New Rules, New Threats: More on the Office of Enrollment and Discipline

    By Kevin E. Noonan --

In the run-up to the planned implementation of the Patent and Trademark Office's misguided new rules limiting continuation applications and claims (enjoined on October 31st by Judge Cacheris sitting in the Eastern District of Virginia), the Office made very clear its intention to strictly enforce the rules once they went into effect.  Evidence for these intentions came in remarks from Harry Moatz (at right), Director of the Office of Enrollment and Discipline (OED), at an Intellectual Property Owners (IPO) meeting in New York (see "Will Compliance with the New Rules Be Enforced by the Patent Office through the Office of Enrollment and Discipline?").  Mr. Moatz's message:  the Office was prepared to use its capacity to discipline registered practitioners to enforce the new rules, or as they put it, those who do not "comply with the regulations promulgated under [the Office's rulemaking authority]," despite the fact that it is far from clear that the Office had the authority they intended to enforce (see "Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas (E.D. Va. 2007)").

Another set of new rules, it appears, must be followed by another threat of enforcement by Mr. Moatz.  This time the threat comes at the 2nd Annual Patent Law Institute in New York, according to Eugene Quinn from PLI's Patent Blog.  Robert Clarke, Director of the Office of Legal Administration at the USPTO announced at a panel discussion on patent "reform" that the Office of Enrollment and Discipline will "investigate" attorneys who file a "large number" of references that "could be used" to reject "a substantial number" of the claims presented in an application.  Mr. Clarke illustrated this new practice using a pending application where the applicant submitted 1600 references, "most of which," according to Mr. Clarke, could alone or together be used by an Examiner to reject a substantial number of claims that were filed in the application.

Whether this is saber-rattling or the opening salvo in the latest assault by the Patent Office on its customers and their counsel will depend, of course, on how the terms in quotes above are interpreted.  It is often the case when authority intends to impose severe restrictions on someone's actions that the extreme case is presented first, in an effort to legitimize the restrictions.  Without more, it is impossible to be certain that the number of cited references is truly excessive, but it is a number intended to impress.  And as related by Mr. Clarke, it would seem inattentive if not irresponsible to file claims where a substantial number could be rejected "alone or in combination" by this seemingly excessive number of references.

But anyone who has practiced before the Office knows that in hindsight (i.e., after the application has been filed) it can be easy to assert a rejection based on prior art.  For example, how many of those references were known to the applicant (or their counsel) at the time the application was filed?  While unlikely in the instance where there are 1600 references, it could easily be the case where a reference or references are cited by a foreign patent office that were unknown to the applicant upon filing (for example, a reference in Japanese).  Under these circumstances, it could be the case that a substantial number of the claims encompass this art, and although a simple amendment may be all that is needed to overcome the reference, it might not suffice to satisfy Mr. Moatz.  In addition, when applying the "could be used" to reject standard, what standard are we to use?  The standard of the particular Examiner who examines the claims (which will vary with the experience and biases of the Examiner)?  Or of members of a Patent Office "Star Chamber" (comprised of the same Examiners now charged with enforcing a "quality" standard where even one claim that is deemed unpatentable damns an entire claim set)?  In view of the fact that applicants are deemed by statute to be entitled to a patent unless they fail to comply with the statutory requirements, it is their right to claims having a scope that is at the limit of the extent of their disclosure on the one side and the prior art on the other.  The Office currently decides to draw distinctions about where the line between an applicants' invention and the art should be drawn.  The practice announced today imposes yet another limitation on the process, not based on the statute:  whether the Office believes that an applicant's representative should be subject to discipline for being too zealous in trying to protect his or her client's rights.

The Patent Office has met the enemy, and it is the patent bar.  This has been evident since the original Notice of Proposed Rulemaking with regard to the continuation and claims limitations rules, where the Office blamed the bar for the proliferation of continuation applications and alleged prolixity of claiming.  It is evident in accusations that patent attorneys are routinely guilty of incompetence, malfeasance, or misfeasance in representing their clients before the Office, and in how the Office has spent the last several years arguing that its management problems would be solved if the bar would join the Office in a partnership to improve patent pendency and quality.  So long as "partnering" means just following orders, everything will be just fine.  And if not, the Office will have the OED and Mr. Moatz decide whether a practitioner should be disciplined.  Kafka or Orwell, take your pick.

Comments

[kuppy kuppy the humble puppy]

1600 references?

Not 16 references. Not 160 references. But 1600 references.

Sorry, folks, but there is no way that an attorney can justify such a submission without lying. I'd love to see the attorney who filed that attempt to justify it, just for laughs.

How many claims were in the application?

Dear Humble:

To reiterate:

"It is often the case when authority intends to impose severe restrictions on someone's actions that the extreme case is presented first, in an effort to legitimize the restrictions. Without more, it is impossible to be certain that the number of cited references is truly excessive, but it is a number intended to impress. And as related by Mr. Clarke, it would seem inattentive if not irresponsible to file claims where a substantial number could be rejected 'alone or in combination' by this seemingly excessive number of references."

I agree that it is very unlikely that this many references would not indicate a fundamental flaw in the patenting strategy, but I can imagine that this many references could be found for a chemical compound (say, Chemical Abstracts citations), and 1600 compounds is not a very big chemical genus. And I can also envision that a simple amendment would eliminate all of them (for 102 and maybe even for 103).

The point is not to defend 1600 references per se (which of course is impossible), but that is precisely the point: take the most egregious example you can find to pull the sentiments in your direction. I hope you would agree that it is the exceedingly rare case that has more than 100 references cited. But if the purpose of the announcement is merely to say that 1600 is too many, it says too much (for of course 1600 will usually be too many). Rather, the announcement is meant to have a chilling effect, when put in the context of the new IDS rules, the new ESD rules, and provisions codifying them in pending legislation. I have no problem with a rule that says you need to justify filing 1600 references. I have a problem with crafting rules for the rest of us based on one extremely rare outlier.

Thanks for the comment.

[Kevin E. Noonan]

Puppy:

That last comment was mine - don't know why it didn't register.