public hearing on - instructional media + magic | · web viewpublic hearing on issues related...

PUBLIC HEARING ON ISSUES RELATED TO THE IDENTIFICATION OF

PRIOR ART DURING THE EXAMINATION OF A PATENT APPLICATION

Written Comments

1. Todd L. Juneau

2. David Boundy

3. [email protected]

4. Timothy Rue

5. Gideon Gimlan

6. Arthur J. Hansmann

7. Stan Katz

8. Gene Scott

9. Eric S. Raymond

10. John Michael Williams

11. Ian Murdock, Secretary Open Source Intitiative (OSI)

12. Thomas D. Rogerson, Ph.D., Esq. Patent Department Rohm and Haas Company

13. Leila Schneberger

14. David M. Stemerick Thomas D. Webster, Ph.D. Lilly

15. Keith Kupferschmid Intellectual Property Counsel Software & Information Industry Association (SIIA)

16. Section of Intellectual Property Law, American Bar Association

17. Bruce Lathrop Business Attorney Environmental Systems Research Institute, Inc. (ESRI)

1 1 November 2006From www.uspto.gov/web/offices/com/hearings/index.html

18. Joy L. Bryant, Director and President Mark R. Buscher, Esq., Director and Vice-President Joseph A. Marasco, Director On behalf of: The National Association of Patent Practitioners

19. Dr. David R. Huff

20. Glenn M. Wiser David R. Downs Center for International Environmental Law (CIEL)

21. Andrew J. Anderson, Francis H. Boos, Pamela R. Crocker, Carol Kukurudza, James D. Leimbach, David A. Novais, Susan L. Parulski, Edith A. Rice, and Walter S. Stevens

22. Margaret A. Boulware President American Intellectual Property Law Association (AIPLA)

23. Exxon Chemical Company Exxon Production Research Company Exxon Research and Engineering Company

24. Tipton D. Jennings President International Federation of Industrial Property Attorneys, U.S. (FICPI-US)

25. Frederick T. Boehm Assistant General Counsel Intellectual Property & Licensing IBM

26. Stephen D. Scanlon Jones, Day Reavis & Pogue

27. Dale R. Ritter

28. John E. Beck General Patent Counsel The Document Company Xerox29. Herbert C. Wamsley

Executive DirectorIntellectual Property Owners Association (IPO)(Supplements oral testimony presented on behalf of IPO by Charles Van Horn)


1.

c/o Commissioner of Patents and TrademarksBox 4Patent and Trademark OfficeWashington,DC 20231

Dear Ms. Shaw:I am providing an initial brief series of comments in order to get the mostimportant points in early. If I have the time, I will supplement withadditional comments at a later date. My comments are personal and do notreflect, one way or the other, the opinion of the firm where I am employed.My comments are located after each question. I am a senior associate in thechemical/biotech department of a Washington D.C. patent law firm.

1. Is the most pertinent prior art being considered by patentexaminers during examination of patent applications?

>>Usually not (>90%) and then only if we supply it to the Examiner.

If not, pleaseinclude the following in your response: (a) Provide support for your conclusions and identify thefollowing:

>>The Examiner are given a few hours to search; we spend 100's of hours and$50,000-100,000 developing compilations of information for preparing ourIDS's. We also continuously update the compilations from our worldwideprosecution and opposition activities. A complete IDS is a powerful tool.The Examiner's just can't compete.

(i) The area(s) of technology most affected;

>>I work predominantly in the chemical/biotech areas and cannot comment onother areas so well.

(ii) The type(s) of prior art most overlooked by the USPTO,including but not limited to United States patents, foreign patentdocuments, and nonpatent literature.

>>The Examiner frequently do not read what we send them - we are under aduty to send it and we want the benefits of sending the very best art SO wegive it to them on a silver platter. Yet frequently they perform their ownsearch and make their rejections based on that - which is invariably weaker.Additionally, Examiner's do not correlate their own PCT search results withthe U.S..

(b) Identify why you perceive that patent examiners are notconsidering the most pertinent prior art.

>>they don't ask us to point it out for them; the current rules rules permit


us to just list it.>>they don't search for long enough (like the EP examiners do)>>many do not use highly valuable electronic search databases such as ChemAbstract Services (CAS)>>some rely on non-peer reviewed Overview articles from 1975 showing whycancer will never be treatable etc.

2. Do applicants submit the most pertinent prior art that they areaware of in connection with a filed patent application?

>>Emphatically, YES. To not do so is to end up with a patent which isdead-on-arrival; so why bother.>>clients demand it, they want patents that will stand up and which can belicensed.>>one neglected area is that in an "Information Disclosure Statement" morethan just prior art is submitted. Many attorneys are unaware that "anyinformation" is fair game and that offers to sell and other information mustalso be submitted, not just "prior art references"

If not, pleaseinclude the following in your response: (a) Provide support for your conclusions and identify thefollowing: (i) The area(s) of technology most affected; and (ii) the type(s) of prior art that is not being submitted byapplicants, including but not limited to United States patents, foreignpatents, and nonpatent literature. (b) Identify why you perceive that applicants are not submittingthe most pertinent prior art.

3. Are the current rules and procedures for obtaining prior artduring the examination of a patent application adequate and effective?If not, please include the following in your response: (a) Identify aspects of the rules and procedures that do notfacilitate the identification of pertinent prior art;

>>the current rules penalize attorneys for "characterizing the references"so we say nothing.

(b) Discuss any proposed changes to the rules or procedures toimprove the identification of pertinent prior art; and

>> require the applicant to identify the references in a letter to theExaminer where the Examiner should start his review (i.e. the mostpertinent)

>>do not limit the number of references; do not charge for "more than 50";generalized rules will wreck a system where honesty reigns and thetechnology determines the number of items cited.

(c) Discuss potential advantages and hardships that patent


applicants and examiners would face if particular changes were adopted.

>>limiting the number or charging surcharges will discourage open complianceand put the ball clearly back into the attorney's lap. This is contrary tolaw as determined by the Federal Circuit. Examiner's, not attorneys,determine what is material and what is not. Attorneys are not allowedpre-judge the items cited.

4. Are prior art searches typically conducted before filing apatent application with the USPTO?

>>yes. in fact, prosecution is so troublesome when a search is not run(i.e. the client indicates they do not want a search and opinion prior tofiling) that we frequently require the clients to have a search performed(not an opinion) as part of the applicaiton drafting process to develop thebackground (they can always refuse but never have to date because theyunderstand the importance of good preparations).

If not, please explain. If so,please include the following in your response: (a) An identification of the area(s) of technology where it is mostlikely that a prior art search would be conducted;

any areas which appear crowded as indicated by a quick search of the USPTOwebsite.

(b) The scope of a proper prior art search (i.e., United StatesPatents, foreign patents, journal articles, corporate bulletins, aswell as other types of nonpatent literature); and

>>CAS does pretty well worldwide, patents and literature. An experiencedsearcher can usually find stuff that CAS misses. A combination is the best.Frequently, Japanese patents and literature are the sleepers we use toattack other people's patents.

(c) An identification of databases and Internet resources generallysearched or available to applicants and/or the USPTO.

>> CAS, USPTO website, EPO databases, INPADOC, DIALOG

5. Please indicate whether Information Disclosure Statements arefrequently submitted and, if so, which of the following types of priorart documents are included: (a) United States patents;

>> yes

(b) Foreign patent documents and Patent Cooperation Treaty (PCT)


publications; and

>>yes

(c) Nonpatent literature, including but not limited to journalarticles, conference papers, corporate bulletins, and Internetpublications.

>>yes, the scientists can't help but publish but we do all we can to get anappln on file before the online abstracts (for the typical upcomingconference) publish.

If applicable, please explain why any of the aforementioned type(s)of prior art documents are not normally submitted to the USPTO.

6. Should applicants be required to conduct a prior art search andsubmit corresponding search results, including where they searched, tothe USPTO when filing a patent application?

>>No; you will hurt the small inventor.The patent office should do a better search (i.e. more Examiner time) forthe money you get now.

If not, should applicantsbe required to disclose whether or not a search was conducted?

>>Yes, that may technically be considered "Information" material topatentability

Pleaseexplain your rationale and discuss any potential advantages anddrawbacks.

>>the applicant can just submit his or her search results and the Examinerand applicant can start on the same page.

7. Should applicants be required to submit all prior art reliedupon during the drafting of the claims of a patent application?

>>No; a lot of what we use is cut and paste from other people's patents toexpand the specifcation for prophetic examples (i.e. basis for futureclaims) so much of it is not relevant.

>>Yes; if a piece of prior art was used to draft a proviso or if the claimscope was narrowed because of it.

Pleaseexplain your rationale and discuss any potential advantages anddrawbacks.

8. Should applicants be required to submit all nonpatent literaturedirected to the same field of invention attributable to, authored by,or co-authored by the applicant?


>>Yes; it is frequently overlooked by attorneys and Examiners alike.

Please explain your rationale anddiscuss any potential advantages and drawbacks.

9. Please identify any type(s) of nonpatent literature documentsapplicants should be required to submit to the USPTO in connection withany given patent application (e.g., conference reports, corporatecollections, documents relied on in drafting an application, etc.).Please explain your rationale and discuss any potential advantagesanddrawbacks.

>>Requiring "categories" of documents which are "required" to be submittedis a bad idea; each application has to be looked at individually. Besidescaselaw has already determined that private conference reports aboutinventions are privileged and do not have to be submitted. The USPTO shouldnot be deciding matters of evidence and privilege prospectively, it willdilute your statutory authority and probably get your rules overturned.

10. If you believe that the most relevant prior art is not beingidentified during patent examination, please identify any suggestionsto obviate this problem. In your response, please: (a) Discuss in detail any idea for addressing this problem effectively; (b) Explain how the proposal(s) should be implemented; (c) Identify who should bear the cost; and (d) Indicate any potential advantages and drawbacks for each suggestion.

>>see above

11. Please discuss any related matters not specifically identifiedin the above questions. If this is done, parties are requested to: (a) Label that portion of the response as ``Other Issues''; (b) Clearly identify the matter being addressed;[[Page 28806]] (c) Provide examples, where appropriate, that illustrate the matteraddressed; (d) Identify any relevant legal authorities applicable to thematter being addressed; and (e) Provide suggestions regarding how the matter should beaddressed by the USPTO.

>>Other Items

>>The PCT USRO Searching is severely mishandled. Some supervisor (I wouldsay ding-a-ling but I wish to remain professional) is telling the examiner'sthat they only have 1 hour to do a PCT search and report. He is also givingout Requests for Additional Fees in the $100,000's of dollars stating thatUnity of Invention requires this division. After petitioning and being toldthat this fellow was within his rights to do this, we stopped beingoutraged. We have given up on the USRO and we now get all our searchesperformed through the EPO. The USRO has lost all credibility and hasmarginalized itself to the fringes. Good Luck; you'll need it.


>>Examiner's have indicated that they are being pushed to grant rushedpatents and that this is pushed from the top. Applicant's no longer counton the Examiner to provide any real input in the crafting of a valid patent;we have lost our negotiating partner on the other side and are now forced toattempt to represent our clients zealously while ensuring receipt of a validpatent. Speed has killed the person looking out for the public interest;the Examiner.Advice: people will wait outside a restaurant that serves good food, theywill not tolerate a restaurant that serves double helpings of bad food.

Todd L. JuneauPatent Attorney1030 15th Street NWSixth FloorWashington, D.C. [email protected]


2.

Response to Request for Comment on Issues Related to Identification of Prior Artduring Patent Examination

Question 7 asks whether applicants should be "required to submit all prior artrelied upon during the drafting of the claims." Question 8 asks a similar "all"question.

Unqualified no, for a number of reasons.

First, practically, any rule with the word "all" in it is likely to generate alarge number of references in many cases, references that are specially selectedfor their low relevance.. Between my inventors' and my own knowledge, I oftenconsider (and thus rely on) two dozen items of prior art. Then I draft theclaims specifically to exclude them., Thus, any "all" rule is likely to be veryburdensome on all concerned, with very little improvement in the quality of thesearch.

Second, of course, this will spawn a large amount of satellite litigation --exercises of good judgment, even conservative judgment, become inequitableconduct. The inventor mentions some prior art, only in the context of showingthe contrast, or to show how a technique can be implemented -- and now it'sgotta be disclosed, no matter how irrelevant to the claims. The rules shouldnot be changed to disallow the exercise of common sense.

Basically, I think that the present Rule 56 is roughly correct, but could betweaked a bit at the edges. An applicant who has a valuable invention has anumber of incentives to do a search, and submit the results. All applicantshave strong incentives to disclose as much as they know (inequitable conductquestions of enforceability, the wrath of the Office of Enrollment andDiscipline). Applicants also have incentives to not clutter the examiner's lifewith art that prevents the examiner from giving the claims a focused andthorough search.

To digress a bit from your questions... Perhaps search should be made more of acooperative effort between examiner and applicant. I think it would be veryhelpful if the examiner gave the applicant a phone call when beginning to workon a case. I find that roughly 10% of the time, it comes clear in the 1st or2nd action that the examiner completely misunderstands the claim. With an earlyphone call, the scope of the claims could be clarified, so that the work theexaminer does is more focused, more productive. Further, I often havesuggestions for searching the prior art. The suggestions aren't well enoughformed that I can put them on the record -- perhaps it's a dim memory of acomputer made by a company that went out of business in the 1970's, and neitherI nor the inventor have any access to information on which to confirm thathunch. I'd be happy to give an examiner this lead, but there's really no way toconvey this information in a 1449. I'd also be happy, off the record, to pointthe examiner to the most relevant portions of each reference that I file, and to


indicate which are really relevant, and which are there just to cover any hintof inequitable conduct. But given the realities of modern patent litigation, Ican't say these things on the record.

First suggestion. Possibly there could be a limited exception to the "allbusiness in writing" rule, allowing one free phone call before the first search(and after the examiner has formulated his own proposed search). In this phonecall, applicant and examiner could discuss the scope of the claims, and anapplicant could direct the examiner's attention to the key aspect of the claims(and possibly get one free amendment to clarify claim language that has anunintended meaning -- recall, this is all happening before the first search, sono huge effort is invested before the amendment). In this phone call, anapplicant also could offer suggestions on searching. By making the firstexamination really pay off, I suspect that the net effect would be to reduce theworkload for each application.

Second suggestion. A letter from the Commissioner to all patent attorneys mightbe helpful to remind attorneys of the incentives to disclose. In my practice, Iobserve that much of the non-litigating-prosecution-only portion of the patentbar often forgets that the whole point is to get a patent that is valid andlitigates well, rather than an empty piece of paper. To my way of thinking,disclosure under Rule 56 benefits of the client. I have heard many attorneysopine oppositely.

Third suggestion. Perhaps a letter could be sent to inventors and assignees (atthe time of mailing the filing receipt?) pointing out the importance ofdisclosure, and requesting prior art. The letter could hold out the carrot ofthe enhanced value of the patent if there is good disclosure. Perhaps theletter should ask the inventor/assignee to rat on the attorney if the attorneyfailed to serve the client's interest by not querying the inventor for the bestavailable prior art.

I imagine that there are other opportunities for examiner and applicant to worktogether to get a good search and valid claims, and incentives that can beraised to make sure they get used, though they do not immediately come to mind.

David BoundyReg. No. 36,461212-848-7928

Of course, my opinions are my own, not those of my employer or clients.


3.

I suggest the PTO refund a portion of the filing fee to those applicantssubmitting an IDS accompanied by a declaration containing details of theprior art search that was made meeting standards set by the PTO as toclasses and subjects searched. These cases would not be searched by theExaminer except for the art known to the Examiner.

Submitted by [email protected]


4.

-----------------------------------------------------------------------Addressed to: June 18, 1999DEPARTMENT OF COMMERCEPatent and Trademark Office

RE:Notice of Public Hearing and Request for Comments on Issues Related tothe Identification of Prior Art During the Examination of a PatentApplication (Ref: #1)

From:Timothy Rue1869-4 Hudson Crossing Rd., Tucker, GA 30084(404) 728-1006 <[email protected]> <[email protected]>

I do not represent an organization, so this response is my own.-----------------------------------------------------------------------

Although I cannot specifically answer questions 1 - 9 of the PTORFC (Ref: #1), The subject matter of prior art and how well it is accesseddoes appear to be the general topic of concern and a concern to me. Withthis, I hope to present such an "opposite end of the spectrum view point"that you may see a much WIDER SCOPE SOLUTION DIRECTION to what really is:

A RECURRING SITUATION or ISSUE (Ref: #2).

I will do this by presenting a response to question 10:

------------------ 10. If you believe that the most relevant prior art is not beingidentified during patent examination, please identify any suggestionsto obviate this problem. In your response, please:

(a) Discuss in detail any idea for addressing this problem effectively; (b) Explain how the proposal(s) should be implemented; (c) Identify who should bear the cost; and (d) Indicate any potential advantages and drawbacks for each suggestion. ------------------

First My "Point of View" Concerns Related to the Current PTO RFC:==================================================================I have been intentionally using Usenet to create prior art evidence.

I am not one wishing to seek a patent grant but one wishing to prevent apatent grant on something of physics and nature regarding our use ofabstractions, which requires a base in man made technology to objectively


recognize and make productive use of. (Ref: #3) Ironic as it may be, I dobelieve this very thing (tool) can solve or greatly help to solve thisrecurring issue.

Usenet in the current state I would say is a Hostile Environment!However, as a value it is the only date time stamped public recorderavailable.

Two questions in my thoughts, given the current PTO RFC:----------------------------------------------------------1) Is Usenet searched, in dealing with Intellectual Property issues?

2) Should I need to know all there is about patents to prevent one by establishing prior art?

What I understand Usenet origin to be:----------------------------------------The origin and reason by which Usenet was created is US National Securityfrom the possibility of losing information in the event of nuclear orother such attack. In other words, Usenet originated out of the concernfor protecting information, and initially done by the US government withUS Government National Security Specs, I would imagine.-----------------------------------------------------------------------

Given my concerns above, I realize Usenet is a very large body of mixedinformation to search, as is the rest of the internet. So, The Problem...

THE RECURRING ISSUE (MASS vs. TIME):====================================

The RECURRING ISSUE is one of MASS (or quantity) VS. TIME. In this case, itis regarding Intellectual Property searches. The mass of information tosearch vs. the time to do it with quality and completeness.

A matter of Physics and Nature.

But this "MASS VS. TIME" issue has been addressed and solved many timesin human evolution. In recognizing the actions and sequences of actionsby which we do this, and all other things, we are provided the solutiondirection for the current PTO RFC issues.

What we do with the recognized sequences of actions is to define themto an abstraction for later use!

Simplification and obviousness may be inherent in the following,depending on the reader, but these things need to be brought forwardso to explain the solution direction.

What We Do First:==================


To streamline communications (solution direction)We "DEFINE" Things, using of course ABSTRACTIONS.

Symbol(s) = Extended Definition

(I.E. Patent NAME and/or NUMBER = extended information of patent.)

This is the most basic action we use in dealing with mass vs. time. Butnow we must deal with a growing mass of "symbol(s) = extended definitions",inclusive of sets of "symbol(s) = extended definitions" and details ofdefinitions.

We need to organize these for accessibility ease,so here we "DEFINE" this term:

Knowledge Navigational Mapping" (KNM):=======================================Knowledge

That which is or may be known; information.

Navigational

The act or process of navigating. The art or science of plotting, ascertaining or directing the course of a ship.

Mapping

To represent or delineate on or as on a map.

This provides us with a general picture of what we need. Still needing tobe filled in with more and more specific details. A "Focusing In" processnot so different from searching for information, but here we are fillinginformation or details in.

Now we need a tool for DOING Knowledge Navigational Mapping (KNM):===================================================================

The physics and nature of such a Tool will need to be:

* Human oriented, because we are the ones generating the "Knowledge" and the ones needing to use it. (must be as intuitive as possible)

* Create no limitations on what knowledge may be accessed or processed or even how it is processed, allowing the inclusion of current methods and means. Must be versatile, able to handle exceptions, Always!

* Must not evolve in such a manner to itself become increased overhead. Must be streamlined and consistent in use and evolve in further


streamlining improvement only when this can be done without breaking any maps previously done.

* Must not require current knowledge content to be altered, if at all, in such a way that distorts the knowledge. And if any alteration is done to content, it is at absolute minimal and of such nature that it improves the knowledge accessibility value.

* Knowledge (Abstract Symbol(s) = Extended Definition) items remain external to the tool.

* Maps can be standardized, or custom made so to handle personal or field specific objectives, but most important maps can be shared and even easily combined regardless of style.

* Maps, like knowledge, remains external to the tool.

The above is more a brief reverse engineered wish list of such a tool,but what is important is how we get to the point of looking back to seethese things are possible.

To start, we identify the fundamental SPACE and ACTIONS we use in allthings we do, and to streamline these through integrated teamwork of thisspace and action set (a small finite set of repeatable actions in digitalspace.) Then to provide the user with a KNM tool they can use todynamically automate these actions, in and on this digital space.

STARTING AT STATIC GROUND ZERO (available space):==================================================

Existence exists - but what exists in existence is a variable.This is Physical Space for content placement.

Consciousness exists - but what exists in consciousness is a variable.This is Intellectual Space for content placement.

We record our intellectual space content into physical space content,Symbol(s) = Extended Definitions, so to later access it and enable othersto access it. The abstraction tool, computers, greatly aids and speedsthe process here, so it's digital space we are generally referring to.

MOVEMENT ONE LEVEL ABOVE GROUND ZERO:======================================

We Consume and We Produce.

The process of this follows the primary production triplet (also foundin programming):


"Input -> Process -> Output"

Where ever we are between kids putting blocks together, to rocketscientists putting things together in order to figure out how to put otherthings together, we put things together to produce additional sum value.

We use abstract communication (ABSTRACTIONS) to help us put thingstogether, including putting teams of people together so to put largerthings together. Even when working independently of each other, abstractcommunication is being used between parties.

We start with building simple things and then move on to more complexthings, but all this is done by doing sequences of simple things. Simplethings that can be identified as a small finite set of repeatable actions.

When we get to the point of having to much to deal with in any given timeframe, we create above this level, that which allows us to go beyond theselimits. Overcoming the MASS (physics) vs. TIME (nature) constraints viaSymbol(s) = Extended Definition.

MOVEMENT TWO LEVELS ABOVE GROUND ZERO:=======================================

This is the third major time in human evolution we have reached such awide-scope of limitations impact. PTO recurring issues are only a part orsymptom of a bigger problem.

First, we had to move from the bicameral mind to the conscious mind to beable to create and use higher level abstractions. Society had reached alimitation on how much could be communicated with lower level or morenaturally direct abstractions. You can see this as moving from two pointsup to one, where analytical mind + creative mind = higher abstractions.(Tower of Babel is one event of conscious evolution conflict. REF: #4)

Second was the Abstract concept of Zero. The "nothing" of Zero being a"placeholder" for "something." Business reached MASS vs. TIME limitations(counting inventory, money and simple math). The Zero placeholder with theHindu-Arabic decimal system got us past limited Roman Numerals. (REF: #5)

This Third time it is the MASS of Abstraction Sets and use of, as over3000 programming languages are only a part of the computer industriescontribution to the new Tower of Babel. Abstraction overload leading toa needed solution direction of using Abstraction-Placeholders in KNM.

Even the PTO has its given vocabulary or abstraction set, as any industrydoes. However, the PTO must also deal with vocabularies of many industriesand the critical mass limitations of the primary production triplet.

To overcome this critical mass limitation, we identify that the primaryproduction triplet can be further broken down into nine user oriented


actions on Abstraction-Placeholders, or "Virtual Interactions." (Ref: #6)

This gives us finer tuned operation and control, than the triplet alone.Putting these nine in a logical "Configuration", for recursion control,provides ultimate versatility, exception handling, for the user. Hence:

The Tool: "Virtual Interaction Configuration" (VIC):=====================================================

The NINE-(9) actions we do in all things we do are:

1) AI (Alternate Interface)You start or begin things and stop or end things. In doing this youchange what you interface with. Here it is the startup and shutdown of aVIC with optional startup settings and minimal external runtime control.

2) PK (Place Keeper)You need to know where you are in doing something, keep track of things,especially if you need to set something aside to do other things beforeyou can go back and continue. Here you keep track of the nine actionsconfiguration values and optionally manipulate any of these values.

3) OI (Obtain Input)You get things into a "holder" to pass to a "place" of use by other things.This is one way we create symbols or "holders" for our definition content.Usually text based definitions or sequences would be originally createdusing a text editor. Here we get user input into "placeholder" variables.

4) IP (InPut from)You select where you are getting something from and optionally what partto get when you get things.

5) OP (OutPut to)You select where you are sending something to and optionally what partto send when you send things.

6) SF (Sequence stufF)You do things a step at a time, even when your doing more than one thingat a time, each you do a step at a time. And the things you do includesdoing the nine things, but only as much as you need. This is where yousequence sequences.

7) IQ (Index Queue)You look up what things mean, and use the meanings to (SF) "SequencestufF." Often the meaning is from a Selected Abstraction Set. What youpass to IQ can be through a placeholder variable you create.

8) ID (IDentify things)Sometimes you must know what something is before you know what to do.(I.E. to put away the variable contents of incoming boxes, you must lookat what the contents is to then know where to put it.) So, you identify


things to see what they are. Once you know what something is, you can (SF)"Sequence stufF". What you pass to ID can be through a placeholdervariable you create.9) KE (Knowledge Enable)When looking up or testing something (IQ and ID), you may only want acertain part of it. This "KE" helps you narrow down what you want tolook up (IQ) or test (ID). When you look up a word in a dictionary,you limit your search to the section starting with the first letterof the Word. Additionally, you may want only a part of the definition.Consider this like the legend key of a map, blueprint, "how to read"instruction, etc. but applied in the space of abstractions.

These NINE actions can easily be made available in the form of computerfunctionality, easy for us to use. With this, we can Automate the thingswe do through computers by sequencing of loops and search findings(abstract definitions access).

This Virtual Interaction Configuration (VIC) provides us with the gearsand bearings or carrier wave for processing abstractions.

Because our minds are acting on abstractions far more often than we'lldo through computers, our ability to see ourselves doing these things isextremely difficult (a matter of inherent subjectivity). But by doingthese "actions on abstraction" through the tool of computers, we can befar more objectively aware and productive with these actions.(Also Ref: #3)

With the VIC we can organize and automate our use of abstraction setsthrough the, wide scope capable, abstraction tool computers really are.

KEY TO GOING FULL CIRCLE:==========================We Define Things into abstractions (symbols).

Symbol(s) = Extended Definition

The media of our "abstraction = definition" can vary from ASCII based tobinary based, to non-computer based forms such as printed text or othernon-digital based forms.

It is the definition part that we sequence here and what the nine actionspass around, act upon, and sequence. A defined sequence that can be of anymix of text to read or act upon, VIC action to do, programs to execute,commands to control applications, etc. Focusing in through use of keys.

I.E. This Document itself is marked for KNM use.

The Key is optionally on the first line: 'filekey : :: :::'


and could be changed to: 'filekey : # :::'to "focus in" the References hereor for focus on the 'bullets'. 'filekey : * :::'

For further "manual focusing in" on details of functionality see:

:::http://www.mindspring.com/~timrue/IQ-1-9-1999.html

Here you will find an AREXX application 'IQ' that is a stand-alone versionof the 7th command/action of the VIC, along with other examples, moreinformation, details and specs about the VIC.

In Summary:============Using Knowledge Navigational Mapping methods and tools to Map and NavigatePatent and other information, will inherently help improve the Quality andCompleteness of Patent searches for Prior Art.

The main elements of KNM are:

:: Knowledge - symbol(s) = extended definition(s)

:: Maps to knowledge - where to look (search paths and loops.)

:: Keys to maps - what parts to look for (constrain to.)

KNM Possibilities (Advantages):================================The VIC tool is content independent, as is needed of a tool able to handlemany different fields of knowledge.

The VIC tool is open system oriented (also see disadvantages.) This isneeded to support overall versatility and information format changes.

I cannot say exactly how mapping and navigation of Patent and non-patentresources will happen here. But what I am sure of is that these nineactions and the configuration (VIC) provides, in analogy would be ofsymbols of mathematics. Where you know the base tools can get you whereyou want to go, and it is possible to get to the same point from differentmaps, and to combine maps.

Nobody knows how knowledge will be represented tomorrow or years from nowwith the technology of computers. I.E. Multi-media 3D Virtual Realityanimation may be a valid means of describing an object of patent. Due tothis, it is important to have open systems so to easily enable the userto include accessing such a "player" to run the given animation.

The PTO will develop it's own in-house use methodology, based on it'sexpertise, focus and goals, just as all others will follow their own.


I.E. Given the different Patent databases both public and private and thedifferences in tools and how each is optimally used, one might want toinitiate the execution of the tools they have access to, each at it'soptimum performance. However, to do so via automated sequence, for theuser to later look over or further process (focus in) the findings.

Dynamic Automation:A sequence can be defined with placeholder variables and set in sequenceexecution later, with user input requested for filling in placeholdervariables content during sequence runtime, or from predefined variables.

Vocabularies or abstraction sets you will have available from specificknowledge field or industry, company or organization, personal preferencesand current goals. These will help you determine how "you" make use of KNM.

In mapping, you only need to reference one thing to have the option ofaccessing what all that one thing in turn references.

Users in general will become skilled dual role capable. Besides search andfind (navigate), the same skill is used to insert (mapping). Though thePatent office would have its official knowledge maps related to patents,trademarks, etc., others will have their own custom mapping, This usageconsistency in general helps to inherently gear people to understand anddo better searching regarding Intellectual Property matters.

Perhaps the best advantage is the user is not required to sacrifice currentskill but is allowed to integrate and automate as they may, and to whateverlevel or degree they want, when they want. All done by doing simple things.

Much of current existing information can be easily mapped.

KNM Open Systems vs. Patent Incentive (Disadvantages):=======================================================Extreme Resistance To Genuine Open Systems! (REF: #7)

Although the VIC can work on even older closed systems, the more open asystem is, the greater potential the tool has for being productive.

Intellectual Property machinery provides incentive to pursue the evolutionof Closed Systems rather than Open Systems, though Open Systems are moreproductive of solutions needed. The Closed System Intellectual Propertyincentive is to protect Intellectual Property return value longer in thisfast moving industry and this inherently leads to Consumer EntrapmentAbuse and incompatibility.

Communication or "vocabulary sets" used with Patents includes heavy useof Intellectual Property "Offensive" and "Broad Claims" incentives. Orclaim as much Intellectual space or land as you can, while doing what youwill to constrain or prevent others from finding and going to land yet tobe explored.


Ultimately, the problem here is one of personal stake in closed systems.You might say closed system stake holders want the world to be flat, butthe world and knowledge of it is far more than just flat closed systems.

Implementation and Cost (Advantage vs. Disadvantage):======================================================This Advantage vs. Disadvantage issue is one of overcoming theresistance to genuine open systems. This is the hard part.

What is an Open System if not a system that enables the user to putthings together? Moreover, to what degree must a system enable thisbefore it is considered a genuine Open System?

There is a need to increase the incentive to support Genuine Open Systems.

The incentive target is perhaps the following equation:

Maximum employment rate + reduced tax dollar spent vs. advancementconstraints cause. Or - How many more people will it take to change thelight bulb tomorrow before everyone has a job? (Ref: #2 - Mr. GURAL)

A new field of Knowledge Navigational Mapping can replace that of pseudosoftware engineering while increasing the call for and success of genuinesoftware engineering (High Integration Mapping.) (Ref: #8)

* Information mapping and Data Mining. Certainly the mapping of information will help us better deal with accessing the ever increasing information generation overload. Perhaps some information generators will move to information mapping as a part of new information generation.

* Software Auto-Coding - solving the "software crisis" via dynamically automating the dos', don'ts', standards and all other referenced repeatable actions in the manual coding process, etc.

* Artificial Intelligence by-product illusion via automation from KNM. Likely to Pass Ultimate Turing Test via side effect illusion. (Ref: #9)

* Current Virtual Reality will gain a boost via open system multi-faceted mapping and navigation automation. Note: there is value potential to Virtual Reality beyond entertainment, spanning many fields.

* Sum total of the above and beyond. Given the ease of combining maps, such a tool will aid an increase to the rate of technology advancement, via reduction in re-invention through automation and AUTOMATION LAYERING and sequencing.

By allowing many more to put things together, and put new things together,without false limitations imposed by others, the better things we will allhave available to us sooner. With this, it helps to provide incentive andfocus for doing. This is the business aspect, also of obvious inherent


logic. To consume and to produce value is what we all do, but how fast wemove forward is determined by how well we are able to do so.

With all of the above, it's easy to see that pursuing genuine OpenSystems in hardware and software user oriented modularity will alsofuel advancement by allowing more to do more!

Cost: The development of a small shell program code (abstract definition).

Public generic source code - public (government) generated.

Platform specific public source code - public and private generated.

Abstraction sets - definition sequences, maps, and keys. Created by the spectrum of users, field specific professionals and developers of High Integration Maps.

GUIs - the VIC being a shell, these would be custom made if needed. But through Open System modularity and Auto-coding, Customizable GUI tools and definitions will come about.

Improvements and Standards - the VIC tool, maps and keys will evolve with standards for the value of standards. Common agreed upon understanding so to get things done, but exceptions allowed.

Government Funding:

You might say I don't know the vocabularies (abstraction sets andrules of use) of government funding. To figure this out, I would accesssomeone knowledgeable and experienced with such vocabularies.

Programming Talent:

Although I know enough about electronics and programming to knowthere is no physical or logical constraints preventing the VIC from beingbuilt, again you might say that I do not know the vocabularies (the useexperience) of programming well enough to create this with the ease of aprogrammer having a few years of experience (3-5). I do know what the VICtool needs to do and I believe there is likely shell code in public accessto work from, so talent would be obtained by whatever method appropriateand commonly used. I believe with the right programming maps I would beable to easily create it, but that is the catch 22 for me. Although I haveaced all courses I have taken in computer electronics and programming, mybackground is based in carpentry and the trade shows industry multi-talentpool where I get a good overview of large projects and multi-industries.

FINAL NOTE:============Again, it is the Knowledge Navigational Mapping Tool, the Virtual


Interaction Configuration of which I have worked to prevent a patentor other Intellectual Property control grant from being issued on. Butrather worked to insure no exclusive rights are placed on it.

Having first sat down to use the VIC via combining existing tools (whichclosed system elements or remnants prevented) I KNOW it is of the naturallaw logic of the physical phenomenon of using high level (consciouslycreated) abstractions. Much like mathematical algorithms or more like theprimary mathematical elements. Except here, we are able to go beyond mathabstraction sets to handle abstractions in general.

References:=========================================================================#1) http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm The above file References "35 U.S.C. 102 & 103 (1996)" Which can be found at: Manual of Patent Examining Procedure http://www.inpress.com/knowbase/mpep/toc.htm more specifically: http://www.inpress.com/knowbase/mpep/2100/toc.htm

#2) UNITED STATES DEPARTMENT OF COMMERCE PATENT AND TRADEMARK OFFICE PUBLIC HEARING ON TECHNICAL DOCUMENTATION STRATEGY Friday, May 31, 1996 http://www.uspto.gov/web/offices/com/sol/notices/techhear.txt (The above is three years old but it provides insight into the complexities of mapping and navigating knowledge in very real world terms. Reading it can help one better understand the depth and width of the current "Request For Comment" (RFC) regarding "Prior Art."

#3) Computers are unique in that they are the only man made tool which allows us to move our thought directly into functioning reality.

Computers allow us to objectively see and use the natural laws of the physical phenomenon of using abstractions. Just because computers are man made and a direct application or program of these natural laws can also be man made, should not mean the application is patent-able.

To be patented would be to indirectly own that which is not supposed to be own-able, simply because there is no other option to so objectively access and use these natural laws. To indirectly own the natural laws of our ability to do things through computers, is to cause a dictatorship effect of who can and who cannot use a computer to be productive and make advancements using computers.

#4) Julian Jaynes - The Origin of Consciousness in the Breakdown of the Bicameral Mind. Published by: Houghton Mifflin ISBN 0-395-56352-6

#5) Yasuhiko Kimura - Neo-Tech, The Philosophical Zero.


http://www.neo-tech.com/finalevo/evo-041.html

#6) The World of Elementary Particles, by Kenneth Ford. A diagram of: "a network of virtual interactions" used here as a metaphor for the "virtual interaction" concept we are targeting for abstraction usage (rather than subatomic particles).

#7) It may be worth mentioning that the improved productive value of "open architecture" or "open system" is something to keep in mind. Consider that the Amiga, an "open architecture system" began it's fall (*) at the time "open system" research (Carnegie Mellon University Software Engineering Institute) was beginning to show increased productivity over "closed systems".

[* Two consecutive bankruptcies and other pointless delays, but never was the Amiga credited with the falls, rather it was the PC side of these companies that pulled the company owning the Amiga down.]

This along with no real open system to replace or compete with the Amiga as a genuine consumer level open system (**) causes eyebrows to raise and suggest evidence of resistance to open systems.

[** Linux is the closest thing but lacking in some important ways.]

#8) Scientific American September 1994, Pg. 86, Software's Chronic Crisis Pg. 92 -- the engineering evolution paradigm parallel pointed out by Mary M. Shaw of Carnegie Mellon University. I (Tim Rue) believe this Virtual Interaction Configuration is the missing tool to bridge commercialization, science and professional software engineering.

#9) If Man Created Consciousness (Julian Jaynes) | MASS=Physics=SPACE | Then What Is The: | - - - | KNM tool - Virtual Interaction Configuration | TIME=Nature=ACTION | ?


5.

In regard to Question #6:"6. Should applicants be required to conduct a prior art search and ..."

Let me make my answer simple: Absolutely not.

Too many practitioners in the "technical" arts think too highly of themselves and overlook some basic fundamentals concerning human behavior andhuman psychology.

It is well known in the arts of human behavior that people see only that which they are pre-disposed to seeing.

A patent applicant will be pre-disposed to viewing the prior art in the light most favorable to his/her case. It is not psychologically possible for a patent applicantto perform a search in the same way as would a dettached third person. It would be a big waste of time & resources to demand that all applicants conduct their own search. The worst case outcome would be if Examiners come to relyon the search results of applicants instead of doing their own independent search.

Also, it is understood that there are certain specialized skills and tricks of the trade that are known to experienced searchers. For sake of efficiency to society as a whole, searching should be left to the pro's.

Thank you for considering this answer.

Respectfully,

____________________________________________________________________________Gideon GimlanFliesler, Dubb, Meyer & Lovejoy LLP Voice 408.748.73003945 Freedom Circle, Suite 770 FAX 408.748.7310Santa Clara, California 95054 [email protected]______________________________________________________________________


6.

item 2: Yes, in my practice.

item 4: Yes, in my practice. Scope is U. S. Patents and business publications. searching the IBM and uspto sites and private searching in the PTO.

item 5: Yes, in my practice. Including U. S. patents, and nonpatent literature.

item 6: No to both questions. Inferior searches could be made and that would render useless a requirement for searching. item 7: No. I believe that is already implicit in presenting a disclosure

statement and the claims.

Item 8: Yes. Where it is more than one year in publication.

item 9: (responded to under item 8)

I believe the present rules and law adequately govern the disclosure of prior art, and no further rules are necessary.

Arthur J. HansmannReg. No. l7,113


7.

Subject:

PTO Public Hearingssee <http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm

Dear Ms. Shaw:

I have been alterted to your Public Hearing ( Docket No. 99-0512128-9128-01 )on software prior art identification. Your hearing was publicized on the website of the League for Programming Freedom <http://lpf.ai.mit.edu/index.html>.The LPF has sited numerous examples of difficulties relating to thediscovery of prior art in software. I recommend that your staff carefully examinethe citations on the LPF web site to help improve the examination proceduresof the PTO.

My personal exploration of the LPF material has motivated me to expressmy own concerns regarding prior art. I will be general, and I will not listcitations in this email, but I urge you and your staff to visit the LPF site asbackground to my comments.

A. THE IMPOSSIBILITY OF DOCUMENTING ALL INVENTIONS IN SOFTWARE

It appears that PTO statute, and case law, permits anyone to patentsoftware prior art, even if original inventor's source programs were madeavailable to the public. As I understand it, this can occur if the originalinventor did not fully document every invention incorporated into the software. The citations from LPF sources, strongly imply that software, written years before a patent applicant made a submission, were denied as prior art. This state ofaffairs is intolerable in light of the mandate to the PTO to "Promote the Progressof Science and Useful Arts". Software developers typically incorporatedozens, or hundreds of inventions in each program. Large computer systems, such as the X window system developed with federal and industry funds, and released to industry and academia in source form, over 15 years ago, probablyincorporates hundreds or thousands of inventions. The X system is very large, and it's specifications and manuals encompass many volumes. Nevertheless, thesoftware inventions were not documented! The X system requires a full bookshelfof documents to be used effectively by developers, but full documentationof all software inventions for X would probably require a small library roomfull of bookshelves!.

Instead of the several millions of dollars invested in the X window system, rapidly developed by gifted MIT technologists, several tens or hundreds of millions of dollars would have been required for complete documentation of all software inventions expressed in the X window software. Clearly, documenting all inventions, beyond release of the source code, is impractical in many cases.


Software written many years ago is now threatened with patent infringement because of the nature of program creation, as elaborated above. Damage to the public due to patent of prior art software is doubly harmful when the original software was contracted for by the federal government, and then released to industry and the public in source form, to promote economic progress. This state of affairs is a downright tragedy.

It is obvious, that as long as software patents are permitted, a great deal of prior art will be patented. The developers and users of this prior art must not be held hostage to large corporate interests who can afford to submit hundreds or thousands of prior art claims. There should be injunctive relief for any firm or developer who can show that prior art, in the form of source code, was in the public domain prior to the patentholder's submission.

B. EXTREME OBVIOUSNESS OF BUSINESS PROCESS AND EXAMINER LIMITATIONS

Extreme instances of obvious business process patents have occured, these ridiculous patents ( eg. 5,883,870 ) are not worthy of the PTO. The above patent refers to the incorporation of bar code into the business process of filling a prescription. Pardon me, but the obviousness of the application of bar code ( a 30 year old technology ) to the claims of 5,883,870 should be perceivable to any american born computer literate teenager, or to anyone who has been developing bar code technology for the retail trade.

As to the question of business process patentability, the mere utilization ofcomputers must not be an excuse for patent. If examiners are to be competent to evaluate new art which is a blend of software and business process, they must be multi-disciplined. Examiners should be hired who are CPA's with a solid minor in computer science. There are thousands of accounting systems documented in reference volumes in public, university, and business libraries. These texts dating back to the 1920's and further, document a massive number of business processes. Many of these processes can be implemented verbatim in software. There are certainly thousands or millions of obvious adaptations of these systems to make them compatible with computer operations. All of these sources have persisted into the computer age. Any inquisitive, native born american, with the aptitudes to become a PTO examiner, and training in modern accounting/business system principles, would have been exposed to this prior art.

C. EXAMINER COMPETENCIES

I am concerned that examiners are not being trained who are technologicallyliterate. Merely possessing a computer science degree does not equip onefor multi-disciplinary evaluation of patent claims. Most computer sciencemajors do not have concurrent majors in engineering or physics. Therefore, allprior art in the domains of information theory, digital communications, and controltheory is not pursued by them. A great many "inventions" dealing with softwarefor networking, the internet, multimedia, and general data transformation overcommunication channels, have direct analogs in applications for the switchedtelephone system, satellite broadcasting systems, and military communications. Citations for these mature, heavily engineering oriented technologies, do not appear with popular computer terms like "client/server", metadata, multi-tier, etc. Nonetheless, much


of what appears novel when confined to ACM and other computer publications, has already been exploited if a careful reading of communications and digital electronics periodicals over the last 50 years is made.

The PTO must take into careful consideration the millions of lines of sourcecode in the public domain, accessable thru the worldwide internet. I ammaking a copy of this email available to my elected representative, and amurging him to consider legislation that would give full protection to prior artsource code, without descriptive documentation, under Section 10.35 USC. 102,a, b, and g.

The courts have unwisely thrust the PTO into the realm of software patents. As a technology professional, with over 30 years of experience, I must strenuosly oppose them. My sentiments, in regards to obviousness challenges for hardware, versus software, would see 100 software patent applications rejected, for every one hardware.

And I am being generous.

Stan Katz1 Reeder PlaceSuffern, NY 10901


8.

To: Ms. Lois BolandRe: USPTO notice of public hearing and request for comments on issues related to the identification of prior art during the examination of a patent application.

Dear Lois:

I currently practice as a US Patent Agent #37930. I have filed hundreds of patent documents and prosecuted most of these patents to issue.

Recently I attended a monthly luncheon of the Orange County Patent Law Association at which the speaker, a research specialist, to my amazement, spent about 90 minutes presenting dozens of patent cases where little or no proper prior art was recognized by either the filing attorney or the Examiner or both. I have a strong background in research and believe that most of these cases should have had cited art. One issued patent presented zero prior art. After research, the speaker found a technical paper published by the same inventor two years prior to patent filing, that fully disclosed the patented matter.

When I asked the speaker what was "going-on," his reply astonished me. It was his opinion, after working closely with hi-tech companies for years, that some (many?) large technology based companies, such as IBM, have a policy of filing patents on everything they can think of, with as little prior art as possible. "Let the competitor spend the money to invalidate the patent if they can" seems to work better than spending research money upfront only to self-disqualify possible profitable commercial positions.

This issue seems to define a juncture between legal and business cross-purposes.

I believe that the solution is to have the inventor sign a mandatory further declaration when filing his application. This declaration would clearly, define in detail, what was searched and what was found by the inventor. There should be no excuse today with the type and quantity of research material available, literally for free, on the Internet for anyone to complain of a hardship in prior art discover.

I believe that the PTO should reject any application that does not present a best efforts prior art discovery and teach its relevance to the novel matter.

Doesn't it seem odd that the Examiner is faced with the full burden of prior art discovery when the inventor has worked in his art field for years in most cases? Lets face it, if an inventor thinks he/she has invented something novel, shouldn't he/she be required to have a reasonable basis for such an opinion?

Respectfully,

Gene Scott


9.

This mail arrives pursuant to the Federal Register excerpt at

http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm

requesting comments on how the U.S. Patent and Trademark Office can improve its procedures

In the area of computer software, a major and important source ofprior art presently not recognized by the USPTO is archives ofopen-source software; that is, software distributed in source codeform and made available under licenses that permit redistributionand modification of the source without fee or legal restriction.

Major open-source repositories include:

Metalab: http://metalab.unc.edu/pub/Linux/welcome.html Python Software Activity: http://www.python.org CPAN http://www.perl.com

Pointing a browser at http://metalab.unc.edu/pub/Linux/!INDEX.htmland exploring a bit should prove especially instructive.

Open source should be particularly important to the USPTO because iteffectively expresses (indeed, it *defines*) the state of commonengineering art among software designers in the Internet and Unixcommunities, both of which are rapidly growing in importance as theInternet becomes more pervasive in the world economy.

There are many, many bad software patents that would never have benissued had the PTO been aware of prior art existing for many years (in some cases for decades) in open source.

On this page, you request:

> 1. Name and affiliation of the individual responding; and

I am Eric S. Raymond, the president of the Open Source Initiative(OSI). The OSI promotes and maintains the Open Source Definition,which is a set of criteria for open-source software licenses that iswidely recognized as authoritative both by the Internet community andby major software vendors such as IBM, Netscape, and Apple.

For more information on OSI, please see our site at http://www.opensource.org

> 2. If applicable, indications of whether comments offered representviews of the respondent's organization or are the respondent's personalviews.


The OSI Board has not approved this note (the timing was bad; your hearings begin tomorrow, I only found out about them last night, and we won't meet until Wednesday). However, I confidently predict that it will endorse the representations about the parlous state of the present system made here.

Your solicitation of comments requested the following specifics.

(a) Provide support for your conclusions and identify the following: (i) The area(s) of technology most affected; and

Computer software. Especially, technologies bearing on operatingsystems, networking, the Internet, distributed computing, graphics,and multimedia.

(ii) The type(s) of prior art most overlooked by the USPTO,including but not limited to United States patents, foreign patentdocuments, and nonpatent literature.

Open-source software archives. Especially, the codebases for themajor open-source products that are the running gears of the Internet:

* The Linux operating system (which by many estimates now runs aplurality of all the Internet servers in the world).

* The various open-source BSD Unix operating systems (important atseveral high-volume web and FTP sites).

* The BIND library, used everywhere for DNS resolution.

* The Apache web server, which runs 63% of the world's web sites.

* Perl, the engine for about 85% of the Internet's live content.

(b) Identify why you perceive that patent examiners are notconsidering the most pertinent prior art.

Ignorance of its existence.

2. Do applicants submit the most pertinent prior art that they areaware of in connection with a filed patent application? If not, pleaseinclude the following in your response: (a) Provide support for your conclusions and identify the following:

(i) The area(s) of technology most affected; and(ii) the type(s) of prior art that is not being submitted byapplicants, including but not limited to United States patents, foreign patents, and nonpatent literature.

Same as above under question 1...


(b) Identify why you perceive that applicants are not submittingthe most pertinent prior art.

Because it would render them unable to get the patents they desire?

Really, expecting *applicants* to voluntarily submit invalidatingprior art is expecting them to behave against their own interests. Itwould be absurd to expect great diligence here, or anything more thanminimum compliance with law and procedure.

> 3. Are the current rules and procedures for obtaining prior artduring the examination of a patent application adequate andeffective?

In software, they are not. In fact, there is widespread feeling inthe Internet developer community that the patent system (at least asregards software) is presently serving its Constitutional charter verybadly. It rewards large corporate entities with the legal staff topush through bogus and over-broad patents on obvious techniques, andthen penalizes the working engineer and entrepreneur who `infringes'them through independent use or reinvention of the same obvioustechniques.

>If not, please include the following in your response:(a) Identify aspects of the rules and procedures that do notfacilitate the identification of pertinent prior art;

1. Failure to recruit or consult technical experts who are really conversant with what constitutes "common" or "obvious" art in software. (Most patent examiners, not having specific knowledge of software, seem too ready to assume that an obscure or complex claim is an indicator of novelty. In fact, truly novel ideas in software are very uncommon.)

2. Failure to tap the 30-year-old tradition of open-source development, despite its creation of a huge body of common art that today's Internet utterly relies on.

3. Over-reliance on applicants' representations based on applicants' self-servingly narrow definitions of what constitutes relevant literature.

(b) Discuss any proposed changes to the rules or procedures toimprove the identification of pertinent prior art; and(c) Discuss potential advantages and hardships that patentapplicants and examiners would face if particular changes wereadopted.

We have a problem here.


USPTO does not have the resources to research prior art in terabytesof open-source software code, and cannot reasonably be expected to developsame in the near term. Therefore the review process must depend onapplicants and thrird parties.

On the other hand, we cannot reasonably expect applicants to go beyondthe letter of the USPTO requirements when doing so might go againsttheir own interests.

Therefore, a requirement that applicants certify there is no prior artin open-source software should be made part of the letter of USPTOprocedure, with the patent instantly being declared invalid and yournormal penalties for fraudulent application assessed if this turns outnot to have been the case.

I recommend that the USPTO develop a list of well-known repositorieswhich applicants are required to certify against before grant of apatent. I would be glad to assist in developing such a list.

Forthermore, I recommend USPTO develop a practice of announcingsoftware patent applications to appropriate public channels onthe Internet for challenge by the Internet population at large.

The idea here is that any pointer to an implementation of thetechnique prior to the date of the patent application could beconsidered invalidating prior art. In many cases the Internetcommunity would be both able and highly motivated to produce suchpointers.

> 4. Are prior art searches typically conducted before filing apatent application with the USPTO?

I am not sufficiently familiar with typical applicant procedures toanswer the questions under point 4 and 5 with confidence.

> 6. Should applicants be required to conduct a prior art search andsubmit corresponding search results, including where they searched, tothe USPTO when filing a patent application? If not, should applicantsbe required to disclose whether or not a search was conducted? Pleaseexplain your rationale and discuss any potential advantages anddrawbacks.

Please see my answer to point 4. I propose that applicants should infact be required to do a prior art search on well-known open-sourcerepositories, with teeth put in the requirement by the threat that thepatent will be annulled and fraud penalties assessed if they fail todisclose prior art of which they should have been aware.

> 7. Should applicants be required to submit all prior art reliedupon during the drafting of the claims of a patent application? Pleaseexplain your rationale and discuss any potential advantages and


drawbacks.

> 8. Should applicants be required to submit all nonpatent literaturedirected to the same field of invention attributable to, authored by,or co-authored by the applicant? Please explain your rationale anddiscuss any potential advantages and drawbacks.

> 9. Please identify any type(s) of nonpatent literature documentsapplicants should be required to submit to the USPTO in connection withany given patent application (e.g., conference reports, corporatecollections, documents relied on in drafting an application, etc.).Please explain your rationale and discuss any potential advantages anddrawbacks.

These are not issues of primary concern to me or OSI. We are primarily concerned with preventing the cornering of common engineering art that isalready present in open source by bad patents.

> 10. If you believe that the most relevant prior art is not beingidentified during patent examination, please identify any suggestionsto obviate this problem. In your response, please:

(a) Discuss in detail any idea for addressing this problemeffectively;(b) Explain how the proposal(s) should be implemented;

I believe I have done so above.

(c) Identify who should bear the cost; and

Applicants accrue benefits from patents; they should therefore bearthe burden of establishing that they are legitimate.

(d) Indicate any potential advantages and drawbacks for eachsuggestion.

These additional requirements would make the acquisition of softwarepatents more difficult. This would be an advantage, as the threat ofpatent litigation is proving a serious drag on software innovation (Iknow of skilled developers so terrified by it that they contemplateleaving the industry).

Investors in bogus patents would, of course consider it a drawback.--

<a href="http://www.tuxedo.org/~esr">Eric S. Raymond</a>

An armed society is a polite society. Manners are good when one may have to back up his acts with his life. -- Robert A. Heinlein, "Beyond This Horizon", 1942


10.

To Commissioner of Patents and Trademarks (Attention of Elizabeth Shaw)

Concerning searches for prior art, I quote the following from the "Background" text of the Supplementary Information Email circulated with the Notice of Hearing and Request for Public Comments:

However, searching prior art in emerging technologies presents challenges. First, the terminology in such fields may not be standardized, which makes it difficult toconduct automated searches based on key terms. Second, prior art information in new technologies is frequently not categorized or indexed in a fashion that facilitates searching and accessibility. Lastly, prior art in certain areas, such as software-related inventions, may not be available through customary or predictable means.

In my opinion, this description of the task of searching for prior art reflects the main problem for which PTO has been justly and severely criticized: The above complaint describes why PTO now is in trouble.

The task of the PTO is to recognize true innovation and present it to the public, carefully distinguishing it from false claims, and thus to assist the patent assignee in exercising the exclusive right of the Letters Patent.

Innovation rarely will fall into past categories; so, while sorting-out the past and giving access to it to the examiners will help, the job description of a patent examiner must include the ability to find relevant prior art without assistance and with ingenuity and insight of a successful inventor.

It must be taken for granted that any application describing an "invention" that falls into an easily identified category probably does not describe an invention at all, but merely a copy of something already in the art.

I therefore suggest that mechanisms for searching the PTO prior art database, whatever its form, should NOT rest solely on predefined keywords or category names, but should include optional full-text search capability of all relevantdocuments or secondary indices.

Of course, the PTO definition of "prior art" should include, pending examination, anything in the Library of Congress.-- John [email protected] John Michael Williams


11.

This mail arrives pursuant to the Federal Register excerpt at

http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm

requesting comments on how the U.S. Patent and Trademark Office can improveits procedures.

In the area of computer software, a major and important source of prior artpresently not recognized by the USPTO is archives of open-source software;that is, software distributed in source code form and made available underlicenses that permit redistribution and modification of the source withoutfee or legal restriction.

Major open-source repositories include:

Metalab: http://metalab.unc.edu/pub/Linux/welcome.html Python Software Activity: http://www.python.org CPAN http://www.perl.com

Pointing a browser at http://metalab.unc.edu/pub/Linux/!INDEX.html andexploring a bit should prove especially instructive.

Open source should be particularly important to the USPTO because iteffectively expresses (indeed, it *defines*) the state of common engineeringart among software designers in the Internet and Unix communities, both ofwhich are rapidly growing in importance as the Internet becomes morepervasive in the world economy.

Patents are a major deterrent to continued advances in software. There aremany software patents that would never have been issued had the PTO beenaware of prior art existing for many years (in some cases for decades) inopen source, and that are used by their holders (generally large companies)as barriers to market entry by small and innovative companies: the conversesituation, in which a small company uses patents as an appropriate lever forits own advancement, is rare in comparison. Thus preventing the awarding ofinappropriate patents would be of major benefit to the industry. We areprepared to provide the PTO with background material discussing this pointin depth.

On this page, you request:

> 1. Name and affiliation of the individual responding; and

This statement is being made by the board of directors of the Open SourceInitiative (OSI). The OSI promotes and maintains the Open SourceDefinition, which is a set of criteria for open-source software licensesthat is widely recognized as authoritative both by the Internet communityand by major software vendors such as IBM, Netscape, and Apple. The


statement has been reviewed by each member of the board, all of whom areexperienced and respected software developers, several of whom haveparticipated in founding highly successful software businesses, and one ofwhom (Deutsch) has done significant reading specifically on issues ofsoftware patents. The complete list of board members' names andaffiliations may be found at

http://www.opensource.org/board.html

For more information on OSI, please see our site at

http://www.opensource.org

> 2. If applicable, indications of whether comments offered represent>views of the respondent's organization or are the respondent's personal>views.

The comments have been approved by the board as the view of OSI as anorganization, as well as having been reviewed by each board memberindividually.

Your solicitation of comments requested the following specifics.

> (a) Provide support for your conclusions and identify the> following:> (i) The area(s) of technology most affected; and

Computer software. Especially, technologies bearing on operating systems,networking, the Internet, distributed computing, graphics, and multimedia.

> (ii) The type(s) of prior art most overlooked by the USPTO,>including but not limited to United States patents, foreign patent>documents, and nonpatent literature.

Open-source software archives. Especially, the code bases for the majoropen-source products that are the running gears of the Internet:

* The Linux operating system (which by many estimates now runs a pluralityof all the Internet servers in the world).

* The various open-source BSD Unix operating systems (important at severalhigh-volume web and FTP sites).

* The BIND library, used everywhere for looking up domain names and locatingthe computer system to which they refer.

* sendmail, used for forwarding mail throughout the Internet.

* Netscape's Web browser, the first commercial Web browser and untilrecently the one most widely used on the Internet.


* The Apache web server, which runs 63% of the world's web sites.

* Perl, the engine for about 85% of the Internet's live content.

* The GNU software tools and applications, many of which are shipped withLinux but which are identifiably separate from it and in many cases predateit, and which are used to develop much of the abovementioned software.

> (b) Identify why you perceive that patent examiners are not>considering the most pertinent prior art.

Ignorance of its existence.

> 2. Do applicants submit the most pertinent prior art that they are>aware of in connection with a filed patent application? If not, please>include the following in your response:> (a) Provide support for your conclusions and identify the>following:> (i) The area(s) of technology most affected; and> (ii) the type(s) of prior art that is not being submitted by>applicants, including but not limited to United States patents, foreign>patents, and nonpatent literature.

Same as above under question 1.

> (b) Identify why you perceive that applicants are not submitting>the most pertinent prior art.

Expecting *applicants* to voluntarily submit invalidating prior art isexpecting them to behave against their own interests. It would beunreasonable to expect great diligence here, or anything more than minimumcompliance with law and procedure.

> 3. Are the current rules and procedures for obtaining prior art>during the examination of a patent application adequate and>effective?

In software, they are not. In fact, there is widespread feeling in theInternet developer community that the patent system (at least as regardssoftware) is presently serving its Constitutional charter very badly. Itrewards large corporate entities with the legal staff to push throughinappropriate and over-broad patents on obvious or well-known techniques,and then penalizes the working engineer and entrepreneur who `infringes'them through independent use or reinvention of the same techniques.

>If not, please include the following in your response:> (a) Identify aspects of the rules and procedures that do not>facilitate the identification of pertinent prior art;

1. Failure to recruit or consult technical experts who are really conversant with what constitutes "common" or "obvious" art in software. (Most


patent examiners, not having specific knowledge of software, seem too ready to assume that an obscure or complex claim is an indicator of novelty. In fact, truly novel ideas in software are very uncommon.)

2. Failure to tap the 30-year-old tradition of open-source development, despite its creation of a huge body of common art that today's Internet utterly relies on.

3. Over-reliance on applicants' representations based on applicants' self-servingly narrow definitions of what constitutes relevant literature.

> (b) Discuss any proposed changes to the rules or procedures to>improve the identification of pertinent prior art; and> (c) Discuss potential advantages and hardships that patent>applicants and examiners would face if particular changes were>adopted.

USPTO does not have the resources to research prior art in terabytes ofopen-source software code, and cannot reasonably be expected to develop samein the near term. Therefore the review process must depend on applicantsand third parties.

On the other hand, we cannot reasonably expect applicants to go beyond theletter of the USPTO requirements when doing so might go against their owninterests.

Therefore, a requirement that applicants certify there is no prior art inopen-source software should be made part of the letter of USPTO procedure,with the patent instantly being declared invalid and your normal penaltiesfor fraudulent application assessed if this turns out not to have been thecase.

We recommend that the USPTO develop a list of well-known repositories whichapplicants are required to certify against before grant of a patent. Wewould be glad to assist in developing such a list.

Furthermore, we recommend USPTO develop a practice of publishing softwarepatent applications to appropriate public channels on the Internet forchallenge by the Internet population at large. This population iscollectively far more skilled in and knowledgeable of prior art than anyteam that the USPTO could assemble within its own organization. Anyimplementation of a technique prior to the date of the patent applicationcould be considered invalidating prior art, and in many cases the Internetcommunity would be both able and highly motivated to produce evidence ofsuch implementation.

> 4. Are prior art searches typically conducted before filing a>patent application with the USPTO?

We are not sufficiently familiar with typical applicant procedures to answer


the questions under point 4 and 5 with confidence.

> 6. Should applicants be required to conduct a prior art search and>submit corresponding search results, including where they searched, to>the USPTO when filing a patent application? If not, should applicants>be required to disclose whether or not a search was conducted? Please>explain your rationale and discuss any potential advantages and>drawbacks.

Please see our answer to point 4. We propose that applicants should in factbe required to do a prior art search on well-known open-source repositories,with teeth put in the requirement by the threat that the patent will beannulled and fraud penalties assessed if they fail to disclose prior art ofwhich they should have been aware.

> 7. Should applicants be required to submit all prior art relied>upon during the drafting of the claims of a patent application? Please>explain your rationale and discuss any potential advantages and>drawbacks.

> 8. Should applicants be required to submit all nonpatent literature>directed to the same field of invention attributable to, authored by,>or co-authored by the applicant? Please explain your rationale and>discuss any potential advantages and drawbacks.

> 9. Please identify any type(s) of nonpatent literature documents>applicants should be required to submit to the USPTO in connection with>any given patent application (e.g., conference reports, corporate>collections, documents relied on in drafting an application, etc.).>Please explain your rationale and discuss any potential advantages and>drawbacks.

These are not issues of primary concern to OSI. We are primarily concernedwith preventing the issuing of inappropriate patents that result in `lockingup' common engineering art that is already present in open source software.

> 10. If you believe that the most relevant prior art is not being>identified during patent examination, please identify any suggestions>to obviate this problem. In your response, please:> (a) Discuss in detail any idea for addressing this problem>effectively;> (b) Explain how the proposal(s) should be implemented;

We believe we have done so above.

> (c) Identify who should bear the cost; and

Applicants accrue benefits from patents; they should therefore bear theburden of establishing that they are legitimate.

> (d) Indicate any potential advantages and drawbacks for each


>suggestion.

These additional requirements would make the acquisition of software patentsmore difficult. This would be an advantage, as the threat of patentlitigation is proving a serious drag on software innovation (we know ofskilled developers so terrified by it that they contemplate leaving theindustry). Investors in questionable patents would, of course, consider ita drawback. It is our deeply considered judgment that the software industryas a whole would on the balance derive great benefit from the steps we haverecommended above.

For the OSI board: Ian Murdock, Secretary


12.

Subject: ...........................................................................Response to Request for Comments Issues Related to the Identification of Prior Art 64 Fed. Reg. 28,803 (May 27, 1999) Comments of the Rohm and Haas Company The following items are the comments of the Rohm and Haas Company, Philadelphia, PA, 19106-2399, related to the above-identified Request. Unless otherwise noted, these comments are based upon practices within the company. The Rohm and Haas Company produces a wide variety of specialty chemicals for the industrial, agricultural, and consumer industries. Rohm and Haas applauds recognition by the Patent and Trademark Office that a problem may exist in the quality of searches conducted during the prosecution of patent applications by the Office. We understand that the concern is focused on the emerging technologies. Question 1 - Is the most pertinent prior art being considered by patent examiners during examination of patent applications? Based upon our experience, the most pertinent prior art is being considered by patent examiners. This is partially due to the areas of technology most often addressed by our patent applications, that is, chemicals and chemical processes, which are mature technologies. As a result, the examiners we typically interact with have experience in the technology and with its associated art. We have also found that in the newer areas of technology, e. g., biotechnology, the appropriate art is cited. However, we have also observed that searches conducted by other searching authorities, particularly the European Patent Office, appear to be more thorough and also that the art cited by these authorities often is more relevant than that cited by the US examiner. This may be because the EPO utilizes search specialists. Question 2 - Do applicants submit the most pertinent prior art that they are aware of in connection with a filed patent application? Again, we believe that applicants do submit the most pertinent art they are aware of. The major reason for this is the applicant's desire to have an enforceable, valid patent issue. In this day and age, one's competitors often evaluate the validity of patents. It is in the applicant's best interest that all valid art material to patentability is disclosed. Another reason is that applicants take their duty of candor very seriously. We do not have experience with the independent inventor community. However, within the corporate community, both at Rohm and Haas and from discussions with our colleagues, our experience is that whenever there is any doubt about whether or not a reference is material to patentability, it is


disclosed. Question 3 - Are the current rules and procedures for obtaining prior art during examination adequate and effective? The current rules and procedures are adequate and effective. They fairly balance the needs of the PTO for the most relevant art and the burden on applicants to provide it. We do believe that the PTO should not require that applicants provide a copy of issued U. S. Patents in any Information Disclosure Statements submitted. It is an unnecessary burden on the applicant considering that the examiner has electronic access to all U. S. Patents from their workstations. Question 4 - Are prior art searches typically conducted before filing a patent application with the USPTO? We strongly encourage conducting a prior art search prior to filing a patent applicant. We do not want to make a significant investment in preparing and prosecuting an application only to find that there is relevant art which may impact the scope of the claims, or possibly the validity of the entire patent should it issue. We do not search one particular area of technology more than any other area. As a multinational corporation, we search US Patents, Foreign Patents, journal articles, references to books, conference proceedings and other forms of open literature. Being a chemical company, we typically search the traditional chemical literature including: Chemical Abstracts, IFI's US Patent database, Derwent's World Patent Index, MicroPatent's PatSearch Fulltext, and, for new compositions, structure searching via the Chemical Abstracts Registry File, Marpat, and Questel's Merged Markush File. Question 5 - Are Information Disclosure Statements frequently submitted? Information Disclosure Statements are almost always submitted and include information obtained from all of the sources noted in 4, above. This is to ensure that the most relevant art is considered by the examiner and also to ensure the applicant complies with the Duty of Candor. As almost all of our applications are filed in foreign countries, searches are typically conducted on the foreign counterpart applications. The results of such searches are routinely submitted to the PTO. Question 6 - Should applicants be required to conduct a prior art search? We strongly believe that applicants should not be required to conduct a prior art search. The benefits of conducting a search fall primarily to the applicant. However, requiring that a search be conducted results in a number of issues including: how do you define the scope of a search; who would be responsible for ensuring that the search was conducted properly; what will be the affect on a


small entity which cannot afford to conduct a search, and how do you monitor the quality of searches which may vary greatly. In addition, by requiring that a search be conducted, the PTO would be adding one more issue which could complicate any patent related litigation, a process which is already very complicated. The PTO examiner is required to conduct an independent search already, which the applicant pays for as part of the application fee. By requiring a search, the applicant would have to pay twice for the same service. Question 7 - Should applicants be required to submit all prior art relied upon during the drafting of the claims of an application? Applicants should not be required to submit such art. Much of the art relied upon by a patent drafter may be used to obtain appropriate claim language, to ensure that the claims do not read on patented or disclosed technology, or for other reasons not material to the patentability of the claimed invention. By requiring that such art be submitted, the PTO examiner would be required to review art that, in fact, was not material to the issue of patentability. Question 8 - Should applicants be required to submit all non-patent literature directed to the same field of invention attributable to, authored by, or co-authored by the applicant? Applicants should not be required to submit such information. For one thing, an inventor may have spent an entire career publishing articles on an area of technology. This could result in hundreds of citations, none of which may be material to patentability. To be on the safe side, such an inventor would submit all articles rather than limit the list because even a good-faith attempt to determine those articles which were material to patentability would leave any resulting patent vulnerable to an inequitable conduct attack. Such a requirement would place an unfair burden on applicants and would most likely cloud rather than clarify for the examiner what art is material. Question 9 - Are there non-patent literature documents which applicants should be required to submit? Other than those documents related to art material to patentability, applicants should not be required to submit any particular type of information. Any submissions which are not material to patentability operate solely to increase the burden on the applicant to provide them and the examiner to review them. Questions 10 and 11 - If relevant prior art is not being identified what can be done to obviate the problem; are there any related matters. The PTO examiner has an obligation to conduct a thorough independent prior art


search. The applicant has an obligation to provide any prior art the applicant is aware of to the examiner which is material to patentability. In combination, these two obligations result in the most relevant art being identified. In those areas of emerging technology the PTO should consider two approaches. The first is to provide additional training to those examiners involved with emerging technologies in order to keep them current with the technology. The second is to consider utilizing search specialists, as is done by the European Patent Office. The PTO should also consider this second option in connection with all of its search efforts. Specialists may be able to provide better quality searches in all areas of technology and relieve the examiner from the efforts expended in conducting searches. Respectfully submitted, Thomas D. Rogerson, Ph.D., Esq. Patent Department Rohm and Haas Company


13.Hello,I am writing to comment on a particular patent, 5,604,892, that was filed in 1994 and granted in 1997. The subject area covered by this patent is so broad that it covers all relational database implementations and was admittedly based on a widely available book on object-oriented modeling techniques.

In 1990, I was part of a data modeling team at the Energy Management Systems division of Control Data that came up with a hierarchical model for representing electrical equipment that was very similar to the model submitted by Dave Nuttall and Bert Brehm. Our company abandoned the development effort that we had started and licensed software from Unified. I was under the impression that what they were patenting were certain key aspects of their software, which were novel and unique. I did not get a chance to read the patent until earlier this year. It covers much more than "primary grouping" and is so broad that it is hard to imagine anyone who has a relational database for power system resource information that would not be infringing on this patent.

Part of the problem with this patent is that Unified submitted the model to a US standards group, the Electrical Power Research Institute, which formed a task force in 1992 that included representatives from several software vendors (including Unified) and electrical utilities. This fact should have been brought forth during the examination for prior art, as it would have demonstrated that the concepts were being applied in many different places and not something that was unique to Unified.

I would be happy to discuss this further if you are interested.Leila Schneberger17953 Osage Ct NWAndover, MN 55304

[email protected]


14.

Comments on Issues Associated with the Identification of Prior Art

During the Examination of a Patent Application

Public comment was sought on a number of questions relating to the USPTO’s

interest in ensuring that pertinent art is considered during the examination of patent

applications. The discussion below relates to the question: Should applicants be

required to conduct a prior art search and submit corresponding search results, including

where they searched, to the USPTO when filing a patent application? We believe that

the answer to this question must be in the negative.

I. Introduction

A search in any area of technology is uncertain to reveal the most pertinent art.

Of particular concern are areas of emerging technology, such as telecommunications

and computer-related arts where pertinent art may exist in non-patent references or may

not be readily searched. The broad brush approach contemplated by the question would

place a burden on all applicants in an attempt to address the difficulties in particular art

areas.

It is unclear how such a burden would lead to an advance over the present

system. Under present law, applicants must provide the USPTO with all information

known to them which is material to patentability and the Office is to carry out a search to

find pertinent references. Applicants who have concerns with the art, and who are able,

can also carry out a search and provide the material portion thereof. Even after a patent

issues, it can be re-examined using the procedure provided by 35 U.S.C. § 301-302.

Thus, members of the public, including the applicant, have a mechanism to address the

issues raised by relevant art that was not before the examiner during prosecution. See,

In re Portola Packaging Inc., 42 USPQ 2d 1295 (CA FC 1997).

In addition, we do not believe that the contemplated change in applicant’s

responsibility can be effectively and equitably implemented without serious and

unacceptable drawbacks. Thus, we conclude that the attendant disadvantages outweigh

the uncertain improvement that may flow from the contemplated requirement.


II. Implementation:

Implementation of the contemplated requirement could range over a spectrum

from pro forma which could be satisfied, for example, by examination of the

encyclopedia at the local library, to a rigorous approach. Obviously, a lesser obligation

does not support the objective of ensuring that pertinent prior art is available for

consideration during examination. To make a meaningful impact on the problem at

hand, the contemplated requirement must be implemented in such a way as to give

applicants significant motivation to achieve meaningful search results.

Thus, we posit that the question contemplates rigorous implementation. To date,

the USPTO has used Rules 1.56 and 1.97-1.98 to not only shift art related responsibility

to the applicant but to define applicant’s responsibility. Thus, it appears to be

inescapable that the question contemplates an effective search and that the requirement

would be implemented under Rules 1.56 and 1.97-1.98 or regulations with similar

obligations. Serious and unacceptable drawbacks would flow from such implementation.

A. Effective Implementation Would Provide Fertile Ground for Litigation and

Devalue Issued Patents

One drawback of rigorous and effective implementation would be exposure of

patentees to additional scrutiny during litigation. This exposure, to some degree, would

be a part of the contemplated search requirement regardless of the rigor with which it

was implemented. Scrutiny would be brought to bear on a part of patent examination

that can be carried out with a variety of approaches and is highly dependent on the

resources available. We believe that effective implementation of the contemplated

requirement would result in greater uncertainty in the practice of patent law and in the

enforceability of issued patents. This uncertainty would devalue issued patents.

The contemplated requirement would place an affirmative duty on the applicant

to carry out a search. At present the principle elements of inequitable conduct are

materiality and intent. See, Allen Archery, Inc. v. Browning Mfg. Co., 2 USPQ2d 1490

(CA FC 1987). Also see, Scripps Clinic v. Genentech, Inc., 18 USPQ2d 1001 (CA FC

1991). We believe that a rigorously implemented search requirement would add an

element to the inequitable conduct inquiry. Such an element would look to information


that should have been known or was chargeable to the applicant as a result of the

required search. Inequitable conduct is determined as a matter of law. Kingsdown

Medical Consultants, Ltd. V. Hollister Inc., 9 USPQ2d 1384 (CAFC 1988). However, the

determination of materiality and intent are questions of fact. American Hoist & Derrick

Co. v. Sowa & Sons, Inc., 220 USPQ 763 (CA FC 1984). During litigation the sufficiency

of the applicant’s search would also be a question of fact.

In some areas of technology, vast resources and an artful search strategy are

required to uncover pertinent art. However, as will be readily appreciated, all searching

is challenging to some degree. Regardless of the technical area, the degree of success

achieved by a search depends on the resources available and the art-like skill of the

searcher. Because of the vagaries of searching, patentees would be open to a great

deal of second-guessing based on the search, including the strategy, resources applied,

sources of information searched, and the results provided to the USPTO.

Adversarial proceedings often involve extensive searches by highly motivated

parties. At trial, applicant’s search would be compared to such later, well-resourced

search. Consider an issued patent for which more pertinent information is later found by

a more refined or expanded search. Applicant’s references and files would be evaluated

for additional or alternative search terms. Applicant’s search strategy and sources of

information would be questioned. Under rigorous implementation of a search

requirement, one can easily envision a situation in which a patent is valid over the more

relevant and later found information but would be unenforceable. Of course, such a

result would also have implications in antitrust law. See, Walker Process Equipment,

Inc, v. Food Machinery and Chemical Corp., 382 US 172, 147 USPQ 404 (1965).

Thus, patent litigation would become enlarged with the exchange of expert

opinion on the artfulness and tenacity of the applicant’s search. These would be murky

waters indeed which would have a great impact on the enforceability and value of issued

patents. We believe that a consequence of the contemplated requirement would be

greater uncertainty in the practice of patent law and a decrease in the value of issued

patents. Both of these consequences are serious and unacceptable drawbacks of the

contemplated requirement and are contrary to the intent of the USPTO in initiating this

discussion.


B. Equities of Rigorous Implementation

Another drawback of the contemplated requirement is that it would clearly favor

well-resourced applicants or those who invent for the benefit of well-resourced

assignees. Patent law in the United States has always been impartial in its treatment of

applicants. This impartiality is clear in our provisions relating to priority of invention

under which US law rewards the first inventor, rather than the inventor with the

resources to be the first to file an application.

Unlike the present law, the contemplated requirement would place the applicant

under a duty to possess or acquire information pertinent to the patentability of their

invention. A rigorous requirement for applicant’s search would be a great burden, in

fact a hindrance, to the less well-resourced inventor. Even with a lesser requirement,

the strength of the search would naturally become a part of a patent’s value. Relevant to

the present discussion, the value of a patent would be related to the perceived ability of

applicant to carry out a search. All other things being equal, a patent to a well-resourced

applicant would be perceived as more valuable. Upon these considerations, the

contemplated requirement appears to be unjust and contrary to the traditional unbiased

nature of US patent law.

III. Potential for Misuse

The following relates to the question already under discussion and the follow-up

question: If not (that is, if applicants should not be required to perform a search and

provide the results), should applicants be required to disclose whether or not a search

was conducted?

Under the present system, the USPTO is to carry out a search and applicants are

to conduct themselves before the Office under a duty of candor and good faith by

providing all information, known to the applicant, that is material to patentability. This

duty was placed on the applicant in order to protect the public interest. See, Argus

Chemical Corp. v. Fibre Glass-Evercoat Co., 225 USPQ 1100 (CA FC 1985). At all

times, the applicant, as the interested party, is free to conduct a search. In crowded

areas of art or in emerging technologies, a thorough search by the applicant may be

prudent. We are hard-pressed to see the advance or value added to the present system


by sharing information as contemplated by the follow-up question. Moreover, we believe

the requirements contemplated by both questions would be subject to unacceptable

misuse.

In practice, the requirements proposed by the initial and follow-up questions have

in common that they provide examiners with information concerning the applicant’s

search efforts. A grave concern for either requirement is their possible effect on

examiners. In the requirement of the initial question detailed information is

contemplated. A search that appears to be thorough and complete, or at least appears

consistent with what the examiner considered a sound strategy, would tend to indicate

that a rigorous search by the examiner is unnecessary. In the requirement suggested by

the follow-up question, an extensive IDS, coupled with information that a search was

carried out, would have a similar effect. The result in either case would be to decrease

the examiner’s motivation to extensively search, eroding any value added to the

examination by the applicant’s efforts.

We believe that this point is already well appreciated. In fact, under the present

provisions, Rule 1.97(g) specifically states that the filing of an IDS shall not be construed

as a representation that a search was carried out. This provision attempts to maintain

the separate roles of the Office and applicant by clearly articulating that satisfaction of

applicant’s duty is not to be misconstrued as the applicant having taken on the USPTO’s

responsibility to search.

Thus, blurring of the line between the roles of the applicant and the examiner

contemplated by both questions would result in misuse by applicants and examiners.

The approach contemplated by either requirement would decrease the overall

effectiveness of the system, contrary to the intend to provide pertinent art during

examination.

IV. An Alternative Approach

Patent laws must address the need to examine applications in light of the most

relevant art. Indeed, Congress faced this challenge more than a century ago. The

Patent Act of 1836 was enacted with a ready solution to the problems of today. In cases

of uncertainty or doubt vis-à-vis patentability over the art the Secretary of State was to

appoint a board of “three disinterested persons” to decide the issue of patentability. One


of the three was to be an expert in “the particular art, manufacture, or branch of science

to which the alleged invention appertains.” 5 Stats. 117, 119, 120 (act of July 4, 1836).

Clearly, a search is the first step in a complete and satisfactory examination of

applications. We understand that the USPTO provides extensive resources to

examiners and is providing increasing access to non-patent literature. Availability of

such resources are a necessary first step. However, today resources are only one part

of being an expert in the art.

One approach may be to supplement the resources at the USPTO and the

examiner’s expertise with a dedicated search function. This approach could be

responsible for the searching aspect of patent examination in the style of the European

Patent Office. Alternately, such a function could augment the examiner’s expertise. For

example, a dedicated search function could include a core of search specialists available

to assist examiners in devising and implementing search strategies and refining

searches. These specialist could also stay abreast of information in emerging technical

areas. As experts in the field, the search function could also provide ongoing

educational opportunities to examiners.

Thus, an approach to the problem of examination in light the most pertinent art

does exist without shifting the burden of carrying out a search to applicant. This

approach could be brought to bear directly on difficult art areas, in particular, emerging

technologies. We believe that such a supplemented search effort from within the

USPTO would provide a solution while avoiding the misuse and difficulties in effectively

and equitably implementing the contemplated requirement.

V. Conclusion

It is in everyone’s interest – the USPTO’s, the public’s, the court’s, and certainly

not least, the applicant’s, to have a well balanced patent system issuing well examined

patents. We concur with the position of the Office that the quality of patent examination

benefits when applicants assist the examiner’s in identifying information, particularly

non-patent literature, material to patentability. In that, applicants already have a

responsibility to the extent that they are aware of material information.

It is unclear from the background or the questions, whether the USPTO’s

concerns are related to its ability to perform searches, applicants not meeting their

existing obligations under the Rules, or having the resources to properly analyze the art,


however it is disclosed. Regardless, we fail to see how the contemplated requirement

would advance the patent system.

Based upon the discussion above, we believe the uncertain gains from the contemplated requirements, would be more than off-set by the unavoidable and unacceptable drawbacks. Therefore, we conclude that the answer to the posed questions must be in the negative.


15.

Commentsof the

SOFTWARE & INFORMATION INDUSTRY ASSOCIATION

On

ISSUES RELATED TO THE IDENTIFICATION OF PRIOR ART DURING THE PATENT APPLICATION EXAMINATION PROCESS

Submitted to the

U.S. PATENT AND TRADEMARK OFFICE

August 2, 1999

In response to the "Request for Comments on Issues Related to the Identification

of Prior Art During the Examination of a Patent Application" published in the Federal

Register on May 27, 1999 (Docket No. 99-0512128-9128-01) by the Patent and

Trademark Office (PTO), the Software & Information Industry Association submits the

following comments on behalf of its members.

The Software & Information Industry Association (SIIA) is the principal trade

association of the software and information industry and represents over 1,400 high-tech

companies that develop and market software and electronic content for business,

education, consumers, the Internet, and entertainment. SIIA members represent a wide

range of business interests—they create and develop new and valuable software and

software-related inventions, use software and software-related technologies in their

regular business operations, and license or purchase software and software-related

technologies from third parties. More often than not, the software and software-related


inventions developed by our members or licensed or purchased by them from third

parties is patented technology.

In addition, SIIA also represents numerous information companies that produce

and offer a variety of database products and services. Many of these databases are

valuable search tools that the PTO examiners are using or should be using to determine

whether a particular invention is worthy of patent protection. Consequently, SIIA and our

members are extremely interested in issues relating to the identification of prior art

during the patent application process.

The adage about not "reinventing the wheel" has special significance and

applicability to issues of identification of prior art in the software-related technologies. If

patent examiners do not have the necessary patent and nonpatent prior art to search

when determining the patentability of software-related inventions, the PTO runs the very

real risk of issuing patents whose validity is highly suspect. In effect, if the PTO fails to

provide its examiners with sufficient prior art databases from which to search, inevitably

the PTO will be sanctioning the modern day equivalent of reinventing the wheel by

issuing patents on products and processes that have are not truly novel or nonobvious.

It goes without saying that the quality of the patents issued by the PTO are only

as good as the quality and quantity of the prior art that patent examiners have access to

and are able to search. If the PTO does not have an adequate collection of software-

related prior art from which to search, the patent examination process will become more

akin to a patent registration system and the value of the patented inventions in these

technologies will decrease accordingly. Lowered values of patented software-related

inventions will make it more difficult for patentees to license their patented inventions


and reduce the amount of compensation they are able to receive for the licensed

technology.

Inadequate prior art collections for examiners to search will also lead to

increased instances of patents being held invalid by the courts. Over time this would

result in a general loss of confidence in the patent system and in particular in patents

issued in the arts for which patents are most likely to be held invalid. It will also unduly

shift the burden of finding the preponderance of prior art from the PTO to defendants,

who discover themselves in litigation against potentially dubious patent infringement

claims.

We recognize that defendants involved in significant patent infringement litigation

often conduct extensive prior art invalidity searches that entail the expenditure of large

sums of money and excessive amounts of resources. We also tend to agree with the

notion that most patents could be proven invalid given an unlimited amount of time and

money to scour the world for prior art references. While we do not intend to suggest that

the PTO take a "no holds bar" approach to prior art searches similar to that undertaken

by such a defendant, we do believe that the PTO should make ample patent and

nonpatent prior art references accessible to its examiners to ensure a reliable "first line

of defense" that provides the patent community and the public with reasonable

assurances that the PTO is issuing valid patents.

At present, many who practice in the software and software-related technologies

praise the PTO for investing substantial amounts of time and energy into addressing

prior art issues relating to software patents, but note that significant progress still needs

to be made in the examination process to ensure that the PTO provide a better "first line


of defense." Specifically, we have heard numerous concerns voiced by those in the

software industry that the PTO has insufficient collections of nonpatent prior art in the

software and software-related technologies and that this shortcoming has led to the

issuance of some patents of questionable validity.

SIIA recognizes that few patents have been issued in the software fields and

thus, there is little patent prior art for examiners to search. We also acknowledge that

nonpatent prior art related to software is extremely difficult to find because there is such

a limited body of literature in this area and much of it is not publicly available.

Therefore, based on the software industry's comments and the unique nature of

the software industry, it would appear that the most significant and immediate action that

the PTO could take in addressing the concerns of the software industry is to take steps

to improve its nonpatent prior art collections relating to software and software-related

inventions. Given the rapid progress in software and software-related technologies and

the fact that the software industry tends to publish less frequently than many other

industries, this objective certainly presents an enormous challenge to the PTO.

Before determining how the PTO will face this challenge we once again caution

the PTO not "reinvent the wheel." In 1992 the Software Patent Institute (SPI) was

created to ensure that patent examiners had at their disposal the necessary nonpatent

prior art information to search when making patentability determinations relating to

software-related inventions. The Software Publishers Association (SPA)—one of the

two predecessor organizations that merged to form the SIIA—played a significant role in

the formation, operations, and funding of the SPI. Since 1992, the SPI has collected


prior art references and now includes over one million pages of online material, which is

generally comprised of pre-1988 prior art bibliographic references.

SPI had been funded in part by the PTO and in part by the software and software

-related industries, until it was essentially terminated in 1997. Since that time, SPI has

continued to maintain its collection and slowly add to the collection through small

donations provided by some organizations. We understand that the SPI collection is still

used occasionally by examiners today.

Since its inception there has been much criticism of the SPI. Much of this

criticism has been that the SPI collection is difficult to search and not user-friendly.

While parties may differ on the reasons, by all accounts the SPI did not achieve its goal.

We think that the SPI experience is extremely relevant to the PTO's Federal

Register inquiry. Before taking action to address the prior art issues raised in the

Federal Register notice, the PTO should look into previous efforts to address

identification of prior art issues to determine what has been tried before and why it did or

did not work. This inquiry should certainly focus on the efforts of SPI, but also should

explore other previous efforts by the PTO to increase the reserve of prior art materials

and similar efforts by foreign patent offices—most notably the European and Japanese

Patent Offices—to address these prior art issues. A thorough understanding of past and

present attempts to address these prior art issues will prevent the PTO from repeating

past mistakes.

To this point, SIIA comments have focused on the nonpatent prior art made

available to patent examiners in the software arts. It is important to note that the quality


of issued patents is also highly dependent upon the skill, education, and experience of

the patent examiners whose job it is to formulate and conduct appropriate prior art

searches. It is essential that the PTO continue to hire competent and experienced

patent examiners in the computer science technologies. Equally as important is that the

PTO compensate these examiners sufficiently to discourage them from leaving the PTO

once they have acquired the necessary tools to be productive members of the patent

examining corps.

All too often patent examiners overlook nonpatent and foreign prior art

references. To combat this practice, the PTO should place special emphasis on the use

of nonpatent prior art references by examiners. This is especially true in the case of

software-related inventions for which the majority of prior art is likely to be in nonpatent

prior art collections. In particular, the PTO could encourage examiners to create their

own private stock of nonpatent prior art and to share them with less experienced

examiners. These examiners should also be alert to burgeoning areas of new

technologies and create new digest classifications and subclasses for these

technologies when appropriate.

Further, the PTO should ensure that they have a sufficient number of

experienced examiners to handle the influx of patent applications in the software-related

arts and should devote sufficient amount of time to training these examiners on effective

prior art search techniques and on recent advances and technological developments.

By hiring additional patent examiners and providing necessary training the PTO may be

able to ease the time constraints and production goals which presently limit the amount

of time an examiner can spend examining an application. This should give examiners

additional time to search for and find relevant prior art. This is especially important in an


art that is comprised mostly of nonpatent prior art references, such the computer

software field.

SIIA is aware of several suggestions made by others on how to improve the

identification of prior art. Some individuals have suggested altering standards for

determining when a patent applicant must disclose prior art to the PTO, requiring patent

applicants to conduct their own prior art searches and disclose the results to the PTO, or

shifting burdens of proof and presumptions relating to patent validity which now benefit

patentees. Others have recommended less dramatic changes in the system, such as

changing the time allotted to examiners to search and examine pending applications and

altering the examination responsibility of examiners. SIIA believes that it would

premature to make these or other changes in the patent examination system or litigation

process. While it is possible that some of these changes may prove to be worthwhile,

further study is needed into the effects that such changes would have on the patent

system before embracing these suggestions.

We caution the PTO to use particular care when evaluating those suggestions

that would further burden patent applicants and their agents. Recent changes in patent

law have already overburdened inventors. The costs and time associated with

prosecuting and defending inventions is greater than ever. Further changes to the

patent examination and/or litigation process could further encumber inventors.

SIIA has no quick fix that resolves the prior art concerns raised by the industry.

We do, however, have several suggestions for the PTO to consider. First and foremost,

SIIA believes it may be valuable to establish a task force comprised of industry and

government representatives and other interested parties to further examine the prior art


issues raised by the PTO in its Federal Register notice. It is likely that the solution to the

industry's concerns will not be resolved by one proposal, but rather by a plan of attack

that encompasses a combination of different approaches implemented in varying

degrees. This working group could identify the particular problems that need to be

addressed, evaluate the different possible proposals the problems, and determine what

might be the right recipe for success.

Should the PTO decide to establish a task force to address these prior art issues,

SIIA would be pleased to participate in such an effort. SIIA and its members would bring

valuable insight and experiences to the table, as not only does SIIA represent software

companies which own, license, and use patented software technology, but we also

represent numerous database companies that have vast experience developing user-

friendly, efficient databases.

Additionally, SIIA and its members are willing to participate in efforts by the PTO

to develop educational and training programs for its examiners in the software related

fields. Such educational programs could be conducted either at the PTO campus or at

an off site training facility.

Because the development of new and comprehensive nonpatent prior art

databases is an essential part of improving the system for identifying prior art in the

software technologies, its essential that the database producing industries be

encouraged to create databases that meet the PTO's demand. At present, because

there is no federal law that would adequately protect databases of the type the PTO

needs, there is little incentive for companies to invest large sums of time, money, or

resources to develop such databases.


There is a bill pending in Congress that would fill this void. The bill—H.R. 354,

the "Collections of Information Antipiracy Act"—would encourage entities to create and

disseminate databases by providing them with protection against market-harmful

misappropriations of their databases. We urge the PTO to support this bill.

Another bill pending in Congress—H.R. 2654, the "American Inventors Protection

Act of 1999"—also will likely have beneficial effects on the identification of relevant prior

art if enacted. The new bill, H.R. 2654, is the same as H.R. 1907, except that Title VI on

the Patent and Trademark Office has been removed in order to avoid the delay of

sequential referral to the Government Reform Committee. H.R. 2654 contains

provisions for publication of patent applications eighteen months after filing and

expanded third-party participation in the reexamination process that should enable

relevant nonpatent prior art references to be more widely disseminated and more

accessible to the patent examining corps. We urge the PTO to support H.R. 2654.

In sum, at this stage, SIIA believes that the best way to way to address the

problems related to identification of prior art in the software-related arts is to improve

examiner training and the number and accessibility of software databases. Before

proceeding, however, SIIA recommends studying the problems further and, if

appropriate, creating a task force to specifically address these issues.

In closing, we commend the PTO for making the effort to examine these very

important issues related to the identification of prior art and look forward to working with

the PTO on any initiatives it may take up to address these issues.


Keith KupferschmidIntellectual Property CounselSoftware & Information Industry Association


16.

RESPONSE OF THE SECTION OFINTELLECTUAL PROPERTY LAW,

AMERICAN BAR ASSOCIATIONTO

PTO Notice of Public Hearing and Request for Comments on Issues Related to the Identification of Prior Art During the Examination of a

Patent Application

Federal Register: May 27, 1999 (Volume 64, Number 102)

These comments represent the views of the Section of Intellectual Property Law (IPL Section) of the American Bar Association. The comments have not been approved by

the Board of Governors or the House of Delegates of the American Bar Association, and therefore, should not be construed as representing the policy of the Association.

I. General Comment

The Section commends the USPTO for its efforts in seeking ways to improve access to the prior art. The Section believes that this will improve the quality of patents issued by the Office and will strengthen our patent system.

The Section has considered the several questions published by the Office in the Federal Register notice and submits the following responses:

II. Responses to Specific Questions

1. Is the most pertinent prior art being considered by patent examiners during examination of patent applications?

RESPONSE: To obtain any information more reliable than anecdotal comments and general feelings of some practitioners, the Section believes that it would be necessary to have a study made of court cases and Patent Office Re-examination records to ascertain the percentage of patents in which validity was challenged, either in litigation or re-examination, that were held invalid on the basis of newly found prior art. The Section's Committee 103 (Patent and Trademark office Affairs - Patents) is considering undertaking such a study in the coming year.

The Section does note that in some cases plural patents have issued with similar or identical claims; and the Section recommends that some action be taken toward improving interference searches in the Office.


The Section also notes that in a number of cases, the prior art cited by Examiners in initial Office Actions is not very pertinent. This is likely due to the limited time available to Examiners for examination of each case.

2. Do applicants submit the most pertinent prior art that they are aware of in connection with a filed patent application?

RESPONSE: Here again the cases and reexamination records should be studied to ascertain the percentage of those patents that have been held invalid or unenforceable on the basis of new prior art, the applicant knew of but did not cite the new prior art. The Section's Committee 103 (Patent and Trademark Office Affairs) is also considering undertaking such a study in the coming year.

The Section also notes that in some cases the Examiner appeared not to have appreciated the significance of prior art submitted by the applicant.

3. Are the current rules and procedures for obtaining prior art during the examination of a patent application adequate and effective?

RESPONSE: The Section believes that current Rule 56 and Chapter 2000 of the MPEP provide the best overall arrangement for obtaining prior art from the applicant.

As for obtaining prior art by the Examiner, the Section considers that the search facilities in the Office regarding U.S. patents are adequate. However, the Section believes the foreign art could be better classified and that the Trilateral Offices (USPTO, JPO and EPO) should continue to work towards a more cooperative universal searching system.

In this regard the Section has passed the following resolution:

"RESOLVED, That the Section of Intellectual Property Law favors, in principle, making foreign prior art available, in a conveniently accessible form, to examiners and to the public, and

"Specifically, the Section urges the adoption of a policy in the Patent and Trademark Office of resuming its prior practice, which was discontinued in October 1995, of placing paper copies of all foreign patent documents into examiners and public search drawers according to the U.S. Classification system; and that this also be done for all foreign patent documents which were received by the office from 1995 to the present."


In certain technologies, such as computer software and biotechnology, a large amount of non-patent information exists. However, much of this is searchable through electronic databases; and these databases should be made available to the Examiners. Also, the Office should keep abreast of new technologies that could be used to enhance electronic searching.

4. Are prior art searches typically conducted before filing a patent application with the USPTO?

RESPONSE: It appears that many large entities usually conduct a prior art search before filing a patent application. However, in the interest of economy many smaller entities rely only on computer searches before filing. Also, individuals usually obtain a preliminary patentability search to see if it is worthwhile to invest in the filing of a patent application.

5. Please indicate whether Information Disclosure Statements are frequently submitted and, if so, which of the following types of prior art documents are cited?

RESPONSE: This information is best obtained from the Examination Corps.

Individual attorneys can only cite their own personal experiences. Further, any attorney who is questioned on this matter can be expected to say that it is the attorney's practice to advise the client regarding the Duty of Disclosure and that an Information Disclosure Statement is always filed whenever material information comes to the attention of the attorney.

Some attorneys submit a statement as to whether a preliminary search was or was not done.

6. Should applicants be required to conduct a prior art search and submit corresponding search results, including where they searched, to the USPTO when filing a patent application? If not, should applicants be required to disclose whether or not a search was conducted ?

RESPONSE: The Court of Appeals for the Federal Circuit has stated, in a footnote, that as a general rule there is no duty to conduct a prior art search FMC Corp. v. Hennessy Industries, Inc. 836 F.2d. 836, 5 USPQ 2d 1272 (Fed. Cir. 1987).

Since not all prior art searches have the same reliability and since uniform search standards cannot be established, it is not seen that requiring a search by the applicant would be of any real benefit to the Examiner.

While applicant searches in some technologies may be of help to an Examiner, this would not be the case in all technologies.


However, it would not be proper, and in fact would be very difficult, to define those instances where an applicant search would be required.

Also, to require an applicant to identify the areas in which a search had been made, could lull an Examiner into omitting such areas from the Examiner's own search.

Finally, if someone later searches in an area where that the applicant had searched, and finds a reference that the applicant had missed, an unfair presumption may arise that the applicant knew of that reference and deliberately withheld it.

For the foregoing reasons, a search should not be required of the applicant prior to filing an application and if one had been made the applicant should not have to identify the areas searched.

An applicant who has complied with the current Duty of Disclosure requirements can be expected to do no more in order to help the Examiner; and an applicant who fails to comply with the current Duty of Disclosure requirements faces very grave consequences.

Ultimately, under current U.S. patent practice, it is the responsibility of the Office to make a search. Since the Office is supported by user fees, applicants have the right, in exchange for their fees, to expect a proper search from the Office.

7. Should applicants be required to submit all prior art relied upon during the drafting of the claims of a patent application? Please explain your rationale and discuss any possible advantages and drawbacks.

RESPONSE: Since the Duty of Disclosure requires the applicant to cite prior art that is material to the examination of the application, it is hard to think of a situation where prior art that was relied upon in drafting the application claims is not material. Therefore, the Duty already exists and no additional rule should be necessary on this point.

8. Should applicants be required to submit all nonpatent literature directed to the same field of the invention attributable to, authored by or coauthored by the applicant? Please explain your rational and discuss any potential advantages and drawbacks.

RESPONSE: The category "directed to the same field" is vague and overbroad. Rule 56, which defines citable information as that which is "material to patentability", is much more practical and reliable, particularly since part (b) of the rule also defines information which is "material to patentability".

Moreover, the matter could get out of hand in cases where an inventor has written a great number of papers or where there are


several inventors , each of whom has written many papers in the relevant field.

9. Please identify the type(s) of nonpatent literature documents applicants should be required to submit to the USPTO in connection with any given patent application (e.g., conference reports, corporate collections, documents relied in drafting the application, etc.) Please explain your rationale and discuss any potential advantages and drawbacks.

RESPONSE: Section 2001.06 of the MPEP already specifies the types of information that must be cited. The items mentioned in Section 2001.06 appear to be adequate. The new category "corporate collections" is too broad and vague.

10. If you believe that the most relevant prior art is not being identified during patent examination, please identify any suggestions to obviate this problem.

COMMENT: Please see RESPONSE to questions 1 and 2.

In addition, better cooperation among the trilateral Offices should provide a significant improvement since the majority of U.S. patent applications are also filed in foreign offices.

11. Please discuss any related matters not specifically identified in the above questions.

COMMENTS:

a) The Examining corps should be polled to see whether the Information Disclosure Statements they are receiving are useful and, if not, what can be done to make them more useful.

b) A potential problem exists as a result of the In re Portola Packaging, Inc. 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), in that there may be an incentive for an applicant to cite excessive amounts of prior art, without comment, to make it of record so that it cannot later be used as a basis for a reexamination request. However, pending a change by court decision, the practice adopted by the Office in its Federal Register Notice of March 31, 1999, which is now in place in the office, whereby reexamination of a patent may be ordered based on references of record which were neither expressly relied upon to reject any claim of the patent nor cited and discussed in a prior related PTO proceeding, would seem adequate to handle the problem.

c) Regarding the problem of applicants citing a large number of references without comment on relevance, this should not really be a problem to an Examiner. The number of patents in the classes and subclasses that the Examiner must search on his own


is much larger than the number that any applicant cites; and there is no statement of relevancy in regard to those patents.

d) As a suggestion, instead of focusing on individual applications, which brings into question the specter of Rule 56, it may be more productive for the office to work with the public at large to develop better search facilities and techniques. For example, the Office might consider setting up a Committee of Experts from relevant industries that deal on a regular basis with the handling of large amounts of information. This Committee could meet from time to time with Office representatives and exchange ideas on possible improvements to search systems, machines and/or techniques.


17.

August 9, 1999

Ms. Elizabeth Shaw Via Electronic Mail & Facsimile Commissioner of Patents and TrademarksBox 4Patent and Trademark OfficeWashington, DC 20231

Re: Comments in Response to Notice of Public Hearing and Request for Comments on Issues Related to Identification of Prior Art During the Examination of a Patent Application .1

Dear Ms. Shaw,

Thank you for the opportunity to provide written comments to the subject notice on behalf of Environmental Systems Research Institute, Inc. (ESRI). ESRI is an industry leader in the design and development of Geographic Information Systems (GIS) software. Among other things, GIS software allows users to locate, compare, and display attributes on a computer generated map.

My comments address questions one, three, and ten of the subject notice.

Question 1: Is the most pertinent prior art being considered by patent examiners during examination of patent applications? If not, please include the following in your response:

(a) Provide support for your conclusions and identify the following:(i) The area(s) of technology most affected; and(ii) The type(s) of prior art most overlooked by the USPTO, including

but not limited to United States patents, foreign patent documents, and nonpatent literature.

(b) Identify why you perceive that patent examiners are not considering the most pertinent prior art.

Response 1: We are concerned that examiners are not considering the most pertinent prior art. We have this concern because the patentability of software was only clarified in the past few years by the Patent and Trademark Office (PTO) and case law. As a result, software applications in general, and GIS software applications in particular, are not well represented by U.S. and foreign patent documents or by organized systems of nonpatent literature available to patent examiners. Regarding the latter case, in the thirty years of its existence, our company has assembled a great deal of published and unpublished nonpatent literature that we do not believe is readily available to examiners.

Ms. Elizabeth ShawMay 6, 2023Page 2

1 64 Fed. Reg. 102 (1999).


ESRI 380 New York St., Redlands, CA 92373-8100, USA TEL 909-793-2583 FAX 909-793-5953 E-MAIL [email protected] WEB www.esri.com

mailto:[email protected]

We are also concerned about the recent surge in the number of patents granted for claimed inventions which merely customize available software applications to automate tasks previously accomplished without such software, even though a software developer may have envisioned numerous such applications for its product. Similarly, we are concerned that examiners may grant a patent on a particular application because examiners are unaware that a previous software user had applied the software in the same or similar manner years before.

This is particularly true in the area of GIS software, which allows users of the software to develop an enormous variety of applications that use its automated mapping and geolocating technology to solve government, business, and resource management problems. If the PTO otherwise views such solutions to be patentable, then it is critical that it be adequately informed of nonpatent literature that discloses such solutions (or analogous solutions) if they were previously developed by others.

Question 3: Are the current rules and procedures for obtaining prior art during the examination of a patent application adequate and effective? If not, please include the following in your response:

(a) Identify aspects of the rules and procedures that do not facilitate the identification of pertinent prior art;

(b) Discuss any proposed changes to the rules or procedures to improve the identification of pertinent prior art ;

(c) Discuss potential advantages and hardships that patent applicants and examiners would face if particular changes were adopted.

Response 3: See also Response 1. We do not believe the current rules and procedures are adequate. As others suggested at the July 14, 1999 hearing on this subject,2 the PTO should work with private industry to provide more training in software technology and to build a PTO database of nonpatent prior art. To this end, rules and procedures should be developed and published to guide industry non-applicants in organizing, indexing, and submitting nonpatent literature to the PTO in a manner that will ensure it becomes available to examiners. Guidance on indexing and organizing should be sufficient to enable the PTO to create a new database of such prior art or augment its existing databases in a timely, effective, and efficient manner. Guidance should also be sufficient to allow interested non-applicants the opportunity to direct such documents and indices to particular examiner(s) that have been trained in a particular software discipline, such as

2 Patent and Trademark Office, Don’t Increase Search Burden on Patent Applicants, PTO Told, 58 Pat., Trademark & Copyright J. (BNA) 1434, at p.364 (July 22, 1999).


Ms. Elizabeth ShawMay 6, 2023Page 3

GIS. Finally, the PTO should publish procedures for industry to inform such examiners of training available in that particular software discipline.

While training and larger databases may place additional time demands on examiners, those additional time demands may be offset by increased efficiency and a possible reduction in the number of patent applications which must be processed beyond the initial prior art search.

Question 10: If you believe that the most relevant prior art is not being identified during patent examination, please identify any suggestions to obviate this problem. In your response, please:

(a) Discuss in detail any idea for addressing this problem effectively;(b) Explain how the proposal(s) should be implemented;(c) Identify who should bear the cost; and (d) Indicate any potential advantages and drawbacks for each suggestion.

Response 10: See also Responses 1 and 3. Because the cost for properly organizing, indexing, and submitting nonpatent literature may be significant in itself, the cost after submission of such literature and indices should be borne by the PTO. Training offered to examiners should be either free or borne by the PTO, at the discretion of the party offering the training and as allowed by law.

Again, we appreciate the opportunity to provide written comments for improving the effectiveness and efficiency of the PTO’s review of nonpatent prior art. This issue is of great importance to our company and, we believe, to the continued vitality and growth of the GIS niche of the software world. Sincerely,

/s/

Bruce LathropBusiness AttorneyRegistration No. 41,929

BL:ss


18.

WRITTEN COMMENTS:

ON ISSUES RELATED TO THE IDENTIFICATION OF PRIOR ART

DURING THE EXAMINATION OF A PATENT APPLICATION

Submitted by:Joy L. Bryant, Director and President

Mark R. Buscher, Esq., Director and Vice-PresidentJoseph A. Marasco, Director

On behalf of:The National Association of Patent Practitioners

August 2, 1999

Responsive to the notice appearing in the Federal Register at Volume 64,

number 102, Thursday, May 27, 1999, pages 28803-28806, the National Association of

Patent Practitioners (NAPP) hereby submits written comments on issues related to the

identification of prior art during examination. The NAPP is a nonprofit organization

dedicated to supporting patent practitioners and other individuals working in the field of

patent law, in matters relating to patent law, its practice, and technological advances.

Seventy-five percent (75%) of our members are registered patent practitioners whose

practice is directed primarily toward patent prosecution. As part of our mission, we aim

to create a collective, nationwide voice to respond to proposed changes in the patent

statutes, rules, and PTO operations with a view to their impact on patent prosecution

practice. With this in mind, we appreciate the opportunity to provide our comments and

suggestions on this important matter.

Question 1Is the most pertinent prior art being considered by patent examiners during examination of patent applications? If not, please include the following in your response:(a) Provide support for your conclusions and identify the following:(i) the areas(s) of technology most affected and (ii) the type(s) of prior art most overlooked by the USPTO, including but not limited to United States patents, foreign patent documents, and nonpatent literature.(b) Identify why you perceive that patent examiners are not considering the most pertinent prior art.


Response: In general, yes, the most pertinent prior art is being considered by the patent examiner. Our perception is that, roughly, three quarters of the patents have the most pertinent art of record therein. Frequently what turns out to be the most pertinent prior art was that supplied by the applicant in an Information Disclosure Statement (IDS) and often the examiner’s search does not reveal any document more pertinent than those submitted in the IDS. But by whichever mechanism, the majority of patents seem to have the most pertinent prior art of record in the file wrapper.

We believe that a minority, but not insubstantial number, of patents do not have the most pertinent art considered during prosecution. Our basis for this opinion is primarily a review of other issued patents. In preparing and prosecuting patent applications, we see patents obtained by other entities. Discovering a competitor’s patent that relates to your client’s technology and yet does not list your client’s patent(s) as having been considered is one example of how we know the most pertinent prior art is not being considered. Similarly, reviewing the claims obtained by a competitor that are, or at least appear to be, overly broad in view of prior art that you have had to define over but which is not listed in the patent, also lends support to the belief that the best prior art is not always being considered. On a less direct basis, we note the lack of non-patent literature listed on many issued patents. These insights and others arising from a review of patents in areas of interest to our clients supports our perception that roughly twenty-five percent (25%) of the patents are prosecuted without the most pertinent prior art being considered by the examiner.

An example of a particular technology area that seems to be susceptible to not having the most pertinent art considered is the computer software-type inventions such as automating a process, carrying out a function or task using a distributed network, a so-called method of doing business invention, etc.

The failure of the best prior art to be considered during prosecution has many causes. One problem area is where the best disclosures are not in patent documents. The USPTO generally does a good job in searching issued U.S. patents and to a lesser extent of searching foreign patents. However, nonpatent literature such as product literature and brochures, seminar presentations and materials, and journal articles are generally not searched and/or are not searchable. In well established technologies or technologies where competitor’s aggressively patent inventions, the lack of a nonpatent search will generally not adversely affect the search result. The best information is probably captured in one form or another within the patent documents. It is the new emerging technologies and the seldom-patented technologies where the nonpatent information will contain the best disclosure. Computer software fits both these descriptions and, not surprisingly, appears to suffer the most from the industry (both examiners and practitioners) bias of searching only patents.

Another class of art that is frequently overlooked by examiners is provisional 102(e)/103 art (i.e. co-pending patent applications by another with no common assignee). The interference files are generally, but unofficially, conceded to be inadequate, out of date and generally unhelpful. The issuance of two patents for the same invention accidentally occurs more often than one would expect. Rectifying the legal rights of the parties is expensive and time consuming.

Question 2Do applicants submit the most pertinent prior art that they are aware of in connection with a filed patent application? If not, please include the following in your response:


(a) Provide support for your conclusions and identify the following: (i) the area(s) of technology most affected and (ii) the type(s) of prior art that is not being submitted by applicants, including but not limited to United States patents, foreign patents, and nonpatent literature.(b) Identify why you perceive that applicants are not submitting the most pertinent prior art.

Response:..................Yes, applicants generally submit the most pertinent art of which they are aware. This is true even when the most pertinent art does not raise a prima facie case of unpatentability. Art that is not required to be submitted by Rule 56 is typically submitted anyway to avoid future allegations of failing to satisfy Rule 56. Those who show exception to this general rule typically include certain corporations, especially foreign-based corporations. Anecdotal evidence indicates that certain corporations do not submit the best prior art of which they are aware. Such a failure may be the product of many factors including (1) the size and lack of organization of the corporation, (2) the lack of coordination amongst various inventors and patent practitioners, and (3) a lack of understanding of the importance of the duty of disclosure. Today, most practitioners understand that even the appearance of wrongdoing is something to be avoided and thus err on the side of submitting too much art rather than not enough. Nonetheless, certain corporations seem to have not adopted this policy and generally turn a blind eye to art that they seemingly should have known about (e.g. the company’s own earlier patents, the inventor’s own publications, etc.).

Question 3Are the current rules and procedures for obtaining prior art during the examination of a patent application adequate and effective? If not, please include the following in your response:(a) Identify aspects of the rules and procedures that do not facilitate the identification of pertinent prior art;(b) Discuss any proposed changes to the rules or procedures to improve the identification of pertinent prior art; and(c) Discuss potential advantages and hardships that patent applicants and examiners would face if particular changes were adopted.

Response: With one exception, yes, the current rules and procedures are adequate and reasonably effective. Some examiners have indicated that they are not “allowed” to search on the Internet. To the extent this is true, we recommend changing the policy to permit Internet searching. A search of the Internet may result in the best nonpatent literature and help to establish prior public knowledge of an invention. We perceive the incorporation of Internet searching as presenting no additional hardship the examiner.

In relation to this topic, we would also recommend that the USPTO renew their efforts in classifying and/or indexing foreign patent and nonpatent literature. In addition, expenditures should be authorized for obtaining the proper technical journals for each technology center.


Question 4Are prior art searches typically conducted before filing a patent application with the USPTO? If not, please explain. If so, please include the following in your response:(a) An identification of the area(s) of technology where it is most likely that a prior art search would be conducted;(b) The scope of a proper prior art search (i.e., United States patents, foreign patents, journal articles, corporate bulletins, as well as other types of nonpatent literature); and(c) An identification of databases and Internet resources generally searched or available to applicants and/or the USPTO.

Response: In general, an application originating in the U.S. usually has some form of prior art search performed before it is filed in the USPTO. Foreign origin applications generally have no additional prior art search performed before being filed in the U.S. The need for a prior art search and its scope is generally determined more by the particular applicant than by the technology. Searching imposes an optional added cost to the applicant in terms of both time and money. The applicant can perform an intuitive cost-benefit analysis to determine the extent of the search. For example, a particular applicant may feel confident in his/her knowledge of the prior art and thus choose not to conduct a prior art search or, alternatively, the applicant may not have the funds available to have a prior art search done. For those applicants well versed in their technologies, the nature of the prior art can be conveyed to the patent practitioner, sometimes with citation to specific prior art documents, without the need to conduct an additional search. In other instances, the applicant has little to no knowledge of the state of the art and will seek a search, which may or may not be extensive. Part of what drives the scope of the search is the perceived benefit. The reason to search is to reduce the risk of unknown prior art appearing during prosecution or litigation and to better determine the full scope of patent protection available for the invention. Satisfying these objectives may require no search, a brief electronic search, a manual search of the patents at the USPTO, or a more extensive search. What is reasonable depends on the level of risk applicants are willing to take, their level of skill/knowledge in the art and their budget for the expected value of the patent property.

The most frequently used Internet search sites are the USPTO and IBM

websites. Other commercial search providers include: Lexis, NERAC, Corporate

Intelligence, Derwent, and Dialog. In addition to these on-line resources, some

applicants and practitioners also use APS available at the USPTO and the depository

libraries.

Question 5Please indicate whether Information Disclosure Statements are frequently submitted and, if so, which of the following types of prior art documents are included:(a) United States patents;(b) foreign patent documents and PCT publications; and(c) Nonpatent literature, including but not limited to journal articles, conference papers, corporate bulletins, and internet publications.


If applicable, please explain why any of the aforementioned type(s) of prior art documents are not normally submitted to the USPTO.

Response: Yes, Information Disclosure Statements are frequently submitted. As stated above, the modern practice is to submit more documents rather than less. All of the above-mentioned types of documents are included as appropriate and if in the applicant/practitioner’s possession. Some practitioners, in recognition of the fact that examiners primarily review U.S. patents make an extra effort to submit foreign patent and nonpatent documents along with copies of pages from Internet websites.

Question 6Should applicants be required to conduct a prior art search and submit corresponding search results, including where they searched, to the USPTO when filing a patent application? If not, should applicants be required to disclose whether or not a search was conducted? Please explain your rationale and discuss any potential advantages and drawbacks.

Response: No, applicants should not be required to search. Applicants already pay for a search by the USPTO in the form of an application filing fee. Applicants should not be further economically burdened by having to conduct their own search. While there are many good reasons for an applicant to conduct a search, that does not warrant imposing a mandatory obligation to conduct a search.

Moreover, the nature of the burden is unclear. For example, how much

searching would be required and what type of search (patent, non-patent, Internet,

foreign?) would be required? If any amount would meet the proposed requirement, then

applicants could search in one shoe of one subclass: a result that obviously defeats the

intent of the requirement. On the other hand, if a “reasonable” or “complete” search is

required, what standard will be used to determine reasonable or complete. How

intensive is a “reasonable” search? Will applicants be required to either become, or hire,

skilled searchers in order to be eligible to apply for a patent? Such a burden is

unacceptable and will discourage the filing of patents. Of course, a reduction in patents

will reduce the flow of public knowledge and slow the advancement of the useful arts: a

predicament that is contrary to the sine quo non of the patent system.

Regardless of the standard employed, the existence of a burden to search by the applicant will significantly enlarge the playing field for allegations of inequitable conduct. Every patent from the sub-class which applicant attests has been searched that is not submitted to the USPTO is a potential basis for a charge of inequitable conduct or fraud. The assertion “why didn’t you submit this patent to the USPTO, after all we found it in the sub-class you said you searched” will having a luring appeal to the uninitiated judge or jury. Even if the charge is not successful, the patentee will be forced to spend the money to litigate the issue. Similarly, what is to stop an accused infringer from asserting that applicant deliberately omitted a relevant search area and thus the applicant committed fraud or inequitable conduct. No matter what standard is used, an accused


infringer can always allege that the applicant searched too little, searched in the wrong area, submitted too much information, or didn’t submit enough information as a basis for a claim of inequitable conduct. In short, the cost of obtaining and enforcing a patent will go up and the chance of a patent being held unenforceable solely because hindsight is 20/20 will rise.

Other adverse consequences include applicants taking an overly precautionary stance and submitting entire sub-classes to the USPTO. Honest applicants, in a desire to avoid the appearance of wrongdoing, would be encouraged to file a massive submission; e.g., every document retrieved in the search. Picking and choosing which documents are “hits” from a search is a decision that begs for criticism by an adversary in any subsequent legal proceeding. Not only would such large submissions be unhelpful to the examiner (the examiner already has the sub-class to review) they would also create added burdens on the USPTO in paper handling, moving, and storage.

In exchange for all these added costs, risks, and disincentives from using the patent system, the requirement to conduct a search will bring little benefit to the USPTO. The majority of applicants, it is believed, already voluntarily submit the fruit of their searching efforts to the USPTO in an IDS. There is little to be achieved by this proposal. Moreover, strategies for dealing with the search requirement are likely to render it of very little value to the examiner. For example, flooding the examiner with documents in order to minimize the risk of an inequitable conduct charge or searching effectively nowhere to avoid having “seen” but not cited a relevant reference. It should be remembered that applicants presently have a duty under Rule56 to disclose material information to the examiner. This duty already brings relevant documents to the examiner.

Finally, shifting the burden to applicants to perform a search starts down the path of a registration system; as opposed to the present examination system. Examiners should not rely on the searches of applicants, nor should the procedures nurture the idea that a less vigorous search by the examiner is acceptable. Part of the basis for the strong presumption of validity of a U.S. patent is the very nature of the present examination system. Weakening examination raises the possibility of a lessening in the strength of the presumption of validity.

Question 7Should applicants be required to submit all prior art relied upon during the drafting of the claims of a patent application? Please explain your rationale and discuss any potential advantages and drawbacks.

Response: No, the proposal should not be adopted or implemented for reasons similar to those expressed in response to question 6. For example, the burden being placed on the applicant is too unclear and uncertain. What is the scope of “relied upon”? When does an applicant merely read or review a reference and when does an applicant rely upon it in drafting claims? Is there a difference? Alternatively, the applicant is not normally the person drafting the claims. This requirement then, would essentially demand that the patent practitioner’s view of the patentability of the claims be set forth. Worse, by identifying patents that were “relied upon”, the applicant could be viewed as stating what is believed to be the closest prior art and presumably what the claims do not cover. In short, both the scope and implication of complying with such a requirement are unclear and prone to second-guessing and attack by subsequent adversaries.

Moreover, the unintended result of this proposal will likely render it ineffective. Applicants may take an overly broad and cautious view of the requirement and submit


massive amounts of documents in order to insulate themselves from a charge of inequitable conduct. Such a sea of documents neither helps the examiner nor relieves the USPTO’s burden in paper handling and storage.

Finally, most applicants, we believe, already list “close” prior art that was considered in drafting the claims in the background of the invention and/or in an IDS. Again the actual improvement in prior art collection is believed to be insignificant and certainly not worth the costs and risks imposed by adopting the proposed requirement.

Question 8Should applicants be required to submit all nonpatent literature directed to the same field of invention attributable to, authored by, or co-authored by the applicant? Please explain your rationale and discuss any potential advantages and drawbacks.

Response: No, this proposal should not be adopted as too unclear and repetitive to Rule 56. In particular, what is the scope of “field of invention”. If the invention is in a crowded art, does that restrict the field of the invention since only small changes are needed for patentability? Rule 56 already requires such documents that would raise a prima facie case of unpatentability to be submitted. What more does the examiner or the USPTO need? As stated in questions 6 and 7, imposing this new burden on applicants is not believed to produce significant benefits to the prosecution of patents, but will produce new risks and costs for applicants.

Question 9Please identify any type(s) of nonpatent literature documents applicants should be required to submit to the USPTO in connection with any given patent application (e.g., conference reports, corporate collections, documents relied on in drafting the application, etc.). Please explain your rationale and discuss any potential advantages and drawbacks.

Response: No literature documents, other than those required under rule 56, should be required to be submitted in connection with the prosecution of a patent application. Why would the USPTO need documents that do not raise a prima facie case of unpatentability? Documents less relevant than the rule 56 standard serve no useful purpose in examination, regardless of whether they are patent or nonpatent literature. As stated above, the expected benefit from such a proposal is believed to be very small, while the burdens on both the applicant and USPTO would be significant. Question 10

If you believe that the most relevant prior art is not being identified during patent examination, please identify any suggestions to obviate this problem. In your response, please:(a) Discuss in detail any idea for addressing this problem effectively;(b) Explain how the proposal(s) should be implemented;(c) Identify who should bear the cost; and(d) Identify any potential advantages and drawbacks for each suggestion.


Response: We believe that the most relevant prior art is generally being identified during the course of prosecution. The only suggestion is to clarify that examiners can and should search on the Internet, when appropriate.

Question 11Please discuss any related matters not specifically identified in the above questions. If this is done, parties are requested to:(a) Label that portion of the response as “other Issues”;(b) Clearly identify the matter being addressed;(c) provide examples, where appropriate, that illustrate the matter addressed; and(d) Identify any relevant legal authorities applicable to the matter being addressed; and(e) Provide suggestions regarding how the matter should be addressed by the USPTO.

Other Issues: We believe that applicants/practitioners are fulfilling their obligation to submit the most pertinent prior art through an IDS during the course of prosecution in accordance with Rule 56. In addition, we believe that examiners for the most part are doing an adequate job in searching the prior art for older, established technologies. Our concern arises with the analysis of the prior art once it is in the examiner’s possession. We are concerned that the examiners are not receiving the training and supervision that they need in order to identify the most relevant references or portions thereof when formulating their office actions. We would like to suggest that the USPTO allow examiners more time to review the office actions prior to mailing and that examiners and SPEs be held more accountable for the quality of their work.


19.2 August, 1999

REGARDING THE PUBLIC HEARING BEING CONDUCTED BY THE UNITED STATES PATENT AND TRADEMARK OFFICE REGARDING THE ISSUE OF IDENTIFICATION OF PRIOR ART DURING THE EXAMINATION OF A PATENT APPLICATION

To Whom It May Concern:

My name is Dr. David R. Huff. I am an Assistant Professor of Turfgrass Breeding and Genetics at the Pennsylvania State University, University Park, Pennsylvania. I hold Doctorate and Masters degrees in Genetics from the University of California and a Bachelor of Science in Agriculture from Michigan State University. At the national level, I have served as a member (1996-1998) and an alternate member (1994-1996) of the National Grass Variety Review Board; as a member (1996-1998) and Chair of the Biotechnology Subcommittee (1996-1998) of the National Crop Germplasm Committee; and, as President (1994-1996), President-Elect (1992-1994), and Executive Secretary (1990-1992) of the Grass Breeders Work Planning Conference. In addition, I have served the turfgrass industry at the national level as a member of the Molecular Marker Committee (1997-1998) of the Turfgrass Breeders Association and as Visiting Scientist (1993-1994) to the United States Golf Association-Greens Section Research Committee. I have authored 64 scientific articles (including peer-reviewed, book chapters, proceedings, and abstracts) and my scientific research has been cited by other scientists 144 times (from 1991 to 1998) according to Citation Index.

I ask that my following comments be entered into the public record of the current public hearing concerning the issue of Identification of Prior Art During the Examination of a Patent Application. I applaud the efforts of the USPTO to self-examine its practices of identification of prior art during the examination of a patent application. Self-examination may, at times, be a difficult and even painful process but it is often a necessary, an enlightening, and ultimately a beneficial process as well.

I will address each of the 11 Questions posed by the USPTO on their web site (www.uspto.gov) related to this public hearing. During my responses, I will refer to a specific example that I perceive to represent an example where the identification of prior art during the patent examination process was less than complete. The example is US Patent 5,912,412; Entitled: Varieties of Poa annua; Inventor: White, Donald B.; Assignee: Regents of the University of Minnesota; Filed: September 12, 1996; Appl. No. 711913; Awarded: June 15, 1999; Containing 41 Claims. Basically, US 5,912,412 was awarded for an invention that has been commonly known, utilized, commercially cultivated, and extensively documented since 1927 to the present. I perceive that the oversites in prior art identification demonstrated by this example have application to a wide variety of technology and thus, is relevant to the discussion at hand. For clarity of my response, I shall use the definition of prior art found in 35 U.S.C. 102(b) and I have also attached a copy of the 11 questions on page 9.

The following are my responses to the 11 questions posed by the USPTO (www.uspto.gov) related to this public hearing:


1. The most pertinent prior art is apparently not being given full attention by patent examiners during examination of patent applications. The above example (US 5,912,412) is clearly illustrative of my opinion. Not only are there numerous examples of prior art that extensively teaches toward the inventions claimed in US 5,912,412; but there are additional examples of prior art that describe the inventions and explain their underlying mechanisms and processes in greater detail than the invention claimed in US 5,912,412.

(a) Support for my conclusions are as follows. Basically, US 5,912,412 claims the invention of cultivars of perennial types of a grass Poa annua which have a restricted flowering habit for use as turfgrass. The existence of prior art relating to the Claims of US 5,912,412 include the appended list of nonpatent literature. This list of nonpatent prior art literature describes, teaches, and offers examples of the following:

• the beneficial attributes of perennial Poa annua for use as turf (golf, athletic fields, lawns) including, but not limited to, prostrate, perennial growth habit, tolerance to close mowing heights, a restricted period of seed development, that perennial Poa annua provides excellent turf quality for golf green putting surfaces, fairways, and tees, athletic fields, lawn bowls, cricket pitches, home lawns, grass parking lots, etceteras.

• plant breeding programs that illustrate the development of perennial Poa annua cultivars for use as turf (golf, athletic fields, lawns, etc.) and as well as examples of cultivars of Poa annua for use as turf.

• detailed descriptions of the inherent biology and the evolutionary process that results in perennial Poa annua and its associated morphology and phenology including: restricted flowering habit; seasonal flowering habit; flowering predominately occurring in the spring season; flowering flushes separated by 4 weeks or 8 weeks; reduced flowering compared to annual types; reduced flowering in the summer; flowering induced by exposure to cold, short day length, or long day length; flowering unaffected by daylength; flowering exhibiting a facultative vernalization; increased seed production of plants subjected to the cold; the production of secondary tillers; the production of secondary flowering tillers; and, the low, dense, spreading, stoloniferous, decumbent, clump, prostrate vegetative growth habit of perennial Poa annua.

The above examples of prior art, either alone, or in combination provide substantial and overwhelming evidence, when applied to US 5,912,412, that there may be an apparent problem regarding the identification of prior art during the examination of patent applications. Moreover, the inventions claimed in US 5,912,412 are stated to be derived from the wild type (annual Poa annua), when in fact, the inventions claimed are nothing more than a crude description of the naturally occurring variation that resides within the species as a whole, coupled with methods of developing improved cultivars that have been previously described for perennial types of Poa annua for use as turf (see appended citations). In addition, this naturally occurring variation, ranging from annual to perennial types of Poa annua, along with their respective associated traits such as flowering habit, has provided one the of best known and widely cited examples of evolution of life history traits to date.

i) Areas of technology most affected, as per my example, are any and all technologies related to: biometrics, plant breeding, plant genetics, transmission genetics,


cultivar development and improvement, plant physiology, plant phenology, plant growth and development, turfgrass science, evolution, ecology, botany, and organismal life history.

ii) The type of prior art apparently not considered by the USPTO, in the above example, is the nonpatent literature, including scientific journals, professional journals, trade journal articles, conference proceedings, conference abstracts, regional society reports, state project reports, progress reports to external funding agencies, foreign government reports, and foreign industry reports.

(b) I perceive that patent examiners are not considering these pertinent examples of prior art simply because they are unaware of their existence and therefore do not have the opportunity to consider them or possibly are unfamiliar with the technology.

2. I suspect that applicants are not submitting the most pertinent prior art that they areaware of in connection with a filed patent application, i.e. the applicant’s authored nonpatent literature.

(a) I support my conclusions by citing the appended pieces of prior art, many of which, in my opinion, should have been common knowledge to the inventor and possibly the assignee of US 5,912,412 because several of my cited references for the example US 5,912,412 were authored by the inventor in the form of progress reports to an outside funding agency (the United States Golf Association) dating back to 1985.

(b) I perceive that applicants are not submitting the most pertinent prior art because either i) they do not believe that it is pertinent information or ii) they do not believe such information is in the realm of public knowledge when in fact it is.

3. Referring to my example, the current rules and procedures for obtaining prior artduring the examination of a patent application are apparently less than satisfactory.

(a) I believe less reliance should be placed on the applicant to supply the all of the necessary prior art and more resources be given to the examiner(s) to expand beyond their “normal” avenues of prior art search to include more extensive non-patent literature, including access to more technologically specific nonpatent literature data bases.

(b) Clearly, if the expertise or resources necessary to identify and evaluate prior art does not exist within the USPTO for specialized technologies, then there needs to be some other means by which to obtain the expertise or resources. I propose the following changes to the rules or procedures to improve the identification of pertinent prior art.

i) Improve the interaction, cooperation, and communication among the Federal Government's Departments and Agencies in order to access a broader array of nonpatent literature resources, particularly within specialty areas of technology. For example, the Office of Plant Variety Protection (PVP) is extremely knowledgeable in searching for prior art pertaining to plant cultivars; to issues regarding the uniformity, distinctiveness, and stability of plant cultivars and breeding lines; the development of cultivars within sexually-propagated plant species (for example, the perennial Poa annua of US 5,912,412); and, the literature resources necessary to distinguish between naturally-occurring variation within a plant species and those characteristics claimed for an invented cultivar within that species (which was apparently not the case in the


awarding of US Patent 5,912,412). Thus, the PVP Office has knowledge of, access to, and experience with searchable data bases that may be unknown or otherwise unavailable to Utility patent examiners.

ii) I assume the USPTO is aware of those resources developed by other Federal Government's Departments and Agencies that have technological-specific resources and expertise regarding specific technologies. For example, “the Current Research Information System (CRIS) is the U.S. Department of Agriculture's (USDA) documentation and reporting system for ongoing and recently completed research projects in agriculture, food and nutrition, and forestry. Projects are conducted or sponsored by USDA research agencies, state agricultural experiment stations, the state land-grant university system, other cooperating state institutions, and participants in USDA's National Research Initiative Competitive Grants Program. CRIS is a part of Science and Education Resources Development (SERD), Cooperative State Research, Education, and Extension Service (CSREES).” Information systems such as CRIS represent a valuable resource for the identification of prior art and would enhance the capabilities of the USPTO.

iii) The USPTO should re-evaluate the nonpatent literature data bases currently available to Patent Examiners and consider the possibility of adding or expanding access to searchable data bases contained within the public, non-government sector of society. For example, the turfgrass industry is a small yet increasingly important part of the United States’ increasingly urbanized society. As a result of its increasing role in society, the turfgrass industry (including the United States Golf Association - Green Section Turfgrass Research as well as other related industries) along with individuals within the turfgrass industry, have supported the development of the Turfgrass Information Center located at the Michigan State University (100 Library East Lansing, MI 48824-1048 Voice: (517) 353-7209 FAX: (517) 353-1975 E-mail: [email protected]). “The Turfgrass Information Center (TIC) at Michigan State University contains the most comprehensive collection of turfgrass educational materials publicly available in the world. TIC has over 59,000 records in its primary database (TGIF-the Turfgrass Information File). A specialized unit of the MSU Libraries, the Turfgrass Information Center operates under the guidance and support of the TIC Advisory Council, a volunteer group of industry representatives. In order to aid a highly specialized turfgrass industry, the Turfgrass Information Center collects materials on turf research, turf culture, and the management of turf facilities, such as golf courses, parks, sports fields, lawns, sod farms, roadsides, institutional grounds, and other landscapes. TIC develops and continually refines an online system to provide access to the collected materials, as well as structured, precise access to the emerging electronic resources of the World Wide Web. TIC also assists users of the collection, by helping them identify, locate, and acquire materials.”

I believe that non-patent literature data bases, such as TIC, either exist or will soon exist to serve other, highly-specialized technologies as the need for information increases. It would benefit the USPTO to become aware of these technological-specific nonpatent literature data bases and utilize them to the fullest extent in the identification of prior art during the examination of a patent application.

(c) The advantages of multi-disciplinary cooperation among federal agencies/ departments and their respective data bases of information, if adopted, should only enhance the prior art search activities of patent examiners by reducing their search


work-load while at the same time enhancing the rigor of performed searches. Similarly, enabling examiners to extend beyond the USPTO to work with industry (such as the turfgrass industry and TIC) would, in my opinion, be mutually beneficial to both parties; because, ultimately, no one benefits from inadequate prior art searches.

4. To a certain extent, I perceive that prior art searches are likely being conducted before patent applications are filed with the USPTO. However, I perceive that these searches, in and of themselves, might be less than adequate to justify and warrant the full protection afforded by a US patent.

(a) Technology areas most likely conducting prior art searches would, in my opinion, be those areas that have accumulated experience and knowledge resulting from a long history of patenting activity, i.e. engineering designs or chemical reactions. However, regarding technological areas where little to no prior patent activity exists (for example, the utility patent US 5,912,412 claiming the invention of turfgrass cultivars), the USPTO might anticipate the lack of experience by both parties; the lack of experience of the applicants in the patenting process and that of the examiner(s) within the specific technological area. When such situations arise, I suggest that any USPTO effort to pay closer attention to the details of identifying prior art information would seem warranted. Clearly, if the expertise or resources necessary to identify and evaluate prior art does not exist within the USPTO for specialized technologies, then there needs to be some other means by which to obtain the expertise or resources.

(b) The scope of a proper prior art search should include “normal” avenues of relevant public information relating to patent literature (i.e. United States Patents, foreign patents, etc.) but also needs to include a wide range of nonpatent literature including related scientific literature (i.e. journal articles, conference proceedings, abstracts, and progress reports); Federal Agency project descriptions (i.e. USDA-ARS-CSREES research project descriptions required for expenditure of federal Hatch funds); and, popularized trade journal articles, corporate bulletins, as well as other types of nonpatent literature. In addition, identification of prior art truly needs to go beyond simply search the internet or literature data bases only containing information after the early 1970's or early 1980's. I believe examiners conducting prior art search have a duty to search the older literature as well as the new.

(c) We should be assured that the USPTO is aware of any and all technological-specific, nonpatent literature data bases and that examiners are enabled to utilize the benefits of such additional information for their identification of prior art. For example, one such highly specialized literature data base is the Turfgrass Information Center (TIC) at Michigan State University which contains the most comprehensive collection of turfgrass educational materials publicly available in the world (see 3.b.ii). Utilizing the TIC data base would have been immeasurably valuable in conducting the identification of prior art regarding US 5,912,412.

5. As evidenced by US 5,912,412, I must conclude that Information Disclosure Statements that are being submitted are limited in their scope of the nonpatent literature, including but not limited to, scientific journals, professional journals, trade journal articles, conference proceedings, conference abstracts, regional society reports, state project reports, progress reports to external funding agencies, foreign government reports, and foreign industry reports.


6. Applicants should be required to conduct, to the best of their ability, a prior art search and submit corresponding search results, including where they searched, to the USPTO when filing a patent application. However, such a requirement should not replace an authoritative prior art search by an examiner competent in the specified technology.

7. Applicants should also be required to submit all prior art relied upon during the drafting of the claims of a patent application, including all scientific and non-scientific literature authored by the applicant(s). Such information should be readily available in the form of an applicant(s) curriculum vitae, resume, or other professional career documents and would only serve to enhance an examiner's effort to ensure that the applicant's patent is sound. Any patent application that required less would seem to me to be a frivolous endeavor.

8. Applicants should also be required to submit all nonpatent literature directed to the same field of invention attributable to, authored by, or co-authored by the applicant. In the case of the turfgrass industry, most if not all, nonpatent literature becomes publicly available in a short amount of time through the TIC (see 3.b.ii above) and almost immediately begins to be used as university teaching examples, as ideas in basic and extension research projects, and as references in research and teaching grant applications. If such public information is later neglected during prior art searches of patent applications and the patent becomes awarded (as was the case for US 5,912,412), then the value and security of patents in general becomes lessened and moreover, causes harm to the public by inhibiting, delaying, or obscuring valuable research and/or the development of existing technologies.

9. Applicants should also be required to submit all nonpatent literature including scientific journals, professional journals, trade journal articles, conference proceedings, conference abstracts, regional society reports, state project reports, progress reports to external funding agencies, foreign government reports, foreign industry reports, and progress reports of any kind that are in the public domain. In addition, I believe the submission of documents relied on in drafting an application would also be of benefit. See Question 8. for rationale.

10. It is my perception that not all relevant prior art is being fully identified during patent examination. I offer US 5,912,412 along with my cited references as case in point. I have indicated several possible suggestions to obviate this problem (see 3.b.(i), (ii), and (iii) above). As a final suggestion, I suggest that the USPTO become more involved with those professional organization that represent various technologies. In the case of US 5,912,412 there are several professional societies (the Turfgrass Breeders Association; the C-5 Division of the Crop Science Society of America; the United States Golf Association - Green Section Research Committee) that would be willing to aid and even assist the USPTO in identifying appropriate data bases of literature if only asked to do so. Any costs that might be incurred from such activities should be passed along to those individual who utilize the patenting service (i.e. applicants) as being part of the costs of patent application. It seems entirely possible that some technologies/industries might even want to help share the costs of developing informational systems that would benefit themselves as well as the USPTO.

11. Finally, under “Other Issues”, I have difficulty understanding how cultivars of a sexually-reproducing species are capable of being patented as is the case under Claim


20 of US 5,912,412 when the application itself describes that these inventions may contain as high as 10% variants to type.

I wish to thank the USPTO for this opportunity and hope that my comments have been of assistance. I would be most willing to give my own time to serve in any capacity in order to help address those issues generated from this public debate or in any other capacity as the need occurs.

Sincerely,

David R. Huff, Ph.D.Assistant ProfessorTurfgrass Breeding and GeneticsDepartment of Agronomy, 116 ASI BldgPennsylvania State UniversityUniversity Park, PA 16802phone: 814-863-9805fax: 814-863-7043email: [email protected]


Nonpatent prior art literature that I perceive, when taken alone or in combination, make the 41 Claimed inventions of US 5,912,412 obvious:

Adams, W.A. and P.J. Bryan. 1980. Variations in the growth and development of annual bluegrass populations selected from seven different sports turf areas. In: Proceedings of the Third International Turfgrass Research Conference. ASA-CSSA-SSSA and International Turfgrass Society. pp. 109-115.

Beard, J.B. 1970. An ecological study of annual bluegrass. United States Golf Association Green Section Record 8(2):13-18.

Beard, J.B., P.E. Rieke, A.J. Turgeon, and J.M. Vargas, Jr. 1978. Annual bluegrass (Poa annua L.): description, adaptation, culture, and control. Michigan State University, Agric. Exper. Sta. Research Report 352. pp. 32.

Brilman, L.A. 1995 (August). USGA grasses: the people behind the cultivars. Golf Course Management 63(8):53-56.

Cooper, R.J., P.R. Henderlong, J.R. Street, and K.J. Karnok. 1987. Root growth, seedhead suppression, and quality of annual bluegrass as affected by meluidide and a wetting agent. Agronomy Journal 79:929-934.

Cordukes, W.E. 1977. Growth habit and heat tolerance of a collection of Poa annua plants. Canadian Journal of Plant Science 57:1201-1204.

Danneberger, T.K. and J.M. Vargas, Jr. 1984. Annual bluegrass seed head emergence as predicted by degree-day accumulation. Agronomy Journal 76:756-758.

Duff, D.T. 1978. Disagreements arises over variant of annual bluegrass. University of Rhode Island Turfgrass Research Review 3(1):1-3.

Ellis, W.M., B.T.O. Lee, and D.M. Calder. 1970. A biometric analysis of populations of Poa annua L. Evolution 25:29-37.

Ellis, W.M. 1973. The breeding system and variation in populations of Poa annua L. Evolution 27:656-662.

Groom, L. (editor) 1995.“Environment” impacts public turf breeding programs. Seed World Magazine, August issue, 1995. p. 9.

Hovin, A.W. 1957. Variations in annual bluegrass. The Golf Course Reporter 25(7):18-19.

Huff, D.R. 1995. Germplasm enhancement, breeding, and genetics of turf and native grasses. USDA-ARS-CSRS, Agricultural Experiment Station, Pennsylvania State University Project number PEN03483. Start Date: 1 July, 1995. pp. 1-7.

Johnson, P.G. and D.B. White. 1992. Inheritance of flowering requirements in Poa annua L. Agronomy Abstracts 86:185.

Johnson, P.G. and D.B. White. 1993. Requirements for flower induction in Poa annua L. Agronomy Abstracts 1992 p.171.

Johnson, P.G., B.A. Ruemmele, P. Velguth, D.B. White, and P.D. Ascher. 1993. An overview of Poa annua L. reproductive biology. International Turfgrass Society Research Journal 7:798-804.

Johnson, P.G. and D.B. White. 1994. Inheritance of flowering pattern in Poa annua reptans (Hausskn) and Poa annua annua. Agronomy Abstracts 1994 p.185.

Law, R. 1977. The turfgrass potential of Poa annua ecotypes. Journal of Sports Turf Research Institute 53:117.

Law, R. 1979. The cost of reproduction in annual meadow grass. American Naturalist 113(1):3-16.

Law, R. 1981. The dynamics of a colonizing population of Poa annua. Ecology 62(5):1267-1277.

Law, R., A.D. Bradshaw, and P.D. Putwain. 1977. Life-history variation of Poa annua. Evolution 31(2):233-246.


Lush, W.M. 1989. Adaptation and differentiation of golf course populations of annual bluegrass (Poa annua). Weed Science 37:54-59.

McBurney, S.L. and J.E. Kaufman. 1982. Enhancing the survival and appearance of Poa annua with growth regulators. Proceedings of the 52nd Annual Michigan Turfgrass Conference 11:47-51.

Peel, C.H. 1982. A review of the biology of Poa annua L. - with special reference to sports turf. Journal of the Sports Turf Research Institute 58:28-40.

Piper, C.V. and R.A. Oakley. 1927. Annual bluegrass (Poa annua). Bulletin of the United States Golf Association Green Section 7(7):128-129.

Registration of Poa annua cultivar 'ANNA'. 1992. Blatt Fur Sortenwesen. September, 1992.

Registration of Poa annua cultivar 'SUPOMO'. 1993. A cultivar of Poa annua registered in Holland. Contained in the United States Plant Variety Protection Office data base.

Shildrick, J.P. 1971. Grass variety trials. Journal of Sports Turf Research 47:86-127.Shildrick, J.P. 1975. Turfgrass mixtures under wear treatments. Journal of the Sports

Turf Research Institute 51:9-40.Till-Bottraud, I., L. Wu, and J. Harding. 1990. Rapid evolution of life history traits in

populations of Poa annua L. Journal of Evolutionary Biology 3:205-224.Vermeulen, P. 1989. Consider Poa annua for your new green. United States Golf

Association Green Section Record 27(5):17.Warwick, S.I. and D. Briggs. 1978. The genecology of lawn weeds. I. Population

differentiation in Poa annua L. in a mosaic environment of bowling greens lawns and flower beds. New Phytologist 81:711-723.

Wells, G.J. 1974. The biology of Poa annua and its significance in grasslands. Herbage Abstracts 44:385-391.

White, D.B. 1985. Breeding of Poa annua for improved cultivars. Annual Turfgrass Research Report for the United States Golf Association and the Golf Course Superintendent’s Association. 1985 p.6.

White, D.B. 1986. Breeding of Poa annua for improved cultivars. Annual Turfgrass Research Report for the United States Golf Association and the Golf Course Superintendent’s Association. 1986 p. 7-8.

White, D.B. 1986. Variation in domestic and exotic Poa annua L. and Poa supina Schrad. germplasm sources. Agronomy Abstracts 1986 p. 139.

White, D.B. 1991. Improvement of Poa annua var reptans for golf turf. 1991 Turfgrass Research Summary for the United States Golf Association and the Golf Course Superintendent’s Association. 1991 p. 12.

Wu, L., I. Till-Bottraud, and A. Torres. 1987. Genetic differentiation in temperature-enforced seed dormancy among golf course populations of Poa annua L. New Phytologist 107:623-631.

Wu, L. and A. Harivandi. 1993. Annual bluegrass ecology and management: understanding key interactions is a prerequisite. Golf Course Management 61:100-106.

Younger, V.B. 1959. Ecological studies on Poa annua in turfgrasses. Journal of the British Grasslands Society 14:233-237.

Zontek, S.J. 1973. A positive approach to Poa annua management. United States Golf Association Green Section Record 11:1-5.


The 11 Questions posted by the USPTO

1. Is the most pertinent prior art being considered by patent examiners during examination of patent applications? If not, please include the following in your response: (a) Provide support for your conclusions and identify the following: (i) The area(s) of technology most affected; and (ii) The type(s) of prior art most overlooked by the USPTO, including but not limited to United States patents, foreign patent documents, and nonpatent literature. (b) Identify why you perceive that patent examiners are not considering the most pertinent prior art. 2. Do applicants submit the most pertinent prior art that they are aware of in connection with a filed patent application? If not, please include the following in your response: (a) Provide support for your conclusions and identify the following: (i) The area(s) of technology most affected; and (ii) the type(s) of prior art that is not being submitted by applicants, including but not limited to United States patents, foreign patents, and nonpatent literature. (b) Identify why you perceive that applicants are not submitting the most pertinent prior art. 3. Are the current rules and procedures for obtaining prior art during the examination of a patent application adequate and effective?If not, please include the following in your response: (a) Identify aspects of the rules and procedures that do not facilitate the identification of pertinent prior art; (b) Discuss any proposed changes to the rules or procedures to improve the identification of pertinent prior art; and (c) Discuss potential advantages and hardships that patent applicants and examiners would face if particular changes were adopted. 4. Are prior art searches typically conducted before filing a patent application with the USPTO? If not, please explain. If so, please include the following in your response: (a) An identification of the area(s) of technology where it is most likely that a prior art search would be conducted; (b) The scope of a proper prior art search (i.e., United States Patents, foreign patents, journal articles, corporate bulletins, as well as other types of nonpatent literature); and (c) An identification of databases and Internet resources generally searched or available to applicants and/or the USPTO. 5. Please indicate whether Information Disclosure Statements are frequently submitted and, if so, which of the following types of prior art documents are included: (a) United States patents; (b) Foreign patent documents and Patent Cooperation Treaty (PCT) publications; and (c) Nonpatent literature, including but not limited to journal articles, conference papers, corporate bulletins, and Internet publications. If applicable, please explain why any of the aforementioned type(s) of prior art documents are not normally submitted to the USPTO. 6. Should applicants be required to conduct a prior art search and submit corresponding search results, including where they searched, to the USPTO when filing a patent application? If not, should applicants be required to disclose whether or not a search was conducted? Please explain your rationale and discuss any potential advantages and drawbacks. 7. Should applicants be required to submit all prior art relied upon during the drafting of the claims of a patent application? Please explain your rationale and discuss any potential advantages and drawbacks. 8. Should applicants be required to submit all nonpatent literature directed to the same field of invention attributable to, authored by, or co-authored by the applicant? Please explain your rationale and discuss any potential advantages and drawbacks. 9. Please identify any type(s) of nonpatent literature documents applicants should be required to submit to the USPTO in connection with any given patent application (e.g., conference reports,


corporate collections, documents relied on in drafting an application, etc.). Please explain your rationale and discuss any potential advantages anddrawbacks. 10. If you believe that the most relevant prior art is not being identified during patent examination, please identify any suggestions to obviate this problem. In your response, please: (a) Discuss in detail any idea for addressing this problem effectively; (b) Explain how the proposal(s) should be implemented; (c) Identify who should bear the cost; and (d) Indicate any potential advantages and drawbacks for each suggestion. 11. Please discuss any related matters not specifically identified in the above questions. If this is done, parties are requested to: (a) Label that portion of the response as ``Other Issues''; (b) Clearly identify the matter being addressed;


20.

CEN T ER F O R IN T E R N A T I O N A L EN VI R O N M EN T A L LA W

Comments on Improving Identification of Prior Art

Recommendations on Traditional Knowledge Relating to Biological Diversity Submitted to the United States Patent and Trademark Office

August 2, 1999

These comments are submitted to the United States Patent and Trademark Office (PTO) in response to its May 27, 1999 Federal Register notice (64 Fed. Reg. 28803) requesting input from the public on the PTO’s procedures and practices for identifying prior art during the examination of a patent application. They have been prepared by the Center for International Environmental Law (CIEL) on its own behalf, and also on behalf of the Coordinating Body of Indigenous Organizations of the Amazon Basin (COICA), the Coalition for Amazonian Peoples and Their Environment (Amazon Coalition), the Indigenous Environmental Network (IEN)’s North American Indigenous Peoples Biodiversity Project (NAIP-B), and the Society for Research and Initiatives for Sustainable Technologies and Institutions (SRISTI).

CIEL is a non-profit organization based in Washington, D.C. that promotes sustainable and equitable development and environmental protection through the development and implementation of international law. COICA, based in Ecuador, is the coordinating body for more than 400 indigenous tribes that are members of nine national organizations of the countries in the Amazon region. The Amazon Coalition, based in Washington, D.C., is comprised of eighty non-governmental organizations dedicated to strengthening and broadening the alliance between indigenous peoples of the Amazon and groups who share their concerns for the future of the Amazon and its peoples. IEN is a network of Native American groups. SRISTI is a non-governmental organization based in India that works to strengthen the capacity of grassroots inventors, innovators and entrepreneurs engaged in conserving biodiversity and developing eco-friendly solutions to local problems.

As explained in Part I below, traditional and informal knowledge developed and maintained by indigenous and local communities is a significant “prior art” resource for innovation, particularly in pharmaceutical and other technologies based upon biological diversity and biological resources. As Part II discusses, such prior art is relevant in determining whether patent applications in such fields of technology meet not only the statutory bar tests for printed publications, patents and known use provided by subsections 102 (a) and (b) of the Patent Act, 15 U.S.C. § 102, but also the test of subsection (f), for situations in which the applicant is not the inventor.

Part III explains how the PTO’s current approach leads to problems in identifying such prior art, and in ensuring that the statutory bar is properly applied. Part IV recommends improvements that the PTO could make to procedures and practices within


the framework of existing law. These changes would significantly enhance the ability of patent examiners to assemble and review the prior art relevant to an application. At the same time, they would enhance recognition of the contributions of indigenous peoples and non-Western cultures to universal knowledge, enhance incentives for the conservation of traditional knowledge systems and associated biodiversity, and encourage equitable sharing of benefits between the users of traditional knowledge and those who have created and maintained it.

I. The Role of Traditional and Informal Knowledge in Technological Innovation A significant part of the intellectual base for innovation in certain fields of

technology has come from outside the formal Western science-based research and development process. In particular, the informal and traditional knowledge developed, elaborated and maintained by indigenous and traditional societies has been an important resource in technologies based upon the manipulation, adaptation or use of biological resources.3 Traditional knowledge is valuable in several ways. It informs resource management systems and practices of resource use that often have relatively low impacts upon biological resources. The existence of these systems and practices explains in part why these peoples are the custodians of much of the world’s richest stores of biodiversity. Traditional knowledge also comprises extensive knowledge of the practical uses of these resources, as sources of medicines, foodstuffs, and other goods. As a result, traditional knowledge is itself a valuable resource not only for these communities but also for outsiders, including academic researchers, government agencies, and commercial firms.

Traditional knowledge has been used in a number of industries as a starting point for new product development in sectors such as specialty food and beverages, pharmaceuticals, agriculture, horticulture, and personal care and cosmetics. Relevant technology categories include—but are not necessarily limited to—fuels, sugars, cleaning, plant and animal husbandry, drugs and body treating compositions, foods, fabrics and textiles, perfumes, multicellular organisms and their unmodified parts, and chemistry, including carbon and organic compounds, natural resins, molecular biology, microbiology, and analytical and immunological testing.

The value of traditional knowledge is well demonstrated in the pharmaceutical sector. A recent analysis found that “57% of the top 150 brand names prescribed during [a six month period in 1993] contained at least one major active compound now or once derived or patterned after compounds derived from biological diversity.”4 Of the 35 plant-derived drugs included in the top 150, 33—or 94%—contained at least one compound that “had or has a demonstrated use in traditional medicine related to the primary therapeutic use for which a physician might prescribe the drug.”5

3 These Comments use the shorthand term “traditional knowledge” to refer to the knowledge, practices, and innovations developed and held by indigenous and local communities. However, it is important to recognize that this “traditional” knowledge is not static but constantly evolving, and many “traditional” knowledge systems continue to produce significant innovation.

4 See Francesca Grifo, et al., The Origins of Prescription Drugs, in BIODIVERSITY AND HUMAN HEALTH 131, 136 (Francesca Grifo & Joshua Rosenthal eds., Washington, D.C.: Island Press 1997). The analysis included compounds from all biological sources, including animals, plants, fungi, and microorganisms. Id. at 137. The top 150 compounds were identified according to the number of prescriptions filled. Id. at 136.

5 Id. at 137, 139.


For example, quinine was originally derived from cinchona bark, which Amazonian indigenous peoples used as a remedy for malaria. Quinine and its chemical analogs remain “the bulk of our antimalarial armamentarium.”6 Herbal remedies currently being researched for pharmaceutical applications include qing hao su (artemisinin), a Chinese traditional medical preparation from the leaves of the plant Artemisia annua, which has antimalarial properties;7 the bark of the rainforest tree Alphitonia zizyphoides, used by traditional Samoan healers as a tonic;8 and Homolanthus nutans, from which Samoan healers prepare an infusion used to treat viral hepatitis.9 A preliminary analysis of 74 plant species used medicinally by traditional Samoan healers revealed that “[o]ver 86% of the plants exhibited high levels of pharmacological activity.”10 Researchers have catalogued 2,095 plant species used medicinally by Native Americans.11

The underlying mission of United States intellectual property law is “[t]o promote the progress of science and useful arts.”12 The award and enforcement of the patent right is one way that the law pursues its mission. But the financial rewards flowing from the award of exclusive rights are an incident of the mission rather than an end in themselves. The disclosure to the public of the basis for the invention, through publication of the application upon award of the patent, is another important mechanism—one which benefits a constituency beyond the patent owner alone. The proper acknowledgment of prior art in the application provides a complete and accurate history of the invention’s origin, which is valuable both as a resource for future innovators and as recognition accorded to the predecessors whose intellectual labors made the invention possible.

In this context, disclosure of traditional knowledge that forms part of the prior art “promotes the progress of science and useful arts” in at least two ways. First, by according recognition to knowledge created by cultures whose contributions have often been unrecognized and even denigrated, it provides a positive incentive for the maintenance of traditional knowledge systems. Positive incentives are vital to stem the rapid loss of these systems resulting from factors such as cultural assimilation and the continuing destruction of local biological resources and ecosystems with which they are intimately linked. Second, creating positive incentives to maintain these knowledge systems in turn can create an incentive for the knowledge holders to continue the traditional practices by which they have maintained high levels of biodiversity in their homelands over many generations. Indeed, this linkage led the drafters of the Convention on Biological Diversity to include a requirement that governments take steps to respect, preserve and maintain traditional knowledge of such peoples; to promote the wider application of such knowledge, contingent on the approval and involvement of its

6 See Catherine A. Laughlin and Alexandra S. Fairfield, Natural Products for the Treatment of Infectious Diseases, in BIODIVERSITY AND HUMAN HEALTH 164, 176.

7 Id. at 177.8 See Paul Alan Cox, Indigenous Peoples and Conservation, in BIODIVERSITY AND HUMAN

HEALTH 207, 215.9 Id. at 214.10 Id. 11 Id. at 216.12 U.S. Constitution, Art. 1, § 8, cl. 8. “The Congress shall have power. . . To promote the

progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”


holders; and to encourage the equitable sharing of the benefits arising from utilization of traditional knowledge.13

II. Traditional Knowledge as Prior Art Relevant to the Statutory Bar of 35 U.S.C. § 102

Section 102 of the Patent Act, 35 U.S.C. § 102, establishes a “statutory bar”

against the grant of a patent in certain specified conditions. Several provisions of

section 102 are particularly relevant to the treatment of traditional knowledge as prior art.

Subsections 102(a) and (b) provide that a patent shall not be granted if the

invention was patented or described in a printed publication in either the United States or

a foreign country, either before the date of the claimed invention or more than a year

before the date of the patent application. These subsections also provide that a patent

shall not be granted if the invention was “known or used by others in this country.”

Unpublished or unpatented knowledge or use in a foreign country is not relevant to

patentability under these subsections.

Subsection 102(f) precludes the award of a patent when the applicant did not

invent the subject matter sought to be patented. Unlike subsections 102(a) and (b),

subsection 102(f) contains no limitations as to geographic scope. Consequently, any

information—published or unpublished, domestic or foreign—demonstrating that the

applicant did not himself invent the subject matter claimed in the application will be

material to patentability under subsection 102(f).

Patent applications whose claims merely duplicate processes known to indigenous and local communities will thus fail the statutory bar of subsection 102(f) and should be rejected. Similarly, traditional knowledge may be material in examining applications containing claims consisting in part of such knowledge. As described in Part III below, current PTO procedures and requirements relating to prior art do not adequately provide for examination of such applications.

Examiners must make a “thorough investigation of the available prior art relating to the subject matter” of the claimed invention.14 Thus, the primary qualifying factor in an examiner’s consideration of section 102(f) prior art should be whether it is “available” to her. Prior art will be available when an examiner can access it on her own through written texts, data bases, published herbarium specimens or other sources, or when it is provided by the applicant under the applicant’s duty to disclose to the PTO all information known by that individual to be material to patentability.15 Part IV, below, suggests several simple procedures for ensuring that such information is readily available to examiners, thus reducing the extent to which applications seeking to misappropriate traditional knowledge can slip through the examination process.

13 Convention on Biological Diversity, entered into force December 29, 1993, 31 I.L.M. 818 (1992) text available at URL <www.biodiv.org>. Over 170 countries are Parties to the Convention; the United States has signed but not ratified it.

14 37 CFR § 1.104(a)(1) (emphasis added).15 See 37 CFR § 1.56.


III. Problems With the Current Approach: Identifying Prior Art and Applying the Statutory Bar

Recent controversies over United States patents based on traditional knowledge have raised concerns that the patent system as it is presently implemented does not adequately account for traditional knowledge as prior art. The PTO has issued patents that are neither novel nor non-obvious in the light of traditional knowledge. These patents allow those who have no right to claim traditional knowledge to remove it from the public domain, and they fail to acknowledge indigenous contributions to world culture and knowledge. Their issuance has provoked sharp protests by the peoples and countries from whom the knowledge or resources were acquired.

A recent patent on turmeric provides a well publicized example. In 1995, researchers at the University of Mississippi Medical Center obtained a United States patent for the use of turmeric as a healing agent.16 This patent aroused considerable public controversy, because turmeric has been used to promote healing of wounds for generations by people in India.17 Because the patent claims were for processes that were not new, but were part of traditional Indian knowledge in the public domain, the PTO canceled all six of the patent claims as a result of a reexamination requested by India’s Council of Scientific and Industrial Research (CSIR).18

The turmeric case demonstrates that traditional knowledge constitutes prior art when a patent claim merely restates in whole or part processes that have long been held within the knowledge systems of indigenous and local communities. However, because the turmeric patent “slipped by” examiners who were not apprised of, and did not seek out, the available prior art, the burden was placed on the knowledge holders to protect their traditional knowledge, through the reexamination process. Yet developing countries and indigenous and local communities have limited means for discovering that their resources are being improperly claimed by United States commercial interests, and they have little chance of learning about an application until after the patent has been awarded. At that point, their least expensive and simplest recourse is to file and prosecute a reexamination at the PTO. Yet participation in such proceedings requires financial resources and access to legal expertise that are not readily available to developing countries and their inhabitants. Many indigenous and local communities in these countries are poor and isolated. Thousands upon thousands of villages have rich traditional knowledge systems attuned to local conditions, yet they lack communication facilities, access to information, and expertise.

Moreover, the basis for reexamination is limited: examiners may only consider newly discovered prior art patents and printed publications in a reexamination proceeding. As a result, indigenous and local communities in developing countries have no opportunity to bring attention to unwritten knowledge, practices, and innovations that demonstrate lack of novelty or non-obviousness. This is a significant drawback because—given that many of these traditions are oral and poorly documented in the extant scientific literature—published accounts may not have existed at the time the original patent application was filed.

16 See Use of Turmeric in Wound Healing, U.S. Patent No. 5,401,504, issued March 28, 1995.17 See, e.g., India Prevents Patenting of Turmeric, The Statesman, Aug. 23, 1997; Sanjay

Kumar, India Wins Battle with USA Over Turmeric Patent, The Lancet 350:724 (1997).18 See Use of Turmeric in Wound Healing, U.S. Patent and Trade Office Reexamination

Certificate B1 (3500th), April 21, 1998.


In the turmeric case, a national scientific organization from a large developing country with a substantial scientific community intervened. The CSIR was able to produce a substantial body of publications that documented the long-standing use of turmeric by local communities in India. That fact demonstrated that (1) the examiner during the patent’s original prosecution failed to investigate all of the available prior art relating to the subject matter and (2) the applicant failed to disclose adequately all of the information that was material to patentability.

The growing sense in developing countries that patent systems are not fairly acknowledging contributions from their jurisdictions has led some developing countries to adopt restrictions on access to knowledge and biological resources. These restrictions could interfere with the very progress of science that patent law is supposed to encourage. The Philippines has enacted regulations strictly controlling access to biological specimens, which some critics complain has unnecessarily restricted scientific research and exchange. Two Brazilian states have adopted laws requiring foreign researchers to sign contracts requiring them to pay “bioroyalties” on any income they derive from local plants, and the Brazilian Congress is considering similar legislation.19

The controversy could affect international standards for intellectual property as well. For instance, an important policy goal of the United States is to promote multilateral agreement on the definition and enforcement of strong intellectual property rights systems worldwide. Major progress toward that goal is reflected in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) which binds the 130-plus members of the World Trade Organization Agreement. However, the growing resistance on the part of many developing countries—based in part on perceptions among them that TRIPS standards facilitate the efforts of industrialized countries to misappropriate their traditional knowledge—has led to serious opposition to the implementation or strengthening of the Agreement.

IV. RecommendationsPTO examiners are obligated to access and evaluate prior art sufficient to ensure

that applicants receive patents only for their inventions, and to prevent applicants from patenting subject matter that is broader than what they actually invented. This part suggests modifications to existing procedures that will respond to the problems identified in Part III and enable examiners to carry out their mandate more effectively.

Part IV.A relates to PTO requirements for disclosures in patent applications. It proposes a clarification of the disclosure rules in order to ensure that applicants are supplying all information regarding traditional knowledge that may be materially relevant to patentability.

Part IV.B specifies two routines that examiners can follow to gain access to traditional knowledge that may be relevant as prior art. First, as explained in Part IV.B.1, examiners should review all databases and other known registries of traditional knowledge to ensure that each aspect of an applicant’s claims represents a truly inventive step. Second, as discussed in Part IV.B.2, examiners should more fully integrate the existing rules and guidelines governing international and international-type searches into the normal examination process for national applications.

19 See Anthony Faiolo, Amazon Cash Crop, The Washington Post, July 9, 1999, at A21.


Part IV.C proposes changes relating to plant patents. First, it proposes additional disclosure requirements for applicants. Second, it proposes an additional step in the examination procedure: where plant patents are based on specimens that originated in developing countries, examiners should routinely consult expert institutions to determine if herbarium specimens exist that may be materially relevant to whether the claimed plant is truly a new and distinct variety.

Part IV.D proposes that the PTO take the initiative to consider whether and how to define principles for taking moral concerns into account in patenting, particularly patenting of life forms.

A. Elaboration of Disclosure Requirements

As part of their “duty of candor and good faith,” each individual associated with the filing and prosecution of a patent application has the duty to disclose to the PTO all information known by that individual to be material to patentability.20 Among the categories of “material” information is information that establishes, alone or in combination with other information, a prima facie case of unpatentability. Information is also material if it refutes or is inconsistent with a position the applicant takes in asserting an argument of patentability.21

Such material information can include descriptions of traditional knowledge from sources outside the United States contained in printed publications available prior to the date of invention or more than one year prior to the application date.22 It can also include any information relating to traditional knowledge from any source demonstrating that the applicant did not himself invent the subject matter sought to be patented.23 And it can include information regarding traditional knowledge from a source within United States jurisdiction indicating that the invention was known or used more than one year prior to the date of application or prior to the claimed date of invention.

The PTO should establish the following four specific requirements to help ensure that examiners have access to such material information.

1. Applicants Must Disclose Traditional Knowledge Used in Invention Any traditional knowledge that the applicant used in the process of discovering or

creating the applied-for subject matter should presumptively be considered material to patentability and therefore should be subject to the requirement of disclosure. The disclosure should not be limited to printed publications or patents. Instead, it should also disclose other sources of material information—particularly, unpublished traditional knowledge that may qualify as section 102(f) prior art, as discussed in Part II above.

2. Applicants Must Conduct Prior Art Searches of Traditional KnowledgeBecause applicants will likely have conducted extensive research in the country

and communities where the knowledge is held, they will often have more ready access to traditional knowledge prior art than will examiners. Accordingly, it will generally be most cost-effective for applicants themselves to conduct prior art searches concerning any traditional knowledge or resources they utilize in their subject matter. Such

20 37 CFR § 1.56 (a).21 Id. § 1.56(b).22 35 USC § 102(a)-(b)23 Id. § 102(f).


searches should include all relevant publications, including databases, herbarium specimens, etc., that pertain to the traditional knowledge, especially those publications prepared in the source country. Searches should also review any orally transmitted traditional knowledge, practices, or innovations of indigenous peoples relevant to the subject matter, again consistent with section 102(f). The results of these searches should be fully reported along with the patent application.

3. Applicants Must Disclose Country and Geographical Location of Knowledge and Related Resources

Applicants should disclose the country and exact geographical location from which the knowledge or related resources (e.g. plants identified as medicinal on the basis of traditional knowledge) were obtained. This will help guide the examiner in his search for section 102(a) or (b) prior art printed publications, including database searches.

Disclosure of the exact geographical source of living resources can also be useful for evaluating the patentability as well as enablement with respect to naturally based products, because the specific chemistry of plants may depend on the local environment (especially the soil) from which they originated. Additionally, such disclosures could assist the examiner in the event it becomes necessary to corroborate or obtain more information about non-published section 102(f) prior art that documents traditional knowledge.

4. Applicants Must Certify Their Compliance with Applicable LawsApplicants who utilize traditional knowledge or resources in their inventions

should certify that the knowledge or resources were acquired in full compliance with the local laws of the source jurisdiction. The certification should include contact information for any local authorities from whom authorization for exploitation of the knowledge was obtained. In situations in which they believe it necessary to corroborate a certification, examiners should also be able to request the texts of any agreements the applicant entered into with local authorities or communities that provided for benefits sharing or acknowledgment of the contribution of indigenous and local communities to development of the subject matter.24

Such certification would assist examiners in evaluating whether the applied-for subject matter was truly novel and nonobvious. Moreover, it would provide examiners with the means to seek further information and clarification from the local peoples and authorities from whom traditional knowledge was acquired, should the examiner believe such further information would assist him in the prosecution of the application. This latter benefit would also comport with the enablement requirements of 35 U.S.C. § 112. Because certification would serve to assure those practiced in the art that they could learn where and how to access the traditional knowledge or resources, the provision of certified information by an applicant would be analogous to a biotechnology applicant fulfilling the deposit requirements for biological material pursuant to 37 C.F.R. § 1.801 et seq. and the Budapest Treaty.25

24 Any invention based on biological material or traditional knowledge obtained in violation of applicable laws may also be subject to attack under the “tainted research doctrine.” See Michael A. Gollin, Venable, Baetjer, Howard & Civiletti, LLP, “New Rules for Natural Products Research” (publication forthcoming).

25 See Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.


B. Elaboration of Examiner Search Procedures

In addition to changes in disclosure requirements, the examination procedure could also be modified through several specific steps that would more effectively screen patents that misappropriate traditional knowledge. These include reviewing accessible databases and other reference sources, integrating the guidelines for international and international-type searches into normal examination procedure, and consulting with expert institutions regarding plant patent applications.

1. Examiners Should Review All Accessible Databases, Registries and Other Sources of Information on Traditional Knowledge

When prosecuting a patent application, examiners are required to make a “thorough investigation of the available prior art relating to the subject matter of the claimed invention.”26 The examination must be complete with respect to the patentability of the invention as claimed.27 A “complete” examination will thus include a review of all traditional knowledge that may have contributed to the invention of the subject matter, to ascertain whether all the claims for the subject matter are truly novel and nonobvious.

Important gateways to such prior art are found in electronic databases and registries containing data regarding traditional knowledge, ethnobotany, ethnopharmacology, and the commercial use of biological resources from developing countries.28 Database searches can serve to alert patent examiners that prior art in the form of traditional knowledge may exist that is material to the patentability of an applied-for invention. Where necessary, examiners can then make further inquiries of the applicant and/or governments and other entities in the source countries.

The most comprehensive of the databases currently available to on-line researchers is NAPRALERT, produced by the Program for Collaborative Research in the Pharmaceutical Sciences, College of Pharmacy, University of Illinois at Chicago. NAPRALERT contains a broad range of information about natural products derived from plants. The database can be searched to access information about plant pharmacology, biological activity, ethno-medicine, plant chemistry, and microbial and animal extracts. It is available on the worldwide web from STN Easy at <http://stneasy.cas.org/>. One limitation of NAPRALERT as a source of traditional knowledge prior art is that it is

26 37 CFR § 1.104(a)(1).27 Id.28 The data contained in computerized databases qualify as prior art publications under §

102(a) and (b). When evaluating whether a printed publication constitutes prior art under § 102, courts do not recognize a “dichotomy” between “printing” and “publication.” See In re Wyer, 210 U.S.P.Q. 790, 793; 655 F.2d 221, 226 (C.C.P.A. 1981) (citing Philips Electronics & Pharmaceutical Indus., Inc. v. Thermal & Electronic Indus., Inc., 171 U.S.P.Q. 641, 646; 450 F.2d 1164, 1170 (3d Cir. 1971)). Instead, they identify the “probability of dissemination” and the “public accessibility” of the item taken as a whole as the relevant questions. Id. Dissemination by printing or other mechanical reproduction is not in itself necessary. Rather, there must be a showing that the item in some way has “been available and accessible to persons concerned with the art to which the document relates.” Philips, 171 U.S.P.Q. at 647, 450 F. 2d at 1171, quoted in Wyer, 210 U.S.P.Q at 794, 655 F.2d at 227. Thus, the court in Wyer focused on whether the item had been “properly classified, indexed or abstracted” in a publicly accessible repository of information. Under these principles, databases comprise prior art publications under § 102. Because they are generally available over the World Wide Web, they are both widely disseminated and readily accessible to the public. They are usually easily searchable through search engines available at the websites or provided by the searchers themselves.


compiled from written sources. Consequently, traditional knowledge that has been transmitted solely in oral form will not be contained in the database.

Another relevant database is operated by Dr. James Duke of the USDA’s Agricultural Research Service. “Dr. Duke’s Phytochemical and Ethnobotanical Databases” provides search capabilities by plant, chemical, activity, and ethnobotany categories. It is available at <www.ars-grin.gov/duke>. Other phytochemical databases may be accessed through the Phytochemical Society of North America’s “Links to Phytochemical Resources on the Web” site, located at <www.fin.edu/orgs/psna/links.html>.

Databases that list traditional knowledge from specific geographical regions are also becoming available. The “Prelude” database of traditional veterinary medicine, part of the “Tropical Diseases Webring,” focuses on traditional knowledge of Africa. The website is located at <http://pc4.sisc.ucl.ac.be/prelude/prelude_HomePage.html>. Similarly, the World Bank hosts a searchable “Database of Indigenous Knowledge and Practices” in Sub-Saharan Africa. The database can be accessed at <www.worldbank.org/afr/ik/datab.htm>. Researchers can find both of these databases through links contained in the Nuffic/CIRAN International Indigenous Knowledge (IK) Network. The IK Network includes databases listing numerous reference sources for international indigenous knowledge, organized by broad subject matter. It is located at <www.nuffic.nl/ciran/ik.html>. In addition, the Bioresources Development and Conservation Program (BDCP) in Washington, D.C. has developed a database that catalogues the medicinal use of plants by indigenous peoples in Africa. BDCP expects to place its AFRICMED database on-line in the near future.

The People’s Biodiversity Registers (PBRs) program sponsored by World Wildlife Fund India is endeavoring to create a system of databases that will provide a record of local knowledge for the use of present and future generations of Indian village community peoples, and to protect local biodiversity and knowledge from misappropriation by outsiders. The completed program is envisioned as a network of decentralized databases, all linked to a consolidated national database.

The Society for Research and Initiatives for Sustainable Technologies and Institutions (SRISTI) is another non-governmental organization from India. For several years, SRISTI has been documenting information on the innovations and creative practices of rural farmers. These have been published in SRISTI’s “Honey Bee” database, which SRISTI is considering posting at least in part on the worldwide web. SRISTI’s website is located at <http://csf.Colorado.EDU/sristi/>.

The extent to which the SRISTI “Honey Bee” database and the PBRs are publicly accessible is yet to be determined. Because of their concerns about “pirating” of traditional knowledge, the managers of these databases may be hesitant to make data freely available. However, it is possible that the PTO could make arrangements so that the managers could conduct prior art searches in response to PTO inquiries and then disclose information sufficient to demonstrate the lack of patentability of a given claim. The PTO should also explore ways of reciprocating by making the information available in the patent files more readily available to informal innovators, perhaps through expanded us of Internet gateways.


As countries implement their obligations under the Convention on Biological Diversity (CBD), it is anticipated that they will increasingly rely upon databases as a means of identifying, preserving and maintaining the knowledge, innovations and practices of indigenous and local communities. More databases will thus likely become available that will be useful to patent examiners conducting prior art searches of patent claims relying in whole or part upon traditional knowledge. The international Clearinghouse Mechanism of scientific and technical information established under the Convention may provide a single gateway to these various databases as well as the non-governmental databases described above. It could therefore be useful for the PTO to follow the implementation of the provisions of the Convention on Biological Diversity regarding protection of traditional knowledge and sharing of scientific and technical information, so that it can track and link to CBD-related databases as they become operational.

The websites described above are listed in the Appendix attached to these Comments.

2. The Rules and Guidelines Governing “International-Type” Searches Should Be Integrated into the Examination Process for National Applications.

Examination procedures should be revised to integrate more effectively the guidelines for international-type searches into the examination process for patent applications. Those rules and guidelines treat traditional knowledge prior art more flexibly than do PTO examiners under their current practices.

Examiners must already perform an “international-type” search as part of every examination of a national application.29 In practice, examiners perform international-type searches only for applications that enter the national stage from international applications. However, 37 C.F.R. § 1.9 defines a “national application” to include any U.S. application for patent filed under 35 U.S.C. § 111, not only applications entering the national stage from international applications. Consequently, the international-type search must be performed on all U.S. patents filed on and after June 1, 1978.30 Failure of examiners to perform such searches constitutes a failure to perform a statutory duty.

An “international-type” search is an international search as defined under the Patent Cooperation Treaty (PCT).31 Carried out on a national application, it is similar to an international search.32 Such a search is required as part of the United States’ implementation of the PCT.33 Like other international treaties ratified by the United States, the PCT is the “supreme law of the land,” on a par with U.S. statutes.34 Consequently, the Rules of Practice in Patent Cases incorporates by reference the relevant provisions of the PCT and PCT Rules when discussing the terms of international and international-type searches.35 Patent examiners prosecuting national

29 See 37 CFR § 1.104(a)(3).30 See id.; 37 C.F.R. § 1.9(a)(1).31 Patent Cooperation Treaty (PCT) of June 19, 1970, as amended and modified, to which the

United States became a party on January 24, 1978. Available at World Intellectual Property Organization web site, <www.wipo.org/eng/main.htm>.

32 See id. art. 15.5(a). 33 See id. art. 15.5(b).34 See U.S. Constitution art. 6 § 2; Restatement of Foreign Relations Law § 111 (1) (1986).35 See, e.g., 37 CFR 1.413(c)(3).


applications are thus obligated to use PCT-stipulated rules when fulfilling the international-type search requirement.

According to Article 15.2 of the PCT, the objective of the international search is to discover relevant prior art. For the purposes of Article 15.2, relevant prior art is everything that has been made available to the public anywhere in the world by means of written disclosure, and which can be of assistance in determining that a claimed invention is novel or nonobvious.36 Oral disclosure, use, exhibition or other means of disclosure are not relevant prior art for the purposes of an international search unless substantiated by a written disclosure.37 However, “[t]he date on which the written disclosure was made available to the public may have been after the filing date of the international application.”38

In the context of a domestic patent application claim based wholly or partly upon traditional knowledge, this latter provision means that the traditional knowledge qualifies as prior art when it has been published in some form, even if that publication occurs after the application date. Orally transmitted traditional knowledge in itself would not qualify as prior art. However, it would qualify if it was collected in a database or printed in a publication, even if the data did not become available in that form until after the patent application had been filed. In a sense, this feature of the PCT international-type search rules helps put into effect the statutory bar of sub-section 102(f), insofar as it is not subject to the same publication date restrictions as is prior art under subsections 102(a) or (b).

C. Modification of Disclosure Requirements and Examination Procedures for Plant Patents

While they form a very small proportion of patents granted in the United States, plant patents continue to provide some companies with an avenue for acquiring rights relating to botanical resources, including those belonging to indigenous and local communities. The Plant Patent Act, 35 USC § 161 et seq., was intended to recognize and protect inventions of the plant breeder who has worked “in aid of nature.”39 Consequently, when a plant patent applicant attempts to patent a newly found plant, he must “particularly point out the location and character of the area where the plant was discovered.”40 The strict implementation of this requirement is an important means for ensuring compliance with the provision of the Plant Patent Act that prevents the award of a patent to one who discovers a previously unknown variety that already exists in the wild.41

36 PCT Regulations rule 33.1(a) (WOPCR 1/40, Jan. 1, 1999), available at <www.wipo.org/eng/main.htm>.

37 Id. rule. 31.1(b); PCT International Search Guidelines, PCT Gazette, chptr. VI § 1.2 (Special Issue No. 06/1998, Oct. 8, 1998), available in www.wipo.org/eng/main.htm>.

38 PCT International Search Guidelines, chptr. VI § 1.2 (emphasis added). 39 See Diamond v. Chakrabarty, 447 U.S. 303, 312 (1980) (citing S. Rep. No. 315, 71st Cong.,

2d Sess., at 6-8 (1930); H.R. Rep. No. 1129, 71st Cong., 2d Sess., at 7-9 (1930)).40 37 CFR § 1.163(a).41 Id; see also 35 USC § 161 (patent cannot be issued for a plant found in an uncultivated

state).


1. The “Ayahuasca” Patent ControversyThe failure to implement this requirement adequately contributed to the award of

one of the most controversial United States plant patents in recent memory. In 1986, an American entrepreneur obtained a U.S. plant patent on a purported variety of the “ayahuasca” vine, Banisteriopsis caapi, which he dubbed “Da Vine.”42 In his application, he stated merely that “[t]his plant was discovered growing in a domestic garden in the Amazon rain-forest of South America.” That vague disclosure provided the patent examiner with no useful information whatsoever for evaluating or verifying whether “Da Vine” originated from cultivated or uncultivated stock, and whether it thus satisfied the prohibition against patenting wild plants.

In fact, B. caapi grows wild throughout the Amazon basin, and is also cultivated by dozens of indigenous tribes who inhabit the rainforest there. Because the plant has been widely dispersed by generations of indigenous peoples, it is not possible to pinpoint exactly where the species originated, or whether individual plants that are growing in an uncultivated state are descended from naturally occurring stock or stock that was once propagated by humans. As a result, identical forms of the plant can be found growing both wild and in or near the villages of indigenous peoples. This phenomenon makes it extremely difficult or impossible to ascertain whether a given form of B. caapi represents cultivated or uncultivated stock.

If the examiner had required a sufficiently detailed disclosure, he might have learned before the patent was granted that “Da Vine” was identical to varieties of B. caapi that grow wild throughout the region. With a basis for denying the application, the PTO could have avoided the intense controversy that this patent aroused when Amazonian indigenous peoples learned that a plant that is sacred and central to the religions of many Amazonian tribes was the subject of a private property claim in the United States.

2. Applicants Should Provide a Full AccountingTo avoid future mishaps of this kind, applicants seeking plant patents for putative

new varieties of tropical species such as B. caapi must provide detailed, specific accounts of the precise location where the original specimen or parent stock of the plant was found, including the circumstances under which it was discovered, consistent with 37 CFR § 1.163(a). The account should also include the date and full name of the person or group from whom the specimen was acquired, and the detailed circumstances surrounding its acquisition. This will aid examiners in corroborating whether the subject matter is a wild plant. It will also lessen the possibility that specimens were fraudulently or illegally obtained. To that end, an applicant should attach to his disclosure an affirmation or written statement from the source person that contains the person’s prior informed consent. Applicants should also provide a certification that they complied with all laws of the source country, and obtained all required permits or licenses, when they collected the specimen and removed it from the source country. Additionally, they should provide contact information for the relevant government authorities in the source country who have jurisdiction over the collecting and exporting of the subject plant, to make it easier for the examiner to validate the information provided or obtain additional information as needed.

Applications that do not fully disclose all information necessary to evaluate whether the subject matter is truly new and distinct fail to fulfill the applicant’s legal “duty

42 See U.S. Plant Patent No. 5,751 (issued June 17, 1986).


of candor and good faith.”43 Such applications should automatically be rejected, because if they are approved, prior art in the form of printed publications may not be available to support a reexamination request, leaving affected indigenous peoples with no avenue for challenging a wrongly issued patent.

3. Prior Art Searches Must Include Herbarium Specimen SheetsAlthough full disclosure of the above information by applicants will help preclude

granting some patents on tropical plants that do not satisfy the Plant Patent Act’s terms, examiners will still be faced with the task of determining whether available prior art demonstrates that the applied-for subject matter is truly a new and distinct variety of plant. The claimed differences may be subtle and difficult to confirm. For many Amazonian species, few or no scientific monographs have been published that fully and accurately describe the species. In the case of the “Da Vine” patent application, the most important claimed difference was that the “new” variety had flowers of slightly different color than typical forms. That claim was based on a comparison of the subject plant to the only scientific monograph of B. caapi that existed at the time of the application. But because neither the examiner nor the applicant searched prior art in the form of specimen sheets of B. caapi housed in the collections of major U.S. herbaria, the examiner did not discover that identically colored specimens had been collected and reported by scientists in the United States and South America well before the application for “Da Vine” was filed.

In all instances where an applicant is attempting to obtain a plant patent on a species that originated in a developing country, or that occurs in both wild and cultivated states, the applicant should be required to perform a prior art search of major herbaria in the United States and the source country. The applicant should supply photocopies of all specimen sheets that contain specimens or descriptions that are similar to the claimed subject matter. Similarly, the examiner should perform her own search of these sources to confirm the integrity of the applicant’s efforts and to discover any prior art sheets that the applicant may have omitted or overlooked.

Herbarium sheets were recently accepted by the PTO as prior art publications when it granted the reexamination of the “Da Vine” patent.44 These sheets satisfy the criteria for prior art publications because they are readily and routinely available for consultation by scientists and lay people with a legitimate need, including inspection for patent purposes, and they are housed in collections that are cataloged by easily used systems.

Patent examiners can easily determine where sheets of a particular specimen of tropical plant can be found by telephoning the Botany Division of the Smithsonian Institution’s Museum of Natural History and asking the curators there which herbaria have the best collections of the subject species. Specialists in plant taxonomy are a fairly small community, and the people at the major herbaria know very well who works on what and where the best collections for particular groups are. Regarding the “Da Vine” patent, Dr. William R. Anderson, curator of the University of Michigan Herbarium, has said,

43 See 37 CFR § 1.56(a).44 See Order Granting Request for Reexamination, No. 90/005,307 at 3 (May 28, 1999)

(deciding that two herbarium sheets of B. caapi raise a substantial new question of patentability).


If the Patent Office had called the Smithsonian Botany Department and asked who could advise them about an Amazonian member of the Malpighiaceae [the family to which B. caapi belongs], they would have had my name and phone number in five minutes. If they had asked which herbaria in the United States have the best collections of South American Malpighiaceae, they would have gotten several suggestions: Michigan, the U.S. National Herbarium, New York Botanical Garden, Field Museum of Natural History, and Missouri Botanical Garden.45

Although Dr. Anderson says that the best way to identify which herbaria are relevant is still through “word-of-mouth,” he adds that web sites exist that can also guide researchers to the best contact persons at major herbaria. These include Index Herbariorum, administered by the New York Botanical Garden, at <www.nybg.org/bsci/ih/searchih.html>; and the membership directory of the American Society of Plant Taxonomists, at <www.sysbot.org/members>.

4. Avoiding Abuse of the System is Good PolicyThe rules and interpretations proposed here would increase the burden on

applicants who seek to patent the botanical resources of developing countries. However, any increased burden would be offset by the benefits derived from reducing the opportunity for abuse of the system, which is presently significant. Such abuses interfere with the achievement of the mission of the patent law—to encourage progress in science and useful arts. The result of such abuses is the improper removal of information from the public domain and the failure to recognize the contributions to beneficial universal knowledge made by excluded groups that sorely lack incentives to continue conserving and adding to their knowledge.

The political ramifications from these abuses can thwart policy initiatives that are important to the United States government. The ayahuasca case provides a useful illustration. The ayahuasca vine that was the subject of the “Da Vine” patent is revered as a sacred plant by indigenous peoples throughout the Amazon region. It has been likened by them to the Christian cross or the Eucharist, and has been an essential ingredient in their religious and healing ceremonies for generations. When indigenous groups learned of the “Da Vine” patent’s existence in 1994, they were insulted and outraged that their sacred symbol could be commodified and privatized by a foreigner. Disinformation and confusion about the legal implications of the patent were rife, and the controversy eventually took on international proportions, involving the U.S. Embassy in Ecuador, the Inter-American Foundation, and numerous national and international environmental and human rights groups, amid charges and counter charges of deceit, “bio-piracy” and terrorism. Ultimately, the patent led to a setback for a significant United States trade initiative, when the Ecuadorian legislature—influenced by indigenous groups who feared the implications of a U.S. patent on their domestic use of ayahuasca—voted to reject a proposed bilateral intellectual property rights agreement with the United States. Had the original examination of the “Da Vine” patent been prosecuted under procedures such as those recommended here, these negative developments could likely have been avoided.

45 Communication from Dr. William R. Anderson, July 15, 1999.


D. Consideration of Moral Concerns

The ayahuasca case raises additional concerns that go beyond the PTO’s treatment of prior art. As just noted, the “Da Vine” patent purported to award private, exclusive rights over a plant that is sacred to indigenous peoples throughout the Amazon region. Where the appropriation and commodification of an important element of a widely held religious system is inherently offensive to that system’s adherents, the award of a patent raises special moral concerns that cannot be readily addressed under PTO procedures as they are currently defined.

Analogous problems with trademarks that are offensive on moral or religious grounds have been addressed through statutory language and specific decisions. At the international level, Article 27.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) specifically provides that governments may make exclusions from patenting on grounds of morality. As the PTO itself has noted, the utility requirement of 15 USC § 101 permits it to deny patentability to inventions deemed “injurious to the well being, good policy, or good morals of society.”46 In support of the principle that factors outside the patent law itself can affect patentability, the PTO recently rejected an application for a patent on a human-animal chimera on the grounds that it impermissibly embraced a human being.47

Rather than waiting for case-by-case controversies to arise, the PTO should initiate consideration of how to design principles and procedures that would better protect moral values in the context of patenting living organisms. Such a review could be carried out through a process analogous to the exercise underway regarding the treatment under trademark law of official insignia of Native American tribes.48 Such a review could help the PTO ensure that the United States’ intellectual property system maintains the proper balance between exclusive rights and the public domain.

Respectfully submitted by,

Glenn M. WiserDavid R. DownesCenter for International Environmental Law

46 United States Patent and Trademark Office, Facts on Patenting Life Forms Having a Relationship to Humans, Media Advisory 98-6, April 1, 1998. The Advisory cited Lowell v. Lewis, Fed. Cas. No. 8568 (C.C. Mass. 1817), as quoted in Tol-O-Matic, Inc. v. Proma Product-und Marketing Gesellschaft, M.B.H., 20 U.S.P.Q.2d 1332, 1338; 945 F.2d 1546, 1552 (Fed. Cir. 1991). Based upon Lowell, the PTO concluded that “inventions directed to human/non-human chimera could, under certain circumstances, not be patentable because, among other things, they would fail to meet the public policy and morality aspects of the utility requirement.”

47 See Rick Weiss, US Ruling Aids Opponent of Patents for Life Forms, The Washington Post, June 17, 1999, at A2.

48 See 46 Fed. Reg. 13,004 (Mar. 16, 1999); Pub. Law 105-330, § 302 (1998). Similarly, the World Intellectual Property Organization has recently launched a program to study and evaluate similar issues at the global level, including extensive consultation with various constituencies. See World Intellectual Property Organization, Main Program 11: Global Intellectual Property Issues, Doc. No. A/32/WO/BC/18/2 at 105 (1998), available at <www.wipo.org>.


1367 Connecticut Ave., N.W., Ste. 300Washington, D.C. 20036Tel: (202) 785-8700Fax: (202) 785-8701


Appendix: List of Database Websites

1. Dr. Duke’s Phytochemical and Ethnobotanical Databases, <www.ars-grin.gov/duke>

2. NAPRALERT, <http://stneasy.cas.org/>

3. Nuffic/CIRAN International Indigenous Knowledge (IK) Network, <www.nuffic.nl/ciran/ik.html>

4. Phytochemical Society of North America’s “Links to Phytochemical Resources on the Web,” <www.fin.edu/orgs/psna/links.html>

5. “Prelude” database of traditional veterinary medicine, Tropical Diseases Webring, <http://pc4.sisc.ucl.ac.be/prelude/prelude_HomePage.html>

6. Society for Research and Initiatives for Sustainable Technologies and Institutions (SRISTI), <http://csf.Colorado.EDU/sristi/>

7. World Bank, “Database of Indigenous Knowledge and Practices” in Sub-Saharan Africa, <www.worldbank.org/afr/ik/datab.htm>


21.COMMENTS TO USPTO REGARDING

“NOTICE OF PUBLIC HEARING AND REQUEST FOR COMMENTS ON ISSUES RELATED TO THE IDENTIFICATION OF PRIOR ART DURING THE

EXAMINATION OF A PATENT APPLICATION” PUBLISHED MAY 27, 1999

These comments are submitted by Andrew J. Anderson, Francis H. Boos, Pamela R. Crocker, Carol Kukurudza, James D. Leimbach, David A. Novais, Susan L. Parulski, Edith A. Rice, and Walter S. Stevens, all members of the U.S. Practice Committee of the Eastman Kodak Company Patent Legal Staff. These comments do not necessarily represent the views of the Eastman Kodak Company.

Questions 1-3:Is the most pertinent prior art being considered by patent examiners during

examination of patent applications?Do applicants submit the most pertinent prior art that they are aware of in

connection with a filed patent application?Are the current rules and procedures for obtaining prior art during the

examination of a patent application adequate and effective?

COMMENTS: We believe the rules for obtaining prior art during the examination of a patent

application are generally adequate, but at least within certain technologies the procedures followed to obtain such prior art frequently are not sufficient to have the most pertinent prior art considered. These technologies include the fast emerging software, multimedia and internet arts as indicated in the PTO request for comments.

Examiners typically only perform a patent database search, which may be sufficient for established technologies, but which may not be sufficient to enable the examiner to understand the basic state of the art within the fast emerging technologies, as numerous pieces of non-patent prior art exist that may be material to applications in these fields which remain unknown to the examiner. To enable identification of pertinent non-patent prior art in a timely manner to be considered during examination where the applicant is not aware of such art, however, the examiner’s technical training and non-patent searching capabilities may need to be improved and supported at an increased level (see comments to Question No. 6).

To the extent an applicant is aware of potentially material non-patent art, it is felt that compliance with current rules regarding duty of disclosure should be sufficient to having such art considered by the examiner. In the unfortunate instances where submission of known material information is intentionally withheld, it is believed no change in the current system would be more effective in minimizing such occurrences than the current penalty of patent non-enforceability.

Question 4. Are prior art searches typically conducted before filing a patent application with

the USPTO? If not, please explain. If so, please include the following in your response:(a) An identification of the area(s) of technology where it is most likely that a

prior art search would be conducted;


(b) The scope of a proper prior art search (i.e., United States Patents, foreign patents, journal articles, corporate bulletins, as well as other types of nonpatent literature); and

(c) An identification of databases and Internet resources generally searched or available to applicants and/or the USPTO.

COMMENTS:Prior art searches are typically performed in our standard practice in one form or

another (either formal searching by professional searchers, or in various manners by the inventors).

Such searching is generally performed in all areas of technologies which we work in (e.g. photographic materials and equipment (cameras, printing, photofinishing); digital imaging and printing equipment; health imaging; inkjet and thermal printers; digital image processing software).

Formal prior art searches conducted normally cover only United States patent literature, but in some cases may be expanded to foreign patents and other nonpatent literature.

Database and internet resource searches, when used, typically include the following: Dialog "U.S. Patents Full Text"; USPTO "U.S. Patent Full-Text Database Full Text Manual"; Derwent "World Patent Index"; Chemical Abstracts; "Full Text European Patents" (Dialg, STN, Questel-Orbit); IBM Patent Database.

Question 5.Please indicate whether Information Disclosure Statements are frequently

submitted and, if so, which … types of prior art documents are included…

COMMENTS:It is believed this information should be readily available to the PTO based on

their records. Our practice is to submit an IDS when we are aware of any type of prior art which we believe may be material to the examination. As we typically perform some type of prior art searching in most cases, we typically include an IDS citing what we believe to be the closest art based upon such searching. While such IDS’s typically include US and foreign patent documents, nonpatent literature is included where it is known and believed to be material.

Question 6. Should applicants be required to conduct a prior art search and submit

corresponding search results, including where they searched, to the USPTO when filing a patent application? If not, should applicants be required to disclose whether or not a search was conducted? Please explain your rationale and discuss any potential advantages and drawbacks.

COMMENTS:There should be no formal requirement that applicants perform a prior art search,

or disclose where or whether or not a prior art search was conducted. While it may be good practice for applicants to perform such searching so as to be better prepared to draft an appropriate application and not waste resources on non-patentable inventions, this should be left to each applicant's discretion. An applicant's continued obligation to comply with Rule 56 (submission of any known information which would be material to


patentability) should be the only requirement with submission of prior art. As long as we have an examination system there should continue to be a full independent search performed by the PTO as part of such examination. To enable identification of pertinent non-patent prior art in a timely manner to be considered during examination, the examiner’s technical training and non-patent searching capabilities may need to be improved and supported at an increased level. The imposition of a formal search requirement where the search is done by other than the PTO would probably also result in little improvement in the patent system, as there would be no consistency in the searches (in terms of scope and quality) performed. Further, a requirement to include indications of where the prior art was searched may lead to improper reliance by the PTO with respect to the adequacy of any search performed by the applicant in the indicated areas. Finally, while the imposition of a formal search requirement is not recommended, it should be noted that as applicants are already paying for a SEARCH and examination by the PTO, any changes in the examination process requiring searching to be performed by applicants should be reflected in a lowering of patent application fees (so as to not further increase the cost of patenting for applicants).

Question 7. Should applicants be required to submit all prior art relied upon during the

drafting of the claims of a patent application? Please explain your rationale and discuss any potential advantages and drawbacks.

COMMENTS:Applicants are already required to submit any known information which may be

material to patentability. Under 37 CFR 1.56(b)(1), information is material to patentability when it "establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim". Under 37 CFR 1.56 (a)(2) applicants are encouraged to examine the "closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patently defines, to make sure that any material information contained therein is disclosed to the Office". Any prior art relied on during the drafting of the claims of the application will more than likely define the closest prior art over which the claims define. Accordingly, it is believed to be good practice to submit such art for consideration by the examiner as long as the prior art is not cumulative.

An advantage of submitting this prior art to the Examiner is that the Examiner would have a clearer idea of the scope of the prior art. This is especially advantageous in areas where the applicants know of the best prior art. A drawback is that this may unnecessarily increase the number of prior art references submitted since prior art which is cumulative in nature or merely represents well known background material may be submitted.

Referring to 37 CFR 1.56 (b)(1), in considering prior art relied upon during the drafting of claims, it is presumed that the claims as filed are believed to define over this prior art when considered alone or in combination with other information of which the drafter is aware of. However, it is possible that the prior art relied upon during the drafting of the claims may be more pertinent to the filed claims if combined with information that the applicant is not yet aware of or a patent which issues after the filing of the application. Therefore, submitting this prior art would be beneficial in the context of providing a thorough examination and a valid patent in that it would be readily available for consideration by the examiner in the event that new art turns up during prosecution.


Question 8.Should applicants be required to submit all nonpatent literature directed to the

same field of invention attributable to, authored by, or co-authored by the applicant?

COMMENTS:No. There is no limitation in the proposed requirement that the nonpatent

literature be material to the issue of patentability. Currently, there is no duty to submit information which is not material to the patentability of any existing claim. 37 C.F.R. 1.56(a). However, under the express language of the proposed requirement, it is clear that nonmaterial as well as material nonpatent items must be submitted by applicant as long as those items are attributable to, authored by, or co-authored by applicant. This is so because the proposed requirement apparently mandates that all nonpatent literature, without limitation, be submitted if the literature is attributable to, authored by, or co-authored by applicant. In addition, the language of the proposed requirement makes no provision to exclude nonpatent literature that is merely cumulative. Currently, information is not material and thus need not be submitted if it is merely cumulative. 37 C.F.R. 1.56(b).

Submission of nonmaterial information benefits neither applicant nor the Office. The Office will incur increased administrative costs by processing and handling these nonmaterial items of information without using the information to decide issues of patentability. Applicant will also incur increased administrative costs and will derive no benefit. Moreover, internal nonpatent information attributable to, authored by, or co-authored by the applicant, which applicant apparently would be required to submit even if nonmaterial, may contain trade secret information. This trade secret information would then become part of the public record and accessible by applicant’s competitors. Clearly, neither applicant nor the Office will benefit from submission of nonmaterial information.

If the proposed requirement were re-written so as to be limited to material nonpatent information, it is believed such requirement is already present within the context of applicants’ duty of disclosure under 37 C.F.R. 1.56(a).

Question 9: Please identify any types of nonpatent literature documents applicants should be

required to submit to the USPTO in connection with any given patent application (e.g., conference reports, corporate collections, documents relied on in drafting an application, etc.).

COMMENTS:For the reasons provided in response to Question 8, applicants should be

required to submit only those nonpatent literature documents that are material to the issue of patentability.

Question 10.If you believe that the most relevant prior art is not being identified during patent

examination, please identify suggestions to obviate this problem.

COMMENT:The objective of the proposed requirements, as stated by the Office, are to

improve the searching for prior art in the fast-moving “emerging technologies.” In efforts to address this problem, the Office states it is currently assembling a larger, more


complete nonpatent literature prior art collection in emerging technologies and is working on providing patent examiners with better access to nonpatent literature in new areas of technology. Such efforts are commended, and it is believed the U.S. patent system would be better served by the Office’s continued and accelerated efforts in these regards, rather than codifying burdensome new searching and information disclosure requirements on applicants which may continue long-after the current need has passed. It is believed that increased ongoing technology update training for examiners would also be useful to assist keeping up with such fast-moving emerging technologies. The cost of establishing increased searching capabilities and technology training should of course be borne by the end users of the patent system (i.e., applicants), but increased fees should only result after current excess funds are not diverted away from the PTO budget.


22.

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION2001 JEFFERSON DAVIS HIGHWAY, SUITE 203, ARLINGTON, VIRIGINIA 22202-3694

Telephone (703) 415-0780Facsimile (703) 415-0786

July 28, 1999

The Honorable Q. Todd DickinsonAssistant Secretary of Commerce andCommissioner of Patents and Trademarks (Acting)U.S. Patent and Trademark OfficeBox 4; ATTN: Elizabeth ShawWashington, D.C. 20231

Re: AIPLA Comments on the Public Hearing AndRequest for Comments on Issues Related ToThe Identification of Prior Art During TheExamination Of A Patent Application64 Fed. Reg. 28803 (May 27, 1999)

Dear Commissioner Dickinson:

The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to present its views on the Notice of Public Hearing and Request for Comments on Issues Related to the Identification of Prior Art During the Examination of a Patent Application published in the Federal Register on May 27, 1999.

The AIPLA is a national bar association of more than 10,000 members engaged in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property.

The AIPLA supports the interest of the Patent and Trademark Office in ensuring that patent examiners consider the most pertinent prior art during the examination of patent applications. The AIPLA appreciates the opportunity to assist the PTO in identifying any improvements that can be made to ensure that patent examiners are searching and have access to the most relevant prior art in the course of examination of a patent application.

The AIPLA offers the following comments on the topics identified by the PTO in the Request for Comments. The numbers associated with the paragraphs below correspond to the numbers assigned to the topics in the notice of public hearing and request for comments.

1. It is very difficult to make an objective assessment of the extent to which the most pertinent prior art is being considered during the examination of patent applications and an assessment based on anecdotal comments is not reliable. Further,


the PTO has available to it statistics from its quality review of allowed patent applications which should provide some additional statistics on the extent to which the most pertinent prior art is not considered during the initial examination.

2. Responsible applicants and their representatives do submit the most pertinent prior art that they are aware of in connection with a patent application so as to obtain a strong patent. While there continue to be reported decisions of the federal courts where patents are held unenforceable for the failure to comply with the duty of disclosure, the cases where prior art which is known to be material to patentability is intentionally withheld from the PTO are relatively rare. Competitors are generally more highly motivated, and thus more effective, in identifying the most pertinent prior art relative to a claimed invention. It is the experience of AIPLA members that instances where a competitor conducting a validity search of an issued patent identifies pertinent prior art not considered probably are far greater in number than the occasions where a patent owner has knowledge of prior art but has not brought that art to the attention of the PTO.

3. The current rules and procedures for submitting prior art during the examination of a patent application are adequate and effective. They provide a fair balance between the need of the PTO to obtain pertinent prior art early in the examination process and to complete that process in a timely fashion, and the burdens on patent applicants to comply with their duty of candor and good faith. The PTO should continue to consider changes that would effectively reduce the burden on both applicants and the PTO in having the most relevant prior art considered during the examination process. The PTO should consider eliminating the requirement to supply a copy of U.S. patents in an Information Disclosure Statement. This requirement appears to be an unnecessary paperwork burden on both applicants and the PTO since all examiners have access to all U.S. patents at their workstation. The PTO should accelerate its efforts such as that involving the Trilateral Offices mentioned in paragraphs 10 and 11, infra, to cooperate with other significant searching and examination patent offices to identify the prior art most pertinent to an invention and to have prior art identified in related foreign applications made available quickly to PTO examiners.

4. Prior art searches are not necessarily conducted on a routine basis before filing a patent application with the USPTO. A search may be made where the applicant is entering a new field and when there is some doubt about making the significant investment of preparing and prosecuting a patent application, or where it is desirable to obtain some background information to assist in the writing of the specification and drafting of the claims. Usually, when relevant documents are identified prior to or during the preparation of a patent application, they are identified either in the patent specification or an IDS, or both.

5. Information Disclosure Statements are frequently submitted during the course of examination of a patent application. Many applicants have a global patent strategy and relevant documents are frequently identified in the examination of counterpart applications in other countries. Relevant prior art is also identified through validity studies of related patents or through licensing efforts. The type of prior art submitted, i.e., U.S. patents, foreign patents, publications, depends on what is identified as relevant, rather than depending on the type of document. It also depends on the


technology. For example, inventors in some technologies tend to publish their work in addition to applying for patents.

6. Applicants should definitely not be required to conduct a prior art search when filing a patent application or to state whether a search was conducted. The problems created by such an approach would be significant, yet the benefits would be few, if any. Some of the problematic issues that would be created are:

(a) what would be an appropriate search?

(b) who would monitor whether an appropriate search had been conducted?

(c) a requirement to conduct a search may add a significant cost, particularly to small entity applicants who are least able to afford the additional cost.

(d) there might not be time to conduct a prior art search prior to filing an application so as to avoid loss of rights.

(e) many applicants do not have the sophisticated search equipment and resources available to all patent examiners.

(f) a searching requirement would create an unnecessary risk to the patent owner and patent practitioner of having an issue of inequitable conduct raised because of the performance of an inadequate search or an adequate search performed improperly.

7. A requirement to submit all prior art relied upon during the drafting of the claims of a patent application is unnecessary and may exacerbate the PTO's alleged problem of getting too much prior art to consider in some applications. Most practitioners will submit this prior art today in an IDS. One possible drawback for the PTO is that much prior art may be considered in the drafting of the claims that is determined by the practitioner not to be relevant or pertinent to the claimed invention. Would this be "prior art relied upon during the drafting of the claims of a patent application?" While an applicant clearly has no duty to submit information which is not material to the claimed invention, a requirement to submit all prior art relied upon during the drafting of the claims of a patent application would result in a necessity to submit prior art which is not relevant or material to the issue of patentability. As a practical matter, it is believed that most practitioners submit all the prior art in their file, including even the prior art which they do not consider to be pertinent or material so as to permit the PTO to make its own independent determination of that evaluation of each item of prior art.

8. Applicants should not be required to submit all non-patent literature directed to the same field of invention attributable to at least one of the inventors named in the application. Such a requirement would necessitate a significant amount of additional work and cost in order to identify information directed to the same field of invention, or would result in the submission of all literature authored by any inventor to permit the PTO to make the determination of whether it was directed to the same field of invention. Even a good faith attempt to determine what constitutes the "same field of invention" and what is related to the same field of invention would make the patent


vulnerable to an attack on the basis of inequitable conduct because the determination could be second-guessed. This requirement should not be adopted because it would increase the cost and burden on both applicants and the PTO, and is not likely to result in assisting the PTO in identifying the most pertinent prior art during the examination process.

9. Applicants should not be required to submit, as a matter of course, any particular type of nonpatent literature documents even in specific types of applications. The requirement to submit information known to be material to patentability should be the limit of applicants duty to the PTO. Any general requirement that focuses on the type of information as opposed to its relevance to the issue of patentability is more likely to increase the burden on both applicants and the PTO for handling information that is not relevant or material to patentability. Information material to patentability obviously will take many forms depending not only on the invention and the practices in the technology to which the invention relates, but also on the activities of the inventors prior to the filing of a patent application. Chapter 2000 of the Manual of Patent Examining Procedure already contains discussion of material information (§§ 2001.06 - 2001.06(d)) and a checklist as an aid for compliance with the duty of disclosure (§ 2004). The obligation to submit information should focus on the information most pertinent to the task before the patent examiner.

10./11. The PTO is doing a good job of providing a good quality examination for a reasonable cost. The ex parte examination system in the United States cannot be significantly improved without significantly increasing the costs of examination, the burdens on applicants and patent examiners, and/or the delays in the grant of a patent. Improvements can be obtained by cooperation among patent offices engaged in the search and examination of patent applications. A pilot program along this line was announced in the May 25, 1999 issue of the Official Gazette where the combined resources of the USPTO, EPO and JPO would be used in a coordinated effort to identify the most pertinent prior art relative to an invention claimed in applications pending in all three offices.

Legislation is being considered which might make the reexamination process more effective by permitting participation by third parties. The PTO could staff the interparties reexaminations with the best examiners. Under the present reexamination system, however, competitors are very reluctant to submit the best prior art to the PTO given the significant variability in the quality of examination, the inability to participate in the reexamination process, and the inability to appeal a favorable decision by the patent examiner.

We appreciate the opportunity to provide comments on the specific topics under consideration by the PTO. We look forward to working with the PTO to achieve its goals in ways that will not unnecessarily burden applicants or their representatives. We are anxious to work with the PTO to develop workable solutions to the problems it has identified.

Sincerely,

Margaret A. BoulwarePresident


23.COMMENTS REGARDING PROPOSED RULES IMPOSING LIMITS/REQUIREMENTS ON INFORMATION DISCLOSURE STATEMENT SUBMISSIONS (37 CFR1.98)

The following comments are submitted on behalf of Exxon Chemical

Company, Exxon Production Research Company, and Exxon Research and

Engineering Company, (Exxon).

Our comments regarding the proposed rule changes are noted below.

However, we believe that the effects of the proposed rule changes are not fairly

captured by the topics listed by the USPTO, and that the topics are too narrowly

posed. We have a general comment:

No amount of tinkering with the disclosure requirements of Rule 1.56 will produce the

desired improvements of enhancing the quality of issued patents and relieving the

examiner's workload. Accomplishing these improvements requires a consideration of

the bases of the reasons for examining patent applications and the costs associated with

disclosure requirements (whether under the existing or proposed rules) to both the

USPTO and to society.

Patent applications are examined to insure that an inventor's exclusive

rights are limited to that which is new, useful, and unobvious. To insure this

result, we must bring to bear the resources of parties, other than the U.S.

Government, who have the greatest interest in limiting the scope of issued

patents.(1) We can accomplish this result

__________________(1) Patent applicants, Rule 1.56 notwithstanding, have an entirely different interest:

obtaining as broad a patent as possible and thereby expanding the scope of its

exclusive rights.


by adopting procedures similar to those in effect in the European Patent Office

(EPO)

where third parties may oppose granted patents on limited grounds, including

lack of novelty and lack of inventive step (obviousness) over prior art. In EPO

opposition proceedings the playing field is as level as it can be made, i.e., issues

are clear and limited and costs can be controlled, certainly relative to U.S.

litigation costs; a technical tribunal makes the decision rather than the various

district courts; and patents may be retained with amended, narrowed claims

rather than the "all or nothing" decisions in patent litigation.

The disclosure requirements in satisfying Rule 1.56, whether current or

proposed, are costly to the patent applicant, to the USPTO, and to society in view

of the number of allegations of and findings of inequitable conduct.

We are particularly concerned that USPTO has not presented any

evidence suggesting that the costs associated with satisfying current Rule 1.56

or the proposed rule will be outweighed by the benefits of improved quality of

examination and relief for examiners.

We will discuss both of these issues in our responses below.

1. Is the most pertinent prior art being considered by patent examiners during

examination of patent applications?

In general, we believe that patent examiners in the United States Patent

and Trademark Office (USPTO) find and consider the most pertinent prior art for

cases filed on behalf of Exxon. By virtue of the international nature of our

businesses we have many opportunities to receive searches from the European

Patent Office (EPO) for patent applications filed either directly with the EPO or

filed under the Patent Cooperation Treaty (PCT) requesting the EPO as the

searching authority.

While the patent laws in the EPO are somewhat different from the patent

laws of the United States, and there appear to be some procedural differences in


the way references are applied in the EPO as opposed to the way references are

applied in the USPTO, the concepts of novelty and unobviousness (or inventive

step in the EPO) are similar. Our experience is that the same or similar

references generally are found and applied in the EPO as are found and applied

in the USPTO.

Our experience also tells us that, in general, patents obtained through the

EPO are equally as valid as patents obtained through the USPTO, even though

the EPO does not have any equivalent of Rule 1.56. Indeed, the United States

stands virtually alone in the world regarding the duty of disclosure requirements

of Rule 1.56. While the EPO has a standard of care for applicants and their

attorneys/agents when dealing with the EPO, that standard is much more general

than the standard under Rule 1.56 and the consequences of failing to observe

that standard are limited to the applicants' representatives, and any resulting

patent, its validity or enforcement, is not affected.

There are occasions, albeit rather limited, when prior art cited in an EPO

or PCT search may render a U.S. patent invalid or of questionable validity, and

prior art cited in a USPTO search may have a similar effect on a European

patent. (By the nature of various filing systems, an EPO or PCT search report or

a written opinion, may not be received by an applicant before the issuance of a

U.S. patent.)

In the limited situation in which the most pertinent prior art may not be

cited, the field of technology affected is usually (i) a field that has been known for

many years and is currently being revisited, or (ii) a rather new field, e.g.,

business methods as exemplified by the State Street Bank(2) case, and algorithm

or computer-related __________________(2) 47 U.S.P.Q. 2d 1596

applications. In the first instance the old art, i.e., patents and non-patent,

literature dating to the 20's and 30's may be overlooked. In the latter instance,

the USPTO may not have acquired the necessary expertise, or the literature may

not be compiled in a way that makes it readily searchable.


To the extent prior art is overlooked, that prior art is usually found in non-

patent literature that either is difficult to search or is not believed by patent

examiners to yield particularly relevant prior art.

2. Do applicants submit the most pertinent prior art that they are aware of in

connection with a filed patent application?

In general, we believe that applicants submit the most pertinent art of

which they are aware in connection with filed patent applications. To do

otherwise, particularly in light of the decisions in U.S. courts, specifically the

Court of Appeals for the Federal Circuit (CAFC), is to run an intolerable risk of

having a resulting patent found unenforceable. Exxon has set high standards of

business conduct which state in part that the Corporation expects that its

directors, officers, and employees will observe the highest standards of integrity

in the conduct of its business. And Exxon's business, particularly as it relates to

the several affiliates engaged in research, development, and engineering, is the

obtaining of valid patents in countries of the world where Exxon has or may have

commercial interests.

3. Are the current rules and procedures for obtaining prior art during the

examination of a patent application adequate and effective?

We believe that the current rules and procedures are more than adequate,

but are only partly effective, for obtaining relevant and material prior art.(3) Also,

the current rules lead to unnecessary, time consuming and costly litigation, as we

will discuss below. Our belief is based on our experience regarding prior art

statements submitted with or shortly after the filing of patent applications. The art

cited in these statements is normally not used by the patent examiner in making

art rejections. Rather, art rejections find their basis in the patent examiner's own

search. We believe the reasons for this result are:

(i) Pre-filing searches are generally not extensive; neither are they exhaustive

patentability (or validity) searches. The searches are usually limited in scope


and performed early in the assessment and development of patentable

subject matter and are designed to find prior art affecting the inventive

concept. By the time an application is filed, the claims may have a different

focus or may be more narrow than initially contemplated. Additional

searching immediately prior to filing is performed only rarely.

Time is of the essence in filing patent applications. Consequently, the most

pertinent prior art may not then be known to the applicant.

(ii) Art cited in corresponding foreign applications may well be material but is not

always available before a U.S. patent issues.

__________________(3) We also believe that this limited effectiveness points up the costs to the applicant and

to society, of which more will be discussed later in these comments relating to

litigation spawned by the current rules.


4. Are prior art searches typically conducted before filing a patent application

with the USPTO?

Prior art searching is typically conducted; however, it is subject to the

conditions noted above regarding item #3. Nevertheless, there are instances in

which prior art searches are not carried out prior to application filing. These

instances, generally, relate to areas where our scientists and engineers have a

particular and deep knowledge of a specific technology, or in which the most

pertinent prior art is our own prior patents and pending applications. In the

former instance, we typically cite art that our scientists and engineers believe to

be most pertinent, and in the latter instance we will cite our patents and pending

applications.

When we carry out pre-filing searches they are usually limited to patent,

e.g., U.S. or EPO, literature. Non-patent literature is more difficult and expensive

to search, and our scientists and engineers will likely be aware of recent, non-

patent publications.

Data bases we use include the following, but not all data bases are used

on all prior art searches: Derwent; World Patent Data Base, enhanced with API;

Chem Abstracts; Engineering Index; Rapra (Rubber and Plastic Research

Association); U.S. and EP Patent full text and PCT through Micropat; Internet.

5. Please indicate whether Information Disclosure Statements are frequently

submitted and, if so, which [of the following] types of prior art documents are

included.

Information Disclosure Statements are submitted for virtually every patent

application filed. These Statements are often supplemented as additional prior

art becomes known to the applicant, e.g., through review (but not searching) of

relevant literature, and citation in corresponding foreign applications.

We cite, in the Statements, whatever literature we believe to be material

to patentability of the application. That literature includes U.S. patents, foreign


patents and published applications, and non-patent literature; again, whatever we

are aware of that is material to patentability. Because "material" can be

interpreted or given a different emphasis by different people, e.g., examiners,

attorneys, judges, juries, we err on the side of citing more rather than less

literature. The consequences of not citing a reference that may, at a later time,

be deemed material are too drastic to do otherwise. And therein lies one of the

hidden costs of the current (and proposed) rules.

6. Should applicants be required to conduct a prior art search and submit

corresponding search results, including where they searched, to the USPTO

when filing a patent application? If not, should applicants be required to

disclose whether or not a search was conducted?

We strongly believe that a requirement to conduct a prior art search is

neither warranted nor reasonable, either from the viewpoint of reducing the

patent examiner's workload or improving the quality of the examination. There is

no evidence that requiring applicants to carry out a search will accomplish either

of these ends. We base our position on the following:

(i) There is no accepted standard for conducting a prior art search; nor is there

any standard for determining the adequacy of such a search. While the

USPTO's objectives regarding these proposed rules changes are laudatory,

the USPTO must be mindful of the effects of these changes on applicants,

their attorneys, and subsequent litigation involving patents. For example, an

applicant wishes to file a patent application in a specific technology area that

is being researched by several other entities, one of whom is in a country

that does not usually provide English language translations but extensively

publishes patent and non-patent literature. A requirement for conducting a

prior art search might then mandate a search of this country's literature,

patent and non-patent, with attendant translations.(4) If the applicant does

not do so, the failure to do so could, and likely would, be a major issue in

any subsequent litigation, whether or not there was any material prior art

published in that country.

(ii) Prior art searches can be expensive, particularly when the searches are in

depth searches for determining patentability. The cost of carefully


evaluating the search results, as well as the time and expense for the

searching, evaluation, and expense for securing translations add to the

costs associated with filing and obtaining patents. Searching and search

availability delay filing and time can be important, particularly when virtually

the entire world operates on a first to file basis. In an era of ever mounting

cost pressures, at the USPTO, at corporations, at universities, and for

individual inventors, mandating searches will only exacerbate the situation.

__________________(4) Translation costs are among the highest costs to patent applicants.


(iii) By virtue of decisions of the CAFC, applicants will err on the side of

submitting a reference. The consequences of not submitting a reference

are, quite simply, too severe. Indeed, under the current state of the law,

applicants would, perhaps not intentionally, design searches to result in a

broad citation of references, so as to reduce the risk that nothing material is

missed. There would, therefore, be no reduction in the number of

references cited. Rather, there is the distinct possibility that more

references will be cited in disclosure statements.

Mandating a disclosure of whether or not a search was made will have no

desirable effect on the patent examiner's workload or the quality of the

examination. Such a mandate will lead, in any subsequent litigation, to issues of

"why" a search was not performed or whether a search would have been

appropriate in the circumstances, and will raise even more allegations of

inequitable conduct.

7. Should applicants be required to submit all prior art relied upon during the

drafting of the claims of a patent application?

Our comments here are similar to those regarding item #6. In addition,

regardless of whether the required submission is limited to material prior art,

applicants will submit all prior art, whether or not material, in view of the potential

consequences of a later finding, in a litigation, of materiality.

8. Should applicants be required to submit all non-patent literature directed to

the same field of invention attributable to, authored by, or co-authored by the

applicant?

We believe that such a requirement will be self-defeating, particularly in

view of the stated objectives of the proposed rule changes. Such non-patent

literature can range from nothing to upwards of a hundred articles. These

articles may or may not be material, and if a large number of articles are

submitted they will have to be examined by the examiner and commented upon


by the applicant. Again, the applicant will err on the side of submitting more

rather than less.

9. Please identify any types of non-patent literature documents applicants should

be required to submit to the USPTO in connection with any given patent

application.

We believe that satisfying the requirements of Rule 1.56 necessitates

submitting all references, whether patent or non-patent, that are material to

patentability. Claim validity or claim narrowing is blind to whether material prior

art is a patent or other literature.

10. If you believe that the most relevant prior art is not being identified during

patent examination, please identify any suggestions to obviate this problem.

Under the circumstances, and a cost-benefit analysis, of searches by

applicants and of searches by the patent examiner, we believe, in general, that

the most relevant prior art is being cited during patent examination. While we are

mindful of the changes effected by the establishment of the CAFC, it is clear that

the percentage of patents being held valid in court is higher than ever, and the

value of patents is increasing by virtue of these court decisions.

Nevertheless, industry, universities and individual inventors will always be

more mindful of prior art in a potential infringement situation than in the filing of a

patent application. The economic consequences of the two situations are

different, particularly in view of the small number of patents that are used

commercially, and the even smaller number of patents that are potentially

infringed and litigated.

Faced with the possibility of an injunction or substantial damages, many

entities will spare no effort in searching the prior art for invalidating references.

Such searches and their evaluation can run into the hundreds of thousands of

dollars. Therefore, the mandating of disclosure statements has brought about


significant unintended results, and we will make two proposals for alleviating the

problems arising from the mandating of these statements. The current

requirements for satisfying Rule 1.56 can increase substantially the costs of filing

and prosecuting patent applications as well as increasing litigation costs. The

requirements of Rule 1.56 has spawned a cottage industry for alleging

inequitable conduct that can lead to the unenforceability of a patent that is

otherwise patentable over all prior art. Further, there is little or no evidence that

USPTO processing time is reduced or that the quality of examination is

enhanced by current requirements for satisfying Rule 1.56. The proposed rule

changes will not change any of these situations for the better, and will likely have

the effect of further increasing costs and exacerbating litigation issues.

- Increasing costs to the patent applicant

Applicants, particularly applicants that file more than a few applications in

a year, must establish procedures for identifying prior art before and after filing,

and for filing citations from corresponding foreign applications, either when a

search report is received or when a written opinion is received. These

procedures add to an applicant's fixed costs, and variable costs in direct

proportion to the number of applications filed. Therefore, entities making greater

use of the USPTO by filing many patent applications are taxed for this use, but

the USPTO does not benefit from this tax.

In our practice, EPO or PCT search reports are received at about the time

our patent applications are being allowed. On a number of occasions we have

had to withdraw patent applications from issuance, thereby necessitating petition

fees and new filing fees for a continuing prosecution application in order to have

the newly cited prior art considered. To our knowledge, we have not had to

abandon any of our previously withdrawn applications or narrow the claims of

these applications because of this newly cited prior art. Nevertheless, failure to

cite the prior art could well lead to unenforceability of the patents. Further, the

refiling delays the date of issuance and reduces the effective patent term. The

cost of a reduced term can be quantified in specific cases, and can be significant,


e.g., for a new drug or a new specialty chemical the period of exclusive sales will

be more limited.

The proposed rules will not change this issue in any positive way.

Rather, the proposed rules will lead only to increasing costs to applicants, and

further exacerbation of litigation issues. For example, if more than ten prior art

references are cited, applicant will be required to furnish a unique comment on

the applicability of each additional reference. Three major issues will then be

raised: (i) the basis for selecting the ten references for which no comments are

submitted will be questioned; (ii) why did the applicant not comment on the first

ten references, e.g., was there something in these references that the applicant

wished to hide; (iii) on references that are commented upon, there may be

reliance, justified or not, by the examiner on the applicants' comments, that if

later found to be misleading can be the basis of an inequitable conduct

allegation.

The U.S. PTO states that a negative inference will not be drawn regarding

citations without unique comment; nevertheless the USPTO's comments bind

neither judges, juries nor litigation counsel nor control the courts or litigation

counsel who may well draw or attempt to color issues with a decidedly negative

inference. We believe negative inferences will be drawn particularly in view of

the USPTO's inconsistent statement that "…it is contemplated that the closest

citations would be described in the greatest detail…"

- Litigation Issues

In 1991, the AIPLA estimated that allegations of inequitable conduct

occurred in 80% of patent infringement litigations.(5) That number may be

somewhat lower today, yet issues of inequitable conduct still arise in about half of

patent infringement litigations.(6) Consequently, the issue of inequitable conduct

remains no less an "absolute plague" on infringement litigation(7).

We have no quarrel with an applicant's obligation of candor and good

faith when dealing with the USPTO; however, we believe that the constant


attentions to the rule have brought about unintended, negative results with little

or no showing that the USPTO's goals of reducing examining time and enhancing

quality of examination have been met, or that the cost to the applicant is

outweighed by the benefit to the patent system.

The proposed rule changes are vague regarding the unique statement to

be made respecting cited prior art. Even though the USPTO has offered several

examples of

__________________(5) Lee, AIPLA Bull.88 (Oct-Nov. 1991)(6) Personal contacts with litigation counsel(7) Burlington Industries, Inc. v. Dayco Corporation, 849 F.2d 1418 (CAFC, 1998)

acceptable statements, these examples appear to relate to relatively simple

inventions in which the inventive element is easily determined. Nevertheless,

inventions today are more and more complex, and can involve complex

combinations of elements, and concise statements regarding applicability of

complex prior art to a complex claim will not be so easy.

Other issues arise regarding the sufficiency of the unique statement: the

proposed rules suggest that the examiner will consider each such statement and

decide whether it is sufficient, and give the applicant opportunity to correct the

statement. Consequently, the examiner will consider the reference and the

applicant's statement. This takes time. Further, there is no method for

determining the sufficiency of statements, and no method for resolving

differences between the examiner's view of the reference and the applicant's

view of the same reference. These statements place the applicant in a position

of defining his or her invention and being held to that statement regardless of the

direction of prosecution, e.g., claim limitations or the bases for any litigation.(8)

Nevertheless, such statements will be carefully analyzed during litigation, and the

patentee's case may well be affected by later inconsistent statements, even

though the later statements may be more accurate in view of later scientific

findings or analysis.

Proposals


A. An Opposition Procedure

Rather than rely on the applicant to cite material prior art, a well

reasoned, post grant opposition procedure, under the jurisdiction of the USPTO,

will allow interested __________________(8) We are mindful that statements made during prosecution in distinguishing prior art can

bind an applicant. However, the unique statement will be deemed to be made regarding

art that is deemed material because the art was cited by the applicant, but applicants err

on the side of citing more by virtue of the consequences of not making a citation.

third parties to come forward with relevant and material prior art. The

interested third party has the incentive to cite the best prior art and to point out

exactly how that prior art applies to the allowed claims. To paraphrase the

Supreme Court (9), it is the party threatened with the potential for infringement

who has the greatest economic incentive to challenge allowed claims by citing

the most relevant and material prior art. Allowing this party to take an active

role in opposition proceedings effectively brings the full weight of an

adversarial, interparties legal process that has stood the test of time in arriving

at appropriate conclusions.

The current re-examination procedure is inadequate and is not a

substitute for an opposition procedure. Re-examination is not an interparties

proceeding whereas an opposition, e.g., in the EPO, is fully interparties, the

EPO making the final determination. And this final determination is made by a

senior, experienced three person panel (one of whom is the examiner) thereby

counteracting any leanings, one way or the other, of the examiner.

Consequently, the incentive of a third party to engage in a re-examination

proceeding and cite the best prior art is reduced substantially.

Based on our experience with EPO opposition procedures, these

procedures can be made lean and efficient, and will bring forth the best prior art:


an interested party will be willing to spend considerably more time and money

searching than either an applicant

________________

(9) Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969)


or an examiner can spend, and will search areas that are not normally searched.

Opposition procedures also allow the applicant the ability to modify or

narrow claims during the procedure, provided there is adequate support in the

specification as filed. Consequently, the true scope of an invention, vis-à-vis the

prior art, will be delineated. And, unlike the U.S. where litigation is an all or

nothing -- valid or invalid -- proceeding, a patent may be retained albeit of

modified or narrowed scope.

We recognize that the establishment of an opposition procedure will

require legislative action and may be hard to come by. Nevertheless, we strongly

believe that an

opposition procedure within the USPTO is a worthy goal and that the USPTO in

conjunction with users of the system should actively pursue that goal. We would

actively support efforts to establish an opposition procedure within the USPTO.

B. Bright Line Disclosure Requirements

This proposal takes to heart the requirement that applicants and their

agents and attorneys act with candor and in good faith with respect to their

dealings with the USPTO, and both broadens and narrows the current disclosure

requirements. The proposal ought to have the affect of reducing an applicant's

costs, reducing the examiner's time to examine a patent application, lessening

the number of allegations of inequitable conduct in litigation, thereby conserving

judicial resources; and generally reducing society's costs for the patent system.

The proposal consists of the following elements:

(1) An applicant will be required to cite all prior art referenced in any

corresponding foreign patent application regardless of whether the art is

designated as applicable by itself or in combination with another reference to

any claim, or simply designated as being technological background, and this

art will be considered by the examiner;


(2) An applicant will be required to cite and designate all prior art that the

applicant believes bears on the novelty of the claimed invention, as defined in

35 U.S.C. 102, and this art will be considered by the examiner.

(3) In acknowledgement of an applicant's duty of candor and good faith in

dealing with the USPTO, an applicant may, but will not be obligated to, cite

any other reference believed to be material to patentability, e.g., under 35

U.S.C. 103(a), and art cited under this section (3) may be considered by the

examiner at the examiner's discretion, and the effect of art cited but not

considered will be determined by the courts, although we expect that a

presumption of validity would not attach to prior art cited but not considered.

Regarding section (3) of the proposal, an applicant will decide whether or

not to cite particular art, and if art not cited but known to the applicant is later

found material, the courts may draw whatever conclusion they wish to draw

regarding the applicant's intentions or motives.

However, art cited under section (3) of the proposal and not considered

by the examiner will satisfy the good faith of the applicant, and if later found

material, will not be the basis of inequitable conduct (and therefore, cannot be a

basis for unenforceability

of the patent) but can be a basis for invalidity without any increased burden on

the party

alleging invalidity.(10)

These requirements will apply to a registered practitioner when the

applicant is represented by a registered practitioner, and every other person

substantively involved in the preparation/prosecution of the application and who

is associated with an inventor, or with an assignee.

This proposal eliminates any requirement to cite documents regarding the

obviousness of any claim, thereby minimizing the necessity of citing questionable

documents and should, therefore, reduce the number of submissions of prior art

during prosecution. (The current definition of "material" and its interpretation by

others will be narrowed considerably.)

A particularly vexing problem for applicants is the requirement to cite prior

art until the date of issue of a patent. Our experience is that prior art from

corresponding foreign applications often becomes available after the notice of


allowance or after payment of the issue fee and prior to issuance We are then

under an obligation to withdraw the allowed application from issue -- by petition --

and file a disclosure statement with a continuing application. We incur substantial

additional fees by virtue of actions completely beyond our control. (In one

instance the petition to withdraw was granted the day the patent issued. The

continuing application was allowed over the newly cited art, and will issue, too.)

This problem can be alleviated by limiting the requirement to cite prior art

to that which is discovered or made known to the applicant prior to the notice of

allowance.(10) Failure to cite prior art relating only to obviousness would not likely be a basis for a

claim of inequitable conduct -- as is the case now and will be the case under the

proposed rules -- without additional facts.

Conclusion

We are now into the third modification for satisfying the requirements of

Rule 1.56. There can be no doubt that there are now severe and unintended

consequences of the two previous rule changes and the interpretation of these

rules by the courts.

The USPTO and the courts are now burdened with disclosure statements

citing hundreds of pieces of prior art, and the courts must consider, likely in one

of every two patent infringement suits, claims of inequitable conduct. These

burdens must be added to the increased cost burden placed on applicants by

these rules and which will not be lessened by the USPTO's new proposals.

The time has come for the USPTO to treat inventors in a fashion similar

to the way inventors are treated in other industrialized countries. With our

system of discovery in litigation a potential infringer has adequate bases for

examining the files of a patentee and determining the facts surrounding what the

patentee knew during prosecution of the patent.

The courts are well equipped to fashion remedies for inequitable conduct (an equitable defense to patent infringement) and the USPTO should not provide, however inadvertently, potential infringers with a remedy for infringement. The USPTO should be


well equipped to provide a thorough examination of patent applications without overburdening either an examiner or an applicant.


24.

INTERNATIONAL FEDERATION OF INDUSTRIAL PROPERTY ATTORNEYS, U.S.

July 27, 1999

The Honorable Q. Todd DickinsonActing Assistant Secretary of Commerce and Acting Commissioner of Patents and TrademarksU.S. Patent and Trademark OfficeP.O. Box 4Washington, DC 20231

Attention: Elizabeth Shaw

Re: FICPI-US Comments on Issues Related to the Identification of Prior Art During the Examination of Patent Application 64 Fed. Reg. 28,803 (May 27, 1999)


I am submitting this statement on behalf of the United States Section of The International Federation of Industrial Property Attorneys (FICPI-US) to comment on the Notice of Public Hearing and Request for Comments on Issues Related to the Identification of Prior Art During the Examination of a Patent Application, published in the Federal Register on May 27, 1999 (64 Fed. Reg. 28,803).

FICPI was created on September 1, 1906, as an association of intellectual property attorneys in private practice. The members of FICPI deal, generally, with all matters in the field of intellectual property in the countries through associates, including: (a) filing and prosecuting applications for patents (and utility models where applicable), and trademarks and designs, and maintenance of such intellectual property rights; (b) advising in matters relating to intellectual property rights and those concerning unfair competition, licensing, know-how, and transfer of technology; (c) expressing opinions on proposed national and international legislation, and changes to the rules of practice; and (d) promoting the training and continuing education of its members.

FICPI-US has the following comments, which correspond to the numbered paragraphs in the Federal Register Notice:

1. Is the Most Pertinent Prior Art Being Considered by Patent Examiners?

FICPI-US believes that, based upon the examiner's search and the applicant's disclosure of art, pertinent prior art is being considered. Obviously, the most pertinent prior art is not being considered in all cases. Instances where a patent examiner may not have considered the most pertinent prior art could include, for example, when the examiner was not familiar with the area of technology being considered, when the patent application was not classified in the appropriate class and subclass, or when there was a lack of adequate search tools. Nevertheless, under the present examination system,


which includes the use of Information Disclosure Statements, examiners are issuing valid patents in the large majority of cases.

2. Do Applicants Submit the Most Pertinent Prior Art?

FICPI-US believes that applicants do submit the most pertinent prior art of which they are aware in connection with a patent application. It is in an applicant's best interest to do so, especially if the applicant wishes to enforce the patent in litigation. The present rules force applicants to cite to the examiner the most material prior art. The duty is not only upon the applicants but upon anyone who is substantively involved in the filing and prosecution of patent applications.

A related problem is that inexperienced examiners may be unable to identify the most pertinent prior art among the documents submitted by applicants to the Patent and Trademark Office. A part of this problem is the turnover of examiners before they have developed expertise, and their replacements may have even less skill.

3. Are the Current Rules and Procedures for Obtaining Prior Art Adequate and Effective?

FICPI-US believes that the present rules and procedures for identifying and citing prior art documents are adequate and effective. The practice of identifying and collecting prior art and preparing and filing Information Disclosure Statements is already expensive and time consuming. The Patent and Trademark Office should not implement additional procedures that entail further expense, would be burdensome upon both applicants and examiners, and create risks and costs during patent enforcement.

4. Are Prior Art Searches Typically Conducted Before Filing a Patent Application?

FICPI-US believes that prior art searches are not conducted on a routine basis. A search may be made when it is desirable to obtain background information to assist in the drafting of the claims and specification. In most cases, when relevant documents are identified before or during the preparation of a patent application, they are identified either in the patent specification or in the Information Disclosure Statement.

5 Are Information Disclosure Statements Frequently Submitted?

FICPI-US believes that an Information Disclosure Statement is usually filed during the course of examination of a patent application. The types of prior art submitted vary with the subject matter of the invention. For example, one country may be particularly strong in an area of technology and, therefore, the only types of prior art submitted are foreign patent documents. Generally, in the Patent and Trademark Office, U.S. patents, nonpatent literature, and foreign patent documents are the types of prior art documents submitted with an Information Disclosure Statement.

6. Should Applicants Be Required to Conduct a Prior Art Search?


FICPI-US believes that the concept of requiring a prior art search and reporting the results to the Patent and Trademark Office initially sounds plausible. But how would the Patent and Trademark Office define the parameters of a proper prior art search? Searches of informal collections, an inventor's knowledge and information, the scanning of the contents of various sources-all can develop prior art. If this is what the Patent and Trademark Office contemplates as a proper prior art search, it is already receiving the results in Information Disclosure Statements.

The question then is: Does the Patent and Trademark Office want a formal search conducted in the Patent and Trademark Office search room? The cost, burden, and litigation hazards raised by requiring any search rule it out in our opinion. Any search should remain voluntary. The Patent and Trademark Office and applicants will continue to benefit when the results of a voluntary search are filed in the Patent and Trademark Office via an Information Disclosure Statement.

7. Should Applicants Be Required to Submit All Prior Art on Which They Rely?

FICPI-US believes that a Patent and Trademark Office requirement of this type would be self-defeating. Much prior art may be considered in the drafting of the claims, prior art that is determined by the applicant or practitioner not to be relevant or pertinent to the claimed invention. If this requirement existed, applicants and practitioners would submit every piece of prior art whether or not pertinent or material in order to avoid a later charge of fraud. Examiners would be swamped with unimportant information they must review and would thus have less time available to examine applications.

8. Should an Applicant Be Required to Submit All Nonpatent Literature in the Same Field Authored by the Applicant?

FICPI-US believes that applicants should be required to submit only prior art that is material to patentability. Anything else only increases the costs and burdens on both the Patent and Trademark Office and applicants. The focus should be on the quality of information and not the type of information. If applicants are required to submit all authored nonpatent literature, examiners will receive unimportant information they must review. Applicants will not take the risk of nonsubmission of any document out of a concern that they will be accused of fraud. Thus, applicants will cite everything that falls within the rules. Examiners will spend their limited search time reviewing unimportant documents, possibly resulting in an overall reduction in the quality of issued patents.

9. Identify Types of Nonpatent Literature Applicants Should Be Required to Submit

FICPI-US believes that applicants should be required only to submit a particular nonpatent document known to be material to patentability. Any general requirement that focuses on the type of information required for submission as opposed to the quality and relevance of the information will only increase the costs and burdens on both the Patent and Trademark Office and applicants.

10. Identify Suggestions Such That the Most Relevant Prior Art Is Considered

FICPI-US believes that under the present examination system, examiners are finding quality prior art. If examiners have enough time, they will generally find the most relevant prior art. Improvement in quality, without overburdening examiners and


applicants, can be achieved by giving examiners more time to search and find the best prior art, and by better assisting new examiners in reaching the needed level of competency earlier.

FICPI-US appreciates the opportunity both to testify and to provide a written statement regarding issues related to the identification of prior art during the examination of a patent application and looks forward to working with the Patent and Trademark Office to address this issue.

Respectfully submitted,

Tipton D. JenningsPresident

25.

IBMAssistant General Counsel North Castle Drive

Intellectual Property & Licensing Armonk, NY 10504

August 2, 1999

Commissioner of Patents and TrademarksBox 4Patent and Trademark OfficeWashington, D.C. 20231Attention: Elizabeth Shaw

Subject: IBM Response to Request for Comments on Issues Related to the Identification of Prior Art 64 Fed. Reg. 28,803 (May 27, 1999)

IBM, as an intellectual property leader and advocate of a strong patent system, believes that a quality patent search and examination is crucial to the service that the USPTO provides to the public and industry. Accordingly, IBM has the following comments in response to the specific topics and questions identified in the supplementary information.

1. Usually, Examiners identify and apply the most pertinent art in their searches. However, in some rapidly developing areas - such as software and to a lesser extent in advanced semiconductor manufacturing - the relatively low numbers of non-patent references cited per application raise questions about search quality. The examining


corps should have ready access to all relevant databases, product catalogues, and industry publications.

In the software arts, based on a review of recently issued patents, it appears that there are instances where the examination process has not produced art beyond that originally submitted by the applicants. This raises questions about the quality of the examination.

There may be any number of reasons that relevant art - particularly for non-patent art related to software - is not being identified by Examiners. Software non-patent art is not well-documented and has notoriously inconsistent terminology. Both the PTO and private industry have made great strides in making non-patent art more accessible. The PTO enables Examiners to search “millions of United States and foreign patent and non patent literature documents.” Private industry, either on its own or with the cooperation of the PTO, has supported the development of collections and databases of relevant art, such as: the IBM Technical Disclosure Bulletins ("TDB"); Research Disclosure; and the database of Software technologies" created by Software Patent Institute ("SPI") and made available to the public in 1995 at http://www.spi.org. Thus, advances in technology enable searches on words and word strings in text to locate relevant art. However, the lack of time, search training and/or familiarity with subject matter available to Examiners may mean that the Examiners do not avail themselves, in an effective manner, of these existing search resources, and may place heavier reliance on the art submitted by the applicant.

A related problem is where Examiners fail to apply the most pertinent art from among the references cited during the examination process. This is probably due to the serious time constraints on the Examiners and high turnover of Examiners leading to a lack of specialization in rapidly evolving technologies.

The present examination process can be improved to reward better quality searching and analysis of the art. Patent examiners are under serious time constraints to dispose of cases. While we are in favor of reducing the duration of pendency of patent applications, this should not be done at the expense of a quality examination. Specific suggested quality incentives are that the PTO should: relax constraints that combine examination quotas and accelerated examination timetables; increase time for training in search systems and specific search strategies for selected arts; reward specialization in rapidly evolving technologies within the examination staff; and improve the salary structure to better compete in hiring and retaining qualified Examiners in booming technologies such as software. IBM also supports proposed legislation to give the PTO more independence. One benefit of PTO independence is that revenues received from patent fees can be used to improve the quality of the search and examination process instead of being siphoned off by Congress to fund other programs.

2. The vast majority of applicants meet their legal duties and submit the most pertinent prior art known to them. The present rules, which obligate the disclosure of all known prior art material to the patentability of the invention, are sufficient. The present rules and the accompanying body of law built around them provide a level of certainty to inventors and practitioners that should not be discarded or lessened. These obligations provide incentives to applicants to disclose art that they, as the inventors, are possibly most knowledgeable of. If they do not do so, they jeopardize the validity of their patent.


3. The current rules and procedures for obtaining prior art during the examination of a patent application are adequate and effective. However, more should be done to provide Examiners with incentives and the time to conduct a quality search.

We do have a suggested rule change regarding the submission of Information Disclosure Statements by applicants, i.e., the PTO should not require the submission of paper copies of US Patents, which are readily available at Examiner desktops. Similarly, as foreign patent documents become available at Examiner desktops, the burden of submitting paper copies of these types of references should also be lifted from applicants. The current rules requirement for applicants to explain the relevance of certain foreign language references should be retained.

4. Prior art searches are done in many but not all cases before filing a patent application with the USPTO. There is no particular technology that is more likely to be marched than another. The IBM attorney decides on a case-by-case basis whether a formal prior art search is needed and if so, the scope of the search. For example, the attorney may feel confident Ä based on his or her own technical experience, knowledge of the arc, and/or interaction with the inventors/experts - that the most pertinent are has been identified and that additional searching is unnecessary.

5. IBM frequently submits Information Disclosure Statements (IDS) either at filing or during the pendency of a patent application. The IDS identifies one or more types of prior art, including: United States patents; foreign patent documents and PCT publications; and non patent literature. The non patent literature may include, but is not limited to: journal articles; product literature; conference papers and proceedings; all or parts of relevant texts and proceedings; corporate bulletins) Internet web pages; and other Internet publications.

6. Applicants should not be required to conduct a prior art search and submit corresponding search results, including where they searched, to the USPTO when filing a patent application. The drawbacks of this proposed rule change would outweigh the potential advantages. For example, the inventor and/or attorney might already be aware of the most pertinent art, particularly if they are experienced in the particular technical area. Moreover, adding mandatory costs to an already expensive patenting process does not seem beneficial to any category of applicant. In this case, a formal search increases costs - in money and/or time - with no substantial benefit to the examination process.

Furthermore, merely doing a search does not help if the applicant does not spend the time analyzing/assessing the results. Since search results will likely vary greatly, a mandatory search requirement would likely result in the disclosure to the PTO of many references that are cumulative, immaterial and/or irrelevant to patentability, in order to allow the PTO to independently consider each reference.

Neither should applicants be required to disclose whether a search has been made. The mere fact that a search has been made or not is of no practical benefit to the examination process or the PTO.

7. Applicants should not be required to submit all prior art relied upon during the drafting of the claims of a patent application. All art relied upon during the drafting of claims, that


is known to be material to the patentability of the application, is being submitted as required by the current rules. We believe that this covers the majority of art relied on during claim drafting. The proposed change would likely result in the disclosure of a significant amount of art that is cumulative, irrelevant and/or immaterial to patentability, needlessly making the examination more difficult and time consuming. This is because applicants will disclose even cumulative, irrelevant and immaterial references rather than risk a collateral attack on the validity of the patent based on an argument that the applicant did not disclose a reference that may have been considered while drafting the claims.

8. Applicants should not be required to submit all non patent literature directed to the same field of invention attributable to, authored by or co-authored by the applicant. This could result in the PTO being flooded with documents, most of them irrelevant to the patentability of the invention. Thus, the PTO would have an administrative nightmare with the volume of submitted documents and Examiners would have to consider many irrelevant, immaterial and/or cumulative references. Moreover, such a rule would unfairly open a patent to attack on the grounds of inequitable conduct because an incorrect, albeit good-faith, determination or the field of the invention was made.

9. Applicants should not be required to submit any specific type(s) of non patent literature to the USPTO in connection with any given patent application. The current rules correctly define the limit of an applicant's duty to the PTO and properly focus on the materiality of a reference, regardless of its "type".

lO/ll. Without making any fundamental change to our Patent Law or the Rules of Practice, there are a number of steps that the USPTO can take, either alone or in conjunction with applicants, industry groups or other patent offices, to improve search and examination quality:

A) The USPTO is to be commended for the steps it has taken in the last several

years to broaden the prior art resources that Examiners have available to them through

their desktop workstations. However, if Examiners are not adequately trained to use the

vast array of databases now available to them and if they are not given adequate time

for searching, all of these additional databases will no: lead to a significant improvement

in citation of relevant art. In its Quality Review process, the USPTO should put greater

emphasis on assessing search quality and feeding this back to Examiners. It should

also consider making search quality one of the key factors on which it bases cash

awards given to Examiners. While devoting more time to Examiner training and

searching will inevitably increase USPTO costs, it is hoped that other steps the USPTO


is taking to improve the efficiency of its operations will result in savings to offset these

costs and eliminate the need for fee increases.

B) The USPTO should expand the group of technical search assistants thee it

has made available to Examiners in rapidly evolving areas such as biotechnology and

the computer technologies. By advising Examiners with regard to potentially useful non-

patent literature databases for a particular search, helping with search strategy

development and, in some cases, carrying out the searches for Examiners, they are

providing a very valuable service. However, with the increasing emphasis that the

USPTO is placing on cycle times, if there are not enough search assistants to service

Examiners on a very timely basis, many of the non-patent prior art resources the USPTO

has acquired may not be searched.

C) The USPTO should solicit help from companies, trade associations and

professional societies in providing technical education for Examiners.

This could take the form of Examiner field trips to company sites to learn state-of-

the-art technology in their fields and hear lectured by industry experts at the PTO or via

video-conference. This type of training will generally help Examiners and specifically

help with the terminology to use in search strategies and to learn of new prior art

sources in the field. IBM has hosted such visits in the past and would welcome the

opportunity to do so in the future.

D) Especially In emerging technologies and in fields where a large body of the

prior art does not exist in the form of patents, the USPTO should encourage and support

industry efforts to create prior art databases of non-patent literature. IBM has

participated in such an effort in the software area through the Software Patent Institute

(SPI). At the July 14, 1999 hearing in Crystal City the Securities Industry Association


(SIA) said it was considering creating a database of prior art material contributed by its

members covering financial engineering products to help address the problem of the

paucity of prior art to deal with "business methods" applications. They pointed out,

however, that because of lack of uniformity of terminology used in the industry, such a

database will be difficult to search. The USPTO should not only support the efforts of

the SPI and the SIA, but should consider contributing to these efforts and enhancing

their value to the USPTO and the public by indexing the records in these databases with

US Patent Classifications.

E) A great wealth of technical information that could be cited as prior art resides in catalogs and product manuals that are typically not readily searchable. Many of these are now produced in electronic form and, for defensive reasons, many companies would probably be willing to contribute these to the USPTO. If the USPTO were to create a simple mechanism for accepting such contributions and make this widely known, it is likely to receive many contributions. The USPTO could then compile these into a database and apply US Patent Classifications to the entries. This would create an extremely valuable prior art resource which should be made available to the public as well as to Examiners. IBM is willing to work with the PTO and contribute to such an effort.

F) In the interest of both improved Search quality and cost containment, the USPTO should continue to work closely with the European Patent Office (EPO), the Japanese Patent Office (JPO) and the World Intellectual Property Organization (WIPO) to improve communications and share search results and prior art sources.

Frederick T. Boehm


26.

JONES, DAY, REAVIS & POGUENORTH POINT 901 LAKESIDE AVENUE

CLEVELAND, OHIO 44114-1190TELEPHONE: 216-586-3939 FACSIMILE: 216-579-0212

1 386:mtc699820-301300 August 2, 1999

Mr. Q. Todd DickinsonActing Assistant Secretary of Commerce and Acting Commissioner of Patents and TrademarksUnited States Department of CommercePatent and Trademark OfficeWashington, D.C. 20231

Re: Notice of Hearing and Request for

Public Comment, 1223 OC 91-93. June 15, 1999


Please note that my colleagues and I are greatly concerned with the

issues raised

in the recent Notice of Hearing and Request for Public Comment. We are

especially concerned

with the suggestion that an applicant should be required to conduct a

prior art search, and to

submit vast collections of non-material prior art, as set forth in questions

6-9.

Questions 6-9.

This law firm, in addition to prosecuting patent applications, engages in a heavy schedule of patent infringement litigation on a continuing basis, in many cases representing the patentee. In these cases the infringing defendant almost invariably raises defenses asserting that the patentee engaged in bad faith tactics and other forms of inequitable conduct before the USPTO in order to obtain the patent in suit. Even the


repeated observation by the Federal Circuit that "the charge of inequitable conduct before the patent office had come to be attached to every patent prosecution," creating "an absolute plague" on the judicial process in patent cases, e.g. Multiform Desiccants, Inc., v. Medzam, Ltd., 133 F.3d 1473, 1482 (Fed. Cir. 1998), citing Burlington Industries, Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. l988), has not stemmed the universal practice of infringers pleading and pressing forward with defenses charging "bad faith."

The reason that such defenses are almost invariably asserted in patent cases is that the remedy is broader than the remedy for a finding of invalidity for claims found to be anticipated, obvious, or barred under section 102(b). If inequitable conduct is found as to a claim not asserted in the lawsuit, other claims will be held unenforceable as well. Thus, inequitable conduct is the one defense that uses an attack against weak unasserted claims to destroy strong asserted claims that are valid on their face and distinguishable from the prior art. In addition, infringers hope, by asserting an inequitable conduct defense, to obtain a finding that the case is an "exceptional case" allowing them to collect attorneys fees and to assert a treble-damages antitrust counterclaim for patent misuse.

Most inequitable conduct defenses include allegations that the inventor or his

patent attorney failed to disclose to the PTO the most pertinent prior art known to them.

This nondisclosure is then elevated into "intentional concealment" by asserting that the

undisclosed reference was so highly material that intent to conceal must be inferred.

That this sort of attack on the patent has become entirely routine is shown by the fact

that one of my colleagues just completed a trial of a four-patent lawsuit in which the

infringer asserted and attempted to prove that each of the four patents was procured by

inequitable conduct through intentionally concealing from the PTO the most pertinent

prior art references.

It should also be noted that the defense of "inequitable conduct" is very fact-intensive (e.g., Is the reference material? Was the nondisclosure intentional?). Thus it is difficult to obtain summary dismissal of even the most dubious inequitable conduct defense.

We have noted in these cases that, when the case is over, the inventors will often express their disgust with the patent enforcement process, stating sentiments such as, "If I had known how much humiliation and nastiness I would be subjected to in the


patent enforcement process, I never would have . . ,", such statement being concluded by naming the first step by which the inventor entered the patent process, such as retaining a patent attorney or signing an inventor's oath or filling out his or her employer's invention disclosure form. Indeed, the inventor's reputation, character, and motivations are often dragged through the mud, accompanied by an effort to show that the inventor lies and cheats in the PTO and elsewhere. Inventors are often sensitive, creative people who have no stomach for the ad hominen attacks that grind on for years during a patent case. It is demeaning to inventors to have to run this gauntlet as an integral part of patent litigation, simply for lack of a better way to obtain disclosure of pertinent prior art to the PTO. While patent attorneys complain less often than inventors, it is demeaning to the profession to have so many allegations of misconduct asserted against patent law professionals and tried in the courts.

The proposal to require inventors to perform a prior art search for submission to the PTO, if adopted by the PTO, will create a huge expansion of the scope of the inequitable conduct defense to which patentees will be subjected in enforcing their patents. Specifically, we can readily foresee that there will never be a prior art search that cannot be attacked as insufficient by an infringer in patent infringement litigation. Similarly, we can anticipate a substantial rise in the cost of litigating a patent case, since the sufficiency of a particular prior art search will be a fact-intensive question, subject to inventor testimony, testimony of colleagues of the inventor, assertions of privilege by the inventor's attorney, litigation over whether the privilege is properly being asserted, testimony of opposing expert witnesses as to whether the prior art search was reasonable under the circumstances, and continuing uncertainty as to the standards for a legally-sufficient prior art search. More inventors will have their character and reputations attacked for more demeaning reasons, and more patent attorneys will have their professional work degraded and their personal integrity subjected to humiliating allegations of wrongdoing.

There is a much better way to have the most pertinent prior art brought to the attention of the examiner. Indeed, the better way is already in use in much of the world. Patent applications should be laid open for public view so as to allow prior art to be brought to the attention of the examiner by members of the public. In order to encourage participation in such a process by competitors of the patentee, no submission of prior art to the examiner should be permitted to be attributed to such competitor in the trial of a patent case. Thus, there would be no prejudice to a submitter in having the submitted prior art considered by the examiner in an ex parte examination.

Question 11 -- Other Issues

Responses to the questions set forth in the Notice of Public Hearing were sought

on a relatively short deadline during the summer months at a time when organized bar

groups normally do not meet. The PTO should consider extending to bar groups or

others the opportunity to comment further during the fall months so as to allow bar


groups to meet and confer on consensus responses to the very important questions

raised by the PTO in this proceeding.

The undersigned is Counsel with the law film of Jones, Day, Reavis & Pogue at

the Firm's Cleveland address. The comments offered here represent his personal views

and do not necessarily represent the view of Jones, Day, Reavis & Pogue.

Very truly yours,

Stephen D. Scanlon


27.August 2, 1999

To: U.S. Patent and Trademark OfficeFrom: Dale L. Ritter

An addendum to my public testimony given in the Nob Hill Room of the Marriott Hotel, San Francisco, on June 28,1999.

Topic: Issues relating to the Identification of Prior Art during the Examination of a Patent Application

My propositions:

An anticipation of a prior art does not necessarily render an invention obvious and therefore non-patentable. Even an 'equivalency' obtained through an entirely different basis and environment is not a sufficient cause to render it obvious, especially if what appears to be a mere adaptation can be proven not to be mere and was in need of its own basis for invention.

A test of time should be a critical factor in determination of non-obviousness of an invention, especially when the new technologies should have preempted the subject invention much earlier to make prior art obvious for anticipation and adaptation, and when the dates of advent of these technologies precede the invention by just too many years.

When the art that went into a prior art, or the old product, is long lost and did not prevail, after so many years, even with the emergence of a variety of new technologies that could use it, that art needs to be considered a 'lost art'. And the new invention done on its own new basis and merits, even though it may bring to light the lost art, is much more significant than a 'new use' product (which means an existing product patented for a new use). Especially if what appears to be a mere adaptation is really not mere and the change is significant, requiring its own reinvention and any engineering. The lost art cannot be regarded to negate the new invention, albeit a reinvention.

With the PTO's refusal to issue a patent, the inventor has the right to hold his invention as a trade secret and hold the PTO responsible for the refusal. Several issues arise in this:

1) If the new product can be proven to be needed by America and the old product (the prior art) fails to become a household in America, the PTO needs to consider the new product. The prospect of obtaining a patent, together with that of making a profit, really is an inventor's incentive to bring out new ideas/products. The above arguments need to be weighed favorably. Otherwise, it becomes a trade secret, to the dismay of the country.

2) Should the new product proceed to enter the market and completely revolutionize the technologies and the marketing of products, it, together with


its passage of otherwise normal patentability criteria, should have been issued the patent, and the term of patent needs to be adjusted for the lost time that resulted from the PTO’s refusal to issue a patent.

3). As I am an independent inventor and do not have the financial resources the large companies have to prosecute patent applications fully, the PTO needs to provide a means of assistance to enable the inventors to prosecute adequately.

4). To close, I hereby ask the PTO this question:

How long do I need to wait for the PTO to concede that my invention is not

obvious, now that it has rejected my application on the basis of what it perceives as

being obvious.

Sincerely,

Dale L. Ritter


28.THE DOCUMENT COMPANY

XEROX........................................................................................................................Xerox Corporation

800 Long Ridge RoadP'O. Box 1600Stamford, CT 06904Office of General CounselDirect Dial: (203) 968-3451

July 30, 1999

Commissioner of Patents and TrademarksBox 4Patent and Trademark OfficeWashington, DC 20231 Via Fax & Mail

Attention: Ms. Elizabeth Shaw

Re: Notice of Public Hearing and Request for Comments on Issues Related to

the Identification of Prior Art During the Examination of a Patent Application.

RIN 0651-ZA02Docket No. 99-0512128-9128-01

Question 6; Should applicants be required to conduct a prior art search and

submit corresponding search results, including where they searched, to the USPTO

when filing a patent application? If not, should applicants be required to disclose whether

or not a search was conducted? Please explain your rationale and discuss any potential

advantages and drawbacks.

Due Date: August 2, 1999Dear Ms. Shaw:

Xerox Corporation submits the following comments in response to the Patent and Trademark Office's request for public comments on issues related to the identification of prior art during examination of a patent application. Specifically, Xerox's comments are directed only question number 6 as we believe this question has the potential for the most negative impact on Xerox and all applicants for a US patent.


Response:

Should applicants be required to conduct a prior art search and submit

corresponding search results, including where they searched, to the USPTO when filing

a patent application?


THE DOCUMENT COMPANYXEROX

Commissioner of Patents and TrademarksJuly 30, 1999Page 2 of 5

No. Applicants should not be required to conduct a prior art search prior to filing a patent application. A pre-filing search requirement would place an undue burden, both economic and resource, on applicants for a US patent. A pre-filing search requirement would also create the potential for the loss of patents rights, both US and foreign, in cases involving statutory bars.

The proposed requirement that applicants perform prior art searches would increase costs to applicants significantly. Not all applicants may be able to afford the additional cost of a pre-filing search and may even decide not to file a patent application. Costs for searches depend on the relative skill of the searcher, the volume of prior art existing in the particular area of technology and the funds available to the applicant. Search costs can range from $300 to $1,000, with some advocating searches costing in excess of $5,000. If each of the over 200,000 applicants for a US patent filed each year were required to obtain a search costing $1,000, this would add hundreds of millions of dollars to the total annual cost of obtaining patents. For larger corporations, the requirement could drive up annual preparation costs by millions of dollars, having a direct impact on the cost of doing business.

The proposed requirement would delay US inventor filing dates. This time delay may, in cases of potential statutory bars, result in loss of foreign rights to US applicants or even prevent filling the US application. Also, additional time would be required to properly prepare an application and its claims to specifically distinguish over the prior art located by the search. The time expended in obtaining and applying a search report would place US inventors at a significant disadvantage relative to their foreign counterparts, since no foreign country of which we are aware requires a prior art search by the applicant (at most, only prior art cited in other foreign patent application examinations need be cited).

The proposed requirement would mandate increased submissions to the Patent and Trademark Office due to the Rule 56 requirements. The Patent and Trademark Office already believes that applicants are submitting more art than is strictly necessary without requiring a pre-filing search (see comments below regarding October 1998 Advanced Notice of Proposed Rule Making). If applicants are required to search and turn up yet more art, they will err on the side of caution and cite all references found for fear of inadvertently leaving out a reference later argued to be more relevant and running afoul of the disclosure requirements. Review of the resulting search references would greatly increase the Patent and Trademark Office workload without necessarily providing the examiners with better prior art references. The additional volume of references would require additional resources to store them.


The proposed requirement would create a tremendous increase in demand for trained personnel to perform the up to 200,000 plus prior art searches that would be required. There is little assurance that such personnel requirements could be met in the near term.




The proposed requirement leaves open the issues of what constitutes an acceptable pre-filing search and by what standards the prior art search would be judged. Is a search of the Patent and Trademark Office databases sufficient? Is a web search sufficient? What about searching abstracts or foreign patents? How would anyone know when he/she had searched enough?

The proposed requirement would likely generate more litigation with respect to patent enforcement. Without easily understood guidelines on what constitutes an acceptable pre-filing search, litigants would have wide latitude to question an applicant on the adequacy of the pre-filing search. What type of search was done, how much time was spent searching, which databases were searched, which libraries were searched, and which search terms were used would be analyzed in an attempt to invalidate an issued patent, not on the merits of the patent but on the technicality that the criteria for a pre-filing search were not met.

Should applicants be required to disclose whether or not a search was conducted?

Applicants should not be required to disclose whether or not a search was conducted. In view of applicant's existing duty to disclose material prior art, this is at most redundant. Presently applicants do not have an obligation to disclose immaterial prior art. However, many applicants err on the side of caution and submit marginally relevant references. Requiring applicants to disclose whether or not a search was conducted, may result in some applicants, if a search was conducted, in being even more conservative and submitting all search results, to avoid a later allegation of fraud. This would result in even more references being cited to the Patent and Trademark Office, taking more time for the Examiner to review them. Furthermore, it is not seen how the mere information that a search was done or not done could be useful to an examiner. The mere fact that a search was done does not indicate that the applicant has found he best art, nor does the fact that a search was not done mean that the applicant did not already have the best art.

Additional comments and suggested alternative.

The Patent and Trademark Office makes certain assumptions concerning the problems associated with searching in emerging technologies:

However, searching prior art in emerging technologies presents challenges. First, the terminology in such fields may not be standardized, which makes it difficult to conduct automated searches based on key terms. Second, prior art information in new technologies is frequently not categorized or indexed in a fashion that facilitates searching and accessibility. Lastly, prior art in certain areas, such as software-related inventions, may not be available through customary or predictable means.



Commissioner of Patents and TrademarksJuly 30, l999Page 4 of 5

Nothing in these problems indicates that a mandatory pre-filing search by applicants is the best or only solution. A better solution is to provide additional training and resources for the examining corps handling emerging technologies.

The burdens that would be imposed by a mandatory pre-filing search are undesirable and unnecessary in view of simpler solutions that exist. For instance, one economically more feasible solution to the basic issue of quality of the prior art before the Patent and Trademark Office is a more effective reexamination system (more inter parties). This could easily be achieved by simple rule-making under the current reexamination statute. By a simple modification of the current system, the relatively small percentage of patents of actual public importance, especially patents actually being asserted, could be given more thorough prior art searches and examination by interested parties. Costs incurred in such a system would be relatively low, especially when compared to corresponding litigation costs.

A pre-filing search requirement would appear to be at odds with the October, 1998 Advanced Notice of Proposed Rulemaking for Changes to Implement the Patent Business Goals, 631 FR 192, pp. 53497-53530. In that advanced notice of proposed rulemaking, the Patent and Trademark Office cited as two of its major goals: reducing the Patent and Trademark Office processing time (cycle time) to twelve months or less for all inventions and enhancing the quality of examination. One of the proposed rule changes (topic 9) that the Patent and Trademark Office believes would help meet these goals limits the number of references in an Information: Disclosure Statement to 10 unless the applicant establishes, through several onerous new, disclosure/admission requirements, why the additional cited art is relevant and to what claim the prior art relates. The Patent and Trademark Office believed, then, that practitioners are erring on the side of caution and citing excessively numerous references in an IDS. Requiring a pre-examination search by an applicant will likely result in identification of additional references that will be cited in an IDS to avoid a later allegation of fraud.

Currently the burden and legal duty of searching is on the Patent and Trademark Office examination corps (under 35 U.S.C. 131, 37 C.F.R. 1.104 and MPEP 704). The Patent and Trademark Office establishes a set of guidelines and provides training so that all examiners are able to conduct prior art searches in their technology areas. The cost for such searching is included in the Patent and Trademark Office's fees and budget. Applicants also have the burden and legal duty (37 C.F.R. I.56) of bringing material prior art to the Patent and Trademark Office's attention.

The proposed requirement that each applicant conduct a prior art search would not relieve the Patent and Trademark Office of any of the burdens/difficulties/duties of conducting prior art searches. Unless the Patent and Trademark Office is willing to rely


on an applicant's search, the Patent and Trademark Office still must conduct a thorough search. Furthermore, relying on a prior art search conducted by the applicant without verifying (conducting) the same search undermines the Patent and Trademark Office's goal of enhancing the quality the




examination as there is likely to be a wide range in the quality of searches performed by applicants. Both applicants and the general public should be able to rely on the Patent and Trademark Office's legal duty to conduct prior art searches.

Some foreign patent offices require applicants to submit all search results from other country searches. Under 37 C.F.R 1.56, applicants have a continuing duty to furnish the Patent and Trademark Office with newly discovered prior art and must specifically consider new, material prior art found from searches done by foreign patent offices. Although the merits of citing the entire search results from foreign patent office searches is not known, a possible alternative would be to require that all prior art cited in search reports of a foreign patent office in a counterpart application be cited. This would at least take advantage of information turned up by foreign patent offices without directly, greatly increasing the cost to the applicant. Also, the range in quality of searches should be less as these searches are performed by professionals for other patent offices.

Another possible solution is to require the Patent and Trademark Office to perform an expanded search after filing or to require the Patent and Trademark Office to offer an optional profiling search (for an additional fee).

The Patent and Trademark Office is responsible for examining applications. Searching is a fundamental element of the examination process and must remain with the Patent and Trademark Office. If the search requirement remains with the Patent and Trademark Office, the Patent and Trademark Office can determine the standards for the search and their application/enforcement to each filed application, providing uniformity of results from one application to the next at a reasonable cost to all applicants.

Respectfully submitted,Xerox Corporation

John E. BeckGeneral Patent Counsel

JEB/


29.

Response to Request for Comments on IssuesRelated to the Identification of Prior Art

64 Fed. Reg. 28803 (May 27, 1999)

The following comments are responsive to the specific topics identified by the

PTO for comment.

1. It is very difficult to assess the extent to which the most pertinent prior

art is not being considered during the examination of patent applications.

Reexamination statistics indicate that 75% of the certificates issued contained at

least some changes to the claims as issued in the original patent. It is reasonable

to conclude that most of these changes were necessitated by consideration of

prior art that was either not considered or not fully appreciated by the examiner

during the original examination. Further, the PTO has available to it statistics

from its quality review of allowed patent applications which should provide some

additional statistics on the extent to which the most pertinent prior art is not

considered during the initial examination. A survey of reissue applications may

provide another indication of the changes in the claims of an issued patent which

are necessitated by consideration of prior art not considered during the

examination of the original patent. Further, when reexamination, quality review

and reissue statistics are considered in aggregate, they may indicate the area(s)

of technology most affected.

2. For the most part, applicants do submit the most pertinent prior art that

they are aware of in connection with a patent application. While there continues

to be reported decisions of the federal courts where patents are held


unenforceable for the failure to comply with the duty of disclosure, the cases

where prior art which is known to be material to the patentability is intentionally

withheld from the PTO are relatively rare. Instances of where a competitor

conducting a validity search and analysis of an issued patent identifies pertinent

prior art not considered probably are far greater in number than the occasions

where a patent owner has knowledge of prior art but has not brought that art to

the attention of the PTO.

A more significant, but related problem, is that the average examiner is

often unable to identify the most pertinent prior art among the documents

considered, including those submitted by applicants. A part of this problem is the

significant turnover of examiners before they gain any real expertise in the art

they are examining, another part is the difficulties associated with training and

supervising a large number of new examiners.

3. The current rules and procedures for submitting prior art during the

examination of a patent application are adequate and effective. They provide a

fair balance between the need of the PTO to obtain pertinent prior art early in the

examination process and to complete that process in a timely fashion, and the

burdens on patent applicants to comply with their duty of candor and good faith.

The PTO should continue to consider changes that would effectively reduce the

burden on both applicants and the PTO in having the most relevant prior art

considered during the examination process. The PTO should consider

eliminating the requirement to supply a copy of U.S. patents in an Information

Disclosure Statement. This requirement appears to be an unnecessary

paperwork burden on both applicants and the PTO since all examiners have

access to all U.S. patents at their workstation. The PTO should accelerate its

efforts to cooperate with other significant searching and examination offices to


identify the prior art most pertinent to an invention such as described in the

program announced in the Official Gazette of May 25, 1999 - Notice to the

Public Regarding the 1999 Concurrent Search Pilot Program (1222 Off. Gaz.

Pat. Office 109).

4. There is no general rule about conducting prior art searches before

filing a patent application with the USPTO. One of our member companies

indicated that some level of search was conducted for each application. The level

of search was dictated by the subject matter of the invention, the experience of

the inventors, and the needs of the business. Sometimes a search will be made

when there is some doubt about making the significant investment of preparing

and prosecuting a patent application, or where it is desirable to obtain some

background information to assist in the writing of the specification and drafting of

the claim schedule. For most cases, when relevant documents are identified prior

or during the preparation of a patent application they are identified either in the

patent specification or an IDS or both.

In the case of U.S. applications based on foreign priority, the filing

strategy is often based on consideration of covering incremental commercial

developments without any in depth consideration of prior art. This decision to file

is not based on the results of a search, particularly where offices in which an

application is filed will eventually issue a search report.

5. Information Disclosure Statements are frequently submitted during the

course of examination of a patent application. Studies have been conducted by

the PTO (1980, 1986, 1992) to determine the frequency and content of

statements. Perhaps the PTO should conduct a study to determine the current

practice and whether the problems the PTO has identified occur in those

applications where no IDS has been submitted. Many applicants have a global


patent strategy and relevant documents are frequently identified in the

examination of counterpart applications in other countries. Relevant prior art is

also identified through validity studies of related patents or through licensing

efforts. The types of prior art submitted varies greatly with the subject matter of

the invention - some countries are stronger in some technologies than others,

inventors in some technologies tend to publish their work in addition to applying

for patents.

6. Applicants should not be required to conduct a prior art search when

filing a patent application. The problems created by such an approach are

significant, yet the benefits would be few, if any. Among the problems that would

be created are:

(a) what would be an appropriate search?

(b) who would monitor whether an appropriate search had been

conducted in fulfillment of the imposed requirement?

(c) a requirement to conduct a search may add a significant cost,

particularly to small entity applicants who are least able to afford the additional

cost.

(d) many applicants do not have the sophisticated search

equipment and resources available to all patent examiners.

(e) a searching requirement would create an unnecessary risk to the

patent owner and patent practitioner of having an issue of inequitable conduct

raised because of the performance of an inadequate search or an adequate

search performed improperly. See General Electric Music Corp. v. Sarnick Music

Corp., 19 F.3d 1405, 30 USPQ2d 1149 (Fed. Cir. 1994).

(f) the PTO is likely to get a lot of information that is not relevant to

patentability, and the quality of the search results will probably vary greatly.


(g) the PTO may create new opportunities for former PTO examiners

and place even greater burdens on the PTO to retain qualified examiners.

(h) the PTO would shift to applicants a responsibility (searching) now

performed by the PTO resulting in applicants paying twice for the same service.

7. A requirement to submit all prior art relied upon during the drafting of

the claims of a patent application creates uncertainties - what does "relied on"

mean? What information should be submitted by a corporate practitioner who has

her own patent collection and technical library - when is a document relied on?

Another possible drawback for the PTO is that much prior art may be considered

in the drafting of the claims that is determined by the practitioner not to be

relevant or pertinent to the claimed invention. While an applicant clearly has no

duty to submit information which is not material to the claimed invention, a

requirement to submit all prior art relied upon during the drafting of the claims of a

patent application would result in a necessity to submit prior art which is not

relevant or material to the issue of patentability. As a practical matter, it is

believed that most practitioners would submit even the prior art which is not

considered to be pertinent or material to permit the PTO to make its own

independent determination of that evaluation of each item of prior art.

8. Applicants should not be required to submit all non-patent literature

directed to the same field of invention attributable to at least one of the inventors

named in the application. Such a requirement would necessitate a significant

amount of additional work and cost in order to identify information directed to the

same field of invention, or would result in the submission of all literature authored

by any inventor to permit the PTO to make the determination of whether it was

directed to the same field of invention. Even a good faith attempt to determine

what is related to the same field of invention would make the patent vulnerable to


an attack on the basis of inequitable conduct because the wrong decision was

made. It should also be pointed out that information that is material to an issue of

obviousness would include both information directed to the same field of invention

and information directed to the problem addressed by the claimed invention.

This requirement should not be adopted because it would increase the cost and burden on both applicants and the PTO, and is not likely to result in assisting the PTO in identifying the most pertinent prior art during the examination process.

9. Applicants should not be required to submit, as a matter of course, any

particular type of nonpatent literature documents even in specific types of

applications. The requirement to submit information known to be material to

patentability should be the limit of applicants duty to the PTO. Any general

requirement that focuses on the type of information as opposed to its relevance to

the issue of patentability is more likely to increase the burden on both applicants

and the PTO for handling information that is not relevant or material to

patentability. Information material to patentability obviously will take many forms

depending not only on the invention and the practices in the technology to which

the invention relates, but also on the activities of the inventors prior to the filing of

a patent application. The obligation to submit information should focus on the

information most pertinent to the task before the patent examiner.

10/11. The ex parte examination system in the United States cannot be

significantly improved without significantly increasing the costs of examination,

the burdens on applicants and patent examiners, and/or the delays in the grant of

a patent. Improvements in training and supervision of examiners should be

pursued. Improvements should also be pursued through cooperation among

offices engaged in the search and examination of patent applications. A pilot

program along this line was announced in the May 25, 1999 issue of the Official


Gazette where the combined resources of the USPTO, EPO and JPO would be

used in a coordinated effort to identify the most pertinent prior art relative to an

invention claimed in applications pending in all three offices.

At least in emerging technologies where the identification of relevant

prior art presents

unique challenges, the PTO should consider hiring searching specialists who

could either conduct or instruct examiners on search strategies that yield the best

prior art. At one time, a private sector effort to collect information relevant to the

patentability of software was created [Software Patent Institute], but its current

status is unknown. The searching specialist approach has worked reasonably

well, for example, in the biotechnology area with sequence searching.

The reexamination process can be made more effective by permitting

participation by third parties and staffing the interparties reexaminations with

highly qualified examiners. Competitors are generally more highly motivated, and

thus more effective, in identifying the most pertinent prior art relative to a claimed

invention. Under the present reexamination system, however, competitors are

very reluctant to submit the best prior art to the PTO given the significant

variability in the quality of examination, the inability to participate in the

reexamination process, and the inability to appeal a favorable decision by the

patent examiner.

Intellectual Property Owners Association (IPO)
