Comments to Proposed Regulation Changes
FENSTER & COMPANY
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November 15, 1998
Assistant Commissioner of Patents
Washington, DC 20231
Attn.: Hiram Bernstein
Re: Comments to Proposed Rule Changes
I welcome the opportunity to comment on the proposed changes in the rules at this early stage in the rule making process. I also welcome the attempt by the PTO to improve its service and efficiency. However, I fear that some of the changes suggested in the notice would be self defeating and/or place a greater burden on the applicant than they would relieve from the patent office. Some of the would actually add to the burden of the Patent Office.
In the following discussion I am limiting my comments to those items about which I feel strongly. With respect to the other changes, I do not have very strong feelings.
1) New Rules Regarding Declarations.
On balance, allowing very late submission of declarations is not a good idea. I believe that overall it will result in very many cases in which no declaration can be submitted, because the inventor is unavailable or is not willing to sign, since he no longer works for the owner of the invention. Furthermore, since peoples' memories and interest dim with time, there would be little chance of a real review of the application and claims by the inventors or in making a proper determination of inventorship. For those few cases where the inventor is not available or is unwilling to sign at the time of filing, adequate remedies exist.
However, if such late filings are allowed, then requiring that they be filed before the notice of allowance is not a very good idea, since it is only after the claims are allowed that the inventors in the patent itself can be determined with absolute certainty. To require filing a continuation to change inventors at that time would be self defeating.
2) Limiting the number of claims. I very strongly disagree with this proposed change. Some of my reasons are:
a) Many of the patents with large numbers of claims are breakthrough inventions, namely inventions which can be broadly claimed, but which also contain substantial patentable subject matter in specific features of the invention. In addition such inventions almost always have many related aspects each of which define the invention in a different, somewhat independent, way. The proposed rule would make protection of such inventions very complicated and expensive and, in fact would lead to poorer examination, since the examiner would not be aware of all of the aspects, which the applicant believes to be patentable, when examining only an individual one of them.
b) Prosecution would be made unreasonably complicated. At present, if an examiner rejects an independent claim and objects to several dependent claims as being dependent from an unallowable claim, the applicant may make each of the dependent claims independent and quickly move to allowance. The new rule would make this impossible, with no benefit to the examiner or the patent office (except for his getting extra points for a divisional or continuation and the patent office getting extra fees). The requirement for filing a new application would add tremendous expense to what should be a simple process.
c) The number of claims are already self limiting. 500 extra claims cost $5000 for small entities and $10,000 for large entities, not to mention the costs for preparing such claim sets. Even higher costs are levied for excess independent claims. I am convinced that while you do get such large sets, most of them are indeed justified by the nature of the invention. It is hard to consider having a large number of claims as an abuse, considering the amounts paid for the privilege. Furthermore, if European practice (multiple dependencies and multiple-multiple dependencies for the price of one claim) were adopted, the entire claim structures (and the present problems of examination of large numbers of claims) would be greatly reduced.
d) The envisioned improvements in efficiency and cost effectiveness are not real. In fact, it is hardly cheaper (in fees) to file two case with 3 independent claims and 20 total claims each than it is to file one application with 6 independent claims and 40 total claims. The extra cost to the PTO and to the applicant in filing additional applications is, however, enormous. Thus, we have more cost to the applicant, not much extra money for the patent office and enormous extra costs to the patent office. The proposed changes are hard to justify on the basis of efficiency and resource allocation.
e) The proposed remedies will not result in a reduction in burden on the PTO. On the contrary, the filing of additional applications will result in added costs and added burden on the patent office. Part of the problem is that the fees paid for such applications are not reflected in the workload determination of the Examiner or even of the office. If an examiner were given points based on the number of claims in an application or the fees paid (for example) then the apparent problem would not seem quite so serious to the Examiner and the justification for the allocation of resources would be clearer.
e) Remedies already exist for dealing with those few cases of abuse. The Examiner may require restriction of the claims, which is very common when many independent claims are submitted. When appropriate the Examiner may require a reduction in the number of claims in accordance with the statute, if the number of claims is excessive. This later remedy is seldom used, probably because of the reason given in c) above. In fact, while some cases as filed have many claims, many fewer patents as issued have such large numbers of claims. In fact, under the present system the patent office gets paid for many claims which never make it past the restriction process. This is a net income gain for the Patent Office.
In summary, the suggested rule change is counterproductive to the goals of the patent office and is a waste of time and money for both the applicant and patent office.
3) Alternatives to appeal. I find the alternatives proposed to be very interesting and in principle, I am very much in favor of some sort of quality review before a full blown appeal is undertaken. However, I wonder why they are not part of a good quality control program that the patent office should be following by itself and why the applicant should be paying for them. However, over and above this philosophical problem, I have some additional practical misgivings with the proposed changes:
a) The limited pre-brief review should also consider the arguments presented in the communications with the Examiner. Limiting the review to the question of whether the examiner has made a prima facie case will probably have very little interest to most practitioners.
b) The question always arises in such non-binding reviews is whether all the applicant would get for his money is just two examiners arguments rather than one. When the second examiner "confers" with the first examiner, especially if they are in the same group, the result may just be a stronger restatement of the existing rejection, for example in the response to the appeal brief. Why should an applicant pay for that?
c) Since this non-binding review counts against the 20 year period of the patent, there would be great reluctance to use it unless it were very fast and the benefits were evident. What has been proposed does not appear to give the requisite benefits.
In summary, I agree with the premise of the suggested changes that too many cases go to appeal unnecessarily. However, I believe that this is a patent office problem to be solved by the patent office by improving its quality control. I would, however, be in favor of a review process which is binding on the examiner, based on a review of the record after filing the notice of appeal and/or on the appeal brief.
4) Drawings requirements. It seems to me that all problems mentioned would be solved if there were an absolute requirement to file the drawings with or before the issue fee. No real purpose is served by a requirement that they be filed any earlier.
5) Replacement of paragraphs and claims. I heartily agree with the suggestion. Furthermore, I believe that there is a distinct advantage to both the applicant and the examiner to requiring that a clean copy of all the claims be required as an appendix of any response or other paper in which any amendments are made. This would make it easier for the examiner and the attorney to review all the claims and to catch §112 problems, especially those that involve cross-claim antecedents. However, I believe that paragraph replacement is more problematic, for example for tables and the like. Also it would require editing out the paragraph numbers when printing the patent. Finally, inserting paragraph numbers and amending them may be problematical. I would suggest a requirement that the lines in a specification be numbered and that only lines be replaced.
6) Changes in IDS practice. The present problems described in the notice are the result of the harsh penalties for non-disclosure or mis-disclosure of information. Thus, the requirements of the proposal, while they seem simple and logical enough do not take into account a number of factors listed below. The current IDS problem is of the PTO's own making. The USPTO is almost the only patent authority which requires that art known to the applicant be submitted. In almost all other offices, including the EPO and Japan, which issue patents of excellent quality, the Examiner is responsible for finding the art. It is my opinion that the requirement under rule 56 actually results in poorer searches by the examiner who is, in some degree biased by the art which is submitted and which is almost never cited against the claims.
a) When a prior art reference is brought to an applicant's or patentee's attention as a result of litigation or pre-litigation maneuvers, the requirement that that the applicant commit himself is very onerous and destructive of the applicant's rights and his ability to defend his patent in litigation. For example, when a defendant or other accused infringer argues that claims are invalid, there is no better way to bring these arguments and counter arguments to the attention of the Examiner than by giving him the filings of both sides. It would only fair however, to require that the Examiner be given some guidance as to where in the papers he can find the arguments of both sides.
b) When a patent is cited by an examiner in a related application, the applicant is in a similar position of being asked to give one side of the argument and then suffer the consequences of not having given the previous Examiner's side. To protect the validity of the patent, the applicant will have to explain the examiner's side as well, with which he obviously disagrees. Since a reference may be cited without explanation if it is cited in a foreign application, why can't it be cited without explanation, if it is cited in a US application.
c) The proposal requires that the "relevance" of the reference be described. The courts and many patent attorneys are having enough problems with the definition of a "material" reference. The patent office is now adding a new term to the lexicon of litigation matters. We can expect that enactment of the new rule will result in endless litigation and arguments that the "relevance" of the reference was not properly described.
d) Here again, the present practice does have built in safeguards. In my experience, when an examiner has been given worthless art to review, he can, and sometimes does, refuse to review it without some winnowing by the applicant. Furthermore, the hiding of relevant art by submission of numerous irrelevant references is frowned on by the courts and is almost as dangerous as not submitting the art itself. This acts to make the abuse relatively rare.
e) The requirement that the submitting attorney certify that the art submitted was reviewed is reasonable. If the Examiner is required to review the art, so should the attorney. However, a requirement that the attorney find the art relevant, whatever that means legally, is one that should be avoided. The very requirement to provide "material" art already is a very significant cost factor in subsequent litigation, there is no need to add to the problem.
f) Rather than the proposed limitations, the Patent Office may want to consider an additional fee for excess references.
g) If the patent office insists on some sort of restriction on IDSs to avoid abuses, then at the least the patent office should broaden the "exempt" category to include art cited by the examiner in related US applications; art cited by a litigant in a suit; art cited by a accused infringer or art cited by an opposer in an opposition overseas. In addition, at most the applicant should only be required to point the Examiner to what the applicant considers to be the relevant passages in the reference, much as a foreign patent office does in a search report. The rule should state that this reference to portions of the reference is for guidance only and that the Examiner has the ultimate responsibility to review the entire document.
7) I very much disagree with the proposed changes in restriction practice. Of all the changes proposed, this one seems to have the least real benefit. At present in a great number of cases restriction is taken care of with a telephone call. Secondly, the Examiner is often incorrect in his assessment and changes his mind when arguments are presented. If the search and examination is made with the first action, the examiner will be especially reluctant to change his mind since doing so will not only result in an additional search (rather than just a search in the same art or in one or two additional classes for related inventions) and will also result in an additional office action. Restriction practice is already heavily weighted against the applicant.
Furthermore, if the Examiner does not accept a traverse of the restriction requirement, and he has a strong motivation not to do so, this would only become known in a final office action or in a notice of allowance. Overcoming the examiner's finding would require a petition after final, a very difficult process, considering the short time available and the necessity for placing the application in order for allowance. One can expect a much larger number of petitions in this regard, which would result would result in a larger burden on the patent office than it would relieve.
I note that in jurisdictions, such as the EPO, where a similar restriction process is used, the restriction is first made in a search phase of the application. In this phase the applicant may pay for an extra search in the same application or contest the restriction finding (to the "search division" but not to the Examiner himself). Thus, the applicant need not file a number of inventions to receive searches of multiple inventions. The efficiency and economy of such a system is self evident. Furthermore, when restriction is required during the examination phase, there are no statutory time limits running against the application nor is there the danger of receiving a final action and the additional burden that entails. It appears to me that the rule change proposed by the PTO, while applicable to the type of system used in the EPO, is not really applicable to the US patenting process.
Whatever the advantages of changing the restriction process, and they appear to be limited to speeding up the examination, they would be more than offset by the extra costs involved with filing additional applications, often for the same invention. Little calendar time is spent in the restriction process and the new system would hardly affect the workload of the Examiner.
Further, the real culprit in the long times required for processing a patent application in the US are the time it takes for the office to take up a patent application for first action and the time between a response by the applicant and subsequent actions.
The only real advantage that I can see to the changes proposed would be that the examiner would no longer be able to restrict based on figures since under the proposed system the examiner would have to decide himself which claims go with which invention. The present practice results in associations and divisions which have little to do with the various inventions claimed.
Reg. No. 33,877