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« Margaret Peterlin Gets to Keep Her Job | Main | Apotex Corp. v. Merck & Co., Inc. (Fed. Cir. 2007) »

December 11, 2007


The PTO could've have made real progress by dropping 1.56 and progressing to the EPO standard. Instead, this is going to be another quagmire.

If they are going to hire people without patent experience to lead the PTO at least hire a business person who can cut through it.

The notion that the new IDS rules will have no economic impact reminds me of a classic Dilbert strip. Dogbert is talking to Alice, who's going to a trade show.

Dogbert: "To be successful at the trade show, you'll need a trade show booth from the Dogbert Trade Show Booth Company. For maximum profts, I recommend the deluxe model."

Alice: "How will the deluxe model maximize my company's profits?"

Dogbert: "Oh, so now this is about *your* company?"

Someone call Scott Adams - they've obviously made Catbert the head of the USPTO and put Dogbert in the OMB, since clearly, the only question the PTO and the OMB considered was whether the new rules would have an economic impact on the USG.

Dear Anon:

I'm not sure the PTO can "drop" Rule 56. I think the first sentence of the rule, that a patent is affected by a public interest, would make courts all the way up to the Supreme Court impose the duty regardless of the rule. I confess that I haven't confirmed this, but I think the PTO rule was implemented because courts recognized inequitable conduct as a defense to patent infringement, not the other way around. In any event, the idea that a person could obtain a patent by "fraud" should be even more anathema than that an obvious invention be patented. So I think we are "stuck" with the duty of candor no matter what else the PTO may do.

Thanks for the comment.


Your right that we're "stuck" with the "duty of candor" and that SCOTUS is the unfortunate source of this "duty". As I've stated on other blogs, what is especially bad about the new IDS Rules is their "rigid" formula for how much can be cited (and of what length) which doesn't address the reality of how much art is "reasonable to cite", where that art might come from (and when), how "inequitable conduct" is applied (and misapplied) in the courts, etc. The fact is, the PTO hierarchy doesn't care because it is locked in to its own political agenda, namely reducing the backlog (or at least look like they're trying to reduce the backlog). We can only hope that another GSK/Tafas challenges these insane IDS Rules in court and that we give them all the help (including Amicus help) that they need.

Kevin - Do you think that the EPO and JPO are ridden with fraudulently obtained patents? Since when has IC had anything to do with actual fraud. (A patent would still be invalid for actual material misrepresentation, as opposed to some failure to cite an office action issued by the same Examiner in your dog's cousin's design application).

Dear Anon:

I don't think so; apparently, most infringers think so, and the Supreme Court thinks it enough of a potential problem that Rule 56 is necessary.

I agree with the sentiment that inequitable conduct has been stretched to cover everything from actual fraud to completely innocent activity. For example, I know of a case where the defendants have alleged inequitable conduct over references that were submitted to, and considered by, the Patent Office. Doesn't matter - since defendants' opinion on what these references "mean" is different that our client's, it was inequitable conduct for them not to inform the Patent Office about that opinion.

My point was that it is extremely unlikely that Rule 56 will be eliminated.

Thanks for the comment.

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