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U.S. Patent and Trademark Office

Assistant Commissioner for Patents

ATTN:  Hiram H. Bernstein 

Thank you for the opportunity to provide comments on the proposed rule changes.  We certainly appreciate the PTO’s continued efforts to further improve the efficiency of the patent process.  Clearly, a number of these proposed changes may significantly affect the practitioner.

Although many of the proposed changes seem beneficial, we view two proposed changes with alarm: imposing limits/requirements on information disclosure statement submissions and refusing information disclosure statement consideration under certain circumstances (37 CFR 1.98).  We believe that these changes in information disclosure statement (IDS) submissions would impose an undue burden on the typical practitioner.

Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98).

Summary:  All references after the first ten cited in an IDS by the practitioner would require "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...".

Comments:  We file and prosecute applications within the semiconductor industry.  This field is said to be the fastest growing area of patent prosecution.  Thus, new patents frequently come to our attention during the prosecution of our cases.

Additionally, because we work in the narrow field of programmable logic, the subject matter of one case may be related to one or more other cases then pending.  We have assumed that if the Examiner in one case believes certain references to be relevant to that case, then the related subject matter cases should also cite those certain references.

Therefore, on receiving an Office Action in a pending case, we frequently file supplemental IDS’s in one or more other pending cases.  Therefore, it is often both desirable and necessary under 37 CFR 1.56 for practitioners in our office to cite more than 10 references.

However, we are not among the flagrant abusers cited in the "Summary of PTO Advance Notice of Proposed Rulemaking".  A practitioner who cites several thousand references in each of several hundred applications is extremely atypical.  We feel that it is unfair to impose an enormous burden on thousands of diligent practioners in response to the abuses of a few.

In our office, we know that this proposed rule change would significantly and adversely impact our productivity.  Therefore, we urge that this proposal be reconsidered, and a less drastic solution be proposed after time for reasoned discussion, preferably after a public hearing.

Refusing information disclosure statement consideration under certain circumstances (37 CFR 1.98)

Summary:  Entirely at his or her discretion, an Examiner may choose not to consider references cited in an IDS.

Comments:  We oppose this proposed rule change.  As proposed, any Examiner could decide that consideration of the cited references is "unduly burdensome", and refuse consideration.  No guidelines are provided for the term "unduly".  Moreover, no meaningful recourse is provided to the practitioner to appeal an arbitrary or capricious decision by the Examiner.

Most practitioners would agree that some of the examples of IDS submissions cited in the "Summary of PTO Advance Notice of Proposed Rulemaking" are unduly burdensome.  However, we submit that some of them are not.  For example, if we cite a 100-page patent as a reference, we do not consider it "unduly burdensome" to expect the Examiner to familiarize himself with the reference.  The Examiner is presumed to be well-versed in the field handled by his art unit, irrespective of the length of the references in that field.  These voluminous patents are frequently cited as prior art in the Office Actions.  The practitioner is expected to familiarize himself with those references.  Thus, a 100-page reference must be reviewed in detail by a practitioner, but not by the Examiner.  How can this dichotomy be justified?

Again, we propose reconsideration of this proposal until after reasoned and public discussion.


Jeanette Harms, Reg. No. 35,537

Lois D. Cartier, Reg. No. 40,941

United States Patent and Trademark Office
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Last Modified: 7/4/2009 4:52:13 PM