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Comments from the Public

(The following are comments submitted via electronic mail by the Committee on Patents of the Association of the Bar of the City of New York, in response to the October 5, 1998 Advance Notice of Proposed Rulemaking regarding Changes to Implement the Patent Business Goals [Docket No.: 980826226-8226-01]. These comments are also being submitted separately via Express Mail.)





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December 1, 1998


Box Comments - Patents

Assistant Commissioner for Patents

Washington DC 20231


Re: Advance Notice of Proposed Rulemaking (Oct. 5, 1998):

Changes to Implement the Patent Business Goals [Docket No.: 980826226-8226-01]

Dear Ladies and Gentlemen:

The following comments are submitted by the Committee on Patents of The Association of the Bar of the City of New York in response to the October 5, 1998 Advance Notice of Proposed Rulemaking ("ANPR"), 63 Fed. Reg. 53,497 et seq. published by the United States Patent and Trademark Office (the "PTO").

The Association of the Bar of the City of New York is a voluntary association of over 21,000 attorneys, judges and law professors who are professionally involved in a broad range of legal areas. The Association, which was formed over 125 years ago, is one of the oldest private bar associations in this country. The purposes of the Association include promoting reform in the law and improving the administration of justice.

The Committee on Patents (the "Committee") is a long-established committee of the Association, consisting of some thirty members appointed to three-year terms by the President of the Association. The membership of the Committee reflects a wide range of corporate, private practice and academic experience relating to patents.

The ANPR rule change proposals are being made to support certain "Business Goals" recently established by the PTO in an effort to improve service. The Committee is generally supportive of the proposed changes. However, a few of the proposals have raised some concerns on the part of a number of Committee members, which has led to the present commentary. What follows is a statement of our concerns regarding two of the 21 proposed rule changes.

TOPIC 9: Imposing Limits/Requirements on Information Disclosure Statement Submissions (37 C.F.R. § 1.98)

Discussion topic 9 suggests the imposition of additional requirements under 37 C.F.R. § 1.98 ("Rule 98") that would seek to curb indiscriminate "dumping" of prior art references on the PTO by applicants who wish to "cover themselves" at public expense (i.e., the expenditure of examining resources by the PTO) with a very long list of cited references, or perhaps to "bury" potentially troublesome references in a mass of tangential and cumulative background material.

While it is unquestionably true that the PTOÂ’s disclosure procedures have been abused from time to time to the detriment of the PTO, the Committee has found the subject matter of Topic 9 to be controversial. The proposed rule touches upon a number of issues such as cost, risk of prejudicial error, and quality, which, while individually important, can be difficult to reconcile with one another. A majority of the Committee, albeit with dissenting views on two sides, agrees in principle with the proposals made under Topic 9, provided those proposals are modified so as to reduce the burden and expense of compliance by applicants who are dealing with the PTO in good faith.

The Committee majority would change the proposed rule language in two respects, as will be discussed below.

Section (1) of Topic 9

Current U.S. law imposes a duty on applicants and their representatives to disclose material prior art to the PTO. 37 C.F.R. § 1.56 ("Rule 56"). Information is considered material if it is not cumulative with information already of record, and if (1) it establishes, alone or in combination with other information, a prima facie case of unpatentability of a claim, or (2) it refutes, or is inconsistent with, either a position the applicant has taken in opposing an argument of unpatentability made by the examiner or an argument of patentability made by the applicant. 37 C.F.R. § 1.56(b).

The proposed rule changes would require, in each information disclosure statement ("IDS") seeking to comply with Rule 56, a statement that each citation has been personally reviewed by the registered practitioner who represents the applicant, or by at least one inventor where the applicant is not represented by a registered practitioner. As presently worded, where an applicant is represented by a registered practitioner (i.e., a patent attorney or agent), the registered practitioner would have to make such a certification even if the client were in a position to do so him or herself.

While there are sound reasons to require a certification that someone responsible has at least reviewed what the PTO is being asked to examine, a majority of our Committee believes that the proposed new requirement is overly burdensome insofar as it would in some cases require both the inventor and his or her attorney or agent to have reviewed the submitted references.

A majority of the Committee does not believe there is a need to require a representative to review independently a cited reference where an inventor has already done so and is prepared to so certify. As noted, the disclosure obligations of Rule 56 extend beyond representatives to inventors themselves. Since the statutory obligation of candor extends to an inventor, a certification by an inventor should suffice to ensure adequate responsibility for the representation. Indeed, an inventor may be in the best position to judge the materiality of the reference. Requiring representatives to review independently such references would only increase costs and delay the submission of relevant information that an applicant has already reviewed. This would be especially burdensome in cases where the inventor is an individual or an entity with a limited prosecution budget.

Accordingly, the Committee recommends that the proposed change to Rule 98 set forth in section 1 of Topic 9 be revised by deleting the language "where applicant is not represented by a registered practitioner."

Section (2) of Topic 9

The Committee supports the PTOÂ’s proposal as set forth in the second clause that would be added to Rule 98, requiring submission of each cited pending U.S. patent application. While this will entail additional copying cost for applicants, it will speed up the application process. Submission with the IDS of copies of cited pending applications in other cases will decrease the time burden on Examiners in obtaining and copying such applications. It will also avoid interruption of examination of the cases being cited, as otherwise papers in the original file of the latter must be removed and copied in order to be examined. In addition to delay, this process risks pending application papers in the cited cases being misplaced or lost.

Section (3) of Topic 9

The rule changes proposed in section (3) of Topic 9 are directed at moderate to extensive disclosures of prior art, and would require in most cases a written discussion of the relevance of most references in excess of the first ten that have been submitted. While a majority of the Committee (again, with dissenting views) supports this proposal in principle, the majority disagrees with the currently proposed language insofar as the proposal, as currently worded, would require the applicant to relate such description to the specific independent and/or dependent claims of the application. While the Committee appreciates that voluminous citation submissions in an IDS may cause a significant burden on patent examiners, the majority cannot support the rule as presently drafted.

A majority of the Committee would support the proposed rule change if it were revised by deleting the language "relative to each independent claim, or specific dependent claim(s) if that is why it was cited." With this change, applicants would be required to provide a description of each citationÂ’s unique importance, without, however, the further requirement of linking the reference to particular claims.

A significant minority of the Committee would entirely dispense with section (3) of this proposal, believing that the proposed requirement would place an onerous financial burden on applicants, would create a strong disincentive to patent searching, is well beyond the letter and spirit of existing law, is likely to increase the burden placed on Examiners, and presents an unacceptable danger to applicants who later seek to enforce issued patents.

A smaller but nevertheless significant minority of the Committee would support the proposed rule as drafted, or perhaps require even more extensive disclosure, in the interest of increasing the quality of issued patents and decreasing the need to defend against patents that never should have issued.

The PTO, in proceeding with this proposal, should be mindful of the diversity of views on the topic of disclosure obligations.

TOPIC 13: Changing Amendment Practice to Replacement by Paragraphs/Claims (37 C.F.R. § 1.121)

The Committee supports the PTO objective of making amendments more efficient, but recommends that the proposed rule be changed to require from the applicant the submission of an entire substitute page for each page of the specification or claim affected by the amendment. We strongly disagree with the proposed rule requiring the numbering of every paragraph and table in an application.

The Committee believes that the current practice of describing the basis for the amendment and location of the amendment, concurrent with the submission of a suitably marked paragraph or claim, is beneficial for the clarity of the prosecution file. We agree with the PTO that the current practice of examinerÂ’s handwritten notations results in errors, but believe that such errors would be substantially reduced by the submission of clean substitute pages and/or claims, in addition to a description of the changes in the applicantÂ’s response. This would effectively conform U.S. practice to practice under the Patent Cooperation Treaty as it presently exists. We believe that the costs and complications arising from the numbering of every paragraph, heading, chart, equation and table are unwarranted and burdensome.

Very truly yours,


Ronald Abramson




Committee on Patents

Chair: Ronald Abramson

Secretary: Brian H. Way

Milagros Cepeda Gabriel P. Katona

Richard W. Clary Joseph M. Manak

John G. Costa Lloyd McAulay

Richard L. Crisona Kelly L. Morron*

Neal K. Feivelson Richard L. Moss

Stanley D. Ference III Brian P. Murphy

James Galbraith Peter J. Phillips

Steven J. Glassman Paul Ragusa*

John M. Griem, Jr. Kurt E. Richter

Nicholas Groombridge Joseph R. Robinson

James Harrington Allen I. Rubenstein

Jerry Haynes Stephen B. Shear

Rashida A. Karmali

* Principal authors of this report.

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