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These are comments on the Advance Notice of Proposed Rulemaking dated

October 5, 1998. They are submitted on behalf of:

Renishaw plc

New Mills


Gloucestershire GL12 8JR

United Kingdom

Tel: +44 1453 524524

Fax: +44 1453 524901

Any queries may be addressed to J T Jackson.

Email: jackson_tim/

Renishaw operates worldwide. Its US operations are handled by a US

subsidiary, Renishaw Inc of Schaumburg, Illinois. It has over 200 US

granted patents and pending applications.





We agree with the need to solve the problems and burdens caused by the

duty of disclosure, but do not believe that the PTO proposals will

have the desired result.




The PTO should be aware that practice under Rule 56, as it has

developed over the years, causes major problems not only for

Examiners, but also for applicants and their representatives. Indeed,

the current practice of filing voluminous Information Disclosure

Statements stems directly from applicants' attempts to cope with those


We refer to the "Background" section of the PTO discussion of the rule

change in the Federal Register. This states correctly that applicants

dump large quantities of prior art on Examiners because they are

afraid of being accused of violating the duty of disclosure under Rule


It is a regrettable fact that, if an applicant makes a judgement that

a given document is not material and need not be disclosed to the

Examiner, then during litigation opposing counsel will almost

inevitably argue to the contrary. Furthermore, whilst the applicant's

judgement may have been made in good faith, opposing counsel will

argue that it was a deliberate attempt to conceal information from the


For exactly the same reason, applicants are afraid to give Examiners

meaningful pointers as to which of several cited documents are the

most relevant, or which are the most relevant features in any given

document. During litigation, opposing counsel will always be ready to

argue that some other document or feature should have been pointed

out, and that the applicant deliberately misled the Examiner.

Given the uncertainties of litigation, nobody can be confident that

such arguments will fail. Merely ensuring that one always reviews

documents diligently, and always behaves in good faith, does not make

the problem go away. Even if the arguments do fail, the cost and

stress of countering them cannot be underestimated.

Thus, at present the only solution is to give the Examiner all the

documents, and leave him to make his own judgements about them.

The differing viewpoints of applicants and the PTO are apparent from

the third sentence of the "Background" section of the PTO's

discussion. The PTO equates a "questionable" citation with one which

is "clearly not material", and which should not be cited. To an

applicant, however, if a citation is "questionable", this means that

its materiality may subsequently be questioned. So may the

applicant's motives if he withholds it. It is therefore essential to

cite it.

It is important to understand -- contrary to the view expressed in the

PTO discussion -- that most applicants do not dump documents on

Examiners because they are too lazy to review them and weed out those

which are "questionable". Someone in the applicant's organisation

will certainly have reviewed them, and formed an opinion as to their

relevance. For example, the documents may be the results of a search

performed by the applicant. It would negate the purpose of the search

not to review the results. But for the reasons just discussed, it is

too dangerous to proceed in a manner which would allow the Examiner to

benefit from that review.

Consider what happens in such a case where there is a corresponding

application in a foreign patent office, with no duty of disclosure. If

one of the documents reviewed from the search were more relevant than

art cited by the foreign Examiner, the applicant would most likely

file a copy of it, and explain its relevance. That is in the

applicant's own interest, because it strengthens the resulting patent.

Even an applicant who does not do this would be foolish if he did not

make appropriate amendments to ensure that his claims were valid.

The foreign application therefore benefits from the applicant's review

of the search results. Either the most relevant art is brought to the

foreign Examiner's attention, or at least voluntary amendments are

made. And there is no need to send the Examiner "questionable"


But fear of Rule 56 causes the same applicant to burden the US PTO

with all the documents of which he is aware. This is done to prevent

the risk that the US Examiner, or opposing counsel during litigation,

may disagree with the applicant's view that a given document is

questionable. As a result, the US Examiner receives so many documents

that he is unable to conduct the high quality examination that Rule 56

seeks to promote.

It is thus ironic that Rule 56 often has exactly the opposite of its

intended effect.




The PTO proposals acknowledge that fear of Rule 56 is the root cause

of the problem, but they then do nothing to address it. By tinkering

with Rule 98, the proposals attempt to treat the symptoms of the

disease instead of the cause. Only changes to Rule 56 itself can

solve the problem.

The PTO proposals are therefore doomed to failure, no matter how

reasonable they might appear on the surface. The amended rules might

prevent the occasional case in which 500 or 1000 references are cited,

but surely these are rare. They will do little for the much more

common case with 30 or 40 references. We suspect it is these which

really take up most of an Examiner's time.

Under the PTO's proposals, applicants will still be afraid, so they

will still seek to have Examiners consider large quantities of prior


They will also now have an extra fear -- that what they say in the

proposed descriptions of the importance of each document after the

tenth will be used in an accusation (however baseless) that they

misled the Examiner. This introduction of extra fear seems a strange

way to solve a problem which the PTO acknowledges is caused by fear.

It is unacceptable to try to solve the PTO's problem by making the

applicant's problem worse.

This extra fear will have consequences when applicants draft their

descriptions of the importance of each citation after the tenth.

Descriptions are likely be filed which give the Examiner as little

guidance as possible, consistent with saying enough to ensure that the

Examiner is obliged to consider the reference. It is not difficult to

imagine a one-line description such as "Reference A shows numerous

features of the claims, including for example feature X". This still

leaves the Examiner with a lot of work to find feature X in the

reference, and to determine what else is of relevance.

Neither will the requirement that each such description be unique do

much to reduce the citation of cumulative references. Since nearly

all references are unique, a skilled practitioner will probably have

little difficulty drafting a unique description of the type

exemplified above, which still leaves the Examiner with a lot of work.

This remains true even though the PTO plans to require a description

which is unique relative to the claims.

We do not suggest that practitioners will like the idea of frustrating

the good intentions behind the rule change. But while the fear of

Rule 56 remains, that is what many will feel constrained to do.

A further consideration should be the added cost to applicants.

Practitioners will clearly charge for their skill in drafting

descriptions which ensure all references are considered, while saying

as little as possible to prevent allegations that the Examiner was




Any viable solution must address the applicant's problems and his

fears, as well as those of the PTO.

We believe strongly that the applicant has a common interest with the

PTO, in wanting to ensure that his patent will be valid in reality,

and not merely by statutory presumption. As already happens in other

countries, a climate must be created in which an applicant will feel

able to co-operate helpfully with the Examiner to achieve this common

goal, citing and explaining material documents, whilst withholding the

immaterial, the questionable and the merely cumulative without fear of

the consequences.

Since we believe that the duty of disclosure under Rule 56 is the

primary barrier to such a climate of co-operation, our preference

would be for the rule and the duty to be simply abolished.

We recognise, however, that it may be unrealistic to expect this. It

may not even be in the PTO's power to abolish the duty of disclosure,

since even without Rule 56 the courts could hold that there was an

inherent duty.

A revision of Rule 56 is therefore needed. This should be drafted to

send an extremely clear message to the courts and to trial attorneys

that the PTO views the duty of disclosure to be strictly limited. It

should be borne in mind, however, that Rule 56(b) already attempts to

do this, and has clearly failed -- patentees continue to be the

subject of accusations of failure to comply, and applicants are afraid

as a result.

The revised rule should therefore set out a different standard for the

documents which an applicant is obliged to disclose. The standard

should be clearly understandable, in that it should leave no room for

subsequent argument in court about whether any given document falls

within the rule. It follows that the standard should not involve

subjective assessments of materiality.

The standard could, amongst other things, require the filing of

documents found in corresponding foreign applications, since

compliance with this would be easy to assess.

The revised rule could encourage applicants to submit other documents

which they believe to be material, as long as it makes clear that this

is voluntary and not part of any duty. It could point out that such

submissions would strengthen the statutory presumption of validity.

It might be argued that such a relaxation in the duty of disclosure

would give free rein to the unscrupulous to obtain patents which they

know ought not to be granted. But the situation would be no worse

than in other countries, and the present form of the duty does not

result in the average US patent being any more valid than, say, its

European counterpart.

In any case, the unscrupulous could be penalised as follows. Where a

patentee requests reissue or re-examination in view of certain

references, the PTO rules could require him to declare when the

references, and their materiality, first came to his attention. Re-

examination could then be refused if the references could have been

brought to the Examiner's attention during prosecution of the original

application. In this way, applicants will be encouraged to file

references that really are material during the original prosecution,

knowing that otherwise any resulting invalidity cannot be cured later.

If the above suggestions are adopted, there would be little need for

the detailed regulations in Rules 97 and 98 and they could be dropped

or made much simpler. These rules represent the PTO's attempt to cope

with the excessive information disclosure induced by the present Rule





The requirement that the registered practitioner should personally

review all submitted citations will clearly increase the cost to the

applicant. This will be unreasonable in many cases, especially when

there is no requirement for the practitioner to prepare a description

of the citation's importance. If, as will often happen, the Examiner

does not subsequently rely on the citation, the extra cost will be


In the case of a citation made by a foreign patent office, such a

review would serve no purpose. Whatever the outcome of the review,

the prudent practitioner will submit the reference anyway, because the

citation has already been deemed material by a foreign Examiner.

In other cases, a review will already have been undertaken by the

applicant himself, or by the applicant's foreign attorney or agent,

prior to transmission to the US practitioner. A statement to that

effect should suffice, particularly since the applicant or foreign

attorney may well be in a better position than the US practitioner to

assess the reference.

For example, it is common for a foreign attorney to send citations to

a US practitioner together with the instructions for the filing of a

new application. The US practitioner is then in no position to assess

the relevance of the citations, since practitioners do not normally

conduct more than a cursory review of the application itself at that


Furthermore, if the citation is in a foreign language with which the

US practitioner is not familiar, it is impossible for him to review it

in any detail. All he can do is rely on the foreign search report, or

on an explanation prepared by his foreign attorney client for the

purposes of Rule 98(a)(3).

There are two further improvements which could be made to Rules 56 and

97 respectively, which would partially ease the burden on both the PTO

and on applicants.

In rule 56 at present, applicants are required to disclose information

which is material to all pending claims, including all sub-claims. If

there are 20 sub-claims, it is easy to see how 20 prior art documents

could be material to their patentability, and must be submitted. Yet

if the Examiner finds that the independent claims are patentable,

there is no need to consider these sub-claims further.

We therefore suggest that Rule 56 should only require information to

be submitted when it becomes relevant to one or more independent


We appreciate that this may result in an Examiner indicating that a

sub-claim would be patentable if re-written in independent form, only

to withdraw the indication when the relevant prior art is filed.

However, this would be a small inconvenience compared to the present

need for the applicant to file (and for the Examiner to sift through)

a mountain of prior art which may never become relevant. The

applicant would anyway know of the possible objection, since he knows

of the relevance of the prior art.

The improvement in Rule 97 relates to the certificate under sub-rule

(e)(2). Except in the case of citations made by a foreign patent

office, this requires the applicant to declare that cited references

were not known to any relevant individual more than three months

previously. The alternative is to pay a $240 fee.

If taken literally, there is a conflict between this certificate and

Rule 56(a), which states: "There is no duty to submit information

which is not material to the patentability of any existing claim". A

document may have been known for more than three months, but may only

become material because of an amendment during prosecution (e.g. a

feature from the description may be inserted into the main claim).

It has been suggested that the wording of the certificate might not

need to be taken literally in such circumstances. However, it tends

to reinforce an applicant's perception that he must file prior art

references as soon as they come to his attention, even if not material

to the current claims. Otherwise, he might later be faced with the

choice of paying $240 or risking a charge of making a false

declaration. A change to the wording of the certificate would make

the position clear, e.g. by allowing for a three month period after

the making of the amendment.





In principle, we are in favour of streamlining the manner in which

amendments are made.

However, the proposed change to Rule 52, requiring that all paragraphs

in the specification be numbered, is a retrograde step.

It should be recalled that Rule 52(b) has in the past been amended to

ensure that, if an applicant conforms to the formal requirements of

the PCT, then he will automatically comply with the requirements of

the USPTO. Many other countries have similarly brought their

requirements into line with the PCT.

Many applicants rely on this. When preparing an application for

simultaneous filing in several countries, it is a great convenience to

be able to work to just one set of formal standards.

Paragraph numbering, however, has no place in the PCT rules, nor in

the rules of any other country. The requirement would run counter to

the very desirable trend for international harmonisation.

Indeed, if the PTO enforces this change in connection with the

national stage of an application originating via the PCT, then the

result will be more than just inconvenient. It will violate the USA's

obligations under PCT Article 27(1), which prohibits formal

requirements additional to those in the PCT.

As an alternative, we suggest either that the US use a system of

replacement pages, as in Europe, or that paragraphs to be replaced are

referred to by page and line number (e.g. "Please replace the

paragraph from page 7 line 27 through page 8 line 3 with the


We note the objection to the above suggestions, that they will not be

compatible in the future with entirely electronic application files

which do not have consistent page and line numbers.

However, many other changes to the rules and practice will become

necessary when electronic application files are introduced. It would

be better to make a comprehensive package of changes at that time,

rather than to make a piecemeal change now. The changes adopted for

electronic files need not alter the amendment procedure adopted now

for paper applications, just as they will not be applicable to many

other aspects of the continued handling of paper files.

In any case, we hope that the electronic file system -- including the

procedure for making amendments -- will be agreed internationally,

particularly with the European Patent Office.


J T Jackson

Company Patent Agent

Renishaw plc

United States Patent and Trademark Office
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