The Patent, Trademark and Copyright Section of the Bar Association of the District of Columbia ("PTC-BADC") would like to provide the following comments to the Advance Notice of Proposed Rulemaking with respect to Changes to Implement the Patent Business Goals, as published in the Federal Register on October 5, 1998. The BADC is a voluntary membership nonprofit organization. Membership is not restricted to any segment of the profession and thus the members and their clients represent widely diverging interests and views. Members include attorneys in private practice as well as those employed by corporations and those in government.
The PTC-BADC includes members of the bar regularly practicing in and interested in patent law. Members frequently represent applicants for patent before the United States Patent and Trademark Office as well as patent owners and accused infringers. Members are thus concerned with obtaining valid patents as well as with the enforcement of patents and the defense against patent infringement actions.
The PTC-BADC applauds the Patent Offices effort to provide services that were requested by the customers and which would also be beneficial to the applicant, for example, changes regarding issuing corrected filing receipt and simplification of the procedure to request small entity status. However, there are some changes which we believe would hinder applicants? ability to obtain useful and defensible patents.
The PTC-BADC does not favor the proposed limitation on the number of total and independent claims to be examined in an application. For certain inventions, more than forty total claims or six independent claims may be necessary to properly define applicant?s invention and provide applicant with sufficient protection of his or her invention. By the doctrine of claim differentiation, additional dependent claims can help define the scope of what is encompassed by the independent claim. Moreover, so long as the claims are directed to the same invention there would be no additional burden for an Examiner to examine total claims in excess of 40 or more than 6 independent claims.
Further, limiting the number of claims could force applicant to file multiple applications directed to the same patentable invention. This would greatly increase the cost to applicant for protecting that invention and would increase fees received by the Patent Office. Instead, perhaps a fee could be paid for examination of additional claims.
The most troubling proposal in the Advanced Notice relates to the new requirements and/or limits for Information Disclosure Statements. These provisions would not reduce the number of references submitted, and instead would provide new grounds for charges of inequitable conduct during inter partes proceedings and would prevent an applicant from receiving a true examination of the claimed invention.
Section (1) requires ?a statement in the IDS that each citation has been personally reviewed by the registered practitioner who represents applicant, or by at least one inventor where applicant is not represented by a registered practitioner.? For cases where the inventor is represented by a registered practitioner, it would appear that a statement by the inventor would not be sufficient. However, in practice, the registered practitioner will ask that the inventor provide any information believed to be relevant to the patentability of the claims. It seems preposterous to have the practitioner review the citations and attempt to ?second guess? the inventor as to whether they are relevant. Practically, this requirement would not decrease the number of references submitted but would only increase the cost to applicant for filing an IDS. Once an inventor has identified a citation as being relevant, no practitioner would delete a citation from the IDS. This provision further does not provide for the circumstance where an in-house counsel, not representing the inventor before the Patent Office, or where a foreign associate prosecuting a related case identifies citations to be disclosed. As stated above, any citation identified by these individuals would not be deleted from an IDS upon review by the registered practitioner representing the inventor. this requirement which would mandate an additional review of references would increase the cost to applicant.
Section (3) of the proposed rule would require:
a unique description of each citation?s importance relative to each independent claim, or specific dependent claim(s) is that is why it was cited, except that a description would not be required for: (1) any ten citations, and (b) any item cited in a corresponding application by a foreign patent office, PCT international searching authority (ISA), or PCT international preliminary examining authority (IPEA), provided the search report or office action in the English language is also submitted.
With respect to the descriptions, the Proposed Rule further requires that:
The description of each citation would have to set forth a teaching or showing of a feature relative to the claimed invention which is not taught or shown by other citations in the IDS or is taught in a different manner. The description of each citation must be unique to that citation, in that an applicant would not be permitted to provide a description of a citation that is merely cumulative to that of other citations.
These provisions present numerous problems and potentials which would increase charges of inequitable conduct. It can be foreseen that in inter partes proceedings, such as litigation and interference, there would be numerous assertions of inequitable conduct based upon which 10 references were simply submitted and which additional references were described. There would also be assertions of inequitable conduct based upon the specific descriptions provided to the Patent Office, as being attempts to mislead and/or to hide the most relevant information. Moreover, descriptions could become quite lengthy in an attempt to uniquely describe the teachings of the citation. Still further, prosecution history estoppel could be created based upon the description given.
These IDS provisions appear to reverse the roles and force applicants? representative to ?play? Examiner, review each of the references and essentially make a rejection for the Examiner in an IDS. The Examiner would presumably now not review each of the references submitted. This is also troubling based upon case law that any reference made of record during prosecution cannot be used in a reexamination proceeding. These IDS provisions would mean that an Examiner may never have reviewed a reference based upon applicant?s characterization in the IDS, and a third party could not challenge the patentability of any claim based upon that reference alone, or in combination with additional reference(s).
While the PTC-BADC recognizes the burden presented on the Patent Office by some IDS submissions, as exemplified in the Notice, there must be a better way to solve the problem than shifting the burden for examination onto applicant?s representative. For example, an additional fee could be paid for citations in excess of 10. The fee could increase based upon the number of citations submitted. This would provide incentive to not provide questionable or extraneous citations to the Examiner. Perhaps additional time credit could be given to the Examiner?s for review of large IDS submissions.
The PTC-BADC thus recognizes the need for many of the changes set forth in the Advanced Notice. However, the provisions relating to number of claims and IDS submissions would be detrimental to applicant and could greatly increase the cost to applicant for obtaining, and later defending, a valid patent.
Donna M. Meuth (Secretary)
Harold C. Wegner (Chair)
Patent, Trademark & Copyright Section
Bar Association of the District of Columbia
1819 H Street N.W., 12 th Floor
Washington, DC 20006