DEPARTMENT OF COMMERCE
Patent and Trademark Office
Notice of Public Hearing and Request for Comments on Procedures
for Recording Patent Prosecution File Histories.
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of Hearing and Request for Public Comments.
SUMMARY: Recent decisions by the United States Supreme
Court and the United
States Court of Appeals for the Federal Circuit highlight the
crucial role a prosecution
history plays in determining the validity and scope of a patent. See, e.g., Warner-
Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. Ct. 1040,
41 USPQ2d 1865 (1997);
Markman v. Westview Instruments, 52 F.3d 967, 34 USPQ2d
1321 (Fed. Cir. 1995),
aff'd, 116 S. Ct.1384, 38 USPQ2d 1461 (1996); Vitronics
Corp. v. Conceptronic Inc.,
90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). In response, the
United States Patent
and Trademark Office (PTO) requests public comments on issues
associated with procedures
for recording complete and accurate patent prosecution history
members of the public are invited to testify at the hearing and
to present written comments
on any of the topics outlined in the supplementary information
section of this notice.
DATES: A public hearing will be held on November 18, starting
at 9:00 a.m. and
ending no later than 5:00 p.m. If sufficient interest warrants,
an additional public
hearing will be held in an alternate location, for example, in
California, or by
Those wishing to present oral testimony at the hearing must request
opportunity to do so no later than November 3, 1997.
To ensure consideration, written comments must be received at
the PTO no later than November 18, 1997. Written comments and
transcripts of the
hearing will be available for public inspection on or about December
ADDRESSES: The November 18, 1997 hearing will be held
in the Commissioner's
Conference Room located in Crystal Park Two, Room 912, 2121 Crystal
Arlington, Virginia. Those interested in testifying or in submitting
on the topics presented in the supplementary information, or any
other related topics,
should send their request or written comments to the attention
of Mary Critharis
addressed to Commissioner of Patents and Trademarks, Box 4, Patent
Office, Washington, DC 20231; or John M. Whealan addressed to
Office of the
Solicitor, Box 15667, Arlington, VA 22215. Written comments may
be submitted by
facsimile transmission to Mary Critharis at (703) 305-8885 or
John M. Whealan at
(703) 305-9373. Comments may also be submitted by electronic
mail through the
Internet to firstname.lastname@example.org or email@example.com.
will be maintained for public inspection in Crystal Park Two,
Room 902, 2121 Crystal
Drive, Arlington, Virginia. Written comments in electronic form
may be made
available via the PTO's World Wide Web site at http://www.uspto.gov.
for presenting oral testimony will be accepted through electronic
FOR FURTHER INFORMATION CONTACT: Mary Critharis by telephone
(703) 305-9300, by facsimile at (703) 305-8885, by electronic
firstname.lastname@example.org, or by mail addressed to Commissioner
of Patents and
Trademarks, Box 4, Washington, DC 20231; or John M. Whealan by
(703) 305-9035, by facsimile at (703) 305-9373, by electronic
email@example.com, or by mail addressed to Office of the
Solicitor, Box 15667,
Arlington, VA 22215.
The official record detailing the prosecution of a patent application
in the United
States Patent and Trademark Office (PTO) is more than just a historical
During the life of a patent, the prosecution record defines the
scope of the claimed
invention and the patent owner's rights. Thus, the written record
explain the rationale for decisions made during the examination
of a patent application,
including the basis for the grant. Moreover, once a patent has
been granted, the
official record will be closely scrutinized by potential licensees,
competitors who must
avoid infringing the claimed invention, or even those attempting
to invalidate the
patent. In the event of litigation, the record will serve as
a primary basis for court
determinations of issues regarding the validity or scope of the
The written record created during the prosecution of a patent
commonly referred to as the "file wrapper" or "file
history," consists of all
correspondence between an applicant and the PTO. The file history
of the patent application as originally filed, the cited prior
art, all papers prepared by
the examiner during the course of examination, and documents submitted
applicant in response to the various requirements, objections,
and rejections made by
the examiner. In addition, the file history should contain a
written record of all oral
communications addressing patentability issues between the examiner
Examiners and applicants share the responsibility for the clarity,
completeness of the file wrapper.
Recent decisions by the United States Supreme Court and the United
Court of Appeals for the Federal Circuit emphasize the importance
of clear and
complete prosecution histories in that they will look more closely
at and place greater
weight on patent prosecution histories. See, e.g., Warner-Jenkinson
Co. v. Hilton
Davis Chem. Co., 117 S. Ct. 1040, 41 USPQ2d 1865 (1997); Markman v. Westview
Instruments, 52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995), aff'd, 116 S. Ct.1384,
38 USPQ2d 1461 (1996); Vitronics Corp. v. Conceptronic Inc.,
90 F.3d 1576, 39
USPQ2d 1573 (Fed. Cir. 1996). For example, in Warner-Jenkinson,
Court explained the importance of the prosecution history of a
patent in determining
infringement under the doctrine of equivalents. 117 S. Ct. at
1049-51, 41 USPQ2d
at 1871-73. Specifically, the Court acknowledged that when the
reveals that a patent owner amended the claims by adding limitations
to overcome the
prior art, the patent owner will be estopped from alleging infringement
doctrine of equivalents as to that amended limitation. Id. at 1051, 41 USPQ2d at
1873. Subsequently, the Court held:
Mindful that claims do indeed serve both a definitional and a notice
function, we think the better rule is to place the burden on the patent-
holder to establish the reason for an amendment required during patent prosecution....Where no explanation is established, however, the court
should presume that the PTO had a substantial reason related to patent-
ability for including the limiting element added by amendment.
Id. The emphasis on the written record, including the
prosecution history, to
interpret the claims is further illustrated by the Markman and Vitronics decisions. In
Markman, the Federal Circuit held claim interpretation
is a question of law to be
determined by the court based on three sources: the claims, the specification, and the
prosecution history. 52 F.3d at 979, 34 USPQ2d at 1329. Along
the same lines,
the Federal Circuit in Vitronics opined that intrinsic
evidence, which includes the
claims, the specification, and the prosecution history, is the
"most significant source"
of evidence to be used when interpreting claims. 90 F.3d at 1582,
39 USPQ2d at
1576. In explaining that the claims, the specification, and the
prosecution history make
up the "public record" upon which the public is entitled
to rely, the Federal Circuit
[T]he [prosecution] history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of
the claims. As such, the record before the Patent and Trademark
Office is often of critical significance in determining the meaning
of the claims.
90 F.3d at 1582, 39 USPQ2d at 1577. The Federal Circuit held that when the public record "unambiguously describes the scope of the patented invention," reliance on extrinsic evidence such as expert testimony is improper. 90 F.3d at 1583, 39 USPQ2d at 1477.
The PTO imposes written recording requirements on both the examiner
applicant. These requirements are designed to furnish the patent
applicant, as well as
the public and the courts, with sufficient information to make
informed decisions. As
the agency charged with granting valid patents, the PTO is actively
concerned with the
development of clear and complete prosecution histories. For
this reason, the PTO is
interested in obtaining public opinion as to whether the current
rules and procedures
pertaining to recording prosecution histories are sufficient to
provide complete and
II. Issues for Public Comment
Interested members of the public are invited to testify and present
comments on issues they believe to be relevant to the discussion
Questions following the discussion are included to identify specific
issues upon which
the PTO is interested in obtaining public opinion.
A. Current Procedures for Recording Patent Prosecution Histories
The emphasis on preparing complete, clear, and accurate file
prevalent throughout the patent rules which form title 37 of the
Code of Federal
Regulations (C.F.R.) and the guidelines of practice embodied in
the Manual of Patent
Examining Procedure (M.P.E.P.). Recognizing the importance of
prosecution record, PTO rules and procedures stress the need for
communicate clearly the basis for all rejections and objections
so that the issues can be
identified early and the applicant can be given an opportunity
to respond. See 37
C.F.R. 1.105 (1996); M.P.E.P. 707.07 (6th ed. 1995, rev. 2, July
1996). To meet
this goal, Rule 105 explicitly states that "[t]he examiner's
action will be complete as to
all matters." 37 C.F.R. 1.105. This requires the examiner
to treat all claims on their
merits, provide authority and support for each ground of rejection,
and respond to all
arguments and points raised by applicants.
The M.P.E.P. instructs examiners to provide clear and complete
throughout the examination process. For instance, when making
such as lack of an adequate written description, the examiner's
be fully developed and contain detailed reasons rather than a
mere conclusion. See
M.P.E.P. 706.03 (6th ed. 1995, rev. 2, July 1996). Moreover,
upon entering an
obviousness rejection under 35 U.S.C. 103, the examiner should
set forth in the Office
action the relevant teachings of the prior art relied upon, the
differences between the
claimed invention and the applied references, and an explanation
as to why the claimed
invention would have been obvious to one of ordinary skill in
the art. M.P.E.P.
706.02(j) (6th ed. 1995, rev. 2, July 1996). Furthermore, in
making a final
rejection, all outstanding grounds of rejection should be fully
developed and clearly set
forth to the extent that the remaining issues are readily apparent.
(6th ed. 1995, rev. 2, July 1996).
Concurrent with the examiner's duty to provide clear and fully
actions, Rule 111 mandates an applicant's response to be complete
in order to promote
an early and full determination of the issues. 37 C.F.R. 1.111
procedure requires that the response by the patent applicant "must
specifically point out the supposed errors in the examiner's action
and must respond to
every ground of objection and rejection in the prior Office action."
37 C.F.R. 1.111.
Moreover, the requirements of Rule 111 dictate that applicants
clearly point out the
patentable novelty believed to render the subject claims allowable
over the referenced
teachings. 37 C.F.R. 1.111. See M.P.E.P. 714.02 (6th ed.
1995, rev. 2, July 1996).
Furthermore, to ensure a clear and complete file record, examiners
are given the
authority to require correction if a response is not complete. See M.P.E.P. 714.03 (6th
ed. 1995, rev. 2, July 1996). In limited situations, an examiner
is authorized to make
changes directly to the written portions of the filed application
to correct obvious errors
such as spelling and minor grammatical errors. M.P.E.P. 1302.04
(6th ed. 1995, rev.
2, July 1996). Other obvious informalities such as changes to
the abstract may be
corrected by a formal examiner's amendment which is placed in
the file wrapper and a
copy is mailed to applicants. Id. Amendment or cancellation
of claims by formal
examiner's amendment is permitted when passing an application
to issue provided that
the changes have been authorized by applicant or applicant's representative. Id.
A complete prosecution history should clearly reflect the reasons
why the patent
application was allowed. According to Rule 109, an examiner may
set forth reasons
for allowance when the record, as a whole, is unclear as to why
the application is
allowable over the prior art. 37 C.F.R. 1.109 (1996). Thus,
the examiner must make
a judgment of the record to determine whether reasons for allowance
set out in that record. However, the M.P.E.P. cautions examiners
to exercise great
care in recording reasons for allowance so as not to misconstrue
the claims. M.P.E.P.
1302.14 (6th ed. 1995, rev. 2, July 1996). If desired, an applicant
may comment on
an examiner's statement of reasons for allowance. Although an
are entered in the application file, they will not be commented
upon by the examiner in
charge of the application. See id.
Another facet of patent prosecution in which written records
important is the recordation of interviews conducted between examiners
Examiner interviews concerning patent applications and other matters
the PTO serve to clarify the issues in an application and materially
prosecution of a case. The substance of an interview must be
made of record in the
application by means of an Interview Summary Form completed by
the examiner and
placed in the file wrapper. M.P.E.P. 713.04 (6th ed. 1995, rev.
2, July 1996). In
addition, a complete written statement disclosing the substance
presented at the
interview must be filed by the applicant when reconsideration
is requested in view of
an interview with an examiner. 37 C.F.R. 1.133 (b) (1996).
examiner and applicant can agree that the Interview Summary Form
applicant's obligation under Rule 133. M.P.E.P. 713.04.
A complete and accurate recordation of the substance of an examiner
should include the following: an identification of the claims
and prior art discussed; a
description of proposed amendments; the general thrust of the
examiner's arguments; and the results of the interview. Id. Although
the recordation of the arguments presented at the interview need
not be lengthy or
highly detailed, the general nature of the principal arguments
should be readily
The PTO is interested in ensuring that complete and accurate
file histories are
created and maintained. Public comments are invited to assist
the PTO in identifying
any improvements that can be made to increase the clarity and completeness of prosecution histories. The tenor of the following questions should not be taken as an indication that the PTO has taken a position on or is predisposed to any particular approach to creating and maintaining complete and clear file histories.
1. Do you believe that the current rules and procedures pertinent to recording prosecution histories are sufficiently clear and effective? If not, please:
(a) identify aspects of the rules and procedures that you believe lack clarity or
do not facilitate the creation of adequate records;
(b) identify any changes to the rules and procedures that you believe would improve the clarity and completeness of file histories; and
(c) discuss potential advantages and hardships that patent applicants and examiners would face if particular changes were adopted.
2. Do you believe that examiners are correctly and uniformly applying the existing rules and procedures governing the recording of file histories? If not, please:
(a) provide or summarize examples in which you believe examiners have not
maintained complete file histories;
(b) identify additional steps that can be taken by the PTO and applicants to clarify the prosecution history; and
(c) discuss possible advantages and drawbacks to the proposed changes.
3. Do examiners generally notify applicants when an amendment fails to point out the patentable novelty of applicant's invention, as required by 37 C.F.R. 1.111? If so, do you believe that examiners should continue to notify applicants of their failure to include a statement of novelty?
4. Is language such as "to further define and clarify the invention" sufficient to satisfy Rules 111 and 119 of 37 C.F.R. which require the applicant to point out how each amendment distinguishes the claims over the cited prior art? If not, please explain why applicants should be required to recite positively the rationale behind every claim amendment.
5. Should examiners be required to recite positively the reasons for amendments to claims when claims are amended by way of a formal examiner's amendment drafted pursuant to M.P.E.P. 1302.04? If so, do you believe this would discourage the practice of examiner amendments? Also, what effect would such a requirement have on the patent prosecution process?
6. Should the current practice of having examiners prepare reasons for allowance, as outlined in 37 C.F.R. 1.109, be discontinued? If so, please explain why you believe this is desirable. If not, should 37 C.F.R. 1.109 be amended to make it mandatory that reasons for allowance must be provided by the examiner? (Currently, according to 37 C.F.R. 109, setting forth reasons for allowance is not mandatory on the examiner's part.) If so, in which of the following instances should examiners be required to set forth reasons for allowance:
(a) in all allowable patent applications; or
(b) when the record, as a whole, is unclear as to why the patent application is being allowed.
7. Do reasons for allowance recorded by examiners contain accurate and precise interpretations regarding the novelty or nonobviousness of the claims?
If not, please:
(a) explain the experiences you have had that led you to your conclusions; and
(b) identify what you believe should be included in or omitted from an examiner's reasons for allowance.
8. What would prompt an applicant to comment on an examiner's statement of reasons for allowance?
9. If an applicant disagrees with an examiner's reasons for
should applicant be obligated to respond? If so, should applicant's
failure to file a
statement commenting on the examiner's reasons for allowance be
admission that applicant acquiesces to the reasoning of the examiner? (Currently, pursuant to 37 C.F.R. 1.109, failure to comment on the reasons for allowance does not imply that the patent applicant agrees with the reasoning of the examiner.)
10. Is the current practice of placing applicant's comments to reasons for allowance in the application file without further comment by the examiner adequate? If not, how and why should the current practice be changed?
11. Does the present system of recording examiner interviews by means of interview summary records, as outlined in M.P.E.P. 713.04, provide a complete record of the substance of the interview? If not, please:
(a) explain the experiences you have had that have led you to your conclusions; and
(b) describe additional changes to the interview summary practice you believe
would be desirable.
12. Should applicants be obligated to record the substance of every examiner interview, regardless of whether reconsideration is sought?
13. Should an examiner and applicant be permitted to agree that a written
record of the substance of an interview by the applicant is not necessary?
14. Should the PTO require that telephonic and/or personal interviews between examiners, applicants, and attorneys be taped by electronic devices and transcribed into a written medium to be included in the file wrapper? If so, please:
(a) identify which type of interviews should be recorded by electronic devices;
(b) indicate whether transcriptions should be distributed to applicants;
(c) explain how this should be implemented;
(d) identify who should bear the cost; and
(e) discuss potential advantages and drawbacks to electronic recording of examiner interviews.
In the alternative, should applicants be permitted to request recording of examiner interviews by electronic devices? If so, please:
(a) identify which type of interviews applicants should be permitted to
(b) indicate whether transcriptions should be distributed to applicants;
(c) explain how this should be implemented;
(d) identify who should bear the cost; and
(e) discuss potential advantages and drawbacks to applicant-requested
electronic recording of examiner interviews.
B. Other Issues
Parties may address related matters not specifically identified in the above topics. If this is done, parties are requested to:
1. Label that portion of their response as "Other Issues";
2. Clearly identify the matter being addressed;
3. Provide examples, when appropriate, that illustrate the matter addressed;
4. Identify any relevant legal authorities applicable to the matter being addressed; and
5. Provide suggestions regarding how the matter should be addressed by the
III. Guidelines for Oral Testimony
Individuals wishing to testify must adhere to the following guidelines:
1. Anyone wishing to testify at the hearings must request an opportunity to do so no later than November 3, 1997. Requests to testify may be accepted on the date of the hearing if sufficient time is available on the schedule. No one will be permitted to testify without prior approval.
2. Requests to testify must include the speaker's name, affiliation and title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Parties may include in their request an indication as to whether the party wishes to testify during the morning or afternoon session of the hearing.
3. Speakers will be provided between five and fifteen minutes to present their remarks. The exact amount of time allocated per speaker will be determined after the final number of parties testifying has been determined. All efforts will be made to accommodate requests for additional time for testimony presented before the day of the hearing.
4. Speakers may provide a written copy of their testimony for inclusion in the record of the proceedings. These remarks should be provided no later than November 25,
5. Speakers must adhere to guidelines established for testimony. These guidelines will be provided to all speakers on or before November 11, 1997. A schedule providing approximate times for testimony will be provided to all speakers the morning of the day of the hearing. Speakers are advised that the schedule for testimony will be subject to change during the course of the hearings.
IV. Guidelines for Written Comments
Written comments should include the following information:
1. Name and affiliation of the individual responding;
2. If applicable, an indication of whether comments offered
represent views of
the respondent's organization or are the respondent's personal
3. If applicable, information on the respondent's organization,
type of organization (e.g., business, trade group, university,
organization) and respondent's position, including type of experience
attorney handling patent prosecution and/or patent litigation,
patent agent prosecuting
patent applications, or judge deciding patent issues).
If possible, parties offering testimony or written comments
should provide their
comments in machine-readable format. Such submissions may be
electronic mail messages sent over the Internet, or on a 3.5"
floppy disk formatted for
use in either a Macintosh or MS-DOS based computer. Machine-readable
should be provided as unformatted text (e.g., ASCII or plain text),
or as formatted text
in one of the following file formats: Microsoft Word (Macintosh,
DOS, or Windows
versions) or WordPerfect (Macintosh, DOS, or Windows versions).
Information that is provided pursuant to this notice will be
made part of a public
record and may be available via the Internet. In view of this,
parties should not
provide information that they do not wish to be publicly disclosed
electronically accessible. Parties who would like to rely on
confidential information to
illustrate a point are requested to summarize or otherwise provide
the information in a
way that will permit its public disclosure.
Dated:___________, 1997 _____________________________
Bruce A. Lehman
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks