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« Post-GSK: Where Do We Go from Here? - Deferred Examination | Main | Ventana Opens Its Books to Roche »

November 13, 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.

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.


"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."

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.

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