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Box Comments–Patents

Assistant Commissioner for Patents

Washington, D.C. 20231

Attention: Hiram H. Bernstein

Subject: Opposition to certain portions of the 10/5/98 Proposed

  • Changes to Rule 98 under Topic No. 9 ("Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98)") of the 10/5/98 Advance Notice of Proposed Rulemaking
  • Dear Sir:

    The undersigned respectfully opposes the 10/5/98 proposed amendment to 35 CFR 1.98 that would require, subject to certain limited exceptions, each citation submitted in an information disclosure statement to be uniquely described relative to the claimed invention(s).

    The undersigned opposes the proposed change not because it will shift work from Examiners to applicants, but because it will likely have a fundamental detrimental effect on substantive patent rights.

    Recent cases of the Court of Appeals for the Federal Circuit show an increasing trend to narrow patents through claim interpretation and/or the Doctrine of Equivalents, based on statements made during PTO prosecution in the absence of claim amendments. See, e.g., Texas Instruments, Inc. v. International Trade Comm’n, 988 F.2d 1165 (Fed. Cir. 1993); Cole v. Kimberly-Clark Corp., 102 F.3d 524 (Fed. Cir. 1996). Furthermore, the Court held earlier this year that the recapture doctrine can foreclose a broadening reissue based on attorney argument alone without any substantive claim amendment. Hester Industries, Inc. v. Stein Inc., 142 F.3d 1472 (Fed. Cir. 1998).

    If the PTO’s proposed rule change is enacted, each and every "unique description" an applicant submits to obtain consideration of a prior art citation may be available as a separate "file wrapper estoppel" and/or to trigger the recapture doctrine preventing broadening reissue. Furthermore, since the PTO would require the applicant to compare the citation with the claimed subject matter in formulating such "unique descriptions", these IDS statements may be available and used to interpret the claims.

    Thus, while the PTO’s stated purpose is to shift from the Examiner to the applicant, the burden of separating wheat from chaff, the result of the proposed change will likely be to create an extensive prosecution history that could fundamentally affect the scope of US patent rights and the ability to seek broadening reissue.

    The PTO states that one of its goals is to give applicants an incentive to reduce the number of IDS citations. However, as the PTO correctly points out in its Advance Notice, the risk of "inequitable conduct" accusations essentially forces many applicants to submit large numbers of citations in certain cases or run the risk of being accused of committing a fraud on the Patent Office. Thus, it is unlikely that the PTO’s stated goal of reducing the number of IDS citations can be achieved in the current legal climate.

    Rather, in such cases, the PTO’s proposed rule change would present the applicant with a Hobson’s Choice of either uniquely describing a given citation (and thereby run the risk of being accused of mischaracterizing it) or deciding not to submit it (and run the risk that he/she may be accused of violating the duty of candor by withholding it).

    The PTO has previously dealt with this issues before and reached an opposite conclusion. Although not acknowledged in the Advance Notice, the PTO’s proposed change appears to be a direct reversal of its amendment of Rule 98 on 1/17/92 to delete the former requirement of providing "a concise statement of relevance" with respect to each item cited in an IDS. See 57 Fed. Reg. 2021. Deletion of the former requirement from Rule 98 was appropriate and in harmony with the concurrent amendment to Rule 56. No substantive legal reason justifies the PTO reversing itself now and imposing a requirement that is in many respects more stringent than the former "concise statement of relevance" requirement.

    There may be ways to assist the Examiner in reviewing voluminous citation submissions that do not require applicants to provide substantive "unique descriptions" on the record. For example, one possibility is to encourage Examiners to telephone the applicant and request a interview for the purpose of discussing the relevance of the citations or asking questions about them. Another possibility is to impose additional requirements on the form of the submission such that the Examiner can review it as efficiently as he/she searches voluminous PTO subclasses Examiners routinely use for their patentability searches. If electronic searching capabilities would make the process more convenient and less time intensive, perhaps applicants could be requested to provide electronic versions of at least US patent citations.

    The undersigned, who is filing this submission on his own behalf and speaks for no one in this regard other than himself, respectfully urges the PTO not to enact the proposed "unique description" requirement for IDS citations.

  • Respectfully submitted,
  • Robert W. Faris

    Reg. No. 31,352

    1100 North Glebe Road

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    Last Modified: 7/4/2009 4:51:18 PM