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October 07, 2018


On this subject, I remember making a comment to Dave Kappos when he was Commissioner on the subject of large number of references cited to the USPTO. It was based on a joke that reportedly was current in Russia during the days of the Communist regime: "We pretend to work, and they pretend to pay us." The version submitted to Dave went: "We pretend that these references are relevant and the Examiner pretends to have read them."

Readers will appreciate that USPTO examiners have only a limited time allocation for each application. Encouragement on our profession to submit long lists of arguably marginally relevant or cumulative references will make the task of the examiners harder without any significant public benefit. The unfortunate nature of the denial of certiorari is apparent from the fact that the decision has potentially adverse consequences for the work of the USPTO as a Government agency in its entirety.

First SCOTUS [expletive]-d up patent law by commission (Myriad, Mayo, Alice); now it [expletive]s it up further by omission (refusal to hear Regeneron's case).

Any child can tell you that denying a person a chance to plead to their case, and punishing them for the completely independent actions of someone else, is grotesque.

Perhaps it's time for all of us in the patent prosecution world to look for a different line of work. The standard that has now been set, if not impossibly high, is ridiculously high. The cost of complying with this new standard will be far greater than what society gains from forcing applicants to disclose even more than they already disclose, an amount of material that examiners are allotted insufficient time to review in any meaningful way.

It should not surprise anyone that "reading" is not (AND NEVER HAS BEEN) what happens with submitted references.

The references are "CONSIDERED."

The choice in different verbs is both real and intentional.

By "considered" what happens is that (typically) the works are directly appended to the search algorithm that examiners use. As such, they are guaranteed to be within the corpus of works that serve as a starting point for examination.

And really, that is ALL that such should serve.

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