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The following comments are from the Minnesota Intellectual Property Law

The following comments are from the Minnesota Intellectual Property Law

Association. At the end of the text, I have included files of these

comments in Word 97 files. If there are any problems with the receipt of

this message, please contact me. Any questions regarding the comments may

be addressed to Mark Goldberg as chairperson of the PTO committee of MIPLA

at < > or (612) 931-4028.


Summary of MIPLA Comments on ANPR by PTO


The Minnesota Intellectual Property Law Association has studied the Advance

Notice of Proposed Rulemaking (ANPR) published for comment by the PTO in the

Federal Register on October 5, 1998 and present our comments for

consideration in the following paper. The PTO stated in the ANPR that there

were no plans for public hearings to discuss the proposed changes to patent

practice. We believe that the PTO is proposing such fundamental changes to

patent practice that public hearings are essential in order to understand

the concerns of the PTO's customers and the significant long term effect

that the proposed changes would produce.

While MIPLA endorses a number of the proposed changes, there are several

matters that cause us particular concern and we point those out on this page

to emphasize our concern.

1. In Proposal 4, the PTO has proposed a limit of 40 claims total and 6

independent claims. This proposal would require a statutory change rather

than mere administrative rule making. MIPLA urges the PTO to reconsider

this proposal and if necessary to adjust the fee structure to deal with

problems in cases with unusually large numbers of claims.

2. Proposals 9 and 10 concern Information Disclosure Statements. These

proposals would increase the costs to the applicant, increase the likelihood

of allegations of inequitable conduct and are not likely to relieve the

PTO's workload as desired. The proposed requirement that each IDS include a

statement that each citation has been personally reviewed is both unclear

and apt to foster allegations of inequitable conduct. The requirement that

applicants specifically comment on every reference in excess of ten in

relation to each claim would increase the costs of patent prosecution and

foster further allegations of inequitable conduct. MIPLA urges the PTO to

continue the current policy of encouraging submission of documents rather

than implementing these burdensome requirements. Creative use of such tools

as electronic submission of references (esp. U.S. patents) would

significantly assist the PTO.

3. Proposal 10 sets forth an authority to reject an "unduly burdensome"

IDS. The absence of any standard for making this rejection makes the

proposals unfair to applicants.


MIPLA Comments to the Advance Notice of Proposed Rulemaking by the



The Minnesota Intellectual Property Law Association (MIPLA) is a non­profit

organization formed to promote the development of intellectual property law

and enhance the professionalism of its more than 600 members. The membership

is made up of attorneys practicing in patent, copyright, trademark, and

trade secret law, and law students with interests in these areas of law.

MIPLA commends the Patent and Trademark Office (PTO) for its efforts to

increase the level of service to the public and to raise the efficiency and

effectiveness of their business processes. We have studied the Advance

Notice of Proposed Rulemaking (ANPR) published for comment by the PTO in the

Federal Register on October 5, 1998 and present our comments for


We believe the proposed rule changes include some very good policy and

procedure changes to streamline paperwork and alleviate existing problems in

processing. We also strongly disagree with some of the suggested changes,

which we believe will negatively impact the quality of examination and

validity of patents issuing under such rule changes.

The PTO stated in the ANPR that there were no plans for public hearings to

discuss the proposed changes to patent practice. We believe that the PTO is

proposing such fundamental changes to patent practice that public hearings

are essential in order to understand the concerns of the PTO's customers and

the significant long term effect that the proposed changes would produce.

Our comments are addressed to each of the specific proposed changes.


1. Simplifying request for small entity status (37 CFR 1.27)

MIPLA favors this rule change, which would eliminate the need for special

forms and permits simple assertion of entitlement to small entity status.


2. Requiring separate surcharges and supplying filing receipts (37 CFR


The proposed rule change seeks to address the added costs involved with

processing of missing parts, and particularly with processing separate

submissions of missing parts in non­provisional applications. The proposed

change also aims to provide multiple filing receipts that are updated upon

missing parts submissions. To accomplish these tasks and provide the

corrected filing receipts to the file, the PTO proposes to assess separate

surcharges for each missing part, for example, one for missing

oath/declaration, another for missing fee, another for missing inventors

names, etc.

We appreciate the need to address the problem of multiple submissions of

missing parts and the suggestion of assessing the added costs to those

applicants causing the need. However, we suggest the problem might be solved

in an alternative manner, without the need for confusion as to the

appropriate fee to be paid.

The suggestion to provide corrected filing receipts is welcomed, as we

recognize the need for affirmation that the applicant's correct filing

information is registered in the PTO's file. Under the old rules, a filing

receipt was not issued until all of the missing parts were submitted and

approved. Following the new rules, an official filing receipt is issued

when an application is filed with the minimum information needed to obtain a

filing date, but in the absence of much needed information for the correct

filing receipt. We suggest a better approach to the problem of multiple

filing receipts would be to provide notice of "filing date accorded",

perhaps in the missing parts notice, and prepare the formal filing receipt

only upon submission of all the needed missing parts.

The PTO's suggested payment of separate surcharges for "each missing part"

appears to be problematic and confusing with regard to when a separate fee

might be charged. For example, the surcharge of $130 would be accorded for

the missing fee, another for the missing declaration. But what if the

documents are filed, but are incomplete? What if the names are missing?

The addresses? We suggest a more direct approach might be to apply the

surcharge to each submission of missing parts. If, for example, the

applicant complies with the missing parts notice with a complete first

submission, one surcharge would apply. If the applicant provides the

missing parts with multiple submissions, a surcharge would be required with

each individual submission. We suggest that this would be more easily

accounted for by both the applicant and by the PTO, and would prefer such a

system even if the amount of the surcharge were increased.

In summary, MIPLA suggests the PTO goals of reducing the number of

submissions of missing parts in a single case, allocating costs to the

applicants, and providing accurate filing receipts to the file might be more

easily achieved by (1) acknowledging file date on the missing parts notice;

(2) providing a formal filing receipt only upon submission of all missing

parts; and (3) requiring a surcharge with each submission of missing



3. Permitting delayed submission of an oath or declaration, and changing

the time period for submission of the basic filing fee and English

translation (37 CFR 1.52, 1.53).

The PTO has asked for comments on permitting delayed submission of an oath

or declaration, and changing the time period for submission of the basic

filing fee and English translation. MIPLA has the following comments and

suggestions regarding Proposal 3.

Summary of Concerns

MIPLA is concerned about the burdensome and complicated nature of the

proposed statement required of the registered practitioner in connection

with permitting delayed submission of an oath or declaration (3)(a)­(d).

Inventorship is often determined by an in­house attorney or by a foreign

attorney or agent. Also, many organizations consider patent applications to

be confidential business documents and would prefer not to mail copies of

the application outside the organization.

MIPLA is also concerned that the proposed period of 1 month from filing for

submission of the basic filing fee and English translation is too short.

Summary of Suggestions

MIPLA suggests requiring the oath or declaration be filed within 3 months of

filing, without the need for any statement from a registered practitioner.

MIPLA has concluded that it is not practical to require the filing fee and

translation be filed within 1 month from the date of the filing of the

application, especially without the receipt of a Notice to File Missing

Parts. MIPLA suggests that this proposal by the PTO be modified to one

month from the date of the filing receipt in order for the applicant to be

able to reference the appropriate filing date and serial number.

Permitting delayed submission of an oath or declaration

Section 3(a) of the proposal would require a statement from a registered

practitioner that an inventorship inquiry has been made. In

foreign­originated cases where the practitioner is acting as the U.S.

associate to a foreign attorney in direct contact with the client, it is not

practical that the practitioner make the inventorship inquiry to the client.

The same problem arises where the application is handled at the direction of

an in­house attorney (whether or not a patent practitioner) ­ the

inventorship inquiry is often handled by the in­house attorney. The duty of

conducting an inventorship inquiry should be considered satisfied by the

direction given by an in­house attorney or foreign principal attorney or


Section 3(b) of the proposal would require that a copy of the application be

sent to each inventor. Currently many organizations have the inventors

review the application together at a meeting held at the organization in

order to retain control over copies of the application, which are considered

confidential business documents. Many organizations dislike the requirement

of sending copies of the application outside the organization, particularly

when an inventor does not work for the organization. Sending a copy of the

application to each inventor seems unnecessary given the requirement that

the inventors need only read and understand the application and be appraised

of the duty to disclose. US practitioners should also be able to rely on

the representation of a foreign patent attorney that the inventors have been

given an opportunity to review the application and have been apprised of the

duty to disclose.

Rather than creating potential new problems by requiring a statement from a

registered practitioner, MIPLA would suggest setting a time period for the

oath or declaration to be filed, such as within 3 months from filing.

Time period for submission of the basic filing fee and English translation

The PTO is proposing that a time period of 1 month from filing be set for

submission of the basic filing fee and English translation. This period

seems too short to MIPLA and MIPLA suggests setting the time period as 1

month from the mailing of the filing receipt.

The application needs to be identified by application number when filing the

fee and/or translation after filing. The return postcard is not reliable

because there have been instances where the application number on the return

postcard and on the filing receipt have not been in agreement, particularly

in National Phase cases. The filing receipt provides the earliest reliable

indication of the application number, and should be used to trigger the time

period for filing the fee and/or translation.


4. Limiting the number of claims in an application (37 CFR 1.75)

The PTO is considering a change to the rules of practice to: (1) limit the

number of total claims that will be examined (at one time) in an application

to forty; and (2) limit the number of

independent claims that will be examined (at one time) in an application to

six. In the event that an applicant presented more than forty total claims

or six independent claims for examination at one time, the PTO would

withdraw the excess claims from consideration, and require the applicant to

cancel the excess claims.

Summary of MIPLA Position

MIPLA opposes the PTO's proposal to limit the number of claims in an

application. MIPLA recommends no change to the current rule 37 C.F.R.

§1.75. The proposed rule change can be divided into two segments: (1) a

limit on the total number of claims, and (2) a limit on the total number of

independent claims. Neither segment should be implemented.


The proposed limit on the total number of claims (40) is overly restrictive.

Current 37 C.F.R. §1.75(b) (Rule 75) adequately addresses the PTO's

concerns. Rule 75(b) states: "more than one claim may be presented provided

they differ substantially from each other and are not unduly multiplied."

This provision should be enforced in the event that the PTO is presented

with applications in which the claims that are presented provide

unsubstantial differences from each other.

Article I, Section 8 of the Constitution provides the power to the

legislative branch of the government "To promote the progress of science

and useful arts, by securing for limited times to authors and inventors the

exclusive right to their respective writings and discoveries." A limitation

upon the number of claims would have a serious impact upon the rights of

inventors to obtain the exclusive rights to their discoveries.

Where certain inventions require being claimed using a multitude of claims,

the importance of that invention and the adequacy of the patent protecting

that invention should not be minimized by an arbitrary claim limit imposed

by the PTO. An applicant, not the PTO, is in the best position to decide on

the claim strategy that will best protect its intellectual property rights.

The number of claims should be reasonable as the case may permit and not be

limited by a fixed number.

Furthermore, Section 131 of 35 U.S.C. requires that the "[c]ommissioner

shall cause an examination to be made of the application and the alleged new

invention." The proposed change to 37 C.F.R. 1.75 would automatically

withdraw any excess claims from consideration, in other words, claim 41 and

independent claim 7 would be ignored. Contrary to the Commissioner's

statement, this is beyond the rule­making power of the Commissioner and a

violation of 35 U.S.C. 131, which requires an examination of the claims.

Congressional intent reflected in the fee structure of 35 U.S.C. 41(a)(1)(B)

does not limit the number of claims in any way, and in fact encourages

Applicants to present the claims as they see fit.

The published comments to the proposed rule change identifies "less than 5%"

of applications as containing an excessive number of claims. Yet, the PTO

proposal would revamp Rule 75 based on only a small minority of cases. None

of the filing statistics presented in the published proposal identify the

types of claims normally presented in applications the PTO views as

containing an excessive number of claims. Presumably, these applications

include sets of claims that may be subjected to restriction requirements by

the PTO (e.g., article and process claims). Hence, if claims in an

application are subject to restriction, the PTO could continue its

restriction practice under 37 C.F.R. §1.141 either under the current version

of the rule or under the "presumptive election" that the PTO now proposes.

Thus, Rule 141 already addresses at least some of the PTO's concerns

relating to excessive claiming.

Additionally, the proposed rule change is likely to result in more work for

the PTO because applicants that would normally file a high number of claims

in an application will simply resort to filing separate original

applications that contain claim sets that otherwise might be filed as

continuation and/or divisional applications. In these circumstances, the

overall processing and examination burden on the PTO would increase because

the proposed rule change will precipitate a higher volume of original

application filings to obtain the full benefit of the applicant's claim

strategy. The PTO's own published comments to the proposed change to rule

141 recognize this.

An applicant who is unable to limit him or herself to forty total or six

independent claims in a single application may effectively obtain

examination of additional claims in another application. "As the PTO would

expend more of its scarce processing and examination resources on ten

applications containing forty claims each than the PTO would expend on a

single application containing four hundred claims, the PTO's objective is

not to have applicants to spread­out excessive numbers of claims among

multiple applications to increase fee revenue." [From the Federal Register

Online via GPO Access, October 5, 1998, page 53508]

Although the PTO claims to not seek an increased revenue flow from

additional filings, the likely result of the proposed change to rule 141 is

an increased number of filings.

Another issue raised by the proposed rule change is whether the redrafting

of dependent claims into independent form in response to an objection raised

by an examiner would require the filing of a continuation application when

the rewritten claims expand the total number of independent claims to more

than 6. The PTO proposal fails to recognize and address this issue. Any

such requirement for filing continuation applications based on these

rewritten claims would again be burdensome on both the applicant and the

PTO. The extension of independent claims beyond 6 imposes no burden on the

Examiner, since the claims have already been examined, and most would be

prima facie allowable. The proposed rule change would limit the applicant's

ability to convert dependent claims to independent claims based on the

restriction to six independent claims. Additional filings will only inflate

the total number of pending applications that the PTO will have to process

and examine, and the need for preparing and filing additional applications

adds unnecessary expenses to the applicant's costs for obtaining a patent.

Although the PTO proposes to provide for a petition procedure for waiver of

the 40 claim limitation in certain situations, the implementation of a new

petition procedure would also require a dedication of PTO resources and

still would deprive the applicant of the ability to ultimately decide how

best to claim his/her invention.

If the PTO wishes to reduce the number of patent claims, it should consider

a no­cost approval of multiple­dependent claims. The fees imposed by the

PTO have discouraged the use of multiple dependent claims by most

applicants. The number of claims could be greatly reduced by eliminating

the multiple dependent claim fee and the additional dependent fee costs

imposed by the PTO.

Additionally, the PTO should consider adoption of the "unity of invention"

test, rather than the old and unworkable restriction practice. Reasons:

many dependent claims are simply repeated for altered dependency trees, and

permitting no­cost multiple­dependent claims counted as a single claim

reduces the examination and handling of such claims. The unity of invention

would permit a single inventive concept to be advanced in each application,

rather than plural concepts expressed as the same class of invention.

In conclusion, MIPLA recommends that no change be made to Rule 75. For the

reasons set forth above, the PTO proposal does not clarify how the PTO would

benefit from the proposed modification of the current rule. If the issue is

whether the PTO is being fairly compensated for applications containing a

larger number of claims, then the current fee structure could be changed to

charge certain applicants for the examination of a large number of claims in

a single application. Furthermore, the PTO could encourage the use of

multiple dependent claims by eliminating the present surcharge. The use of

multiple dependent claims might prove to be advantageous in the efficient

examination of applications. However, trying to limit the total number of

claims in a single application is likely to result in additional application

filings as certain applicants will see the need to separate sets of claims

into different applications to comply with the 40 claim limitation while

also pursuing a claim strategy that includes more than 40 claims. These

additional filings will only serve to tax the PTO's resources further and

will render the proposed change to Rule 75 as a sham.


5. Harmonizing standards for patent drawings (37 CFR 1.84)

MIPLA fully supports the suggested rule change for harmonizing the

requirements of patent drawings in 37 CFR 1.84 with the requirements for

drawings in the PCT.



6. Printing patents in color (37 CFR 1.84)

MIPLA supports the suggested rule change deleting the petition and fee to

accept color drawings and photographs and to provide processing and printing

of patents having color drawings and photographs in color rather than in

black and white with a fee required to cover costs.

MIPLA further suggests that the PTO consider acceptance of color drawings in

computer format which would improve reproduction quality and also reduce



7. Reducing time for filing corrected or formal drawings (37 CFR 1.85)

The PTO has proposed to reduce the time period for filing formal drawings to

one month from the date of the Notice of Allowability. MIPLA feels this is

insufficient time. Some complex cases require so many sheets or are of such

complex subject matter that one month is simply too short;

some clients (particularly foreign clients) prepare their own formal

drawings that cannot be completed within one month. The short time of one

month does not seem to relate to any PTO handling problems, only the time of

application pendency. Since delay in filing the drawings will likely delay

the grant of the patent, it is the applicant, not the PTO, that suffers from

the delay. A separate problem is a concern that an examiner could retract

the notice of allowability or that the scope of the allowable claims may be

of such restricted scope that the applicant would not wish to go forward

with drawings at this point in time.

Any substantive, administrative, or procedural problems with correcting or

submitting formal drawings or the like can also result in abandonment of an

application in the special time period set by the Notice of Allowance often

resulting in unnecessary delays and expense. It is more appropriate to have

all drawing issues resolved prior to issuance of a Notice of Allowance, for

example by an Ex parte Quayle or similar type procedure, with an extensible

period of response.


8. Permitting electronic submission of voluminous material (37 CFR 1.96,


MIPLA supports the suggested rule changes which would permit the voluntary

electronic submission of large computer program listings and sequences in

only a machine­readable form, where the official copy is submitted in an

archival medium which can be freely accessed by the public on issuance of

the patent

MIPLA further supports the proposed rule changes that would allow submission

of provisional applications in toto in a machine readable format which can

be freely accessed by the public on issuance of the patent

In addition, where specific submissions are noted as cumbersome requiring

voluminous paper, MIPLA supports acceptance of such submissions in

machine­readable form.

Also, as noted in our lengthy discussion of Proposal 9, it would be

advantageous to be able to submit lengthy information disclosure statements

in an electronic format.

9. Imposing limits/requirements on information disclosure statement

submissions (37 CFR 1.98)

MIPLA understands that one of the PTO's goals is to reduce the amount of

paper within its office. The PTO states that it is currently running out of

space in several departments due to boxes of documents, mainly prior art

references, forwarded to the PTO. The PTO's position is that it is being

presented with voluminous IDS submissions, but it has not presented

statistics regarding the percentage of cases in which it finds this to be a

significant problem. The PTO cites its Business Goal to reduce PTO

processing time (cycle time) to twelve months or less for all inventions as

being one of the main reasons for proposing these limits on IDS submissions.

In balancing the desires of the PTO to reduce processing time while still

providing quality examination to applications, MIPLA prefers that the

quality of examination be maintained and that reduction of processing time

be a secondary goal of the PTO.

While the present proposal is an attempt to minimize paper submitted to the

PTO, MIPLA opposes this proposal to impose limits/requirements on

information disclosure statement submissions. MIPLA recommends no change to

the current rule 37 C.F.R. 1.98. If enacted, these rule changes will

undesirably inhibit the submission of information to the PTO by forcing

patent applicants to comment on every reference in excess of 10 submitted

during the course of patent prosecution. Moreover, the proposal would also

create in almost every file history a pretense for litigators to argue that

inequitable conduct took place during patent procurement.

To accomplish the purpose of 37 C.F.R.1.56, unencumbered submissions of

information to the PTO should be encouraged. Rule 56 now states: "The

public interest is best served, and the most effective patent examination

occurs when, at the time an application is being examined, the Office is

aware of and evaluates the teachings of all information material to

patentability." The PTO's comments in the proposed rule change acknowledge

the merit behind the current policies allowing the submission and evaluation

of all information believed to be material to patentability.

The public appears to have taken the view that it should submit, in

compliance with 37 CFR 1.97 and 1.98, even questionable citations in order

to ensure that applicant is viewed by the courts as having satisfied the

duty of disclosure requirements. MPEP 2001.04 points out as to

noncompliance with 37 CFR 1.97 and 1.98 that ``the applicant will have

assumed the risk that the failure to submit the information in a manner that

will result in its being considered by the examiner may be held to be a

violation'' by the courts. MPEP 2004 adds: ``When in doubt, it is desirable

and safest to submit information. Even though the attorney, agent, or

applicant doesn't consider it necessarily material, someone else may see it

differently and embarrassing questions can be avoided.''

As is exemplified in the above quotation, past PTO comments and rule changes

made clear that a policy of encouraging the submission of information to the

PTO was important to the United States' patent system. For example, a theme

intertwined throughout the PTO's reasons for changing the duty of disclosure

requirements in 1992 to those reflected in the current rules was that of

encouraging the submission of information to the PTO. In fact, in response

to a comment questioning whether relevant art would be withheld from the PTO

under the current rule, the PTO stated that it envisions "most applicants

will wish to submit the information, however, even though they may not be

required to do so, to strengthen the patent and avoid the risks of an

incorrect judgment on their part on materiality or that it may be held that

here was an intent to deceive the Office." The PTO further stated: "If the

Office does not have needed information, meaningful examination of patent

applications will take place for the first time in an infringement case

before a district court. Courts will become increasingly less confident of

the Office's product if they get the impression that practitioners and

inventors can routinely withhold information from the Office, or that

practitioners and inventors can make up their own minds about what is

patentable." Without identifying any reasons that invalidate the foregoing

concepts underlying the current duty of disclosure , the PTO now seeks to

impose burdensome requirements in the filing of Information Disclosure

Statements that will inhibit the disclosure of the same relevant information

the PTO had formerly sought to include when considering the ultimate

question of patentability.

The present proposal includes three specific requirements relating to IDSs.

The first proposed requirement relates to a statement in an IDS that each

citation has been personally reviewed by the registered practitioner who

represents an applicant, or by at least one inventor where the applicant is

not represented by a registered practitioner. MIPLA foresees such a

requirement would lead to countless inquiries into inequitable conduct both

in the PTO and during litigation.

The second proposed requirement relates to supplying a copy of each cited

U.S. application. If the cited U.S. application is later abandoned, a

petition to expunge the cited application must be submitted to remove the

application from the file. The PTO would then need to consider whether the

U.S. application is indeed immaterial to patentability of the invention such

that it can be expunged. (see MPEP 724.05). The need to act on petitions

to expunge could be more burdensome on both the PTO and applicant than the

current rules, which do not require submission of co­pending U.S.

applications when cited in an Information Disclosure Statement. As the PTO

continues to become an even bigger user of electronic documents, any burden

on an Examiner to obtain a copy of an application should be minimized or

even reduced.

The third proposed requirement outlined in this proposal relates to

supplying a unique description of each citation's importance relative to

each independent claim, or specific dependent claim(s) if that is why it was

cited. The following exceptions would apply, however: (1) ten citations or

less are exempt from the description requirement, and (2) citations from

foreign patent offices and PCT searching and examining authorities also do

not require description provided the search report or office action in the

English language is also submitted. Specifically, the description of each

citation would have to set forth a teaching or showing of a feature relevant

to the claimed invention which is not taught or shown by other citations in

the IDS or is taught in a different manner. Furthermore, the description of

each citation would need to be unique to that citation. In other words, an

applicant would not be permitted to provide a description of a citation that

is merely cumulative to that of the other citations.

Stating the importance of each cited reference relative to each claim for

which it is cited will potentially require a colossal effort by the

applicant depending on the number of references submitted and the total

number of claims in the pending application. For those applications with a

large number of claims and IDS submissions comprising a large number of

references, the disclosure process could require several lawyers and

significantly increase the cost of the patent process. Furthermore, where a

reference is cited for a multitude of claims, a large volume of paperwork

will be needed to adequately state the importance of the citation relative

to each claim. These requirements appear to serve the dubious purpose of

having the applicant perform the initial examination of his/her own claims

in light of the references cited in the IDS. The proposed change would

require the attorney or agent not only to review the references, but to

effectively provide the examiner with descriptions of the references that

would likely serve as a basis for rejecting the pending claims. While this

may ease an examiner's burden, it adds a significant and unreasonable burden

to the applicant and to the attorney or agent of record. Moreover, these

"unique" descriptions would not take into account possible future changes to

the claims made during the course of prosecution. Hence, each of the

required "unique" descriptions would potentially be valid only for the

claims pending at the time the IDS is submitted. Submission of claim

amendments will lead cautious practitioners to update the uniqueness

description, thereby multiplying the amount of paper submitted to the PTO.

The end result of this proposed change in the rule will lead to submission

of multiple uniqueness statements applying each reference to each claim.

Thus, for cases involving many claims and many references, the Examiner

would have to review an even more voluminous IDS than under the current


The PTO has recognized that a reference's materiality can be viewed

differently by different people:

"Even though the attorney, agent, or applicant doesn't

consider it necessarily material, someone else may see it differently and

embarrassing questions can be avoided''. [From the Federal Register Online

via GPO Access, page 53512]

Like the requirements of materiality, opinions on a reference's uniqueness

to individual claims will often differ. Placing one practitioner's

statement of uniqueness within an Information Disclosure Statement will

serve only to further the interests of those seeking to challenge issued

patents based on grounds of inequitable conduct by allegations that the

attorney or applicant provided false statements of uniqueness during

prosecution. Because of the contentious nature of patent litigation,

uniqueness statements in the file histories of issued patents will

undoubtedly be second guessed and used to raise issues of whether the

practitioner misrepresented a reference or provided a misdirected "unique"

description of the reference. Hence, the eventual utility of the proposed

uniqueness statements will be to serve as road maps for the patent litigator

seeking to establish a case of inequitable conduct. With every statement of

uniqueness in a file history potentially available as a grounds for

attacking the enforce ability of a patent, the practitioner will be put in

the position of second guessing every statement made in an IDS, resulting in

overly cautious updates to earlier submitted uniqueness statements.

Although the uniqueness statements may provide some initial benefit to the

PTO, the proposed requirement carries a huge potential for stirring up

additional litigation issues relating to inequitable conduct and causes

significant concern among the members of the patent bar that they will run a

higher likelihood of being caught up in such issues should their clients

decide to assert their patent rights.

Although the examiner's burden in the review of lengthy Information

Disclosure Statements is appreciated, that burden should not be used to

justify the imposition of even more severe burdens on the patent applicant

or the patent attorney. Since 1992, the PTO has now come full circle. In

the past, as discussed, the PTO sought to encourage the disclosure of

information. But, with the burdensome proposal to change Rule 98, the PTO

now seeks to allow disclosure only with the risk of creating opportunities

in every prosecution file for patent litigators to use in an attempt to

escape liability for infringement by maligning the attorney or agent

responsible for patent prosecution.

The PTO should adhere to the policy of encouraging the submission of

information to: (1) strengthen the patent through the statutory presumption

of validity, (2) reduce the risks of an incorrect judgment on an applicant's

or practitioner's part with respect to materiality or uniqueness of a

citation, (3) reduce risks that it may be held that there was an intent to

deceive the Office, and (4) avoid the possibility that Courts will become

increasingly less confident in the PTO's product. Submission of documents

to the PTO in an IDS is an important part of our patent system.

The proposed rule change would permit the submission of ten references or

less without the requirement for a description of those ten references.

Setting the number at ten is arbitrary and no specific justification for it

can be found in the PTO's proposal. In complaining about the effects of

burdensome submissions, the PTO describes IDS submissions that include

hundreds of references. Consequently, the proposed number ten appears to be

well below what the number the PTO actually considers to be burdensome. In

addition, university publications and the like are often difficult for

Examiners to find during their art searches, and the submission of these

types of references should continue to be encouraged. Ultimately, the

proposed rule changes will undesirably encourage patent filings in the

absence of thorough preliminary art searches, thus placing all the burden on

the PTO to search and uncover the most pertinent art. In the absence of an

applicant's participation in assessing the art, the presumption of validity

for the issued patent will be diminished.

There are numerous reasons why more than 10 references may be cited in an

IDS, including (a) citation in similar (although not necessarily related)

U.S. applications, and (b) citation by a third party as relative prior art

to a similar or related U.S. or foreign patent in litigation, validity

proceedings, oppositions, re­examinations, and the like. For example, where

a patent is asserted against a defendant in litigation and that defendant

cites prior art as relevant to the patent in suit, the patentee/applicant

ought to be able to cite the prior art in the still­pending divisional or

continuation application without having to characterize the references

anymore than as characterized by the defendant. To do otherwise adversely

affects litigation strategy because the comments may be made available to

the defendant giving the defendant an unfair advantage over the

patentee/applicant/plaintiff in the litigation. Moreover, often the

references are cumulative or simply background to the invention.

Nevertheless, because they are cited in litigation, they ought to be

considered, without requiring the applicant to characterize the references.

Similar circumstances occur in foreign litigation and oppositions. It is

suggested that such references be excluded from the requirement of

explanation of pertinence, provided that the application or litigation from

which the references were cited is identified in the IDS. It is further

suggested that an IDS citing such references cannot be excluded from

consideration, even though voluminous, cumulative, or multiplied. An

obligation could be imposed on the applicant to keep the Examiner appraised

of the status of the validity challenge and of the references particularly

relied on by the third party or the finder of fact.

Where several applications are directed to similar subject matter, whether

related (parent/child) or not, references cited by an Examiner in one case

ought to be citable in another case without requiring an explanation of

relevance or risking non­consideration. Examples of similar cases include

cases directed to similar subject matter as claimed in the present

application, whether filed the same date or not. The applicant might,

however, be required to identify the similar and related applications from

where the references were cited.

As a minimum, U.S. patents should be excluded from this rule because they

are searchable by Examiners electronically. Using key word searches, the

Examiner can easily determine the materiality of a U.S. patent reference.

This revision will severely minimize the amount of paper

submitted to the PTO and will greatly reduce the storage problem within the


MIPLA invites the PTO to propose at least one method for electronic

submission of lengthy Information Disclosure Statements. Electronic filing

with use of hypertext links to data bases would be one way to reduce the

amount of paper that is involved.

Whatever the purpose behind the proposed modification of the existing rules,

the PTO must consider the impact that the proposed modification will have on

patent applicants. Any rule relating to the submission of prior art should

encourage the unencumbered submission of information to the PTO to ensure

the applicant's patent application is well­examined and that the patents

issuing from such applications are strengthened by a rigorous examination

process. Unfortunately, the current PTO proposal would only hinder this



10. Refusing information disclosure statement consideration under certain

circumstances (37 CFR 1.98).

MIPLA opposes the PTO's proposal to reserve the PTO's authority to refuse

consideration of information disclosure statement submissions in "unduly

burdensome" circumstances. MIPLA recommends that no change be made to

37C.F.R. 1.98 ("Rule 98"). Many of the reasons outlined with respect to

Proposal 9 hold true for this proposal as well.

As already stated above with respect to Proposal 9, the PTO needs to

continue its policy of encouraging applicants in their submission of

information in order to: (1) strengthen the patent, (2) reduce the risks of

an incorrect judgment on an applicant's or practitioner's part with respect

to materiality or uniqueness of a citation, (3) reduce future issues over an

intent to deceive the Office, and (4) avoid the possibility that Courts will

become increasingly less confident in the PTO's product. An applicant's

submission of documents to the PTO is an important part of the United

States' patent system. If we are to continue the requirements under 37

C.F.R. 1.56 ("Rule 56"), we should not undermine the policies behind that


In the present proposal, the proposed change to Rule 98 is unduly vague,

rendering it impossible to follow. In the absence of a specific standard by

which the public can judge what the PTO will consider to be "unduly

burdensome", the PTO's proposal adds another layer of uncertainty to the

disclosure process. The proposal is rendered even more uncertain by the

PTO's representation that this unduly burdensome standard will apply even if

the IDS submission complies with all of the requirements set forth in the

above discussed Proposal 9. Consequently, the applicant will be forced to

guess whether its IDS submission will be considered sufficient. Moreover,

such a standard lends itself to the subjective preferences of individual

examiners. Consequently, the proposal, if enacted, runs a high risk of

being abused by the imposition of different and inconsistent preferences for

the submission of art to different examiners.

Although the plight of the examiner in the consideration of lengthy IDS

submissions evokes sympathy, perhaps the better way to handle the issue is

to provide more support for those examiners burdened by such submissions.

The PTO should consider hiring more examiners for those art units most

heavily burdened by these IDS matters. Another suggestion is to have PTO

management monitor the handling of Information Disclosure Statements so that

workloads can be adjusted for those examiners considering voluminous IDS

submissions. The PTO needs to provide such examiners with the credit they

deserve for dealing with such submissions. In other words, the handling of

the IDS issues facing the PTO are best handled internally, and not by

imposing the burdensome requirements inherent in the current proposals 9 and



11. Providing no cause suspension of action (37 CFR 1.103)

The PTO is considering adding an additional suspension of action practice,

under which an applicant may request deferred examination of an application

without a showing of "good and sufficient cause," and for an extended period

of time. The applicant would be required to waive the confidential status of

the application under 35 U.S.C. 122, and agree to publication of the


MIPLA has no objection to the PTO's proposed suspension of action.

12. Requiring a handling fee for preliminary amendments and supplemental

replies (37 CFR 1.111)

The PTO is proposing handling fees for preliminary amendments not filed with

the application and for supplemental amendments filed in supplement to a

previous amendment already filed. Excluded would be supplemental amendments

to amendments after final rejection.

Preliminary amendments, including a preliminary amendment to a CPA should be

permitted within 3 months of the filing date, just like an IDS in a newly

filed case. The extra burden on the Examiner occurs only where the

amendment arrives during or after the Examiner has considered the

application, and the amendment causes a change in the Examiner's strategy.

Therefore, any handling of the application due to the filing of supplemental

and preliminary amendments should reflect only the cost of handling by the

clerical staff. Moreover, since the preliminary or supplemental amendment

presumably places the application in better condition for examination, the

cost of handling the application by the clerical staff should be more than

offset by the savings in consideration by the Examiner.

Perhaps an alternative solution would be to allow the practitioner to check

a box in the filing papers to indicate whether a Preliminary Amendment may

be filed in the future, thereby allowing the Examiner to proceed or wait for

the Preliminary Amendment.

MIPLA suggests that a time limit for the submission of a preliminary

amendment without fee correspond with the term for submission of an

information disclosure statement without fee ­ three months or before first

action. This will allow the applicant to submit amended and/or new claims

during the same time period presently allowed for the submission of an

Information Disclosure Statement, and presumably before the examiner picks

up the case for initial examination. The time period for submission of a

preliminary amendment without fee should be commensurate.


13. Changing amendment practice to replacement by paragraphs/claims (37 CFR


MIPLA supports this proposal in part.

Replacement Claims/Paragraphs

MIPLA supports the PTO's proposed rule change that would require submission

of replacement claims or paragraphs, along with a marked­up copy of the

changed paragraphs or claims. MIPLA agrees that this would facilitate

efficient examination of applications. As an alternative, the PTO could

require submission of replacement sheets, along with a marked­up copy of the

changed paragraph or claims. This practice would be similar to the current

European practice.

Paragraph Numbering

MIPLA does not support the PTO's proposed rule change with respect to the

requirement of numbering all paragraphs in a specification. When numerous

changes are made, this could become unduly burdensome on both the applicant

and the PTO. While this change may facilitate examination of electronically

filed applications, the PTO is ahead of its time with respect to this issue.

This portion of the proposed rule change should be tabled until

electronically filed applications are in place.


14. Providing for presumptive elections (37 CFR 1.141)

MIPLA opposes the PTO's proposal for presumptive elections. MIPLA

recommends no change to the current Rule 37 C.F.R. 1.141, but recommends

that the PTO strive to enforce the current Rule more accurately and

consistently. Most preferably, the PTO should be moving to the same unity

of invention rules now used in other countries of the world as well as in

the European Patent Office. Most examiners understand the unity of

invention rules for the reasons discussed below, and those examiners that do

not understand can be trained in this area.

In addition, all Examiners should be reminded of MPEP 821.04 and In re

Ochiai and In re Brower. This may obviate the need for proposed changes to

Rule 141. The presumption in the present proposal that applicants have

constructively elected the invention first presented in the

claims is unacceptable because of uncertainties existing in the manner in

which some examiners practice the current restriction guidelines. In many

instances, the first claimed invention may NOT be the invention that the

applicant wishes to pursue first, especially where the PTO divides the

claims in an unexpected manner. The applicant should retain the ability to

elect a claim set to pursue and to traverse the restriction requirement as

may be appropriate.

Any extensive change in the PTO's restriction practice may result in US

applicants choosing first to have their applications examined under the

preliminary examination procedures of the Patent Cooperation Treaty (PCT)

followed by entry into the US PTO at about the 30th month following the

earliest priority date. Under this process, the applicant would then be

entitled to the Unity of Invention Rules applied to the application under

the PCT. Automatic restriction/election is undesirable in that it provides

the applicant with additional incentive to avoid the PTO's restriction

practice altogether.

If promulgated, the proposed rule ought not to apply to applications filed

prior to the effective date of the rule change. This will permit applicants

to elect inventions and species where the most favored invention or species

had not been first presented.


15. Creating a "rocket docket" for design applications (37 CFR 1.155).

The PTO is considering special expedition of certain design patent

applications on the basis of payment of a fee of $900.00 and performing a


MIPLA was not aware that design applications were examined in groups of 10

or 20. It is unfair that this practice exists, both to the public and to

the applicants. All design applications should be examined in the order of

filing, and not delayed in order to fill a group. Design applications are

easy to search and therefore hiring additional design application examiners

should allow each design application to be examined in the order of filing.

Applicants should not have to pay a surcharge and perform their own search

in order to obtain the examination for which they have already paid.


16. Requiring identification of broadening in a reissue application (37 CFR


The PTO is considering a change to 37 CFR 1.173 to require reissue

applicants to identify all

occurrences of broadening of the claimed invention in the reissue

application MIPLA is strongly opposed to this proposal. No change is

recommended to 37 C.F.R. 1.173.

This appears to be an attempt to have a portion of responsibility for an

application's examination diverted from the PTO to the applicant. MIPLA

prefers to leave the responsibility for examination of reissue applications

and determinations as to broadening occurrences with the PTO. It is

important to maintain this determination with a central authority that is

not afflicted with individual biases that may be intimately associated with

asking the applicant to be responsible for critical judgment calls that

affect examination of an application. An applicant should not be penalized

simply because the claim was broadened in some unintentional way.

This rule change would open the door for further claims of inequitable

conduct against an applicant or their registered representative. No change

should be made to the current Rule 173.


17. Changing multiple reissue application treatment (37 CFR 1.177)

The PTO is considering an amendment to 37 CFR 1.177 to streamline the

processing of divisional (or multiple) reissue applications.

MIPLA favors this change to multiple reissue application practice.


18. Creating Alternative Review Procedures For Applications Under Appeal

(37 CFR 1.192)

Summary: The PTO is considering alternative review procedures to reduce the

number of appeals forwarded to the Board of Patent Appeals and


The PTO is proposing an optional review process by which a different primary

examiner will, for a fee, review the rejections of one claim, after Notice

of Appeal but before the Appeal Brief, to ascertain whether or not a prima

facie case of unpatentability has been established by the original examiner.

The reviewer may consult with the original examiner. If the reviewer

believes the original examiner has failed to meet the prima facie case of

unpatentability, the original examiner will, presumably, issue a new

rejection. The reviewer will not have the authority to overrule the

original examiner. The date of filing the appeal brief runs from the date

of notification of completion of the review. It is not clear that under

this proposed review process, the PTO advises the applicant of the findings

on the review.

The PTO is also considering another alternative review process after the

filing of the Appeal Brief to review the entire final rejection to determine

if prima facie case of unpatentability has been established. Presumably,

the procedure is similar to the first, and could lead to a withdrawal of the

final rejection by the original examiner.

Since the appeal reviews under consideration would not be by either the

Board or a Federal court, the issuance of a patent as a result of a decision

reached during such an appeal review to withdraw a rejection would not

entitle the patentee to a patent term extension under 35 U.S.C. 154(b)(2).

MIPLA Comments:

While MIPLA is supportive of efforts to expedite the resolution of appeals,

the proposals raise some concerns.

1. MIPLA suggests that detailed results of the review be made available

to the applicant. If an applicant is to use this procedure, the results of

the review should be communicated to the applicant. Preferably, the

reviewer should provide a written report that provides the applicant and the

original examiner with at least some detail of the review including reasons

why the original rejection fails to present case of prima facie

unpatentability, whether or not followed by the original examiner.

2. The PTO seeks comment as to whether a uniform procedure for review

should be established throughout the entire Corps or whether each group

should be free to establish its own procedures. To establish consistency

within the PTO, MIPLA believes that the review process should be on

uniformly handled throughout the PTO, and not conducted using an ad­hoc

approach on a group­by­group basis. In the absence of uniform practices in

the PTO, an appellant in a new art area will have no basis for evaluating

the value of the review process in a particular group thereby diminishing

the appellant's incentive to participate in the proposed review. Moreover,

uncertainties in the review procedure conducted by a given group may also

adversely affect the applicant's rights.


19. Eliminating preauthorization of payment of the issue fee (37 CFR 1.311)

Summary: The PTO is considering amending 37 CFR 1.311(b) to eliminate the

option of filing an authorization to charge an issue fee to a deposit

account before the notice of allowance is mailed.

MIPLA does not object to this proposal.


20. Reevaluating the Disclosure Document Program

The PTO is seeking public comment as to the value of the Disclosure Document

Program, presumably in an effort to see if that program should be eliminated

altogether. The PTO is specifically asking for feedback as to any benefits

the program provides, and particularly whether it meets any needs not

addressed by the Provisional application practice and whether or not there

have been any instances where an inventor believed a Disclosure Document

provided more benefits, such as patent protection, that it actually does.

MIPLA encourages elimination of the disclosure document program. First, the

program offers no real value to patent applicants. The advent of the

provisional patent application allows applicants to potentially secure

priority dates at a reasonable fee and eliminates any real need for the

disclosure document program. Second, the disclosure document program

presents a danger to the public lacking full information on the purpose and

benefits of the program. Some applicants believe they are getting some sort

of patent protection by submitting documents pursuant to this program when

in fact they only help secure a conception date. Also, the danger exists

that an applicant will assume that filing under the disclosure document

program avoids forfeiture of patent rights under section 102(b) or

forfeiture of foreign patent rights under the "absolute novelty"

requirement. In reality, filing of disclosure documents does nothing to

avoid patent barring activities. The disclosure document program is both

unnecessary and dangerous and should therefore be eliminated.

MIPLA provides the following answers to the questions posed in this


1) No.

2) No.

3) No.

4) No.

5) None.

6) Only anecdotal.


21. Creating a PTO review service for applicant­created forms

MIPLA supports the creation of a PTO service for review of

applicant­created forms, for a fee. This service might be expanded, for

example, to approve of computer formats for submission of materials

contemplated in #8 above.





<<Summary of MIPLA Comments on ANPR by PTO.doc>> <<MIPLA Comments December

4 submitted to PTO.doc>>

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