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From:

From: mdhefner@leydig.com

Sent: :Friday, December 03, 1999 8:59PM

To: regreform@uspto.gov

Subject: Comments Concerning 64 F.R. 53771

Re:64 F.R. 53771

Proposed Rule Changes to Implement the Business Goals

Sir-

According to the above-referenced Notice, the Patent and Trademark Office (Office) is proposing to amend the rules of practice to implement Patent Business Goals. I have two comments on the proposed rule changes, which are set forth below.

The views expressed herein are my own. They are not made on behalf of my employer, nor any client of mine or of my employer.

1 - Sections 1.97 and 1.98

The Office proposes to revise the information disclosure statement (IDS) rules to require that an IDS include a legible copy of each cited pending U.S. application. I oppose this prohibition in its current form.

A) Consistency

If legible copies of pending U.S. applications must be cited, the rule should also indicate that copies of provisional patent applications and abandoned nonprovisional patent applications also should be provided.

B) Burden and Policy

The Notice suggests that it would not be fair to an applicant if his pending application file were pulled by another Examiner who is obliged to review the application as potential prior art against another application. However, because applicants should be aware that such disruption is a possible consequence of claiming priority to a given U.S. application, any such disruption is not unfair. In any event, an applicant can avoid any such potential disruption by not claiming priority to his application. If the priority date is important, he can file two identical applications on the same day - a "regular" application to prosecute and a provisional application to serve as a priority document. Access to the priority document, if it is cited in a PTO-1449 form in another application, would not disrupt the prosecution of the "regular" application.

The Notice suggests that the Office would encounter a severe burden in considering pending applications as prior art references, when applicants do not provide copies of the applications. However, it is the PTO's primary mission to search out all potential prior art and to apply it against pending applications. That such prior art may not be publicly available should not prevent its consideration, when it is available to the PTO, and any burden in doing so is justified if the applicant cannot obtain a copy of a potentially relevant application.

C) Priority Documents

A policy requiring consideration of pending applications is especially important when such applications are relied on as a claim of priority. In such case, the applicants publicly assert their entitlement to claim priority. In such case, the applicants publicly assert their priority documents. It is unfair to other applicants for such asserted priority documents not to be reviewed if they are potential prior art.

In a typical situation, a PCT application disclosing information that might be considered "material to patentability" becomes published. If the PCT application is not published more than one year before the filing date, it is not prior art to the application. Because such published PCT applications (or other published foreign patent applications) are themselves not prior art to the invention, it is questionable whether the duty of candor compels their disclosure to the PTO. Moreover, even if cited on a PTO-1449 form, many Examiners likely would not look further than the publication date, conclude that the PCT application is not prior art, and therefore not apply it against the claims (s)he is examining.

However, while such published PCT application might not itself be prior art, it certainly might suggest the existence of potential prior art, for example, under 35 U.S.C. § 102(g), or even the possibility that new prior are (i.e., under Section 102(e)) might become available during prosecution. Of course, whether any of these or other types of prior art actually exists depends on information that the published PCT application does not disclose – the contents of its priority documents).

It is not uncommon for PCT applications to contain additional disclosure to that of its priority documents(s). Moreover, often such foreign or international patent applications claim multiple priority dates. Multiple priority claims, of course, indicate that the respective priority documents differ. The effect of this is that, if a published PCT application discloses material that would be considered "material," and applicant has no idea when that material information can be considered prior art. Consider the following example of this for a hypothetical PCT application claiming priority to two U.S. patent applications:

January 2, 1998: First Priority U.S.

Application

April 1, 1998: Second Priority U.S.

Application

January 30, 1998: International Filing

Date

July 1,1999: International

Publication Date

A second inventor conceives of an invention on March 1, 1998, and files a patent application (the '001 application) in the U.S. on May 1, 1998. A single Example of the disclosure of the PCT application would anticipate at least some of the claims in the ‘001 application, if the PCT application were considered prior art.

AS against the ‘001 application, the PCT application itself is not prior art. If cited in an IDS, an Examiner would conclude as such, and not apply it to the claims pending in the ‘001 application.

The April 1, 1998 Second Priority U.S.

Application could be considered prior art under Section 102(g), which could be antedated with a Rule 1.131 declaration. Similarly, the January 2, 1998, First Priority U.S Application could be considered prior art under Section 102(g) that could not be antedated. However, there is no way for the '001 applicant to ascertain whether any of these two documents contains the relevant Example because neither of these priority documents is publicly available.

Considering this, applicants should be able to cite U.S. patent applications in PTO-1449 forms, and the Office should review them, even if applicants cannot provide a copy, if such applications are relied on as a basis for a claim of priority in any published patent application.

2 - Effect of Citation of References

The Notice reiterates the comments expressed in the Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), 64 FR at 15347, 1223 Off. Gaz. Pat. Office at 125 to the effect that an Examiner performs only a cursory review of each IDS citation to the extent that (s)he needs in order to determine whether (s)he will evaluate the citation further. Applicants often would rather all references be fully considered.

I suggest that, if applicants desire to have the Examiner fully consider a given reference, rather than the mere cursory review that the Office now maintains Examiners are expected to conduct, they be given an opportunity to obtain such a full consideration and an indication in the record that the reference has been fully considered. One of the suggested changes proposed in last year's Advanced Notice of Proposed Rulemaking would call for applicants to explain the relevance of each cited reference. While, thankfully, this proposed rule hs not been carried forward, applicants certainly can voluntarily submit a statement concerning any cited reference. I suggest that the Office consider a rule that would require an Examiner to read all such voluntarily submitted statements and to fully consider the cited references to which they refer. To ensure that applicants submit good-faith characterizations (rather than relatively meaningless quotations of abstracts or other half-hearted attempts), perhaps the Office could establish required information which applicants must supply for such statements to be considered.

«64 F.R. 53771 - MDH Comments.doc

For your convenience, I am attaching a duplicate of these comments in Microsoft Word format.

M. Daniel Hefner

1350 North Wells

Apt. No. A-309

Chicago, IL 60610

United States Patent and Trademark Office
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