By Kevin E. Noonan --
The following is part of a continuing series on how to address the very real problems facing the U.S. Patent and Trademark Office.
A day after the day of rejoicing for inventors, patent practitioners,
examiners, and seemingly all of civilization, fair-minded people will
concede that the U.S. Patent and Trademark Office faces a daunting
task. After years of neglect - from Congress raiding the users' fees,
an inadequate number of examiners, technology-driven increases in the
number of applications filed, and a "count" system that has not
rewarded a style of examination that encourages prosecution to a
definitive end point - the Office is facing a massive backlog of
applications without sufficient resources to process them in a timely
manner.
If the patent bar is gladdened by District Court Judge Cacheris' decision enjoining implementation of the new rules - representing an attempt, albeit a misguided one, on the part of the Office to address the pendency and backlog problems - it behooves us to propose alternatives. Patent Docs will be posting a series of such proposals, and we invite our readers to provide their own ideas. As they used to say in the days of the counterculture, "if you are not part of the solution, you are part of the problem." Patent Office management clearly thinks the patent bar is part of the problem; it would be satisfying to prove them wrong.
Accelerated examination
A little more than one year ago, the Patent Office revised the procedures relating to accelerated examination. Prior to the change, an applicant could file a "Petition to Make Special" in certain circumstances, including applicant age (if the inventor was at least 65 years old), ongoing activities of a third party that would constitute infringement once a patent was granted, and for certain technologies including treatments for cancer and acquired immune deficiency syndrome. The Office abolished this system effective August 26, 2006 (while continuing the old practice on the basis of health or age) in favor of a pilot program permitting an applicant to obtain accelerated examination if the applicant was willing to satisfy certain new requirements.
The benefit of accelerated examination is a "promise" that the applicant would obtain a patent within 12 months from filing. The requirements are: the application must be complete upon filing, be filed electronically, and specifically request accelerated examination; that it contain no more than 3 independent claims and 20 total claims and not contain a multiply-dependent claim; applicants agree to telephone restriction requirements, and to pursue claims to only one invention (i.e., not to traverse the restriction), and further that applicants agree to telephone interviews even prior to a first Office Action on the merits; and that a pre-examination search is performed. Examination occurs with "special dispatch" and all actions except a final rejection are subject to a one-month shortened period for response; extensions of time are not allowed except for unavoidable delay, and failure to timely respond results in abandonment. The most burdensome aspect of the process is that a simple information disclosure statement does not suffice to bring prior art to the examiner's attention. Rather, applicants are required to provide a detailed explanation of the art, along the lines of the "examination support document" that is a part of the Office's new rules enjoined by Judge Cacheris of the District Court on October 31st.
The Office has touted this program as a way for an applicant to avoid long pendency times for inventions that would benefit from having patent protection obtained rapidly. There are certainly technologies that have (relatively) rapid obsolescence times and that could benefit from this program (see "Could Creating a U.S. 'Utility Model' Patent Fulfill the 'Need' for Patent Law Reform?"); according to Office statistics, 650 applications have been designated for the program and the Office has granted 97 patents since the program went into effect (see "AE Petitions Status").
As has become its penchant recently, the Office seems to be onto something here, but its own bureaucratic approach and some fundamentally flawed assumptions have prevented it from using the accelerated examination procedure more broadly (and some of this depends on unnecessarily burdensome requirements). The program could be useful in addressing the Office's major problem - the backlog of unexamined applications - with only a few small changes. First, permit an applicant to designate any application, especially pending ones, to fall within the scope of the modified accelerated examination schedule proposed here. Second, have the decision point be at 18 months rather than one year, to give applicants and the Office sufficient time for a proper examination. Third, retain the limitations to a single invention but with a total of 5 independent and 25 total claims, as in the enjoined new rules. Fourth, retain the expedited examination schedule (shortened statutory response periods and limitations on extensions-of-time) to prevent the program from failing to meet its main goal, reducing the backlog. Fifth, continue the emphasis on telephone conferences between the Examiner and applicant's representative and require all formal submissions to be made using the electronic filing system (EFS).
The major difference between the current system and the one proposed here is that an applicant would not file an examination support document. Instead, as part of the telephonic interview the examiner and applicant's counsel would fully and frankly discuss the art and, in short, provide verbally all of the substantive information now required in the document. The difference is that none of this would become part of the written record. While seemingly counterintuitive, such a scheme is the only way, in view of the current status of the law regarding inequitable conduct, that counsel would be comfortable having the type of discussion required to expedite examination.
Although seemingly radical, on reflection this concept is much less so. For example, it is true that such a system would run counter to the prevailing trend to increase transparency in the examination process, including such features as publishing pending U.S. applications and making the prosecution history publicly available upon publication. However, it is informative to remember that less than 10 years ago U.S. applications were not published, and the Republic survived the prior two hundred twenty-four years with a patent system of confidential, ex parte prosecution. Moreover, the American Inventor Protection Act of 2000, which required U.S. patent applications be published, did not require the Office to make a published application's file history publicly available prior to grant. It gave the Office the authority to do so but did not require it, and consequently many applicants had their counsel file applications prior to the November 2000 deadline date to prevent public access to their "ex parte" prosecution files. Similarly, it has only been in the past decade that the Office had required applicants and examiners to put formal interview summaries in the prosecution file history; prior to this change, interview summaries like "prior art discussed with applicant's counsel and agreement reached" were common, with no additional information being available.
Additionally, present practice is replete with applicants and their representatives putting qualifying language on the record to prevent courts and accused infringers from misconstruing statements that could later be taken out of context. Phrases like "without acquiescing to the asserted grounds of rejection" and "although applicants dispute the interpretation of the art in the Action" and "solely in an effort to expedite prosecution of the pending claims to allowance" are frequently encountered in the remarks section of many Office Action responses. This tendency has been exacerbated by the expansive view of prosecution history estoppel, both with regard to claim interpretation as well as the application of the doctrine of equivalents, espoused by the Federal Circuit over the past decade or so. The purpose of this qualifying language is merely to prevent an accused infringer from making an ex post facto argument that prosecution was undertaken in bad faith. This is the risk every applicant and their counsel takes, since allegations of inequitable conduct have been and continue to be a "veritable plague" on the patent system.
Even though almost always alleged, however, inequitable conduct is rarely proven. While this is due in part to the heavy burden required to establish inequitable conduct, the burden is no heavier than the burden required to prove invalidity (i.e., clear and convincing evidence). Yet invalidity is found more frequently than inequitable conduct. While a number of explanations can be proffered for this result, the most likely one is also the simplest: that the overwhelming majority of applicants and their counsel simply do not commit inequitable conduct. For applicants, the potential costs (including Walker Process damages) of an inequitable conduct determination by a District Court discourages any tendencies towards committing inequitable conduct, while most counsel are unlikely to risk their livelihoods and the disqualifying wrath of Mr. Harry Moatz and the Office of Enrollment and Discipline for any one patent or client. Indeed, one of the paradoxical accusations raised against applicants and their counsel as a justification for ESDs is submission of cumulative art, which is almost always motivated by the fear of an inequitable conduct allegation. Thus, it is reasonable to assume that for the vast majority of cases there would be no enhanced risk of inequitable conduct should the Office permit an applicant's representative to have an ex parte, off-the-record, full and frank discussion of the art with an Examiner.
The benefits of this practice are just all of the purported benefits of the proposed (and enjoined) ESD system. Examiners would benefit from having applicants prioritize the prior art based on how close the art is to the claimed invention, and would also benefit from being able to have applicants point out the portions of the art that disclose elements of the claimed invention. Good-faith applicants, the overwhelming majority, would be in the best position to know the patentable distinctions with the art and thus have no substantive impediment towards pointing out where the art disclosed, and did not disclose, the elements of the claimed invention. Moreover, knowing this discussion was part of the patentability process would encourage applicants to have their counsel perform a pre-filing search, which would result in more focused claims in these applications.
The Office could also reserve the right, upon good cause provided, for the Examiner to propose that certain portions of the information covered in such an ex parte discussion become part of the prosecution file history, most probably without attribution. Applicants could always have the opportunity to drop out of the accelerated examination program should they disagree with an examiner's decision to make such information of record. Applicants would retain the right to prevent the Office from disclosing the nature of any such admissions upon request, although doing so would result in foreswearing the advantages of the accelerated examination program. For applicants, the advantage is obtaining patents more rapidly. For the Office, the advantage is eliminating some portion of the backlog within 18 months, as well as the possibility of expanding the program to maximize the number of applications choosing to exercise this option.
Whether one thinks that this scheme has merit will depend on whether they believe that the overwhelming majority of applicants and their counsel engage in good-faith efforts to zealously obtain the greatest extent of protection that their invention legitimately deserves, or if one believes that applicants and their counsel routinely engage in inequitable conduct during patent prosecution (despite empirical evidence to the contrary). Put more bluntly, if one believes (as current Office management seems to) that their customers and counsel are liars and thieves actively trying to "game" the system to obtain a benefit they don't deserve, then the scheme proposed herein will appear hopelessly naïve and unworkable. If however, as both evidence and common sense would persuade the unbiased observer, it is the best interests of applicants and their counsel to honestly prosecute patent applications to allowance, and if that is in fact what happens in almost all instances, then perhaps it would be possible to actually craft a system where the Office and their customers work together to ensure that granted U.S. patents are valid and enforceable. The Office declaims loudly that such a cooperative effort is what they want; it is time they took steps that would help us believe them.
For additional articles in the "Post-GSK" series, please see:
- "Deferred Examination," November 12, 2007
- "Co-owned, Co-pending Applications," November 11, 2007
- "Increased Fees for Continuations," November 8, 2007
- "Regional Patent Offices," November 7, 2007
- "Tailoring Protection and Examination," November 6, 2007
- "Annuities," November 1, 2007
Wouldn't it make more sense to get rid of inequitable conduct and keep the written ESD-like document?
We all cry "estoppel" but I think we fear simply being accused of inequitable conduct more.
Also, isn't an allegation of inequitable conduct a big discovery advantage (in litigation)? I could be wrong....but if I'm not, getting rid of inequitable conduct would also help out the defendents in infringement cases, and lower costs for both sides.
Posted by: Anon E. Mouse | November 14, 2007 at 06:43 AM
I agree that the patent agent/attorney should not be forced to make statements that are likely to be used against his/her client in the event that the validity or enforceability of the granted patent is contested.
While examiner interviews are useful for overcoming an impasse during normal examination, I do not agree with use of interviews as a substitute for written proceedings. In my view, a written record is essential in case the examiner decides not to allow the application to permit the attorney's client to independently assess the situation and to have a basis for appeal.
If the threshhold for obtaining accelerated examination is lowered, a substantial increase in the number of requests for accelerated examination per year may divert resources from examination of "normal" applications, so that the overall backlog may not improve.
Another approach may be deferred examination system on a pay-as-you-go basis. If the applicant needs rapid examination, the applicant can pay the examination fee early to quasi accelerate examination.
Since the Office would not be responsible for the date on which patent examination begins, the backlog may be calculated based on the date on which examination was requested and not the filing date of the application. Under that system, the Office would have no need to punish a delayed request and fee for examination by reducing the available patent term extension.
Making delay of examination available under such conditions would encourage more applicants who prefer such a delay to delay examination until a time at which the applicant can better assess what, if anything, needs to be protected. At that later point in time, the application may be abandoned without prior use of examining resources. Examination of maintained applications would generally be more focused on the subject matter for which protection is actually needed, thereby reducing the need for continuation and divisional applications.
To reduce the use of delayed examination as a tactic to chill innovation and competition in a certain field due to the delay in finding out the true scope of the claims to be granted, the applicant should have a time limit in which to request examination. Squatters may be encouraged to proceed with examination before the time limit by having to pay annuities for maintaining the pendency of the patent application throughout the pendency period in an increasing amount per year regardless of whether examination has been requested.
Another approach to streamlining examination may be to allow the applicant to choose whether it wants a full examination or just a correlation of the claim features with the prior art documents in a form comparable to the proposed ESR at a lower cost.
Assessment of the examiner's correlation of the claim features with cited references would allow the applicant to decide whether to maintain or abandon the application and, if the application is maintained, to focus the claims prior to a full-fledged examination. This should increase the rate of first action allowances and reduce the need to prepare arguments to overcome a multitude of rejections. Applicants would be motivated to focus its claims by the potential to reduce file history estoppel.
Comments?
Posted by: Bob Lelkes | November 14, 2007 at 08:06 AM
"The major difference between the current system and the one proposed here is that an applicant would not file an examination support document. Instead, as part of the telephonic interview the examiner and applicant's counsel would fully and frankly discuss the art and, in short, provide verbally all of the substantive information now required in the document. The difference is that none of this would become part of the written record. While seemingly counterintuitive, such a scheme is the only way, in view of the current status of the law regarding inequitable conduct, that counsel would be comfortable having the type of discussion required to expedite examination."
Truly, the word "scheme" is an apt description for this process.
All of these "interviews" should be recorded and stored and made available for third parties who are interested in knowing the proper scope of the patent claims. It's not about "equitable conduct". It's about definitions of terms and estoppel.
"it is informative to remember that less than 10 years ago U.S. applications were not published"
I think this is irrelevant. Prosecution histories of issued patents have been available for quite some time. That is relevant.
"and the Republic survived the prior two hundred twenty-four years with a patent system of confidential, ex parte prosecution"
Are you sure you weren't a criminal defense lawyer in a previous life? That sort of rhetoric may work on an oxygen-deprived jury but not on the Internets. The last twenty or thirty years have seen a substantial rise in the number of filed and issued patents. The recently created CAFC has made it clear that the prosecution history is CRUCIAL for determining claim construction.
If a summary of several extensive Interviews is "good enough", then why not simply make *summaries* of written Office Actions and Responses available to the public but destroy the rest? That would save valuable space and, according to your explanation, have no significant negative impact on the "surival of the Republic."
Posted by: Bob Robteroptop | November 14, 2007 at 12:07 PM
Dear Bob:
I think the difference is between information and attribution. I'm not saying there couldn't be prosecution history, just that an attorney or agent wouldn't be in the position to have to worry about being misinterpreted (to an infringer's advantage) later.
An Examiner could put on the record the facts - for example, that reference A teaches limitation X but not Y, and limitation Y is found in Reference B, combined with the assertion that the skilled worker could combine A + B. What would not be on the record is that the attorney pointed out to the Examiner where these limitations were in the different references.
There is ample opportunity for the Office to make whatever representations the Examiner believes should be on the record, and counsel can make amendments and arguments that refute the Examiner's position. Since that is the definition of the "prosecution history" for the purposes of claim construction, what is missing are the statements now required to be put on the record in an ESD.
The fact is (as Mr. Whealon of the USPTO has admitted) the ESD is merely a device to 1) cause applicants to comply with the 5/25 rule in normal prosecutiuon and 2) ensure that only the most simple inventions, with the least prior art will use the Accelerated Examination program. My "scheme" is to try to expand the program so that applicants will actually use it.
Posted by: Kevin E. Noonan | November 14, 2007 at 08:59 PM