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« War is Peace, Freedom is Slavery, Ignorance is Strength | Main | Last Call to Voice Your Opposition to AQS Provision »

April 03, 2008


"(2) any other information relevant to patentability that the Director, in his discretion, determines necessary."

Is there no limit as to what the Director could require (e.g. an analysis of all prior art products, including reverse-engineering as to claimed features and limitations to prove patentability), and what cost could be placed on patent applicants (e.g. $5,000,000 per application).

Promote the progress? Who writes this stuff?

Something that baffles me is why someone holds themselves out to represent patent searchers, as the NIPRA commenter above does, would be opposed to the AQS Provision? I don't have a failing business in need of propping (far from it), but I'm sure not opposed to a rule change that would make my line of work even more essential than it already is. Since my "colleague" above is always claiming to represent my industry in various blogs, I just wish I knew why he disliked growth.

Oh well, back to my EAST terminal. I'll let the big dogs fight this one out on the Hill and keep working in the trenches.

Dear APS:

I don't think the issue is the search, it is the characterization. The AQS doesn't just require a data dump (which would be foolish and just exacerbate the problem; after all, the IDS rules are written to discourage filing more than 20 references). What the Office wants is for the applicant's lawyer to tell the Examiner what the references say (since then they don't have to take the time to read them) and where they should look for claim elements, etc. It puts the lawyer in a position (1) that's an Examiner's assistant and (2) is contra to the client's best interests. That's because properly-crafted claims extend just to the edge of the art, a place where the differences may be a bit grey and reasonable people can differ. The proposed AQS would have the lawyer claim cautiously instead of boldly, and in the difference there could easily be an avenue for a third party to reap the benefits of the invention without literally infringing. In view of the parlous state of the doctrine of equivalents, and the likely prosecution history estoppel effect of attorney statements in the AQS, the lawyer will not be able to zealously represent her client.

And, of course, this doesn't even touch on the question of inequitable conduct.

It's just a bad idea. But take heart, because between the Supreme Court's fact-based, totality of the circumstances approach to obviousness and the estoppel effect of amendments, doing a prefiling search is getting to be more and more necessary.

Thanks for the comment.

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