Sent: Thursday, December 17, 1998 2:20 PM
To: Frahm, Eric
Subject: IDS comments
Regarding the PTO's IDS proposal, as I mentioned to you last week, I think it would be a good idea to break up the submissions of prior art into two groups: A first category in which the Examiner actually cites the prior art (and the reference is listed on the front of the patent) and a second category in which the prior art is merely submitted, but not cited, in order to comply with the duty to disclose. Most prior art is submitted to assure compliance with Rule 1.56 many arguments can be made by an opposing party (especially to a jury) as to why the applicant did not submit a reference of which they clearly were aware. The first category could be limited in the manner proposed at PTO (allowing submission of 10 explained references, all other references requiring a description of relevance).
This proposal would satisfy the PTO's need to limit the number of references which the Examiner needs to review (and also avoid incorrect presumptions that the Examiner was aware of certain teachings in a reference because of the Examiner's citation of that reference), while also satisfying an applicant's need to avoid any appearance of inequitable conduct.
Patrick Muir, Patent Attorney