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This is in response to your invitation for comments on the Advance Notice of Proposed Rulemanking (63 FR 53497, Oct

This is in response to your invitation for comments on the Advance Notice of Proposed Rulemanking (63 FR 53497, Oct. 5, 1998).

Your proposed new rules regarding IDSÂ’s (Topics 9/10) are a typical example of a solution that is much worse than the problem it is intended to address. For one, you are proposing replacing an objective set of criteria (submit anything that might be relevant) with a subjective set of criteria (evaluate for "relevance", which surely leaves room for disagreement; then provide a "unique description" that might be rejected by an examiner if it is not specific enough).

Even worse, the proposed guidelines place the applicant and attorney between

the pincers of allegations of inequitable conduct ("you wrongly submitted

reference X, which is clearly more relevant than reference Y, didnÂ’t you?"

and the inevitable trail of file wrapper estoppel for references that the examiner did not even apply in a rejection ("you admitted that reference X discloses that feature, didnÂ’t you?"). The Federal Circuit and the Supreme Court have made it clear that file wrapper estoppel is even more important than ever, and the PTOÂ’s insistance that the attorney put more statements in the file to characterize the prior art invites error and prejudice.

Not to mention the costs to the applicant. Think how long it will take for an attorney to carefully review all art that crosses his desk and to carefully craft statements that minimally comply with the PTOÂ’s new regulations without creating an estoppel. At a typical rate of $200 per hour, this could easily add hundreds of dollars to the cost of an application. (Would a new IDS with "unique descriptors" be required whenever the claims are amended? If so, add that to the cost of an amendment.)

Not to mention the creation of a whole new set of convoluted regulations for IDSÂ’s. (This is the opposite of regulatory reform).

HereÂ’s my solution: impose a fee for consideration of any reference that exceeds a page limit (e.g., 100 pages) or for submitting more than 10 references. You might think that because the statute does not specifically allow the PTO to impose such a fee, such a solution would not work. But some of your other proposed reforms specifically require new fees. See for example topic 12 (requiring a "handling fee" for preliminary amendments). If thatÂ’s impossible, why donÂ’t you lobby Congress for a new fee for this? (And if a new fee is approved, give the examiners extra examination credit for considering bulky IDSÂ’s, in line with the fees).

I can assure you that imposing a fee for bulky submissions would weed out the huge frivolous IDSs that you seem to complain of, while giving the typical inventor a practical choice of either paying the fee or withholding clearly irrelevant references. Such a solution would avoid the file wrapper estoppel nightmare that will surely follow if your original proposal is adopted.

  • Bradley C. Wright
    Banner & Witcoff, Ltd.
  • United States Patent and Trademark Office
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    Last Modified: 7/4/2009 4:57:47 PM