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December 12, 2007

What's the big IDeaS?

The Office of Management and Budget has approved the proposed Information Disclosure Statement (IDS) rule changes (full proposed rule). As poet Walt Whitman penned: "Do I contradict myself? Very well then, I contradict myself. I am large, I contain multitudes." But the USPTO isn't supposed to be poetic, or self-contradictory; it's supposed to grant valid patents. Worrying about decreasing pendency sets up an inherent self-contradiction, especially since the direct path to do so is closed: while management clings to denial as to cause, the agency admittedly suffers horrendous examiner turnover. So, the only way left to decrease pendency is to decrease examination time. Decreasing examination time necessarily increases the risk of granting patents badly: either erroneously granting junk patents, which the office used to regularly do, to not granting what should be valid patents, as the PTO has recently made its regular practice. Burden shifting to applicants is no substitute for impartial examination, and that's exactly the spirit of the proposed IDS rules.

From the approval notice:

The U.S. Patent and Trademark Office (Office) amends its regulations on information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. These changes would enable the examiner to focus in on the relevant portions of submitted prior art at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps. This action would make the following changes relating to submissions of IDS's by applicants:

impose a requirement for the personal review of, and to provide information about, certain citations;

eliminate the fees for, but permit only timely, IDS submissions;

and only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted.

The Office would also permit:

third parties to submit prior art up until the mailing of a notice of allowance after application publication;

to no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE);

to permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items;

and to revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.

While there are admittedly problems with the current IDS requirements, how can we reasonably expect current PTO management to solve them, especially when decreasing pendency trumps all other goals, including issuing valid patents? Rule changes such as “impose a requirement for the personal review of, and to provide information about, certain citations” do nothing more than shift the burden. It should not be the responsibility of the applicant to analyze the prior art; this is simply not responsible.

Applicants have been repeatedly told to put full faith in the patent system and in the competency of examiners. This “we are competent, but …we need your help” attitude just doesn’t work in view of the overall goal: issuing valid patents. The applicant should obviously continue to provide prior art that they deem relevant, but for the PTO to pawn off the analysis is a misinterpretation of purpose. The office provides examiners with extensive training in an attempt to create a standard for examination and a standard for prior art analysis. But applicants and attorneys aren't on the same page, nor is there guidance in MPEP. Granted, the applicant-provided analysis will be open to examiner review, but does anyone really think that the examiner will question and investigate the provided analysis rather than shrug and smile at their freed-up time, happy that part of their job has been completed for them?

It is not unheard of for an applicant to cite prior art on an IDS that is 102 perfect. This occurs when the applicant has a context-laden, pigeon-holed view of the claims, and does not see an alternate perspective; it happens to the best. Under the new requirements in which an applicant is asked to not only cite, but also explain the prior art, the examiner has a built-in incentive to overlook these perfect references. Currently an examiner will most likely catch an applicant mistake, but under the new rules these mistakes are more-likely-than-not to go unnoticed. It is essential that examiners continue to look at all cited art, because multiple viewpoints (applicant and examiner) are essential to the process; the new rules go against that.

Not only is the agency attempting to shift responsibility, they are additionally attempting to shift cost. The IDS rule changes will cost applicants dearly, thereby encouraging the withholding of information, and additionally causing a decrease in the number of applications from small entities. Is it coincidence that both of these results will further result in less work for the PTO, and eventually decrease pendency? At least PTO management will be able to pat themselves on the back with the achievement of one goal.

Patent Hawk's take:

The rule changes to IDS require, in instances, explanations by an applicant of cited art. Any mischaracterization exposes a risk of inequitable conduct. Thus, explanation is best circumscribed to disclosure quotation, however worthlessly inscrutable the result. The new IDS rules, ostensibly intended to expedite examination, instead eliminates applicant incentive to search and cite prior art.

USPTO mis-management believes they are solving an important problem, but they are overlooking the full effect of their action. The IDS rule changes will undoubtedly change the dynamic of examination, and in unforeseen ways, leading to new problems that management will then try to wave a magic wand at, without ever leaving the comfort of the 10th floor. Further controversy and mayhem to ensue, without agency management having a clue.

Posted by Mr. Platinum at December 12, 2007 3:06 PM | The Patent Office

Comments

Well-stated perspective on the mess with the current PTO Rules under consideration, and how politically motivated and ill-advised they are.

My comments from a different blog on these new IDS Rules:

What's maddening is that the new IDS Rules reflect nothing of how much art is "too much" or "too big", "how" and "when" that art might turn up, etc. Instead, these Rules provide a "rigid formula" (sound like something from SCOTUS in KSR Interntional?) for compliance that has nothing to do with patent prosecution reality. Frankly, the PTO hierarchy doesn't care whether or not these Rules address reality, they've got their political agenda to "reduce the backlog" (or make it look like they're reducing the backlong).

Unfortunately, the only choices for bringing sanity to this situation is to either have Congress legislate change or to bring suit once again to point out why the PTO and the OMB have once again violated not only their own Rules but also the APA, as well as the RFA. I have very little confidence that Congress will do anything that will bring sanity to the IDS Rules (and the Patent Reform Legislation suggests they would make it more insane). That leaves suit (and I would suggest suing both the PTO and OMB). The GSK/Tafas suits suggest that the only governmental groups listening to this bad situation with the current ill-advised PTO Rule making are the courts.

We can only hope that someone in the private sector like GSK and Tafas decide that their ox is going to be sufficiently gored to pony up the courage (and money) to halt this continuing Rule making nonsense from the PTO. (And if they do, we should give them all the support, including Amicus support, that they could use.) In fact, resistance against these ill-advised and improperly enacted PTO Rules will be the true test of whether we are a nation of laws and reason in the patent area (as we should be), or whether we're simply a nation dominated by the politics of the moment and who can "buy more" political clout in Congress and the executive branch. I hate to portray the current situation as "dire" in the patent examination process but it's getting pretty close if these new IDS Rules, as well as the new appeal and Markush group Rules, are implemented. And heaven truly help us if the currently stalled Claim-Continuation Rules are ever implemented.

Given the current "ugly climate" regarding the IDS Rules and "inequitable conduct", it would be best if we simply completely did away with the "duty of disclosure" obligation along with "inequitable conduct" as a basis for patent invalidity/unenforceability, at least with regard to citations of art. In that way, we would at least be "harmonizing" with the rest of the world that has no "duty of disclosure" requirement. Even Australia has now dropped it's requirement to cite to their office art cited in other patent offices. In fact, going to a patent registration would be far better than the insanity of these new IDS Rules which will only punish the "meritorious many" and rarely the "egregious few".

Posted by: EG at December 13, 2007 5:52 AM