Subject: RE: Comments
Thank you for taking the time to resubmit the comments. A purpose of the comment list, which will -be- posted on our web cite, is to alert those whose comments may have fallen through the cracks or not yet wound its way to me. I will be sure to include your comments as part of the comment package that is to be reviewed.
From: Rgray@houcrt.com [SMTP:Rgray@houcrt.coml
Sent: Monday, December 14,1998 5:24 PM
To: Bernstein, Hiram
Dear Mr. Bernstein,
At the end of October, I submitted comments about the proposed changes to the Patent Office rules. I just got an email from a member of our firm (Conley, Rose & Tayon) with an appended list of people who submitted comments. Imagine, my name wasn't on the list! Well, perhaps its not as bad as all that, but I thought I'd re-submit my comments to make sure you got them:
To Whom it May Concern,
Thank you for soliciting comments about the proposed rule changes. After much thought, I have a few suggestions:
One proposed rule change is to require applicants to describe uniquely each piece of submitted prior art after 1 0 with respect to each independent claim. As a former examiner, I can understand the difficulty in receiving a mountain of cited prior art with no explanation. However, I believe this proposed rule change is overly ambitious. The Examiner spends his days flipping through the shoes, learning to determine quickly whether a particular patent is relevant or not. Surely it would not be overly burdensome to draw the line for the proposed rule change at 20 rather than 1 0, especially in view of the fact that the required statements would be with regard to each independent claim and possibly dependent claims.
This requirement also creates a disincentive to submit all the material art and encourages relevancy decisions by the Applicant instead of the Examiner. While the overall structure of the duty of candor does not change, any disincentive to provide the PTO with known and relevant art should be scrutinized closely. Further, how is an Applicant supposed to decide which ten to choose, or how to phrase his statements? It creates a landmine for allegations of inequitable conduct, already a test that requires extensive inferences and so is subject to imprecision. Consequently, costs of litigation are sure to increase. Costs of prosecution are also sure to increase because the registered practitioner must very carefully review each and every reference both because of the new statement swearing that he personally reviewed all the references and because he cannot risk any imprecision in describing each reference. At a day a reference, this could easily add $20,000 (that's twenty thousand) dollars to the cost of drafting a patent application for 20 references or fewer. Talk about a burden!
I propose that the rule require a statement that the references have been reviewed by the inventor OR the practitioner, and that a unique description of each citation's importance be included above TWENTY references. If necessary, the PTO can raise its fees, but it still will be cheaper to the applicant than the result of the proposed rule changes.
Thank you for your time.