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Bernstein, Hiram

From: Spar, Bob

Sent: Tuesday, December 15, 1998 12:50 PM Bernstein, Hiram

Schor, Kenneth

Subject : FW- Comment on Proposed Rulemaking

Another comment to consider.

-Original Message-

From: DKrivoshik@gibbonslaw.com [SMTP:DKdvoshik@gibbonslaw.com]

Sent: Tuesday, December 15,1998 12:32 PM

To: Spar, Bob

Subject: Comment on Proposed Rulemaking

[[0182921.01 : 3140 in 0182921.01]]

December 15, 1998

Robert J. Spar, Director

Special Program Law Office

Office of the Deputy Assistant Commissioner for Patent Policy and Projects United States Patent and Trademark Office

Washington, DC 20231

Dear Director Spar:

During the IPO/PTO Day Conference the Honorable Q. Todd Dickenson during the luncheon speach stated that although the time limit for formal comment had expired you were still interested in receiving comments. To that end, I am writing as an active Patent Attorney to comment on the Advance Notice of Proposed Rulemaking published in the Federal Register on October 5, 1998 (63 Fed. Reg. 53498).

While many of the proposed changes are not ideal, one in particular will ve a very serious negative impact on inventors and practitioners.

Topic 9 - Limits/Requirements for Information Disclosure Statements

I believe that the proposed addition of further limits and requirements for Information Disclosure Statement submissions is fundamentally a bad idea, and further is contradictory to the Duty of Candor. Rule 56 imposes a duty to disclose information material to patentability. Karen L. Bovard, Director of the Office of Enrollment and Discipline, U.S. Patent and Trademark Office, is a presentation on professional ethetics at the I PO/PTO Day Conference stated

The duty to disclose all information known to be material is satisfied if

all information known to be material was cited by the Office or submitted to the Office in an Information Disclosure Statement.

The proposed limits. and requirements clearly place additional burdens on practitioners and applicants, significantly raise the costs of processing a patent application in the PTO, and create unnecessary risks and costs for the patent owner during enforcement of rights under the patent. The determination of the relevancy of prior art is a responsibility that must be performed by the PTO -- a job that each examiner performs in each application when looking at any collection or data base of documents.

The problem to be solved is one of a very few applicants submitting voluminous citations of prior art out of an abundance of caution in attempting to satisfy their duty to disclose to the PTO. The PTO has not cited any study that would warrant any change in the practice of filing of information disclosure statements under the present rules. The PTO should be eful not to overreact by adopting a drastic cure that would be more harmful than the disease.

 

 

 

 

The PTO has pointed to several unique situations of voluminous citation of prior art that may call for equally unique examining approaches by the PTO. Consideration should be given to addressing these unique circumstances involving citations of a large number of documents with additional time given to the examiners, and possibly with the adoption of a fee to compensate the PTO for this additional time. The PTO already has set a precedent by adopting a fee for the submission of an IDS during the period between the first Office action and a final decision by the Office to, in part, compensate the PTO for additional work that would have to be expended in considering new prior art at an advanced stage in the examination process.

The burdens that would be placed upon applicants by adoption of the rule are difficult to justify. The proposed limits and requirements would magnify the risks and burdens on applicants, and apparently would create yet additional information in the form of a unique description of each document relative to each independent claim that would be considered by the examiner in addition to the document itself. The proposals would place increased burdens on everyone involved in the examination process, increase cost to applicants, increase the possibility of mischief during litigation,, and increase the possibility of malpractice suits. I believe the problem can be solved without increasing the burdens and risks on applicants, while maintaining the proper role of the examiner to determine the relevancy of the prior art. It should be noted that examiners normally consider far more than 1 0 prior art references during their searches of the prior art. Moreover, examiners typically gain some expertise in their fields and can evaluate most prior art references quickly and efficiently. Additional time should be given, or additional fees charged, only in exceptional cases.

Thank you for your time.

Sincerely,

David P. Krivoshik,

Patent Attorney

Registration No. 39,258

This Electronic Message contains information from the law n of Gibbons, Del Deo, Dolan, Griffinger & Vecchione may be privileged. The information is intended to be @-r the use of the addressee only. If you are not the addressee,

note that any disclosure, copy, distribution or use of the contents of this message is prohibited.

 

 

0182921.01

 

 

 

 

 

 

 

2

 

 

 

 

 

 

December 15, 1998

Robert J. Spar, Director

Special Program Law Office

Office of the Deputy Assistant Commissioner for Patent Policy and Projects United States Patent and Trademark Office

Washington, DC 20231

Dear Director Spar-

During the IPO/PTO Day Conference the Honorable Q. Todd Dickenson during the luncheon speach stated that although the time limit for formal comment had expired-you were still interested in receiving comments. To that end, I am writing as an active Patent Attorney to comment on the Advance Notice of Proposed Rulemaking published in the Federal Register on October 5, 1998 (63 Fed. Reg. 53498).

While many of the proposed changes are not ideal, one in particular will have a very serious negative impact on inventors and practitioners.

Topic 9 - Limits/Requirements for Information Disclosure Statements

I believe that the proposed addition of further limits and requirements for Information Disclosure Statement submissions is fundamentally a bad idea, and further is contradictory to the Duty of Candor. Rule 56 imposes a duty to disclose information material to patentability. Karen L. Bovard, Director of the Office of Enrollment and Discipline, U.S. Patent and Trademark Office, is a presentation on professional ethetics at the IPO/PTO Day Conference stated

The duty to disclose all information known to be material is satisfied if all information known to be material was cited by the Office or submitted to the Office in an Information Disclosure Statement.

The proposed limits and requirements clearly place additional burdens on practitioners and applicants, significantly raise the costs of processing a patent application in the PTO, and create unnecessary risks and costs for the patent owner during enforcement of rights under the patent. The determination of the relevancy of prior art is a responsibility that must be performed by the PTO -- a job that each examiner performs in each application when looking at any collection or data base of documents.

The problem to be solved is one of a very few applicants submitting voluminous citations of prior art out of an abundance of caution in attempting to satisfy their duty to disclose to the PTO. The PTO has not cited any study that would warrant any change in the practice of filing of information disclosure statements under the present rules. The PTO should be careful not to overreact by adopting a drastic cure that would be more harmful than the disease.

 

 

 

 

 

The PTO has pointed to several unique situations of voluminous citation of prior art that may call for equally unique examining approaches by the PTO. Consideration should be given to addressing these unique circumstances involving citations of a large number of documents with additional time given to the examiners, and possibly with the adoption of a fee to compensate the PTO for this additional time. The PTO already has set a precedent by adopting a fee for the submission of an IDS during the period between the first Office action and a final decision by the Office to, in part, compensate the PTO for additional work that would have to be expended in considering new prior art at an advanced stage in the examination process.

The burdens that would be placed upon applicants by adoption of the rule are difficult to justify. The proposed limits and requirements would magnify the risks and burdens on applicants, and apparently would create yet additional information in the form of a unique description of each document relative to each independent claim that would be considered by the examiner in addition to the document itself. The proposals would place increased burdens on everyone involved in the examination process, increase cost to applicants, increase the possibility of mischief during litigation, and increase the possibility of malpractice suits. I believe the problem can be solved without increasing the burdens and risks on applicants, while maintaining the proper role of the examiner to determine the relevancy of the prior art. It should be noted that examiners normally consider far more than IO prior art references during their searches of the prior art. Moreover, examiners typically gain some expertise in their fields and can evaluate most prior art references quickly and efficiently. Additional time should be given, or additional fees charged, only in exceptional cases.

Thank you for your time.

Sincerely,

David P. Krivoshik,

Patent Attorney

Registration No. 39,258

 

 

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