# 22.

# AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION

2001 JEFFERSON DAVIS HIGHWAY, SUITE 203, ARLINGTON, VIRIGINIA 22202-3694

# 

# Telephone (703) 415-0780

Facsimile (703) 415-0786

# 

# July 28, 1999

The Honorable Q. Todd Dickinson

Assistant Secretary of Commerce and

Commissioner of Patents and Trademarks (Acting)

U.S. Patent and Trademark Office

Box 4; ATTN: Elizabeth Shaw

Washington, D.C. 20231

Re: AIPLA Comments on the Public Hearing And

Request for Comments on Issues Related To

The Identification of Prior Art During The

Examination Of A Patent Application

[64 Fed. Reg. 28803 (May 27, 1999)]{.underline}

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. Boulware

President

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]{.underline} citing a reference
that [may]{.underline}, 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]{.underline} 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]{.underline}

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 Dickinson

Acting Assistant Secretary of Commerce and

Acting Commissioner of Patents and Trademarks

U.S. Patent and Trademark Office

P.O. Box 4

Washington, 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)

Dear Commissioner Dickinson:

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. Jennings

President

25\.

IBM

### Assistant General Counsel North Castle Drive

### Intellectual Property & Licensing Armonk, NY 10504

August 2, 1999

Commissioner of Patents and Trademarks

Box 4

Patent and Trademark Office

Washington, D.C. 20231

Attention: 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 & POGUE

NORTH POINT 901 LAKESIDE AVENUE

CLEVELAND, OHIO 44114-1190

TELEPHONE: 216-586-3939 FACSIMILE: 216-579-0212

1 386:mtc

699820-301300 August 2, 1999

Mr. Q. Todd Dickinson

Acting Assistant Secretary of Commerce and\
  Acting Commissioner of Patents and Trademarks

United States Department of Commerce

Patent and Trademark Office

Washington, D.C. 20231

Re: Notice of Hearing and Request for\
[Public Comment, 1223 OC 91-93. June 15, 1999]{.underline}

Dear Commissioner Dickinson:

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]{.underline}.

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 Office

From: 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]{.underline}

My propositions:

An anticipation of a prior art does [not]{.underline} 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]{.underline} 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]{.underline} 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 Road

P\'O. Box 1600

Stamford, CT 06904

Office of General Counsel

Direct Dial: (203) 968-3451

July 30, 1999

Commissioner of Patents and Trademarks

Box 4

Patent and Trademark Office

Washington, 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-ZA02
>
> Docket 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, 1999

Dear 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 COMPANY

XEROX

Commissioner of Patents and Trademarks

July 30, 1999

Page 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 DOCUMENT COMPANY

XEROX

Commissioner of Patents and Trademarks

July 30, 1999

Page 3 of 5

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.

THE DOCUMENT COMPANY

XEROX

Commissioner of Patents and Trademarks

July 30, l999

Page 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

THE DOCUMENT COMPANY

XEROX

Commissioner of Patents and Trademarks

July 30, 1999

Page 5 of 5

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. Beck

General Patent Counsel

JEB/

29\.

Response to Request for Comments on Issues

Related 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)