(83) Department of Commerce
Patent and Trademark Office
Notice of Public Hearing and
Request for Comments on Procedures for
Recording Patent Prosecution File Histories.
Agency: Patent and Trademark Office, Commerce.
Action: Notice of Hearing and Request for Public Comments.
Summary: Recent decisions by the United States Supreme Court and the
United States Court of Appeals for the Federal Circuit highlight the
crucial role a prosecution history plays in determining the validity and
scope of a patent. See, e.g., Warner- Jenkinson Co. v. Hilton Davis
Chem. Co., 117 S. Ct. 1040, 41 USPQ2d 1865 (1997); Markman v. Westview
Instruments, 52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995), aff'd 116 S.
Ct. 1384, 38 USPQ2d 1461 (1996); Vitronics Corp. v. Conceptronic Inc.,
90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). In response, the United
States Patent and Trademark Office (PTO) requests public comments on
issues associated with procedures for recording complete and accurate
patent prosecution history records. Interested members of the public are
invited to testify at the hearing and to present written comments on any
of the topics outlined in the supplementary information section of this
notice.
Dates: A public hearing will be held on November 18, starting at 9:00
a.m. and ending no later than 5:00 p.m. If sufficient interest warrants,
an additional public hearing will be held in an alternate location, for
example, in California, or by televideo conference.
Those wishing to present oral testimony at the hearing must request
an opportunity to do so no later than November 3, 1997.
To ensure consideration, written comments must be received at the PTO
no later than November 18, 1997. Written comments and transcripts of the
hearing will be available for public inspection on or about December 1,
1997.
Addresses: The November 18, 1997 hearing will be held in the
Commissioner's Conference Room located in Crystal Park Two, Room 912,
2121 Crystal Drive, Arlington, Virginia. Those interested in testifying
or in submitting written comments on the topics presented in the
supplementary information, or any other related topics, should send
their request or written comments to the attention of Mary Critharis
addressed to Commissioner of Patents and Trademarks, Box 4, Patent and
Trademark Office, Washington, D.C. 20231; or John M. Whealan addressed
to Office of the Solicitor, Box 15667, Arlington, Va. 22215. Written
comments may be submitted by facsimile transmission to Mary Critharis at
(703) 305-8885 or John M. Whealan at (703) 305-9373. Comments may also
be submitted by electronic mail through the Internet to
mary.critharis@uspto.gov or john.whealan@uspto.gov. Written comments
will be maintained for public inspection in Crystal Park Two, Room 902,
2121 Crystal Drive, Arlington, Virginia. Written comments in electronic
form may be made available via the PTO's World Wide Web site at
http://www.uspto.gov. No requests for presenting oral testimony will be
accepted through electronic mail.
For Further Information Contact: Mary Critharis by telephone at (703)
305-9300, by facsimile at (703) 305-8885, by electronic mail at
mary.critharis@uspto.gov, or by mail addressed to Commissioner of
Patents and Trademarks, Box 4, Washington, D.C. 20231; or John M.
Whealan by telephone at (703) 305-9035, by facsimile at (703) 305-9373,
by electronic mail at john.whealan@uspto.gov, or by mail addressed to
Office of the Solicitor, Box 15667, Arlington, Va. 22215.
Supplementary Information:
I. Background
The official record detailing the prosecution of a patent
application in the United States Patent and Trademark Office (PTO) is
more than just a historical record. During the life of a patent, the
prosecution record defines the scope of the claimed invention and the
patent owner's rights. Thus, the written record must clearly explain the
rationale for decisions made during the examination of a patent
application, including the basis for the grant. Moreover, once a patent
has been granted, the official record will be closely scrutinized by
potential licensees, competitors who must avoid infringing the claimed
invention, or even those attempting to invalidate the patent. In the
event of litigation, the record will serve as a primary basis for court
determinations of issues regarding the validity or scope of the patent.
The written record created during the prosecution of a patent
application, commonly referred to as the "file wrapper" or "file
history," consists of all correspondence between an applicant and the
PTO. The file history typically consists of the patent application as
originally filed, the cited prior art, all papers prepared by the
examiner during the course of examination, and documents submitted by
the applicant in response to the various requirements, objections, and
rejections made by the examiner. In addition, the file history should
contain a written record of all oral communications addressing
patentability issues between the examiner and applicant. Examiners and
applicants share the responsibility for the clarity, accuracy, and
completeness of the file wrapper.
Recent decisions by the United States Supreme Court and the United
States Court of Appeals for the Federal Circuit emphasize the importance
of clear and complete prosecution histories in that they will look more
closely at and place greater weight on patent prosecution histories.
See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. Ct.
1040, 41 USPQ2d 1865 (1997); Markman v. Westview Instruments, 52 F.3d
967, 34 USPQ2d 1321 (Fed. Cir. 1995), aff'd, 116 S. Ct.1384, 38 USPQ2d
1461 (1996); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 39
USPQ2d 1573 (Fed. Cir. 1996). For example, in Warner-Jenkinson, the
Supreme Court explained the importance of the prosecution history of a
patent in determining infringement under the doctrine of equivalents.
117 S. Ct. at 1049-51, 41 USPQ2d at 1871-73. Specifically, the Court
acknowledged that when the prosecution history reveals that a patent
owner amended the claims by adding limitations to overcome the prior
art, the patent owner will be estopped from alleging infringement under
the doctrine of equivalents as to that amended limitation. Id. at 1051,
41 USPQ2d at 1873. Subsequently, the Court held:
Mindful that claims do indeed serve both a definitional and a
notice function, we think the better rule is to place the burden on the
patent-holder to establish the reason for an amendment required during
patent prosecution .... Where no explanation is established, however,
the court should presume that the PTO had a substantial reason related
to patent-ability for including the limiting element added by amendment.
Id. The emphasis on the written record, including the prosecution
history, to interpret the claims is further illustrated by the Markman
and Vitronics decisions. In Markman, the Federal Circuit held claim
interpretation is a question of law to be determined by the court based
on three sources: the claims, the specification, and the prosecution
history. 52 F.3d at 979, 34 USPQ2d at 1329. Along the same lines, the
Federal Circuit in Vitronics opined that intrinsic evidence, which
includes the claims, the specification, and the prosecution history, is
the "most significant source" of evidence to be used when interpreting
claims. 90 F.3d at 1582, 39 USPQ2d at 1576. In explaining that the
claims, the specification, and the prosecution history make up the
"public record" upon which the public is entitled to rely, the Federal
Circuit stated:
[T]he [prosecution] history contains the complete record of all
the proceedings before the Patent and Trademark Office, including any
express representations made by the applicant regarding the scope of the
claims. As such, the record before the Patent and Trademark Office is
often of critical significance in determining the meaning of the claims.
90 F.3d at 1582, 39 USPQ2d at 1577. The Federal Circuit held that
when the public record "unambiguously describes the scope of the
patented invention," reliance on extrinsic evidence such as expert
testimony is improper. 90 F.3d at 1583, 39 USPQ2d at 1477.
The PTO imposes written recording requirements on both the examiner
and applicant. These requirements are designed to furnish the patent
applicant, as well as the public and the courts, with sufficient
information to make informed decisions. As the agency charged with
granting valid patents, the PTO is actively concerned with the
development of clear and complete prosecution histories. For this
reason, the PTO is interested in obtaining public opinion as to whether
the current rules and procedures pertaining to recording prosecution
histories are sufficient to provide complete and clear records.
II. Issues for Public Comment
Interested members of the public are invited to testify and present
written comments on issues they believe to be relevant to the discussion
below. Questions following the discussion are included to identify
specific issues upon which the PTO is interested in obtaining public
opinion.
A. Current Procedures for Recording Patent Prosecution Histories
The emphasis on preparing complete, clear, and accurate file
histories is prevalent throughout the patent rules which form title 37
of the Code of Federal Regulations (C.F.R.) and the guidelines of
practice embodied in the Manual of Patent Examining Procedure
(M.P.E.P.). Recognizing the importance of the written prosecution
record, PTO rules and procedures stress the need for examiners to
communicate clearly the basis for all rejections and objections so that
the issues can be identified early and the applicant can be given an
opportunity to respond. See 37 C.F.R. 1.105 (1996); M.P.E.P. 707.07 (6th
ed. 1995, rev. 2, July 1996). To meet this goal, Rule 105 explicitly
states that "[t]he examiner's action will be complete as to all
matters." 37 C.F.R. 1.105. This requires the examiner to treat all
claims on their merits, provide authority and support for each ground of
rejection, and respond to all arguments and points raised by applicants.
The M.P.E.P. instructs examiners to provide clear and complete Office
actions throughout the examination process. For instance, when making
rejections such as lack of an adequate written description, the
examiner's position should be fully developed and contain detailed
reasons rather than a mere conclusion. See M.P.E.P. 706.03 (6th ed.
1995, rev. 2, July 1996). Moreover, upon entering an obviousness
rejection under 35 U.S.C. 103, the examiner should set forth in the
Office action the relevant teachings of the prior art relied upon, the
differences between the claimed invention and the applied references,
and an explanation as to why the claimed invention would have been
obvious to one of ordinary skill in the art. M.P.E.P. 706.02(j) (6th ed.
1995, rev. 2, July 1996). Furthermore, in making a final rejection, all
outstanding grounds of rejection should be fully developed and clearly
set forth to the extent that the remaining issues are readily apparent.
M.P.E.P. 706.07 (6th ed.. 1995, rev. 2, July 1996).
Concurrent with the examiner's duty to provide clear and fully
developed Office actions, Rule 111 mandates an applicant's response to
be complete in order to promote an early and full determination of the
issues. 37 C.F.R. 1.111 (1996). Current procedure requires that the
response by the patent applicant "must distinctly and specifically point
out the supposed errors in the examiner's action and must respond to
every ground of objection and rejection in the prior Office action." 37
C.F.R. 1.111. Moreover, the requirements of Rule 111 dictate that
applicants clearly point out the patentable novelty believed to render
the subject claims allowable over the referenced teachings. 37 C.F.R.
1.111. See M.P.E.P. 714.02 (6th ed. 1995, rev. 2, July 1996).
Furthermore, to ensure a clear and complete file record, examiners are
given the authority to require correction if a response is not complete.
See M.P.E.P. 714.03 (6th ed. 1995, rev. 2, July 1996). In limited
situations, an examiner is authorized to make changes directly to the
written portions of the filed application to correct obvious errors such
as spelling and minor grammatical errors. M.P.E.P. 1302.04 (6th ed.
1995, rev. 2, July 1996). Other obvious informalities such as changes to
the abstract may be corrected by a formal examiner's amendment which is
placed in the file wrapper and a copy is mailed to applicants. Id.
Amendment or cancellation of claims by formal examiner's amendment is
permitted when passing an application to issue provided that the changes
have been authorized by applicant or applicant's representative. Id.
A complete prosecution history should clearly reflect the reasons why
the patent application was allowed. According to Rule 109, an examiner
may set forth reasons for allowance when the record, as a whole, is
unclear as to why the application is allowable over the prior art. 37
C.F.R. 1. 109 (1996). Thus, the examiner must make a judgment of the
record to determine whether reasons for allowance should be set out in
that record. However, the M.P.E.P. cautions examiners to exercise great
care in recording reasons for allowance so as not to misconstrue the
claims. M.P.E.P. 1302.14 (6th ed. 1995, rev. 2, July 1996). If desired,
an applicant may comment on an examiner's statement of reasons for
allowance. Although an applicant's comments are entered in the
application file, they will not be commented upon by the examiner in
charge of the application. See id.
Another facet of patent prosecution in which written records are
extremely important is the recordation of interviews conducted between
examiners and applicants. Examiner interviews concerning patent
applications and other matters pending before the PTO serve to clarify
the issues in an application and materially advance the prosecution of a
case. The substance of an interview must be made of record in the
application by means of an Interview Summary Form completed by the
examiner and placed in the file wrapper. M.P.E.P. 713.04 (6th ed. 1995,
rev. 2, July 1996). In addition, a complete written statement disclosing
the substance presented at the interview must be filed by the applicant
when reconsideration is requested in view of an interview with an
examiner. 37 C.F.R. 1.133 (b) (1996). However, the examiner and
applicant can agree that the Interview Summary Form satisfies
applicant's obligation under Rule 133. M.P.E.P. 713.04.
A complete and accurate recordation of the substance of an examiner
interview should include the following: an identification of the claims
and prior art discussed; a description of proposed amendments; the
general thrust of the applicant's and examiner's arguments; and the
results of the interview. Id. Although the recordation of the arguments
presented at the interview need not be lengthy or highly detailed, the
general nature of the principal arguments should be readily apparent. Id.
The PTO is interested in ensuring that complete and accurate file
histories are created and maintained. Public comments are invited to
assist the PTO in identifying any improvements that can be made to
increase the clarity and completeness of prosecution histories. The
tenor of the following questions should not be taken as an indication
that the PTO has taken a position on or is predisposed to any particular
approach to creating and maintaining complete and clear file histories.
1. Do you believe that the current rules and procedures pertinent to
recording prosecution histories are sufficiently clear and effective? If
not, please:
(a) identify aspects of the rules and procedures that you believe
lack clarity or do not facilitate the creation of adequate records;
(b) identify any changes to the rules and procedures that you
believe would improve the clarity and completeness of file histories; and
(c) discuss potential advantages and hardships that patent
applicants and examiners would face if particular changes were adopted.
2. Do you believe that examiners are correctly and uniformly
applying the existing rules and procedures governing the recording of
file histories? If not, please:
(a) provide or summarize examples in which you believe examiners
have not maintained complete file histories;
(b) identify additional steps that can be taken by the PTO and
applicants to clarify the prosecution history; and
(c) discuss possible advantages and drawbacks to the proposed
changes.
3. Do examiners generally notify applicants when an amendment fails
to point out the patentable novelty of applicant's invention, as
required by 37 C.F.R. 1.111? If so, do you believe that examiners should
continue to notify applicants of their failure to include a statement of
novelty?
4. Is language such as "to further define and clarify the invention"
sufficient to satisfy Rules 111 and 119 of 37 C.F.R. which require the
applicant to point out how each amendment distinguishes the claims over
the cited prior art? If not, please explain why applicants should be
required to recite positively the rationale behind every claim amendment.
5. Should examiners be required to recite positively the reasons for
amendments to claims when claims are amended by way of a formal
examiner's amendment drafted pursuant to M.P.E.P. 1302.047 If so, do you
believe this would discourage the practice of examiner amendments? Also,
what effect would such a requirement have on the patent prosecution
process?
6. Should the current practice of having examiners prepare reasons
for allowance, as outlined in 37 C.F.R. 1.109, be discontinued? If so,
please explain why you believe this is desirable. If not, should 37
C.F.R. 1.109 be amended to make it mandatory that reasons for allowance
must be provided by the examiner? (Currently, according to 37 C.F.R.
109, setting forth reasons for allowance is not mandatory on the
examiner's part.) If so, in which of the following instances should
examiners be required to set forth reasons for allowance:
(a) in all allowable patent applications; or
(b) when the record, as a whole, is unclear as to why the patent
application is being allowed.
7. Do reasons for allowance recorded by examiners contain accurate
and precise interpretations regarding the novelty or nonobviousness of
the claims? If not, please:
(a) explain the experiences you have had that led you to your
conclusions; and
(b) identify what you believe should be included in or omitted from
an examiner's reasons for allowance.
8. What would prompt an applicant to comment on an examiner's
statement of reasons for allowance?
9. If an applicant disagrees with an examiner's reasons for
allowance, should applicant be obligated to respond? If so, should
applicant's failure to file a statement commenting on the examiner's
reasons for allowance be deemed an admission that applicant acquiesces
to the reasoning of the examiner? (Currently, pursuant to 37 C.F.R.
1.109, failure to comment on the reasons for allowance does not imply
that the patent applicant agrees with the reasoning of the examiner.)
10. Is the current practice of placing applicant's comments to
reasons for allowance in the application file without further comment by
the examiner adequate? If not, how and why should the current practice
be changed?
11. Does the present system of recording examiner interviews by means
of interview summary records, as outlined in M.P.E.P. 713.04, provide a
complete record of the substance of the interview? If not, please:
(a) explain the experiences you have had that have led you to your
conclusions;
and
(b) describe additional changes to the interview summary practice
you believe would be desirable.
12. Should applicants be obligated to record the substance of every
examiner interview, regardless of whether reconsideration is sought?
13. Should an examiner and applicant be permitted to agree that a
written record of the substance of an interview by the applicant is not
necessary?
14. Should the PTO require that telephonic and/or personal interviews
between examiners, applicants, and attorneys be taped by electronic
devices and transcribed into a written medium to be included in the file
wrapper? If so, please:
(a) identify which type of interviews should be recorded by
electronic devices;
(b) indicate whether transcriptions should be distributed to
applicants;
(c) explain how this should be implemented;
(d) identify who should bear the cost; and
(e) discuss potential advantages and drawbacks to electronic
recording of examiner interviews.
In the alternative, should applicants be permitted to request recording
of examiner interviews by electronic devices? If so, please:
(a) identify which type of interviews applicants should be permitted
to request recording;
(b) indicate whether transcriptions should be distributed to
applicants;
(c) explain how this should be implemented;
(d) identify who should bear the cost; and
(e) discuss potential advantages and drawbacks to
applicant-requested electronic recording of examiner interviews.
B. Other Issues
Parties may address related matters not specifically identified in
the above topics. If this is done, parties are requested to:
1. Label that portion of their response as "Other Issues";
2. Clearly identify the matter being addressed;
3. Provide examples, when appropriate, that illustrate the matter
addressed;
4. Identify any relevant legal authorities applicable to the matter
being addressed; and
5. Provide suggestions regarding how the matter should be addressed
by the PTO.
III. Guidelines for Oral Testimony
Individuals wishing to testify must adhere to the following
guidelines:
1. Anyone wishing to testify at the hearings must request an
opportunity to do so no later than November 3, 1997. Requests to testify
may be accepted on the date of the hearing if sufficient time is
available on the schedule. No one will be permitted to testify without
prior approval.
2. Requests to testify must include the speaker's name, affiliation
and title, mailing address, and telephone number. Facsimile number and
Internet mail address, if available, should also be provided. Parties
may include in their request an indication as to whether the party
wishes to testify during the morning or afternoon session of the hearing.
3. Speakers will be provided between five and fifteen minutes to
present their remarks. The exact amount of time allocated per speaker
will be determined after the final number of parties testifying has been
determined. All efforts will be made to accommodate requests for
additional time for testimony presented before the day of the hearing.
4. Speakers may provide a written copy of their testimony for
inclusion in the record of the proceedings. These remarks should be
provided no later than November 25, 1997.
5. Speakers must adhere to guidelines established for testimony.
These guidelines will be provided to all speakers on or before November
11, 1997. A schedule providing approximate times for testimony will be
provided to all speakers the morning of the day of the hearing. Speakers
are advised that the schedule for testimony will be subject to change
during the course of the hearings.
IV. Guidelines for Written Comments
Written comments should include the following information:
1. Name and affiliation of the individual responding;
2. If applicable, an indication of whether comments offered represent
views of the respondent's organization or are the respondent's personal
views; and
3. If applicable, information on the respondent's organization,
including the type of organization (e.g., business, trade group,
university, or non-profit organization) and respondent's position,
including type of experience (e.g., attorney handling patent prosecution
and/or patent litigation, patent agent prosecuting patent applications,
or judge deciding patent issues).
If possible, parties offering testimony or written comments should
provide their comments in machine-readable format. Such submissions may
be provided by electronic mail messages sent over the Internet, or on a
3.5" floppy disk formatted for use in either a Macintosh or MS-DOS based
computer. Machine-readable submissions should be provided as unformatted
text (e.g., ASCII or plain text), or as formatted text in one of the
following file formats: Microsoft Word (Macintosh, DOS, or Windows
versions) or WordPerfect (Macintosh, DOS, or Windows versions).
Information that is provided pursuant to this notice will be made
part of a public record and may be available via the Internet. In view
of this, parties should not provide information that they do not wish to
be publicly disclosed or made electronically accessible. Parties who
would like to rely on confidential information to illustrate a point are
requested to summarize or otherwise provide the information in a way
that will permit its public disclosure.
Sept. 16, 1997 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
(1203 OG 35)