A few months ago, the
Patentably Defined blog added a post titled "
A Few Ways To Get On The Bad Side Of Your Examiner". From a list of eight, these two in particular resonate with me:
- Present only a general argument with only generic citations to several pieces of art, without an explanation as to how the art supports the argument.
- Submit a needlessly lengthy response inflated with numerous boilerplate paragraphs.
A more recent post on
PTO Director Kappos blog provides a list of “
Five Things Patent Examiners Wish You Would Do”. There's some overlap here, since number two on that list is:
Lay Out Arguments From the Get-Go
Attorneys
should be precise in their arguments, pointing out in a concise manner
just how the invention is novel and how it is different from prior art.
And they should do this at the outset, rather than waiting until after
one or more office actions, or on appeal.
Both of these lists fit with my prosecution philosophy of actually putting an argument in the record. I'm not yet convinced that this works with the Examiner, as Patentably Defined and Kappos seem to suggest. But I am convinced this is the best way to go on appeal.
That post at Patentably Defined is not quite new - it was posted in Feb. 2010.
ReplyDeleteAlso, Karen, aren't you worried that the more argument you put on the record, the more potential there is for estoppel/disclaimer/inequitable conduct (however "inadvertent")?
>the more argument you put on the record,
ReplyDelete>the more potential there is for estoppel / >disclaimer/inequitable conduct
Sure, arguments can hurt your patent in litigation.
My answer to that: think carefully about your arguments. My number one rule here is to only argue about exactly what's in the claim language, i.e., never argue outside the claims.
As for inequitable conduct, well, the vast majority of cases I've read on I.C. are related to failure to disclose, or taking a position in one case that's inconsistent with a related case.
Though I'm sure it's possible to come up with an I.C. charge based on arguments made during prosecution, merely interpreting a reference wrong is not I.C.
Karen,
ReplyDeleteThe IC jurisprudence might be less forgiving than you suggest. For example, you write that "merely interpreting a reference wrong is not I.C." And, technically, that is right - there are also has to be "intent," which can be proven with merely circumstantial evidence.
Consider the "Miranda" warning that IPWatchdog thinks every patent attorney should be read before making arguments:
"You have the right to remain silent. Anything you do say can and will be used against any issued patent for the entirety of the patent term. The Federal Circuit ignores Rule 56 and the inequitable conduct test has devolved into one where we ask if anything was said that later turns out to be incorrect. If you happen to be wrong with respect to anything you have said you will spend millions defending an otherwise valuable innovation and have the patent striped from you. Of course, this only occurs if tell the examiner something, do a patent search, put anything in writing or make any arguments during prosecution. So for goodness sake PLEASE REMAIN SILENT and say as little as possible."
http://www.ipwatchdog.com/2010/06/02/cafc-judges-should-be-require-to-examine-patent-applications/id=10839/
Karen, why on earth are you not quite convinced that this works with the examiner? Because of your past failures? If you need me to hold your hand through drafting a persuasive, consise, and reasonable argument a few times I could probably help you out as long as you frame it as a hypothetical. For a few hundred dollars I could teach you in a comprehensive fashion what kind of arguments will likely be persuasive if properly made, and which will probably be DOA no matter how flowery you get.
ReplyDelete"Also, Karen, aren't you worried that the more argument you put on the record, the more potential there is for estoppel/disclaimer/inequitable conduct (however "inadvertent")? "
That's why you make your arguments consise.
Kip, you are apparently unfamiliar with qualifying words such as "appears" when used in "the reference appears to only teach xy, although the examiner is invited to tell me how it also shows z". Similarly the phrase "might be said to" or "might be interpreted to" as used in "the reference might be interpreted to say x, but applicant feels that this is a misinterpretation of what the reference is saying because to one of ordinary skill it seems that it would only teach y". How hard is that? No court is going to hang you for stating for the record how a reference appears to you, unless you blatantly lie about what you feel the reference teaches with intent to decieve and there is evidence to prove it.
"think carefully about your arguments."
Exactly. But unfortunately, incompetence runs rampant on both sides of prosecution so there is ample reason for many on the attorney side to fear.
>inequitable conduct test has devolved into
ReplyDelete>one where we ask if anything was said that
>later turns out to be incorrect.
I don't know of any caselaw supporting that extreme position. I read the "Miranda warning" as an oversimplification to make a point.
>IC jurisprudence might be less forgiving than
>you suggest.
Nah. What's "unforgiving" is the current climate of adding an IC counterclaim in almost every patent litigation. I'm hopeful that the heightened pleading requirement of Exergen will help out with the most egregious of these. Perhaps the upcoming Therasense en banc will help too.
>why on earth are you not quite convinced that
ReplyDelete>this works with the examiner? Because of
>your past failures?
In short, Yes: I'm not convinced putting an argument in the record works very well because I continue to get unreasonable rejections from Examiners.
>No court is going to hang you for stating for
>the record how a reference appears to you
Will you be hung for leaving out the magic word "appears"? If so, why -- because Examiner / public / court will mistake your opinion for a *fact* if you don't hedge?
Karen,
ReplyDeleteI agree that Gene is oversimplifying to make a point, and I am excited about the recent (and upcoming) IC decisions.
BTW I love your blog. Thank you!
"Will you be hung for leaving out the magic word "appears"? If so, why -- because Examiner / public / court will mistake your opinion for a *fact* if you don't hedge?
ReplyDelete"
According to the IC consipiracy nuts you will be. I on the other hand think it unlikely in the extreme unless you go out of your way to make it appear in your response that you were indeed stating a fact that was known to you.