Skip over navigation

letter to the USPTO commenting on rule changes

December 4, 1998


Assistant Commissioner for Patents

Box Comments - Patents

Washington, D.C. 20231



Published October 27, 1998 in 1215 O.G. 88 et seq.

After careful review of the proposed changes to the rules governing the prosecution and issuance of Letters Patent for the United States, we respectfully request that the U.S. Patent and Trademark Office (U.S.P.T.O.) reconsider such proposed rule changes in view of the following comments. We recognize the duty of the U.S.P.T.O. to thoroughly and expeditiously process and examine patent applications, and in recognizing the burden on the U.S.P.T.O. in view of the numerous applications for Letters Patent and their associated papers, we believe that patentees would be adversely affected by the proposed changes.


The practice of law at BROWN RAYSMAN MILLSTEIN STEINER & FELDER LLP is primarily in the field of research, development, and transactions in many areas of technology. Having over one hundred attorneys, our firm continually addresses the legal needs of small, medium, and large companies as well as individual concerns and educational institutions. In addition to our patent practice in prosecuting patent applications before the U.S.P.T.O., our firm is extensively involved in patent litigation and licensing as well as other transactions bearing on patents and intellectual property rights. Accordingly, our firm and our clients are well aware of the value of patents and of the need for valid and well-examined patents to be issued by the U.S.P.T.O.

We address the U.S.P.T.O.'s proposed change no. 4, no. 9, and no. 10 in detail, and submit alternative rule changes to address the concerns of the U.S.P.T.O.



The U.S.P.T.O. proposes to limit the number of claims in an application to a maximum of forty, and to limit the number of independent claims to six. The penalty for submitting an excess number of claims is withdrawal from consideration of such excess claims.

In asserting that this rule change will have a negligible impact on over 95 % of all applications, the U.S.P.T.O. contradicts the necessity for such a rule change. On the contrary, since the overall burden on the U.S.P.T.O. regarding the number of claims is negligible, on average, we question whether it is fair to limit the majority of applicants due to the excesses of a minority. We submit that it may be more reasonable for the U.S.P.T.O. to be flexible in applying additional resources where they are required; that is, to assign additional examiners and trainees to such applications having such excessive numbers of claims.

The primary objection to this rule is that it is inflexible; that is, such excess claims are automatically withdrawn. Such a harsh penalty has several disadvantages. First, the withdrawal of claims does not distinguish the claims for a particularly fruitful and pioneering invention, which may merit diverse claims, from the slavish claims drafted by rote repetition and variation of language for a less innovative development. In the former, a pioneering invention may be applicable to many different fields, yet each field may have its own terminology requiring the customization of a claim and the claim language to its applicable field. In the latter, a practitioner can merely copy a single claim into a flourish of clones with little distinction except for form and minor word variations.

The second disadvantage is that continuation patents would be encouraged under the proposed rule. The U.S.P.T.O. suggests that "any number of continuation applications" may be filed to preserve the patentee's ability to claim the invention with over forty claims, as ten applications each having forty claims are suggested to be more acceptable to the U.S.P.T.O. than a single application with four hundred claims.

However, this encourages continuation patents, since the fees for continuations under the proposed rule would be unchanged, and the proposed rule does not deter such continuations. Further, continuation practice under the proposed rule would not reduce the burdens on the examiner, since the withdrawn claims under the proposed rule would still require a separate search in any continuation, which may be counterproductive if performed from scratch at a later date, and even by a different examiner, separate from the context of the parent application. The examiner may then needlessly repeat a search of common subject matter in the continuation which could have been handled at the same time in the parent. Also, the examiner, the U.S.P.T.O. services, and the practitioner would be required to coordinate and cross-reference multiple applications as well as terminal disclaimers. In view of the other proposed rules as to the filing of documents in the U.S.P.T.O., it follows that the U.S.P.T.O. will be further burdened by the proposed claim limitation rule to track even more filed applications and related papers due to continuations as opposed to a single parent application.

In addition, the proposed rule would effectively increase fees to the practitioner through continuations. It follows that the financial costs to all practitioners and business would increase due to the proposed rule. We believe that these costs to patentees and businesses would outweigh the costs of assigning more U.S.P.T.O. staff to handle the minority of applications having excessive claims.

Therefore, while the goal of the proposed rule is desirable, the overall effects of the proposed rule on innovative claiming and continuation practice are detrimental.

If a rule similar to the proposed rule must be implemented, we propose, in the alternative, that the number of claims as well as independent claims be unlimited, but escalating surcharges be added in addition to the current fees for excessive claims. In particular, we propose a tiered surcharge for the number claims similar to the time-dependent tiered increases in maintenance fees and extension-of-time fees. For example, under this alternative proposed rule, the basic filing fee covers twenty claims and three independent claims without a surcharge, a first surcharge of, for example, $ 250 is charged over the traditional claim fees for between twenty-one and forty claims and between four and six independent claims, an additional surcharge of, for example, $ 400 is charged over the traditional claim fees for between forty-one claims and sixty claims and between seven and nine independent claims, etc.

Such surcharges may also be subject to small-entity reduction as with the filing fees, maintenance fees, and extension fees. With such a tiered system, the first surcharge of

$ 250 should also be less than the basic filing fee, while the second surcharge of $ 400 should, after addition to the first $ 250 surcharge, be near but less than the basic filing fee. Over sixty claims and seven independent claims should have a surcharge higher than the basic filing fee.

The proposed tiered surcharge rule would permit inventors and practitioners to decide whether additional claims are worthwhile. It also is less harsh than full withdrawal of the excessive claims, since the patentee chooses how many claims to file and accepts the fee arrangement. This seems more reasonable and fair to patentees than an unforgiving and automatic withdrawal of claims by the examiner under the proposed U.S.P.T.O. rule.

Continuation practice would also be discouraged under this alternative rule, since the surcharges would be less expensive if paid in the parent application than the basic filing fee of the continuation application. In addition, the need of the U.S.P.T.O. to track multiple continuation applications is also reduced if the patentees retain all claims in one application. Further, the payment of surcharges for additional claims is akin to the European patent practice of charging additional fees for more than ten claims.

Furthermore, this alternative proposed claim rule of surcharges for tiers of claims is more reasonable in addressing the concerns of the U.S.P.T.O.; that is, the surcharges may be used to relieve the fiscal burden on the U.S.P.T.O. to hire more examiners to examine heavily paid-for claims of an unlimited number. New examiners may be hired and trained to assist in handling such fully paid-for claims.




The U.S.P.T.O. proposes limiting the submission of an Information Disclosure Statement (IDS) to "relevant information" by requiring, inter alia , a " unique description of each citation's importance relative to each ... claim" (emphasis added). Exceptions to this rule are "any ten citations" and items in corresponding international applications with search reports.

In proposing this IDS relevance rule, the U.S.P.T.O. correctly describes the actions of some practitioners to err on the side of disclosure by filing volumes of citations. However, the U.S.P.T.O. glosses over the motivation of such practitioners, by suggesting that this is merely to comply with 37 C.F.R. 1.56, 1.97, and 1.98. The U.S.P.T.O. does not mention or consider that the failure or inadequacy in compliance may result in a charge and a determination, during litigation, of inequitable conduct by the patentee which may invalidate the entire patent after the process and expense of examination and issuance. Such concerns are the true motivation which prompts such wholesale citations, since any appearance of withholding information from the examiner may pierce the presumption of validity of the examined and issued patent. It is third parties after issuance, such as the courts and opponents in litigation, who may deem withheld information to be relevant.

Although the patentee is a source of such citations in IDSs, it remains the duty of the examiners to search, find, and apply the most relevant citations. The art which the patentee deems to be the most relevant may be informative to the examiner, but it should not be controlling of the art applied in examining a patentee's application.

Accordingly, the proposed IDS rule of the U.S.P.T.O. has several disadvantages. First, it does not necessarily reduce the volume of submissions, since the requisite uniqueness of the description of each citation to each claim is subjective and relative. The practitioner who sets forth in good faith a specific portion of a citation in a unique description may fail to refer to a different portion of the citation which may be deemed by others in litigation to be more relevant.

Third, the proposed rule is seen to have a chilling effect on practitioners disclosing information, since the proposed rule prohibits cumulative material to ensure such unique descriptions of each citation. Different citations may share many features spanning different features or aspects of the claims, and a practitioner may have difficulty weeding out which particular citations to cite from a group of cumulative citations.

Fourth, in requiring unique descriptions of each citation from the practitioners as well as allowing citations from corresponding international applications with search reports, it is respectfully submitted that the job of the examiner is being performed by others; that is, the practitioner and foreign search authorities, in evaluating the relevance of citations. While the examiner may be burdened under the existing IDS process, the proposed IDS rule appears to excessively relieve the burden on the examiner. We believe that the U.S.P.T.O. should not become a mere registrant of patents as in foreign countries by allowing examiners to accept the judgments of others as to the relevance of citations in an application. It is in our client's interests that the U.S.P.T.O. examiners should thoroughly examine each and every application, claim, and citation of art on their own.

Fifth, practitioners may be encouraged to delay submission of an IDS until the examiner has performed a search and has placed some prior art on record, which eliminates the need for the practitioner to cite the prior art. This delays the examiner's consideration of the art known to all parties involved.

If such a proposed rule must be implemented, we propose an alternative IDS rule imposing fees for every citation over twenty citations, in a manner similar to the fees for claims in an application. No statements of relevance would be required. The small entity deduction should also be implemented. No fees should be charged for citations found and cited by the examiner.

For example, a fee of $ 10 per citation would cost $ 100 if a total of thirty citations are submitted. In this manner, practitioners are encouraged to minimize the number of citations, lest additional charges be incurred. Thus, voluminous submissions are discouraged unless the practitioner truly believes that such citations are of significant importance to pay such submission fees, possibly running into tens of thousands of dollars. We believe that practitioners who frivolously cite every available item will be deterred if the costs run into such high dollar amounts. Alternatively, practitioners may be given the option to waive the fees for the citations upon submission of such unique descriptions for each citation.

From another perspective, the practitioner may pay such fees as a form of long-term insurance, since the citation of art and examination of such art supports the issuance of a valid and well-examined patent.

Our alternative to the proposed IDS rule of the U.S.P.T.O. thus does not foreclose allowing a voluntary description of each citation to be submitted by the practitioner for consideration by the examiner. The alternative proposed IDS rule also avoids the chilling effect in disclosure, since cumulative material may be submitted in case of any uncertainty by the practitioner as to the cumulative nature and the relevance of any citation, with the understanding of the practitioner that such cumulative material would increase the fees incurred.

Since no statement of relevance is required for any citations under our alternative proposed rule, the examiner retains the responsibility to ascertain the relevance of each citation to each claim. The imposition of such citation fees permits the U.S.P.T.O. to hire additional examiners and trainees to assist in processing and evaluating each citation thoroughly for a well-examined patent to issue.




The U.S.P.T.O. proposes to allow examiners to deny consideration of any "unduly burdensome" IDS submission, or any part of an IDS submission, even if such an IDS submission complies with all requirements of 37 C.F.R. 1.98. In support of this proposed IDS denial rule, the U.S.P.T.O. submits a number of examples which would "most likely [be regarded] as unduly burdensome to the examiner". After a determination of such an undue burden, the examiner may delay prosecution on the merits until a corrected IDS is submitted or a time of compliance has expired. An offending citation may also be "removed from the record and discarded". Under this rule, an entire IDS submission and each citation thereof may be withheld from consideration as the examiner and the practitioner communicate over a period of time to remedy the allegedly "burdensome" aspects of the IDS submission.

The proposed rule has several disadvantages, and so we request that the U.S.P.T.O. reconsider and decline to adopt the proposed rule. First, we believe this proposed rule to be vague and indefinite. As demonstrated by the above quotation from the U.S.P.T.O., the term "unduly burdensome" is inherently vague and indefinite, since even the examples set forth by the U.S.P.T.O. are considered to be "most likely" unduly burdensome. Clearly, since there is no standards or guidelines provided which would govern a definitive determination of a

"burdensome" or even an "unduly burdensome" submission, the exercise of the proposed rule depends solely on the subjective judgment of the examiner, despite full compliance by the practitioner with 37 C.F.R. 1.98, as noted by the U.S.P.T.O.

Since the U.S.P.T.O. requires information submissions and imposes on every practitioner a duty to disclose such information, we believe that any IDS submission meeting all applicable rules should be entered and considered by the examiner, regardless of the subjective judgment of the examiner. For example, many U.S. patents are typically over thirty pages, including numerous sheets of drawings, and many paragraphs of description, often in small type and fonts. In addition, jumbo files, computer source code, and microfiches are acceptable forms of disclosure in issued patents which may be cited to comply with 37 C.F.R. 1.98. Yet, we believe that the entire patent must be submitted as a whole in an IDS submission, since a partial citation may evoke charges after issuance of inequitable conduct.

Second, the filing of a partial citation to remedy a citation deemed unduly burdensome may take the partial citation out of context of the entire citation, and thus the examiner would have less information, not more information, for the purpose of examining the application. Despite any bulk or overload of information, such compendia and other documents may be of additional assistance to the examiner as to the background, the terminology, and alternative subject matter which may bear on the examination of a subject application. Since it is the duty of the examiner to utilize such information, the selective citation by the practitioner, even in good faith, deprives the examiner of potentially valuable resources to examine the subject application.

The goal of relieving the burden on examiners and expediting prosecution under the proposed rule may thus inadvertently result in the issuance of patents with a less comprehensive examination.

Third, it is unreasonable to purge the U.S.P.T.O. records by discarding citations if the subjectively-judged unduly burdensome IDS has not been corrected. Although it is prudent for a practitioner to send a copy of a citation to the examiner, the practitioner may in fact send original citations; for example, publications having color or high-resolution drawings, in order for the examiner to more fully appreciate the citation. Such publications may be particularly expensive to replace. However, the proposed rule would allow the examiner to discard such citations without returning them, even for a fee, to the practitioner, and without retaining the citation in the U.S.P.T.O. technical libraries or group art unit libraries. The practitioner should at least be given the opportunity to have the citation returned if not considered.

Fourth, the proposed rule allows for a delay in examination of the application on the merits in view of the citations. This is contrary to the stated purpose of the U.S.P.T.O. to expedite prosecution and to relieve the burdens on the examination process. Under the proposed rule, any dispute or need to correct an IDS with a single citation which allegedly is unduly burdensome may unreasonably delay issuance. In addition to thwarting the business goals of the U.S.P.T.O., such delays also reduce the term of the issued patent due to the twenty year term from filing under GATT. Practitioners then face the no-win scenario of delaying issuance and reducing the term, or complying with the examiner's dictates under a vague and arbitrary standard, or else removing the citation completely and opening the door to charges of inequitable conduct in future litigation.

In view of the vagueness of the proposed rule to remove citations from consideration, we request that the U.S.P.T.O. reject this proposed rule.

If such a proposed rule must be implemented, in the alternative we suggest that the U.S.P.T.O. draft more definitive and objective standards on the citation of documents. Once a practitioner meets such standards, the examiner must consider the entire document. We propose the following objective standards: all U.S. patents would be considered without modification, but U.S. patents with microfiches may be submitted without the microfiche, and a signed statement is to accompany the cited U.S. patent stating that the U.S. patent is submitted without the microfiche, as a notice to the examiner. Also, U.S. patents after a specific date, such as 1976, need not be filed in paper form but instead may be cited in the PTO-1449 form and/or only the title page of the U.S. patent may be submitted without the remainder of the patent. The specific date and the justification for such submissions lies in the ability of the examiners to call up most patents on the APS computer system of the U.S.P.T.O. for individual word and topic searching throughout the document, or to obtain the microfiches in the U.S.P.T.O. records.

Accordingly, we request that the U.S.P.T.O. consider and adopt more objective standards for citation submission in lieu of the proposed rule allowing subjective removal of citations from consideration by the examiner.


We support the efforts of the U.S.P.T.O. to improve and expedite the patenting process. However, after reviewing the proposed rules in view of the burden on the U.S.P.T.O. as well as the diverse interests of patent applicants for valid and well-examined Letters Patent to be issued, we respectfully submit that the proposed rules 4, 9, and 10 noted above would have detrimental effects upon the patenting process and upon patent applicants. We submit the above alternative proposed rules and request that such alternatives be adopted, in lieu of the U.S.P.T.O. proposed rules, in order to increase the ability of the U.S.P.T.O. to manage and process patent applications, for example, by hiring new examiners and by reducing the volume of citations, and so to alleviate the burden on examiners and to expedite the issuance of valid and well-examined Letters Patent.

Respectfully Submitted,




United States Patent and Trademark Office
This page is owned by Office of Patent Legal Administration.
Last Modified: 7/4/2009 4:44:45 PM