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January 14, 2008


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.


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

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