants can continue to submit an unlimited number of references, with or without complying descriptions.

If an applicant elects not to submit a complying description of a reference, however, the applicant runs the risk that the examiner will elect not to review or consider the reference (subject to the applicant's right to designate a certain number of references for review without a complying description).

Importantly, in our understanding, the applicant has still satisfied the duty of disclosure by simply submitting the reference, with or without a complying description.

2. Applicants can choose whether to provide a detailed description, a general description, or no description for each reference, thus allowing the option to avoid the added costs and risks associated with filing intricate IDSs.

3. The examiner must consider any ten (1 0) non-complying references in addition to references cited against a corresponding foreign application or cited in a PCT-related search, for every application, including continuing applications.

4. The examiner can refuse to consider any non-complying references falling outside the first ten (1 0) non-complying references and references cited against a corresponding foreign application or cited in a PCT-related search.

PROPOSED MODIFICATIONS

Assuming our understanding to be correct, we propose the following modifications to the PTO's proposal:

A. That applicants be allowed to designate 15, rather than 1 0, references which the examiner must consider without submission of complying descriptions.

B. That an applicant be allowed at any time, not just at the time of

initial submission, to designate one or more specific noncomplying references for review and consideration by the examiner, up to the number of references set out in the limit (IO, or as proposed above, 15).

C. That strong language accompany the proposed language to the effect that'. "The Office will not draw any negative inference, and it recommends that the courts not draw any negative inference, from an applicant's decision, as to any particular reference, not to provide a description in compliance with 1.97/98."

D. That an applicant be allowed to submit a complying description of a reference in a format like that of an International Search Report, i.e., in a table that points out specific portions of a reference and indicates that they are potentially relevant to specific claims, but without having to characterize the reference as an "X," "Y," or "A!' reference.

DISCUSSION

These modifications are proposed to provide a better balance between the interests of the various constituencies. The relevant interests of these constituencies include, for example:

- reduction in cycle time

- reduction in cost

- obligations of client advocacy

- the duty of disclosure

  • the risks of inadvertent estoppels because of statements made in an IDS;
  • the risks of allegations of inequitable conduct as a result of 'second-guessing" by litigation counsel.

First, we propose that the PTO be required to consider 1 5, rather than 1 0, noncomplying references. Ten references is simply too small a number of references. Fifteen references is a better compromise between competing interests. This change is simply a matter of fairness to all applicants, rather than only those applicants whose claimed inventions are relatively narrow.

Second, we propose that an applicant be allowed at any time to designate the specific noncomplying references which must be considered by the examiner. Claims can change during prosecution, and thus so too can the potentially-relevant references. If a previously-cited or newly-cited reference becomes relevant during prosecution, the applicant should be able to require the examiner to consider the reference as long as the applicable numeric limit has not yet been exceeded.

In effect, an applicant should have the ability to "save up" or reserve positions in the non-complying reference list which must be considered by the PTO. This would be similar to the right of an applicant to add claims without additional fee as long as the limit of three independent claims and 20 total claims.

If our understanding of the PTO proposal is correct, the PTO would require itself to do exactly what it is trying to avoid -- reviewing references of questionable relevance simply due to the chronological order i n which they were submitted. Chronological order does not equate to materiality. It makes more sense for the PTO to allow an applicant to reserve positions in the list of non-complying references which must be considered by the PTO.

2

Third, we propose that strong language accompany the proposed language to

the effect that: "There shall be no negative inference drawn from a decision not to provide a description in compliance with 1.97/98." Cost will be a significant factor in applicants' decisions whether or not to provide complying descriptions. Applicants should be assured that they will not be punished simply because they did not wish, or were unable, to bear that cost.

Fourth, we propose that an applicant be allowed to submit a complying description of a reference in a format like that of an International Search Report, i.e., in a table that points out specific portions of a reference and indicates that they are potentially relevant to specific claims - but without having to characterize the reference as an X, Y, or A reference.

A complying description in this format would provide the examiner with a useful "road map" of the references so described.

In addition, a complying description in this format likely would reduce the cost of providing a complying description, inasmuch as an applicant, attorney, or agent could simply highlight portions of a reference, make notes in the margin about the specific claims to which the highlighted portions are believed to be relevant, and have a secretary prepare the required table.

Respectfully submitted,

D. C. Toedt III

Reg, No. 31, 144

Jeffrey A. Pyle

Reg. No. 34,904

Mark Gleason

Reg. No. 39,998

Mason A. Gross

Patent Agent

Reg. No. 40,006

Victor Segura

Reg. No. P44,329

Tracy Parris

(Not registered to practice in the PTO)

<END>

--D.C.

D. C. Toedt III

dtoedt@arnoldwhite.com <mailto:dtoedt@arnoldwhite.com>

+1 713-787-1408

+1 713-787-1440 (FAX)

ARNOLD, WHITE & DURKEE, P.C.

750 Bering Drive

Houston, Texas 77057-2198

+1 713-787-1400

http://www.arnoldwhite.com <http://www.arnoldwhite@com>

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