# 12.

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# Subject: Response to Request for Comments

Issues Related to the Identification of Prior Art

64 Fed. Reg. 28,803 (May 27, 1999)

Comments of the Rohm and Haas Company

The following items are the comments of the Rohm and Haas Company,

Philadelphia, PA, 19106-2399, related to the above-identified Request.

Unless otherwise noted, these comments are based upon practices

within the company. The Rohm and Haas Company produces a wide variety

of specialty chemicals for the industrial, agricultural, and consumer

industries.

Rohm and Haas applauds recognition by the Patent and Trademark Office

that a problem may exist in the quality of searches conducted during

the prosecution of patent applications by the Office. We understand

that the concern is focused on the emerging technologies.

Question 1 - Is the most pertinent prior art being considered by

patent examiners during examination of patent applications?

Based upon our experience, the most pertinent prior art is being

considered by patent examiners. This is partially due to the areas of

technology most often addressed by our patent applications, that is,

chemicals and chemical processes, which are mature technologies. As a

result, the examiners we typically interact with have experience in

the technology and with its associated art. We have also found that

in the newer areas of technology, e. g., biotechnology, the

appropriate art is cited. However, we have also observed that

searches conducted by other searching authorities, particularly the

European Patent Office, appear to be more thorough and also that the

art cited by these authorities often is more relevant than that cited

by the US examiner. This may be because the EPO utilizes search

specialists.

Question 2 - Do applicants submit the most pertinent prior art that

they are aware of in connection with a filed patent application?

Again, we believe that applicants do submit the most pertinent art

they are aware of. The major reason for this is the applicant\'s

desire to have an enforceable, valid patent issue. In this day and

age, one\'s competitors often evaluate the validity of patents. It is

in the applicant\'s best interest that all valid art material to

patentability is disclosed. Another reason is that applicants take

their duty of candor very seriously. We do not have experience with

the independent inventor community. However, within the corporate

community, both at Rohm and Haas and from discussions with our

colleagues, our experience is that whenever there is any doubt about

whether or not a reference is material to patentability, it is

disclosed.

Question 3 - Are the current rules and procedures for obtaining prior

art during examination adequate and effective?

The current rules and procedures are adequate and effective. They

fairly balance the needs of the PTO for the most relevant art and the

burden on applicants to provide it. We do believe that the PTO should

not require that applicants provide a copy of issued U. S. Patents in

any Information Disclosure Statements submitted. It is an unnecessary

burden on the applicant considering that the examiner has electronic

access to all U. S. Patents from their workstations.

Question 4 - Are prior art searches typically conducted before filing

a patent application with the USPTO?

We strongly encourage conducting a prior art search prior to filing a

patent applicant. We do not want to make a significant investment in

preparing and prosecuting an application only to find that there is

relevant art which may impact the scope of the claims, or possibly the

validity of the entire patent should it issue. We do not search one

particular area of technology more than any other area. As a

multinational corporation, we search US Patents, Foreign Patents,
journal

articles, references to books, conference proceedings and other forms of

open literature. Being a chemical company, we typically search the

traditional chemical literature including: Chemical Abstracts, IFI\'s US

Patent database, Derwent\'s World Patent Index, MicroPatent\'s PatSearch

Fulltext, and, for new compositions, structure searching via the
Chemical

Abstracts Registry File, Marpat, and Questel\'s Merged Markush File.

Question 5 - Are Information Disclosure Statements frequently

submitted?

Information Disclosure Statements are almost always submitted and

include information obtained from all of the sources noted in 4,

above. This is to ensure that the most relevant art is considered by

the examiner and also to ensure the applicant complies with the

Duty of Candor. As almost all of our applications are filed in

foreign countries, searches are typically conducted on the foreign

counterpart applications. The results of such searches are routinely

submitted to the PTO.

Question 6 - Should applicants be required to conduct a prior art

search?

We strongly believe that applicants should not be required to conduct

a prior art search. The benefits of conducting a search fall

primarily to the applicant. However, requiring that a search be

conducted results in a number of issues including: how do you define

the scope of a search; who would be responsible for ensuring that

the search was conducted properly; what will be the affect on a

small entity which cannot afford to conduct a search, and how do you

monitor the quality of searches which may vary greatly. In addition,

by requiring that a search be conducted, the PTO would be adding one

more issue which could complicate any patent related litigation, a

process which is already very complicated.

The PTO examiner is required to conduct an independent search

already, which the applicant pays for as part of the application fee.

By requiring a search, the applicant would have to pay twice for the

same service.

Question 7 - Should applicants be required to submit all prior art

relied upon during the drafting of the claims of an application?

Applicants should not be required to submit such art. Much of the

art relied upon by a patent drafter may be used to obtain appropriate

claim language, to ensure that the claims do not read on patented or

disclosed technology, or for other reasons not material to the

patentability of the claimed invention. By requiring that such art

be submitted, the PTO examiner would be required to review art that,

in fact, was not material to the issue of patentability.

Question 8 - Should applicants be required to submit all non-patent

literature directed to the same field of invention attributable to,

authored by, or co-authored by the applicant?

Applicants should not be required to submit such information. For

one thing, an inventor may have spent an entire career publishing

articles on an area of technology. This could result in hundreds of

citations, none of which may be material to patentability. To be on

the safe side, such an inventor would submit all articles rather than

limit the list because even a good-faith attempt to determine those

articles which were material to patentability would leave any

resulting patent vulnerable to an inequitable conduct attack. Such a

requirement would place an unfair burden on applicants and would most

likely cloud rather than clarify for the examiner what art is

material.

Question 9 - Are there non-patent literature documents which applicants
should

be required to submit?

Other than those documents related to art material to patentability,

applicants should not be required to submit any particular type of

information. Any submissions which are not material to patentability
operate

solely to increase the burden on the applicant to provide them and the

examiner to review them.

Questions 10 and 11 - If relevant prior art is not being identified what
can

be done to obviate the problem; are there any related matters.

The PTO examiner has an obligation to conduct a thorough independent
prior art

search. The applicant has an obligation to provide any prior art the

applicant is aware of to the examiner which is material to
patentability. In

combination, these two obligations result in the most relevant art being

identified. In those areas of emerging technology the PTO should
consider two

approaches. The first is to provide additional training to those
examiners

involved with emerging technologies in order to keep them current with
the

technology. The second is to consider utilizing search specialists, as
is

done by the European Patent Office. The PTO should also consider this
second

option in connection with all of its search efforts. Specialists may be
able

to provide better quality searches in all areas of technology and
relieve the

examiner from the efforts expended in conducting searches.

Respectfully submitted,

Thomas D. Rogerson, Ph.D., Esq.

Patent Department

Rohm and Haas Company

13\.

Hello,

I am writing to comment on a particular patent, 5,604,892, that was
filed

in 1994 and granted in 1997. The subject area covered by this patent is
so

broad that it covers all relational database implementations and was

admittedly based on a widely available book on object-oriented modeling

techniques.

In 1990, I was part of a data modeling team at the Energy Management

Systems division of Control Data that came up with a hierarchical model
for

representing electrical equipment that was very similar to the model

submitted by Dave Nuttall and Bert Brehm. Our company abandoned the

development effort that we had started and licensed software from
Unified.

I was under the impression that what they were patenting were certain
key

aspects of their software, which were novel and unique. I did not get a

chance to read the patent until earlier this year. It covers much more
than

\"primary grouping\" and is so broad that it is hard to imagine anyone
who

has a relational database for power system resource information that
would

not be infringing on this patent.

Part of the problem with this patent is that Unified submitted the model
to

a US standards group, the Electrical Power Research Institute, which
formed

a task force in 1992 that included representatives from several software

vendors (including Unified) and electrical utilities. This fact should
have

been brought forth during the examination for prior art, as it would
have

demonstrated that the concepts were being applied in many different
places

and not something that was unique to Unified.

I would be happy to discuss this further if you are interested.

Leila Schneberger

17953 Osage Ct NW

Andover, MN 55304

leila@ieee.org

612.753.8494

14\.

Comments on Issues Associated with the Identification of Prior Art

During the Examination of a Patent Application

Public comment was sought on a number of questions relating to the
USPTO's interest in ensuring that pertinent art is considered during the
examination of patent applications. The discussion below relates to the
question: Should applicants be required to conduct a prior art search
and submit corresponding search results, including where they searched,
to the USPTO when filing a patent application? We believe that the
answer to this question must be in the negative.

I. Introduction

A search in any area of technology is uncertain to reveal the most
pertinent art. Of particular concern are areas of emerging technology,
such as telecommunications and computer-related arts where pertinent art
may exist in non-patent references or may not be readily searched. The
broad brush approach contemplated by the question would place a burden
on all applicants in an attempt to address the difficulties in
particular art areas.

It is unclear how such a burden would lead to an advance over the
present system. Under present law, applicants must provide the USPTO
with all information known to them which is material to patentability
and the Office is to carry out a search to find pertinent references.
Applicants who have concerns with the art, and who are able, can also
carry out a search and provide the material portion thereof. Even after
a patent issues, it can be re-examined using the procedure provided by
35 U.S.C. § 301-302. Thus, members of the public, including the
applicant, have a mechanism to address the issues raised by relevant art
that was not before the examiner during prosecution. See, [In re Portola
Packaging Inc.]{.underline}, 42 USPQ 2d 1295 (CA FC 1997).

In addition, we do not believe that the contemplated change in
applicant's responsibility can be effectively and equitably implemented
without serious and unacceptable drawbacks. Thus, we conclude that the
attendant disadvantages outweigh the uncertain improvement that may flow
from the contemplated requirement.

II\. Implementation:

Implementation of the contemplated requirement could range over a
spectrum from *pro forma* which could be satisfied, for example, by
examination of the encyclopedia at the local library, to a rigorous
approach. Obviously, a lesser obligation does not support the objective
of ensuring that pertinent prior art is available for consideration
during examination. To make a meaningful impact on the problem at hand,
the contemplated requirement must be implemented in such a way as to
give applicants significant motivation to achieve meaningful search
results.

Thus, we posit that the question contemplates rigorous implementation.
To date, the USPTO has used Rules 1.56 and 1.97-1.98 to not only shift
art related responsibility to the applicant but to define applicant's
responsibility. Thus, it appears to be inescapable that the question
contemplates an effective search and that the requirement would be
implemented under Rules 1.56 and 1.97-1.98 or regulations with similar
obligations. Serious and unacceptable drawbacks would flow from such
implementation.

> A. Effective Implementation Would Provide Fertile Ground for
> Litigation and Devalue Issued Patents

One drawback of rigorous and effective implementation would be exposure
of patentees to additional scrutiny during litigation. This exposure, to
some degree, would be a part of the contemplated search requirement
regardless of the rigor with which it was implemented. Scrutiny would be
brought to bear on a part of patent examination that can be carried out
with a variety of approaches and is highly dependent on the resources
available. We believe that effective implementation of the contemplated
requirement would result in greater uncertainty in the practice of
patent law and in the enforceability of issued patents. This uncertainty
would devalue issued patents.

The contemplated requirement would place an affirmative duty on the
applicant to carry out a search. At present the principle elements of
inequitable conduct are materiality and intent. See, [Allen Archery,
Inc. v. Browning Mfg. Co.]{.underline}, 2 USPQ2d 1490 (CA FC 1987). Also
see, [Scripps Clinic v. Genentech, Inc.]{.underline}, 18 USPQ2d 1001 (CA
FC 1991). We believe that a rigorously implemented search requirement
would add an element to the inequitable conduct inquiry. Such an element
would look to information that should have been known or was chargeable
to the applicant as a result of the required search. Inequitable conduct
is determined as a matter of law. [Kingsdown Medical Consultants, Ltd.
V. Hollister Inc.]{.underline}, 9 USPQ2d 1384 (CAFC 1988). However, the
determination of materiality and intent are questions of fact. [American
Hoist & Derrick Co. v. Sowa & Sons, Inc.]{.underline}, 220 USPQ 763 (CA
FC 1984). During litigation the sufficiency of the applicant's search
would also be a question of fact.

In some areas of technology, vast resources and an artful search
strategy are required to uncover pertinent art. However, as will be
readily appreciated, all searching is challenging to some degree.
Regardless of the technical area, the degree of success achieved by a
search depends on the resources available and the art-like skill of the
searcher. Because of the vagaries of searching, patentees would be open
to a great deal of second-guessing based on the search, including the
strategy, resources applied, sources of information searched, and the
results provided to the USPTO.

Adversarial proceedings often involve extensive searches by highly
motivated parties. At trial, applicant's search would be compared to
such later, well-resourced search. Consider an issued patent for which
more pertinent information is later found by a more refined or expanded
search. Applicant's references and files would be evaluated for
additional or alternative search terms. Applicant's search strategy and
sources of information would be questioned. Under rigorous
implementation of a search requirement, one can easily envision a
situation in which a patent is valid over the more relevant and later
found information but would be unenforceable. Of course, such a result
would also have implications in antitrust law. See, [Walker Process
Equipment, Inc, v. Food Machinery and Chemical Corp.]{.underline}, 382
US 172, 147 USPQ 404 (1965).

Thus, patent litigation would become enlarged with the exchange of
expert opinion on the artfulness and tenacity of the applicant's search.
These would be murky waters indeed which would have a great impact on
the enforceability and value of issued patents. We believe that a
consequence of the contemplated requirement would be greater uncertainty
in the practice of patent law and a decrease in the value of issued
patents. Both of these consequences are serious and unacceptable
drawbacks of the contemplated requirement and are contrary to the intent
of the USPTO in initiating this discussion.

> B. Equities of Rigorous Implementation

Another drawback of the contemplated requirement is that it would
clearly favor well-resourced applicants or those who invent for the
benefit of well-resourced assignees. Patent law in the United States has
always been impartial in its treatment of applicants. This impartiality
is clear in our provisions relating to priority of invention under which
US law rewards the first inventor, rather than the inventor with the
resources to be the first to file an application.

Unlike the present law, the contemplated requirement would place the
applicant under a duty to possess or acquire information pertinent to
the patentability of their invention. A rigorous requirement for
applicant's search would be a great burden, in fact a hindrance, to the
less well-resourced inventor. Even with a lesser requirement, the
strength of the search would naturally become a part of a patent's
value. Relevant to the present discussion, the value of a patent would
be related to the perceived ability of applicant to carry out a search.
All other things being equal, a patent to a well-resourced applicant
would be perceived as more valuable. Upon these considerations, the
contemplated requirement appears to be unjust and contrary to the
traditional unbiased nature of US patent law.

III\. Potential for Misuse

The following relates to the question already under discussion and the
follow-up question: If not (that is, if applicants should not be
required to perform a search and provide the results), should applicants
be required to disclose whether or not a search was conducted?

Under the present system, the USPTO is to carry out a search and
applicants are to conduct themselves before the Office under a duty of
candor and good faith by providing all information, known to the
applicant, that is material to patentability. This duty was placed on
the applicant in order to protect the public interest. See, [Argus
Chemical Corp. v. Fibre Glass-Evercoat Co.]{.underline}, 225 USPQ 1100
(CA FC 1985). At all times, the applicant, as the interested party, is
free to conduct a search. In crowded areas of art or in emerging
technologies, a thorough search by the applicant may be prudent. We are
hard-pressed to see the advance or value added to the present system by
sharing information as contemplated by the follow-up question. Moreover,
we believe the requirements contemplated by both questions would be
subject to unacceptable misuse.

In practice, the requirements proposed by the initial and follow-up
questions have in common that they provide examiners with information
concerning the applicant's search efforts. A grave concern for either
requirement is their possible effect on examiners. In the requirement of
the initial question detailed information is contemplated. A search that
appears to be thorough and complete, or at least appears consistent with
what the examiner considered a sound strategy, would tend to indicate
that a rigorous search by the examiner is unnecessary. In the
requirement suggested by the follow-up question, an extensive IDS,
coupled with information that a search was carried out, would have a
similar effect. The result in either case would be to decrease the
examiner's motivation to extensively search, eroding any value added to
the examination by the applicant's efforts.

We believe that this point is already well appreciated. In fact, under
the present provisions, Rule 1.97(g) specifically states that the filing
of an IDS shall not be construed as a representation that a search was
carried out. This provision attempts to maintain the separate roles of
the Office and applicant by clearly articulating that satisfaction of
applicant's duty is not to be misconstrued as the applicant having taken
on the USPTO's responsibility to search.

Thus, blurring of the line between the roles of the applicant and the
examiner contemplated by both questions would result in misuse by
applicants and examiners. The approach contemplated by either
requirement would decrease the overall effectiveness of the system,
contrary to the intend to provide pertinent art during examination.

IV\. An Alternative Approach

Patent laws must address the need to examine applications in light of
the most relevant art. Indeed, Congress faced this challenge more than a
century ago. The Patent Act of 1836 was enacted with a ready solution to
the problems of today. In cases of uncertainty or doubt vis-à-vis
patentability over the art the Secretary of State was to appoint a board
of "three disinterested persons" to decide the issue of patentability.
One of the three was to be an expert in "the particular art,
manufacture, or branch of science to which the alleged invention
appertains." 5 Stats. 117, 119, 120 (act of July 4, 1836).

Clearly, a search is the first step in a complete and satisfactory
examination of applications. We understand that the USPTO provides
extensive resources to examiners and is providing increasing access to
non-patent literature. Availability of such resources are a necessary
first step. However, today resources are only one part of being an
expert in the art.

One approach may be to supplement the resources at the USPTO and the
examiner's expertise with a dedicated search function. This approach
could be responsible for the searching aspect of patent examination in
the style of the European Patent Office. Alternately, such a function
could augment the examiner's expertise. For example, a dedicated search
function could include a core of search specialists available to assist
examiners in devising and implementing search strategies and refining
searches. These specialist could also stay abreast of information in
emerging technical areas. As experts in the field, the search function
could also provide ongoing educational opportunities to examiners.

Thus, an approach to the problem of examination in light the most
pertinent art does exist without shifting the burden of carrying out a
search to applicant. This approach could be brought to bear directly on
difficult art areas, in particular, emerging technologies. We believe
that such a supplemented search effort from within the USPTO would
provide a solution while avoiding the misuse and difficulties in
effectively and equitably implementing the contemplated requirement.

V. Conclusion

It is in everyone's interest -- the USPTO's, the public's, the court's,
and certainly not least, the applicant's, to have a well balanced patent
system issuing well examined patents. We concur with the position of the
Office that the quality of patent examination benefits when applicants
assist the examiner's in identifying information, particularly
non-patent literature, material to patentability. In that, applicants
already have a responsibility to the extent that they are aware of
material information.

It is unclear from the background or the questions, whether the USPTO's
concerns are related to its ability to perform searches, applicants not
meeting their existing obligations under the Rules, or having the
resources to properly analyze the art, however it is disclosed.
Regardless, we fail to see how the contemplated requirement would
advance the patent system.

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

15\.

Comments

of the

Software & Information Industry Association

On

Issues related to the identification of prior art

during the patent application examination process

Submitted to the

U.S. PATENT AND TRADEMARK OFFICE

August 2, 1999

In response to the \"Request for Comments on Issues Related to the
Identification of Prior Art During the Examination of a Patent
Application\" published in the [Federal]{.underline}
[Register]{.underline} on May 27, 1999 (Docket No. 99-0512128-9128-01)
by the Patent and Trademark Office (PTO), the Software & Information
Industry Association submits the following comments on behalf of its
members.

The Software & Information Industry Association (SIIA) is the principal
trade association of the software and information industry and
represents over 1,400 high-tech companies that develop and market
software and electronic content for business, education, consumers, the
Internet, and entertainment. SIIA members represent a wide range of
business interests---they create and develop new and valuable software
and software-related inventions, use software and software-related
technologies in their regular business operations, and license or
purchase software and software-related technologies from third parties.
More often than not, the software and software-related inventions
developed by our members or licensed or purchased by them from third
parties is patented technology.

In addition, SIIA also represents numerous information companies that
produce and offer a variety of database products and services. Many of
these databases are valuable search tools that the PTO examiners are
using or should be using to determine whether a particular invention is
worthy of patent protection. Consequently, SIIA and our members are
extremely interested in issues relating to the identification of prior
art during the patent application process.

The adage about not \"reinventing the wheel\" has special significance
and applicability to issues of identification of prior art in the
software-related technologies. If patent examiners do not have the
necessary patent and nonpatent prior art to search when determining the
patentability of software-related inventions, the PTO runs the very real
risk of issuing patents whose validity is highly suspect. In effect, if
the PTO fails to provide its examiners with sufficient prior art
databases from which to search, inevitably the PTO will be sanctioning
the modern day equivalent of reinventing the wheel by issuing patents on
products and processes that have are not truly novel or nonobvious.

It goes without saying that the quality of the patents issued by the PTO
are only as good as the quality and quantity of the prior art that
patent examiners have access to and are able to search. If the PTO does
not have an adequate collection of software-related prior art from which
to search, the patent examination process will become more akin to a
patent registration system and the value of the patented inventions in
these technologies will decrease accordingly. Lowered values of patented
software-related inventions will make it more difficult for patentees to
license their patented inventions and reduce the amount of compensation
they are able to receive for the licensed technology.

Inadequate prior art collections for examiners to search will also lead
to increased instances of patents being held invalid by the courts. Over
time this would result in a general loss of confidence in the patent
system and in particular in patents issued in the arts for which patents
are most likely to be held invalid. It will also unduly shift the burden
of finding the preponderance of prior art from the PTO to defendants,
who discover themselves in litigation against potentially dubious patent
infringement claims.

We recognize that defendants involved in significant patent infringement
litigation often conduct extensive prior art invalidity searches that
entail the expenditure of large sums of money and excessive amounts of
resources. We also tend to agree with the notion that most patents could
be proven invalid given an unlimited amount of time and money to scour
the world for prior art references. While we do not intend to suggest
that the PTO take a \"no holds bar\" approach to prior art searches
similar to that undertaken by such a defendant, we do believe that the
PTO should make ample patent and nonpatent prior art references
accessible to its examiners to ensure a reliable \"first line of
defense\" that provides the patent community and the public with
reasonable assurances that the PTO is issuing valid patents.

At present, many who practice in the software and software-related
technologies praise the PTO for investing substantial amounts of time
and energy into addressing prior art issues relating to software
patents, but note that significant progress still needs to be made in
the examination process to ensure that the PTO provide a better \"first
line of defense.\" Specifically, we have heard numerous concerns voiced
by those in the software industry that the PTO has insufficient
collections of nonpatent prior art in the software and software-related
technologies and that this shortcoming has led to the issuance of some
patents of questionable validity.

SIIA recognizes that few patents have been issued in the software fields
and thus, there is little patent prior art for examiners to search. We
also acknowledge that nonpatent prior art related to software is
extremely difficult to find because there is such a limited body of
literature in this area and much of it is not publicly available.

Therefore, based on the software industry\'s comments and the unique
nature of the software industry, it would appear that the most
significant and immediate action that the PTO could take in addressing
the concerns of the software industry is to take steps to improve its
nonpatent prior art collections relating to software and
software-related inventions. Given the rapid progress in software and
software-related technologies and the fact that the software industry
tends to publish less frequently than many other industries, this
objective certainly presents an enormous challenge to the PTO.

Before determining how the PTO will face this challenge we once again
caution the PTO not \"reinvent the wheel.\" In 1992 the Software Patent
Institute (SPI) was created to ensure that patent examiners had at their
disposal the necessary nonpatent prior art information to search when
making patentability determinations relating to software-related
inventions. The Software Publishers Association (SPA)---one of the two
predecessor organizations that merged to form the SIIA---played a
significant role in the formation, operations, and funding of the SPI.
Since 1992, the SPI has collected prior art references and now includes
over one million pages of online material, which is generally comprised
of pre-1988 prior art bibliographic references.

SPI had been funded in part by the PTO and in part by the software and
software -related industries, until it was essentially terminated in
1997. Since that time, SPI has continued to maintain its collection and
slowly add to the collection through small donations provided by some
organizations. We understand that the SPI collection is still used
occasionally by examiners today.

Since its inception there has been much criticism of the SPI. Much of
this criticism has been that the SPI collection is difficult to search
and not user-friendly. While parties may differ on the reasons, by all
accounts the SPI did not achieve its goal.

We think that the SPI experience is extremely relevant to the PTO\'s
[Federal Register]{.underline} inquiry. Before taking action to address
the prior art issues raised in the [Federal Register]{.underline}
notice, the PTO should look into previous efforts to address
identification of prior art issues to determine what has been tried
before and why it did or did not work. This inquiry should certainly
focus on the efforts of SPI, but also should explore other previous
efforts by the PTO to increase the reserve of prior art materials and
similar efforts by foreign patent offices---most notably the European
and Japanese Patent Offices---to address these prior art issues. A
thorough understanding of past and present attempts to address these
prior art issues will prevent the PTO from repeating past mistakes.

To this point, SIIA comments have focused on the nonpatent prior art
made available to patent examiners in the software arts. It is important
to note that the quality of issued patents is also highly dependent upon
the skill, education, and experience of the patent examiners whose job
it is to formulate and conduct appropriate prior art searches. It is
essential that the PTO continue to hire competent and experienced patent
examiners in the computer science technologies. Equally as important is
that the PTO compensate these examiners sufficiently to discourage them
from leaving the PTO once they have acquired the necessary tools to be
productive members of the patent examining corps.

All too often patent examiners overlook nonpatent and foreign prior art
references. To combat this practice, the PTO should place special
emphasis on the use of nonpatent prior art references by examiners. This
is especially true in the case of software-related inventions for which
the majority of prior art is likely to be in nonpatent prior art
collections. In particular, the PTO could encourage examiners to create
their own private stock of nonpatent prior art and to share them with
less experienced examiners. These examiners should also be alert to
burgeoning areas of new technologies and create new digest
classifications and subclasses for these technologies when appropriate.

Further, the PTO should ensure that they have a sufficient number of
experienced examiners to handle the influx of patent applications in the
software-related arts and should devote sufficient amount of time to
training these examiners on effective prior art search techniques and on
recent advances and technological developments. By hiring additional
patent examiners and providing necessary training the PTO may be able to
ease the time constraints and production goals which presently limit the
amount of time an examiner can spend examining an application. This
should give examiners additional time to search for and find relevant
prior art. This is especially important in an art that is comprised
mostly of nonpatent prior art references, such the computer software
field.

SIIA is aware of several suggestions made by others on how to improve
the identification of prior art. Some individuals have suggested
altering standards for determining when a patent applicant must disclose
prior art to the PTO, requiring patent applicants to conduct their own
prior art searches and disclose the results to the PTO, or shifting
burdens of proof and presumptions relating to patent validity which now
benefit patentees. Others have recommended less dramatic changes in the
system, such as changing the time allotted to examiners to search and
examine pending applications and altering the examination responsibility
of examiners. SIIA believes that it would premature to make these or
other changes in the patent examination system or litigation process.
While it is possible that some of these changes may prove to be
worthwhile, further study is needed into the effects that such changes
would have on the patent system before embracing these suggestions.

We caution the PTO to use particular care when evaluating those
suggestions that would further burden patent applicants and their
agents. Recent changes in patent law have already overburdened
inventors. The costs and time associated with prosecuting and defending
inventions is greater than ever. Further changes to the patent
examination and/or litigation process could further encumber inventors.

SIIA has no quick fix that resolves the prior art concerns raised by the
industry. We do, however, have several suggestions for the PTO to
consider. First and foremost, SIIA believes it may be valuable to
establish a task force comprised of industry and government
representatives and other interested parties to further examine the
prior art issues raised by the PTO in its [Federal Register]{.underline}
notice. It is likely that the solution to the industry\'s concerns will
not be resolved by one proposal, but rather by a plan of attack that
encompasses a combination of different approaches implemented in varying
degrees. This working group could identify the particular problems that
need to be addressed, evaluate the different possible proposals the
problems, and determine what might be the right recipe for success.

Should the PTO decide to establish a task force to address these prior
art issues, SIIA would be pleased to participate in such an effort. SIIA
and its members would bring valuable insight and experiences to the
table, as not only does SIIA represent software companies which own,
license, and use patented software technology, but we also represent
numerous database companies that have vast experience developing
user-friendly, efficient databases.

Additionally, SIIA and its members are willing to participate in efforts
by the PTO to develop educational and training programs for its
examiners in the software related fields. Such educational programs
could be conducted either at the PTO campus or at an off site training
facility.

Because the development of new and comprehensive nonpatent prior art
databases is an essential part of improving the system for identifying
prior art in the software technologies, its essential that the database
producing industries be encouraged to create databases that meet the
PTO\'s demand. At present, because there is no federal law that would
adequately protect databases of the type the PTO needs, there is little
incentive for companies to invest large sums of time, money, or
resources to develop such databases.

There is a bill pending in Congress that would fill this void. The
bill---H.R. 354, the \"Collections of Information Antipiracy
Act\"---would encourage entities to create and disseminate databases by
providing them with protection against market-harmful misappropriations
of their databases. We urge the PTO to support this bill.

Another bill pending in Congress---H.R. 2654, the \"American Inventors
Protection Act of 1999\"---also will likely have beneficial effects on
the identification of relevant prior art if enacted. The new bill, H.R.
2654, is the same as H.R. 1907, except that Title VI on the Patent and
Trademark Office has been removed in order to avoid the delay of
sequential referral to the Government Reform Committee. H.R. 2654
contains provisions for publication of patent applications eighteen
months after filing and expanded third-party participation in the
reexamination process that should enable relevant nonpatent prior art
references to be more widely disseminated and more accessible to the
patent examining corps. We urge the PTO to support H.R. 2654.

In sum, at this stage, SIIA believes that the best way to way to address
the problems related to identification of prior art in the
software-related arts is to improve examiner training and the number and
accessibility of software databases. Before proceeding, however, SIIA
recommends studying the problems further and, if appropriate, creating a
task force to specifically address these issues.

In closing, we commend the PTO for making the effort to examine these
very important issues related to the identification of prior art and
look forward to working with the PTO on any initiatives it may take up
to address these issues.

Keith Kupferschmid

Intellectual Property Counsel

# Software & Information Industry Association

16\.

RESPONSE OF THE SECTION OF

INTELLECTUAL PROPERTY LAW,

AMERICAN BAR ASSOCIATION

TO

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

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

These comments represent the views of the Section of Intellectual
Property Law (IPL Section) of the American Bar Association. The comments
have not been approved by the Board of Governors or the House of
Delegates of the American Bar Association, and therefore, should not be
construed as representing the policy of the Association.

[I. General Comment]{.underline}

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

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

[II. Responses to Specific Questions]{.underline}

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

> RESPONSE: To obtain any information more reliable than anecdotal
> comments and general feelings of some practitioners, the Section
> believes that it would be necessary to have a study made of court
> cases and Patent Office Re-examination records to ascertain the
> percentage of patents in which validity was challenged, either in
> litigation or re‑examination, that were held invalid on the basis of
> newly found prior art. The Section\'s Committee 103 (Patent and
> Trademark office Affairs ‑ Patents) is considering undertaking such a
> study in the coming year.
>
> The Section does note that in some cases plural patents have issued
> with similar or identical claims; and the Section recommends that some
> action be taken toward improving interference searches in the Office.
>
> The Section also notes that in a number of cases, the prior art cited
> by Examiners in initial Office Actions is not very pertinent. This is
> likely due to the limited time available to Examiners for examination
> of each case.

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

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

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

> RESPONSE: The Section believes that current Rule 56 and Chapter 2000
> of the MPEP provide the best overall arrangement for obtaining prior
> art from the applicant.
>
> As for obtaining prior art by the Examiner, the Section considers that
> the search facilities in the Office regarding U.S. patents are
> adequate. However, the Section believes the foreign art could be
> better classified and that the Trilateral Offices (USPTO, JPO and EPO)
> should continue to work towards a more cooperative universal searching
> system.
>
> In this regard the Section has passed the following resolution:
>
> \"RESOLVED, That the Section of Intellectual Property Law favors, in
> principle, making foreign prior art available, in a conveniently
> accessible form, to examiners and to the public, and
>
> \"Specifically, the Section urges the adoption of a policy in the
> Patent and Trademark Office of resuming its prior practice, which was
> discontinued in October 1995, of placing paper copies of all foreign
> patent documents into examiners and public search drawers according to
> the U.S. Classification system; and that this also be done for all
> foreign patent documents which were received by the office from 1995
> to the present.\"
>
> In certain technologies, such as computer software and biotechnology,
> a large amount of non‑patent information exists. However, much of this
> is searchable through electronic databases; and these databases should
> be made available to the Examiners. Also, the Office should keep
> abreast of new technologies that could be used to enhance electronic
> searching.

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

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

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

> RESPONSE: This information is best obtained from the Examination
> Corps.
>
> Individual attorneys can only cite their own personal experiences.
> Further, any attorney who is questioned on this matter can be expected
> to say that it is the attorney\'s practice to advise the client
> regarding the Duty of Disclosure and that an Information Disclosure
> Statement is always filed whenever material information comes to the
> attention of the attorney.
>
> Some attorneys submit a statement as to whether a preliminary search
> was or was not done.

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

> RESPONSE: The Court of Appeals for the Federal Circuit has stated, in
> a footnote, that as a general rule there is no duty to conduct a prior
> art search [FMC Corp. v. Hennessy Industries, Inc.]{.underline} 836
> F.2d. 836, 5 USPQ 2d 1272 (Fed. Cir. 1987).
>
> Since not all prior art searches have the same reliability and since
> uniform search standards cannot be established, it is not seen that
> requiring a search by the applicant would be of any real benefit to
> the Examiner.
>
> While applicant searches in some technologies may be of help to an
> Examiner, this would not be the case in all technologies. However, it
> would not be proper, and in fact would be very difficult, to define
> those instances where an applicant search would be required.
>
> Also, to require an applicant to identify the areas in which a search
> had been made, could lull an Examiner into omitting such areas from
> the Examiner\'s own search.
>
> Finally, if someone later searches in an area where that the applicant
> had searched, and finds a reference that the applicant had missed, an
> unfair presumption may arise that the applicant knew of that reference
> and deliberately withheld it.
>
> For the foregoing reasons, a search should not be required of the
> applicant prior to filing an application and if one had been made the
> applicant should not have to identify the areas searched.
>
> An applicant who has complied with the current Duty of Disclosure
> requirements can be expected to do no more in order to help the
> Examiner; and an applicant who fails to comply with the current Duty
> of Disclosure requirements faces very grave consequences.
>
> Ultimately, under current U.S. patent practice, it is the
> responsibility of the Office to make a search. Since the Office is
> supported by user fees, applicants have the right, in exchange for
> their fees, to expect a proper search from the Office.

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

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

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

> RESPONSE: The category \"directed to the same field\" is vague and
> overbroad. Rule 56, which defines citable information as that which is
> \"material to patentability\", is much more practical and reliable,
> particularly since part (b) of the rule also defines information which
> is \"material to patentability\".
>
> Moreover, the matter could get out of hand in cases where an inventor
> has written a great number of papers or where there are several
> inventors , each of whom has written many papers in the relevant
> field.

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

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

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

> COMMENT: Please see RESPONSE to questions 1 and 2.
>
> In addition, better cooperation among the trilateral Offices should
> provide a significant improvement since the majority of U.S. patent
> applications are also filed in foreign offices.

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

COMMENTS:

> a\) The Examining corps should be polled to see whether the
> Information Disclosure Statements they are receiving are useful and,
> if not, what can be done to make them more useful.
>
> b\) A potential problem exists as a result of the [In re Portola
> Packaging, Inc.]{.underline} 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir.
> 1997), in that there may be an incentive for an applicant to cite
> excessive amounts of prior art, without comment, to make it of record
> so that it cannot later be used as a basis for a reexamination
> request. However, pending a change by court decision, the practice
> adopted by the Office in its Federal Register Notice of March 31,
> 1999, which is now in place in the office, whereby reexamination of a
> patent may be ordered based on references of record which were neither
> expressly relied upon to reject any claim of the patent nor cited and
> discussed in a prior related PTO proceeding, would seem adequate to
> handle the problem.
>
> c\) Regarding the problem of applicants citing a large number of
> references without comment on relevance, this should not really be a
> problem to an Examiner. The number of patents in the classes and
> subclasses that the Examiner must search on his own is much larger
> than the number that any applicant cites; and there is no statement of
> relevancy in regard to those patents.
>
> d\) As a suggestion, instead of focusing on individual applications,
> which brings into question the specter of Rule 56, it may be more
> productive for the office to work with the public at large to develop
> better search facilities and techniques. For example, the Office might
> consider setting up a Committee of Experts from relevant industries
> that deal on a regular basis with the handling of large amounts of
> information. This Committee could meet from time to time with Office
> representatives and exchange ideas on possible improvements to search
> systems, machines and/or techniques.

17\.

![](media/image1.png){width="1.4465277777777779in"
height="0.8319444444444445in"}

August 9, 1999

Ms. Elizabeth Shaw Via Electronic Mail & Facsimile

Commissioner of Patents and Trademarks

Box 4

Patent and Trademark Office

Washington, DC 20231

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

Dear Ms. Shaw,

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

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

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

(a) Provide support for your conclusions and identify the following:

> \(i\) The area(s) of technology most affected; and
>
> \(ii\) The type(s) of prior art most overlooked by the USPTO,
> including but not limited to United States patents, foreign patent
> documents, and nonpatent literature.
>
> \(b\) Identify why you perceive that patent examiners are not
> considering the most pertinent prior art.

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

Ms. Elizabeth Shaw

November 13, 2023

Page 2

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

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

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

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

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

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

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

Ms. Elizabeth Shaw

November 13, 2023

Page 3

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

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

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

(a) Discuss in detail any idea for addressing this problem effectively;

(b) Explain how the proposal(s) should be implemented;

(c) Identify who should bear the cost; and

(d) Indicate any potential advantages and drawbacks for each suggestion.

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

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

Sincerely,

/s/

Bruce Lathrop

Business Attorney

Registration No. 41,929

BL:ss

**18.**

WRITTEN COMMENTS:

ON ISSUES RELATED TO THE IDENTIFICATION OF PRIOR ART

DURING THE EXAMINATION OF A PATENT APPLICATION

Submitted by:

Joy L. Bryant, Director and President

Mark R. Buscher, Esq., Director and Vice-President

Joseph A. Marasco, Director

On behalf of:

#### The National Association of Patent Practitioners

##### August 2, 1999

Responsive to the notice appearing in the Federal Register at Volume 64,
number 102, Thursday, May 27, 1999, pages 28803-28806, the National
Association of Patent Practitioners (NAPP) hereby submits written
comments on issues related to the identification of prior art during
examination. The NAPP is a nonprofit organization dedicated to
supporting patent practitioners and other individuals working in the
field of patent law, in matters relating to patent law, its practice,
and technological advances. Seventy-five percent (75%) of our members
are registered patent practitioners whose practice is directed primarily
toward patent prosecution. As part of our mission, we aim to create a
collective, nationwide voice to respond to proposed changes in the
patent statutes, rules, and PTO operations with a view to their impact
on patent prosecution practice. With this in mind, we appreciate the
opportunity to provide our comments and suggestions on this important
matter.

[Question 1]{.underline}

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

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

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

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

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

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

## Question 2

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

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

## Question 3

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

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

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

## Question 4

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

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

The most frequently used Internet search sites are the USPTO and IBM
websites. Other commercial search providers include: Lexis, NERAC,
Corporate Intelligence, Derwent, and Dialog. In addition to these
on-line resources, some applicants and practitioners also use APS
available at the USPTO and the depository libraries.

## Question 5

> Please indicate whether Information Disclosure Statements are
> frequently submitted and, if so, which of the following types of prior
> art documents are included:
>
> \(a\) United States patents;
>
> \(b\) foreign patent documents and PCT publications; and
>
> \(c\) Nonpatent literature, including but not limited to journal
> articles, conference papers, corporate bulletins, and internet
> publications.
>
> If applicable, please explain why any of the aforementioned type(s) of
> prior art documents are not normally submitted to the USPTO.

Response: Yes, Information Disclosure Statements are frequently
submitted. As stated above, the modern practice is to submit more
documents rather than less. All of the above-mentioned types of
documents are included as appropriate and if in the
applicant/practitioner's possession. Some practitioners, in recognition
of the fact that examiners primarily review U.S. patents make an extra
effort to submit foreign patent and nonpatent documents along with
copies of pages from Internet websites.

## Question 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.

Response: No, applicants should not be required to search. Applicants
already pay for a search by the USPTO in the form of an application
filing fee. Applicants should not be further economically burdened by
having to conduct their own search. While there are many good reasons
for an applicant to conduct a search, that does not warrant imposing a
mandatory obligation to conduct a search.

Moreover, the nature of the burden is unclear. For example, how much
searching would be required and what type of search (patent, non-patent,
Internet, foreign?) would be required? If any amount would meet the
proposed requirement, then applicants could search in one shoe of one
subclass: a result that obviously defeats the intent of the requirement.
On the other hand, if a "reasonable" or "complete" search is required,
what standard will be used to determine reasonable or complete. How
intensive is a "reasonable" search? Will applicants be required to
either become, or hire, skilled searchers in order to be eligible to
apply for a patent? Such a burden is unacceptable and will discourage
the filing of patents. Of course, a reduction in patents will reduce the
flow of public knowledge and slow the advancement of the useful arts: a
predicament that is contrary to the sine quo non of the patent system.

Regardless of the standard employed, the existence of a burden to search
by the applicant will significantly enlarge the playing field for
allegations of inequitable conduct. Every patent from the sub-class
which applicant attests has been searched that is not submitted to the
USPTO is a potential basis for a charge of inequitable conduct or fraud.
The assertion "why didn't you submit this patent to the USPTO, after all
we found it in the sub-class you said you searched" will having a luring
appeal to the uninitiated judge or jury. Even if the charge is not
successful, the patentee will be forced to spend the money to litigate
the issue. Similarly, what is to stop an accused infringer from
asserting that applicant deliberately omitted a relevant search area and
thus the applicant committed fraud or inequitable conduct. No matter
what standard is used, an accused infringer can always allege that the
applicant searched too little, searched in the wrong area, submitted too
much information, or didn't submit enough information as a basis for a
claim of inequitable conduct. In short, the cost of obtaining and
enforcing a patent will go up and the chance of a patent being held
unenforceable solely because hindsight is 20/20 will rise.

Other adverse consequences include applicants taking an overly
precautionary stance and submitting entire sub-classes to the USPTO.
Honest applicants, in a desire to avoid the appearance of wrongdoing,
would be encouraged to file a massive submission; e.g., every document
retrieved in the search. Picking and choosing which documents are "hits"
from a search is a decision that begs for criticism by an adversary in
any subsequent legal proceeding. Not only would such large submissions
be unhelpful to the examiner (the examiner already has the sub-class to
review) they would also create added burdens on the USPTO in paper
handling, moving, and storage.

In exchange for all these added costs, risks, and disincentives from
using the patent system, the requirement to conduct a search will bring
little benefit to the USPTO. The majority of applicants, it is believed,
already voluntarily submit the fruit of their searching efforts to the
USPTO in an IDS. There is little to be achieved by this proposal.
Moreover, strategies for dealing with the search requirement are likely
to render it of very little value to the examiner. For example, flooding
the examiner with documents in order to minimize the risk of an
inequitable conduct charge or searching effectively nowhere to avoid
having "seen" but not cited a relevant reference. It should be
remembered that applicants presently have a duty under Rule56 to
disclose material information to the examiner. This duty already brings
relevant documents to the examiner.

Finally, shifting the burden to applicants to perform a search starts
down the path of a registration system; as opposed to the present
examination system. Examiners should not rely on the searches of
applicants, nor should the procedures nurture the idea that a less
vigorous search by the examiner is acceptable. Part of the basis for the
strong presumption of validity of a U.S. patent is the very nature of
the present examination system. Weakening examination raises the
possibility of a lessening in the strength of the presumption of
validity.

## Question 7

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

Response: No, the proposal should not be adopted or implemented for
reasons similar to those expressed in response to question 6. For
example, the burden being placed on the applicant is too unclear and
uncertain. What is the scope of "relied upon"? When does an applicant
merely read or review a reference and when does an applicant rely upon
it in drafting claims? Is there a difference? Alternatively, the
applicant is not normally the person drafting the claims. This
requirement then, would essentially demand that the patent
practitioner's view of the patentability of the claims be set forth.
Worse, by identifying patents that were "relied upon", the applicant
could be viewed as stating what is believed to be the closest prior art
and presumably what the claims do not cover. In short, both the scope
and implication of complying with such a requirement are unclear and
prone to second-guessing and attack by subsequent adversaries.

Moreover, the unintended result of this proposal will likely render it
ineffective. Applicants may take an overly broad and cautious view of
the requirement and submit massive amounts of documents in order to
insulate themselves from a charge of inequitable conduct. Such a sea of
documents neither helps the examiner nor relieves the USPTO's burden in
paper handling and storage.

Finally, most applicants, we believe, already list "close" prior art
that was considered in drafting the claims in the background of the
invention and/or in an IDS. Again the actual improvement in prior art
collection is believed to be insignificant and certainly not worth the
costs and risks imposed by adopting the proposed requirement.

## Question 8

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

Response: No, this proposal should not be adopted as too unclear and
repetitive to Rule 56. In particular, what is the scope of "field of
invention". If the invention is in a crowded art, does that restrict the
field of the invention since only small changes are needed for
patentability? Rule 56 already requires such documents that would raise
a prima facie case of unpatentability to be submitted. What more does
the examiner or the USPTO need? As stated in questions 6 and 7, imposing
this new burden on applicants is not believed to produce significant
benefits to the prosecution of patents, but will produce new risks and
costs for applicants.

## Question 9

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

Response: No literature documents, other than those required under rule
56, should be required to be submitted in connection with the
prosecution of a patent application. Why would the USPTO need documents
that do not raise a *prima facie* case of unpatentability? Documents
less relevant than the rule 56 standard serve no useful purpose in
examination, regardless of whether they are patent or nonpatent
literature. As stated above, the expected benefit from such a proposal
is believed to be very small, while the burdens on both the applicant
and USPTO would be significant.

## Question 10

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

Response: We believe that the most relevant prior art is generally being
identified during the course of prosecution. The only suggestion is to
clarify that examiners can and should search on the Internet, when
appropriate.

## Question 11

> Please discuss any related matters not specifically identified in the
> above questions. If this is done, parties are requested to:
>
> \(a\) Label that portion of the response as "other Issues";
>
> \(b\) Clearly identify the matter being addressed;
>
> \(c\) provide examples, where appropriate, that illustrate the matter
> addressed; and
>
> \(d\) Identify any relevant legal authorities applicable to the matter
> being addressed; and
>
> \(e\) Provide suggestions regarding how the matter should be addressed
> by the USPTO.

Other Issues: We believe that applicants/practitioners are fulfilling
their obligation to submit the most pertinent prior art through an IDS
during the course of prosecution in accordance with Rule 56. In
addition, we believe that examiners for the most part are doing an
adequate job in searching the prior art for older, established
technologies. Our concern arises with the analysis of the prior art once
it is in the examiner's possession. We are concerned that the examiners
are not receiving the training and supervision that they need in order
to identify the most relevant references or portions thereof when
formulating their office actions. We would like to suggest that the
USPTO allow examiners more time to review the office actions prior to
mailing and that examiners and SPEs be held more accountable for the
quality of their work.

19\.

# 2 August, 1999

REGARDING THE PUBLIC HEARING BEING CONDUCTED BY THE UNITED STATES PATENT
AND TRADEMARK OFFICE REGARDING THE ISSUE OF IDENTIFICATION OF PRIOR ART
DURING THE EXAMINATION OF A PATENT APPLICATION

To Whom It May Concern:

My name is Dr. David R. Huff. I am an Assistant Professor of Turfgrass
Breeding and Genetics at the Pennsylvania State University, University
Park, Pennsylvania. I hold Doctorate and Masters degrees in Genetics
from the University of California and a Bachelor of Science in
Agriculture from Michigan State University. At the national level, I
have served as a member (1996-1998) and an alternate member (1994-1996)
of the National Grass Variety Review Board; as a member (1996-1998) and
Chair of the Biotechnology Subcommittee (1996-1998) of the National Crop
Germplasm Committee; and, as President (1994-1996), President-Elect
(1992-1994), and Executive Secretary (1990-1992) of the Grass Breeders
Work Planning Conference. In addition, I have served the turfgrass
industry at the national level as a member of the Molecular Marker
Committee (1997-1998) of the Turfgrass Breeders Association and as
Visiting Scientist (1993-1994) to the United States Golf
Association-Greens Section Research Committee. I have authored 64
scientific articles (including peer-reviewed, book chapters,
proceedings, and abstracts) and my scientific research has been cited by
other scientists 144 times (from 1991 to 1998) according to Citation
Index.

I ask that my following comments be entered into the public record of
the current public hearing concerning the issue of Identification of
Prior Art During the Examination of a Patent Application. I applaud the
efforts of the USPTO to self-examine its practices of identification of
prior art during the examination of a patent application.
Self-examination may, at times, be a difficult and even painful process
but it is often a necessary, an enlightening, and ultimately a
beneficial process as well.

I will address each of the 11 Questions posed by the USPTO on their web
site (www.uspto.gov) related to this public hearing. During my
responses, I will refer to a specific example that I perceive to
represent an example where the identification of prior art during the
patent examination process was less than complete. The example is US
Patent 5,912,412; Entitled: Varieties of Poa annua; Inventor: White,
Donald B.; Assignee: Regents of the University of Minnesota; Filed:
September 12, 1996; Appl. No. 711913; Awarded: June 15, 1999; Containing
41 Claims. Basically, US 5,912,412 was awarded for an invention that has
been commonly known, utilized, commercially cultivated, and extensively
documented since 1927 to the present. I perceive that the oversites in
prior art identification demonstrated by this example have application
to a wide variety of technology and thus, is relevant to the discussion
at hand. For clarity of my response, I shall use the definition of prior
art found in 35 U.S.C. 102(b) and I have also attached a copy of the 11
questions on page 9.

The following are my responses to the 11 questions posed by the USPTO
(www.uspto.gov) related to this public hearing:

1\. The most pertinent prior art is apparently not being given full
attention by patent examiners during examination of patent applications.
The above example (US 5,912,412) is clearly illustrative of my opinion.
Not only are there numerous examples of prior art that extensively
teaches toward the inventions claimed in US 5,912,412; but there are
additional examples of prior art that describe the inventions and
explain their underlying mechanisms and processes in greater detail than
the invention claimed in US 5,912,412.

\(a\) Support for my conclusions are as follows. Basically, US 5,912,412
claims the invention of cultivars of perennial types of a grass Poa
annua which have a restricted flowering habit for use as turfgrass. The
existence of prior art relating to the Claims of US 5,912,412 include
the appended list of nonpatent literature. This list of nonpatent prior
art literature describes, teaches, and offers examples of the following:

• the beneficial attributes of perennial Poa annua for use as turf
(golf, athletic fields, lawns) including, but not limited to, prostrate,
perennial growth habit, tolerance to close mowing heights, a restricted
period of seed development, that perennial Poa annua provides excellent
turf quality for golf green putting surfaces, fairways, and tees,
athletic fields, lawn bowls, cricket pitches, home lawns, grass parking
lots, etceteras.

• plant breeding programs that illustrate the development of perennial
Poa annua cultivars for use as turf (golf, athletic fields, lawns, etc.)
and as well as examples of cultivars of Poa annua for use as turf.

• detailed descriptions of the inherent biology and the evolutionary
process that results in perennial Poa annua and its associated
morphology and phenology including: restricted flowering habit; seasonal
flowering habit; flowering predominately occurring in the spring season;
flowering flushes separated by 4 weeks or 8 weeks; reduced flowering
compared to annual types; reduced flowering in the summer; flowering
induced by exposure to cold, short day length, or long day length;
flowering unaffected by daylength; flowering exhibiting a facultative
vernalization; increased seed production of plants subjected to the
cold; the production of secondary tillers; the production of secondary
flowering tillers; and, the low, dense, spreading, stoloniferous,
decumbent, clump, prostrate vegetative growth habit of perennial Poa
annua.

The above examples of prior art, either alone, or in combination provide
substantial and overwhelming evidence, when applied to US 5,912,412,
that there may be an apparent problem regarding the identification of
prior art during the examination of patent applications. Moreover, the
inventions claimed in US 5,912,412 are stated to be derived from the
wild type (annual Poa annua), when in fact, the inventions claimed are
nothing more than a crude description of the naturally occurring
variation that resides within the species as a whole, coupled with
methods of developing improved cultivars that have been previously
described for perennial types of Poa annua for use as turf (see appended
citations). In addition, this naturally occurring variation, ranging
from annual to perennial types of Poa annua, along with their respective
associated traits such as flowering habit, has provided one the of best
known and widely cited examples of evolution of life history traits to
date.

i\) Areas of technology most affected, as per my example, are any and
all technologies related to: biometrics, plant breeding, plant genetics,
transmission genetics, cultivar development and improvement, plant
physiology, plant phenology, plant growth and development, turfgrass
science, evolution, ecology, botany, and organismal life history.

ii\) The type of prior art apparently not considered by the USPTO, in
the above example, is the nonpatent literature, including scientific
journals, professional journals, trade journal articles, conference
proceedings, conference abstracts, regional society reports, state
project reports, progress reports to external funding agencies, foreign
government reports, and foreign industry reports.

\(b\) I perceive that patent examiners are not considering these
pertinent examples of prior art simply because they are unaware of their
existence and therefore do not have the opportunity to consider them or
possibly are unfamiliar with the technology.

2\. I suspect that applicants are not submitting the most pertinent
prior art that they are

aware of in connection with a filed patent application, i.e. the
applicant's authored nonpatent literature.

\(a\) I support my conclusions by citing the appended pieces of prior
art, many of which, in my opinion, should have been common knowledge to
the inventor and possibly the assignee of US 5,912,412 because several
of my cited references for the example US 5,912,412 were authored by the
inventor in the form of progress reports to an outside funding agency
(the United States Golf Association) dating back to 1985.

\(b\) I perceive that applicants are not submitting the most pertinent
prior art because either i) they do not believe that it is pertinent
information or ii) they do not believe such information is in the realm
of public knowledge when in fact it is.

3\. Referring to my example, the current rules and procedures for
obtaining prior art

during the examination of a patent application are apparently less than
satisfactory.

\(a\) I believe less reliance should be placed on the applicant to
supply the all of the necessary prior art and more resources be given to
the examiner(s) to expand beyond their "normal" avenues of prior art
search to include more extensive non-patent literature, including access
to more technologically specific nonpatent literature data bases.

\(b\) Clearly, if the expertise or resources necessary to identify and
evaluate prior art does not exist within the USPTO for specialized
technologies, then there needs to be some other means by which to obtain
the expertise or resources. I propose the following changes to the rules
or procedures to improve the identification of pertinent prior art.

i\) Improve the interaction, cooperation, and communication among the
Federal Government\'s Departments and Agencies in order to access a
broader array of nonpatent literature resources, particularly within
specialty areas of technology. For example, the Office of Plant Variety
Protection (PVP) is extremely knowledgeable in searching for prior art
pertaining to plant cultivars; to issues regarding the uniformity,
distinctiveness, and stability of plant cultivars and breeding lines;
the development of cultivars within sexually-propagated plant species
(for example, the perennial Poa annua of US 5,912,412); and, the
literature resources necessary to distinguish between
naturally-occurring variation within a plant species and those
characteristics claimed for an invented cultivar within that species
(which was apparently not the case in the awarding of US Patent
5,912,412). Thus, the PVP Office has knowledge of, access to, and
experience with searchable data bases that may be unknown or otherwise
unavailable to Utility patent examiners.

ii\) I assume the USPTO is aware of those resources developed by other
Federal Government\'s Departments and Agencies that have
technological-specific resources and expertise regarding specific
technologies. For example, "the Current Research Information System
(CRIS) is the U.S. Department of Agriculture\'s (USDA) documentation and
reporting system for ongoing and recently completed research projects in
agriculture, food and nutrition, and forestry. Projects are conducted or
sponsored by USDA research agencies, state agricultural experiment
stations, the state land-grant university system, other cooperating
state institutions, and participants in USDA\'s National Research
Initiative Competitive Grants Program. CRIS is a part of Science and
Education Resources Development (SERD), Cooperative State Research,
Education, and Extension Service (CSREES)." Information systems such as
CRIS represent a valuable resource for the identification of prior art
and would enhance the capabilities of the USPTO.

iii\) The USPTO should re-evaluate the nonpatent literature data bases
currently available to Patent Examiners and consider the possibility of
adding or expanding access to searchable data bases contained within the
public, non-government sector of society. For example, the turfgrass
industry is a small yet increasingly important part of the United
States' increasingly urbanized society. As a result of its increasing
role in society, the turfgrass industry (including the United States
Golf Association - Green Section Turfgrass Research as well as other
related industries) along with individuals within the turfgrass
industry, have supported the development of the Turfgrass Information
Center located at the Michigan State University (100 Library East
Lansing, MI 48824-1048 Voice: (517) 353-7209 FAX: (517) 353-1975 E-mail:
tgif@pilot.msu.edu). "The Turfgrass Information Center (TIC) at Michigan
State University contains the most comprehensive collection of turfgrass
educational materials publicly available in the world. TIC has over
59,000 records in its primary database (TGIF-the Turfgrass Information
File). A specialized unit of the MSU Libraries, the Turfgrass
Information Center operates under the guidance and support of the TIC
Advisory Council, a volunteer group of industry representatives. In
order to aid a highly specialized turfgrass industry, the Turfgrass
Information Center collects materials on turf research, turf culture,
and the management of turf facilities, such as golf courses, parks,
sports fields, lawns, sod farms, roadsides, institutional grounds, and
other landscapes. TIC develops and continually refines an online system
to provide access to the collected materials, as well as structured,
precise access to the emerging electronic resources of the World Wide
Web. TIC also assists users of the collection, by helping them identify,
locate, and acquire materials."

I believe that non-patent literature data bases, such as TIC, either
exist or will soon exist to serve other, highly-specialized technologies
as the need for information increases. It would benefit the USPTO to
become aware of these technological-specific nonpatent literature data
bases and utilize them to the fullest extent in the identification of
prior art during the examination of a patent application.

\(c\) The advantages of multi-disciplinary cooperation among federal
agencies/ departments and their respective data bases of information, if
adopted, should only enhance the prior art search activities of patent
examiners by reducing their search work-load while at the same time
enhancing the rigor of performed searches. Similarly, enabling examiners
to extend beyond the USPTO to work with industry (such as the turfgrass
industry and TIC) would, in my opinion, be mutually beneficial to both
parties; because, ultimately, no one benefits from inadequate prior art
searches.

4\. To a certain extent, I perceive that prior art searches are likely
being conducted before

patent applications are filed with the USPTO. However, I perceive that
these searches, in and of themselves, might be less than adequate to
justify and warrant the full protection afforded by a US patent.

\(a\) Technology areas most likely conducting prior art searches would,
in my opinion, be those areas that have accumulated experience and
knowledge resulting from a long history of patenting activity, i.e.
engineering designs or chemical reactions. However, regarding
technological areas where little to no prior patent activity exists (for
example, the utility patent US 5,912,412 claiming the invention of
turfgrass cultivars), the USPTO might anticipate the lack of experience
by both parties; the lack of experience of the applicants in the
patenting process and that of the examiner(s) within the specific
technological area. When such situations arise, I suggest that any USPTO
effort to pay closer attention to the details of identifying prior art
information would seem warranted. Clearly, if the expertise or resources
necessary to identify and evaluate prior art does not exist within the
USPTO for specialized technologies, then there needs to be some other
means by which to obtain the expertise or resources.

\(b\) The scope of a proper prior art search should include "normal"
avenues of relevant public information relating to patent literature
(i.e. United States Patents, foreign patents, etc.) but also needs to
include a wide range of nonpatent literature including related
scientific literature (i.e. journal articles, conference proceedings,
abstracts, and progress reports); Federal Agency project descriptions
(i.e. USDA-ARS-CSREES research project descriptions required for
expenditure of federal Hatch funds); and, popularized trade journal
articles, corporate bulletins, as well as other types of nonpatent
literature. In addition, identification of prior art truly needs to go
beyond simply search the internet or literature data bases only
containing information after the early 1970\'s or early 1980\'s. I
believe examiners conducting prior art search have a duty to search the
older literature as well as the new.

\(c\) We should be assured that the USPTO is aware of any and all
technological-specific, nonpatent literature data bases and that
examiners are enabled to utilize the benefits of such additional
information for their identification of prior art. For example, one such
highly specialized literature data base is the Turfgrass Information
Center (TIC) at Michigan State University which contains the most
comprehensive collection of turfgrass educational materials publicly
available in the world (see 3.b.ii). Utilizing the TIC data base would
have been immeasurably valuable in conducting the identification of
prior art regarding US 5,912,412.

5\. As evidenced by US 5,912,412, I must conclude that Information
Disclosure Statements that are being submitted are limited in their
scope of the nonpatent literature, including but not limited to,
scientific journals, professional journals, trade journal articles,
conference proceedings, conference abstracts, regional society reports,
state project reports, progress reports to external funding agencies,
foreign government reports, and foreign industry reports.

6\. Applicants should be required to conduct, to the best of their
ability, a prior art search and submit corresponding search results,
including where they searched, to the USPTO when filing a patent
application. However, such a requirement should not replace an
authoritative prior art search by an examiner competent in the specified
technology.

7\. Applicants should also be required to submit all prior art relied
upon during the drafting of the claims of a patent application,
including all scientific and non-scientific literature authored by the
applicant(s). Such information should be readily available in the form
of an applicant(s) curriculum vitae, resume, or other professional
career documents and would only serve to enhance an examiner\'s effort
to ensure that the applicant\'s patent is sound. Any patent application
that required less would seem to me to be a frivolous endeavor.

8\. Applicants should also be required to submit all nonpatent
literature directed to the same field of invention attributable to,
authored by, or co-authored by the applicant. In the case of the
turfgrass industry, most if not all, nonpatent literature becomes
publicly available in a short amount of time through the TIC (see 3.b.ii
above) and almost immediately begins to be used as university teaching
examples, as ideas in basic and extension research projects, and as
references in research and teaching grant applications. If such public
information is later neglected during prior art searches of patent
applications and the patent becomes awarded (as was the case for US
5,912,412), then the value and security of patents in general becomes
lessened and moreover, causes harm to the public by inhibiting,
delaying, or obscuring valuable research and/or the development of
existing technologies.

9\. Applicants should also be required to submit all nonpatent
literature including scientific journals, professional journals, trade
journal articles, conference proceedings, conference abstracts, regional
society reports, state project reports, progress reports to external
funding agencies, foreign government reports, foreign industry reports,
and progress reports of any kind that are in the public domain. In
addition, I believe the submission of documents relied on in drafting an
application would also be of benefit. See Question 8. for rationale.

10\. It is my perception that not all relevant prior art is being fully
identified during patent examination. I offer US 5,912,412 along with my
cited references as case in point. I have indicated several possible
suggestions to obviate this problem (see 3.b.(i), (ii), and (iii)
above). As a final suggestion, I suggest that the USPTO become more
involved with those professional organization that represent various
technologies. In the case of US 5,912,412 there are several professional
societies (the Turfgrass Breeders Association; the C-5 Division of the
Crop Science Society of America; the United States Golf Association -
Green Section Research Committee) that would be willing to aid and even
assist the USPTO in identifying appropriate data bases of literature if
only asked to do so. Any costs that might be incurred from such
activities should be passed along to those individual who utilize the
patenting service (i.e. applicants) as being part of the costs of patent
application. It seems entirely possible that some
technologies/industries might even want to help share the costs of
developing informational systems that would benefit themselves as well
as the USPTO.

11\. Finally, under "Other Issues", I have difficulty understanding how
cultivars of a sexually-reproducing species are capable of being
patented as is the case under Claim 20 of US 5,912,412 when the
application itself describes that these inventions may contain as high
as 10% variants to type.

I wish to thank the USPTO for this opportunity and hope that my comments
have been of assistance. I would be most willing to give my own time to
serve in any capacity in order to help address those issues generated
from this public debate or in any other capacity as the need occurs.

Sincerely,

David R. Huff, Ph.D.

Assistant Professor

Turfgrass Breeding and Genetics

Department of Agronomy, 116 ASI Bldg

Pennsylvania State University

University Park, PA 16802

phone: 814-863-9805

fax: 814-863-7043

email: drh15@psu.edu

Nonpatent prior art literature that I perceive, when taken alone or in
combination, make the 41 Claimed inventions of US 5,912,412 obvious:

Adams, W.A. and P.J. Bryan. 1980. Variations in the growth and
development of annual bluegrass populations selected from seven
different sports turf areas. In: Proceedings of the Third International
Turfgrass Research Conference. ASA-CSSA-SSSA and International Turfgrass
Society. pp. 109-115.

Beard, J.B. 1970. An ecological study of annual bluegrass. United States
Golf Association Green Section Record 8(2):13-18.

Beard, J.B., P.E. Rieke, A.J. Turgeon, and J.M. Vargas, Jr. 1978. Annual
bluegrass (Poa annua L.): description, adaptation, culture, and control.
Michigan State University, Agric. Exper. Sta. Research Report 352. pp.
32.

Brilman, L.A. 1995 (August). USGA grasses: the people behind the
cultivars. Golf Course Management 63(8):53-56.

Cooper, R.J., P.R. Henderlong, J.R. Street, and K.J. Karnok. 1987. Root
growth, seedhead suppression, and quality of annual bluegrass as
affected by meluidide and a wetting agent. Agronomy Journal 79:929-934.

Cordukes, W.E. 1977. Growth habit and heat tolerance of a collection of
Poa annua plants. Canadian Journal of Plant Science 57:1201-1204.

Danneberger, T.K. and J.M. Vargas, Jr. 1984. Annual bluegrass seed head
emergence as predicted by degree-day accumulation. Agronomy Journal
76:756-758.

Duff, D.T. 1978. Disagreements arises over variant of annual bluegrass.
University of Rhode Island Turfgrass Research Review 3(1):1-3.

Ellis, W.M., B.T.O. Lee, and D.M. Calder. 1970. A biometric analysis of
populations of Poa annua L. Evolution 25:29-37.

Ellis, W.M. 1973. The breeding system and variation in populations of
Poa annua L. Evolution 27:656-662.

Groom, L. (editor) 1995."Environment" impacts public turf breeding
programs. Seed World Magazine, August issue, 1995. p. 9.

Hovin, A.W. 1957. Variations in annual bluegrass. The Golf Course
Reporter 25(7):18-19.

Huff, D.R. 1995. Germplasm enhancement, breeding, and genetics of turf
and native grasses. USDA-ARS-CSRS, Agricultural Experiment Station,
Pennsylvania State University Project number PEN03483. Start Date: 1
July, 1995. pp. 1-7.

Johnson, P.G. and D.B. White. 1992. Inheritance of flowering
requirements in Poa annua L. Agronomy Abstracts 86:185.

Johnson, P.G. and D.B. White. 1993. Requirements for flower induction in
Poa annua L. Agronomy Abstracts 1992 p.171.

Johnson, P.G., B.A. Ruemmele, P. Velguth, D.B. White, and P.D. Ascher.
1993. An overview of Poa annua L. reproductive biology. International
Turfgrass Society Research Journal 7:798-804.

Johnson, P.G. and D.B. White. 1994. Inheritance of flowering pattern in
Poa annua reptans (Hausskn) and Poa annua annua. Agronomy Abstracts 1994
p.185.

Law, R. 1977. The turfgrass potential of Poa annua ecotypes. Journal of
Sports Turf Research Institute 53:117.

Law, R. 1979. The cost of reproduction in annual meadow grass. American
Naturalist 113(1):3-16.

Law, R. 1981. The dynamics of a colonizing population of Poa annua.
Ecology 62(5):1267-1277.

Law, R., A.D. Bradshaw, and P.D. Putwain. 1977. Life-history variation
of Poa annua. Evolution 31(2):233-246.

Lush, W.M. 1989. Adaptation and differentiation of golf course
populations of annual bluegrass (Poa annua). Weed Science 37:54-59.

McBurney, S.L. and J.E. Kaufman. 1982. Enhancing the survival and
appearance of Poa annua with growth regulators. Proceedings of the 52nd
Annual Michigan Turfgrass Conference 11:47-51.

Peel, C.H. 1982. A review of the biology of Poa annua L. - with special
reference to sports turf. Journal of the Sports Turf Research Institute
58:28-40.

Piper, C.V. and R.A. Oakley. 1927. Annual bluegrass (Poa annua).
Bulletin of the United States Golf Association Green Section
7(7):128-129.

Registration of Poa annua cultivar \'ANNA\'. 1992. Blatt Fur
Sortenwesen. September, 1992.

Registration of Poa annua cultivar \'SUPOMO\'. 1993. A cultivar of Poa
annua registered in Holland. Contained in the United States Plant
Variety Protection Office data base.

Shildrick, J.P. 1971. Grass variety trials. Journal of Sports Turf
Research 47:86-127.

Shildrick, J.P. 1975. Turfgrass mixtures under wear treatments. Journal
of the Sports Turf Research Institute 51:9-40.

Till-Bottraud, I., L. Wu, and J. Harding. 1990. Rapid evolution of life
history traits in populations of Poa annua L. Journal of Evolutionary
Biology 3:205-224.

Vermeulen, P. 1989. Consider Poa annua for your new green. United States
Golf Association Green Section Record 27(5):17.

Warwick, S.I. and D. Briggs. 1978. The genecology of lawn weeds. I.
Population differentiation in Poa annua L. in a mosaic environment of
bowling greens lawns and flower beds. New Phytologist 81:711-723.

Wells, G.J. 1974. The biology of Poa annua and its significance in
grasslands. Herbage Abstracts 44:385-391.

White, D.B. 1985. Breeding of Poa annua for improved cultivars. Annual
Turfgrass Research Report for the United States Golf Association and the
Golf Course Superintendent's Association. 1985 p.6.

White, D.B. 1986. Breeding of Poa annua for improved cultivars. Annual
Turfgrass Research Report for the United States Golf Association and the
Golf Course Superintendent's Association. 1986 p. 7-8.

White, D.B. 1986. Variation in domestic and exotic Poa annua L. and Poa
supina Schrad. germplasm sources. Agronomy Abstracts 1986 p. 139.

White, D.B. 1991. Improvement of Poa annua var reptans for golf turf.
1991 Turfgrass Research Summary for the United States Golf Association
and the Golf Course Superintendent's Association. 1991 p. 12.

Wu, L., I. Till-Bottraud, and A. Torres. 1987. Genetic differentiation
in temperature-enforced seed dormancy among golf course populations of
Poa annua L. New Phytologist 107:623-631.

Wu, L. and A. Harivandi. 1993. Annual bluegrass ecology and management:
understanding key interactions is a prerequisite. Golf Course Management
61:100-106.

Younger, V.B. 1959. Ecological studies on Poa annua in turfgrasses.
Journal of the British Grasslands Society 14:233-237.

Zontek, S.J. 1973. A positive approach to Poa annua management. United
States Golf Association Green Section Record 11:1-5.

The 11 Questions posted by the USPTO

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

\(a\) Provide support for your conclusions and identify the following:

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

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

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

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

\(a\) Provide support for your conclusions and identify the following:

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

\(ii\) the type(s) of prior art that is not being submitted by
applicants, including but not limited to United States patents, foreign
patents, and nonpatent literature.

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

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

If not, please include the following in your response:

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

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

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

4\. Are prior art searches typically conducted before filing a patent
application with the USPTO? If not, please explain. If so, please
include the following in your response:

\(a\) An identification of the area(s) of technology where it is most
likely that a prior art search would be conducted;

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

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

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

\(a\) United States patents;

\(b\) Foreign patent documents and Patent Cooperation Treaty (PCT)
publications; and

\(c\) Nonpatent literature, including but not limited to journal
articles, conference papers, corporate bulletins, and Internet
publications.

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

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

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

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

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

drawbacks.

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

\(a\) Discuss in detail any idea for addressing this problem
effectively;

\(b\) Explain how the proposal(s) should be implemented;

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

\(d\) Indicate any potential advantages and drawbacks for each
suggestion.

11\. Please discuss any related matters not specifically identified in
the above questions. If this is done, parties are requested to:

\(a\) Label that portion of the response as \`\`Other Issues\'\';

\(b\) Clearly identify the matter being addressed;

20\.

![](media/image2.png)

[Center for International Environmental Law]{.smallcaps}

# Comments on Improving Identification of Prior Art

# Recommendations on Traditional Knowledge 

# Relating to Biological Diversity 

# Submitted to the United States Patent and Trademark Office 

# August 2, 1999

These comments are submitted to the United States Patent and Trademark
Office (PTO) in response to its May 27, 1999 Federal Register notice (64
Fed. Reg. 28803) requesting input from the public on the PTO's
procedures and practices for identifying prior art during the
examination of a patent application. They have been prepared by the
Center for International Environmental Law (CIEL) on its own behalf, and
also on behalf of the Coordinating Body of Indigenous Organizations of
the Amazon Basin (COICA), the Coalition for Amazonian Peoples and Their
Environment (Amazon Coalition), the Indigenous Environmental Network
(IEN)'s North American Indigenous Peoples Biodiversity Project (NAIP-B),
and the Society for Research and Initiatives for Sustainable
Technologies and Institutions (SRISTI).

CIEL is a non-profit organization based in Washington, D.C. that
promotes sustainable and equitable development and environmental
protection through the development and implementation of international
law. COICA, based in Ecuador, is the coordinating body for more than 400
indigenous tribes that are members of nine national organizations of the
countries in the Amazon region. The Amazon Coalition, based in
Washington, D.C., is comprised of eighty non-governmental organizations
dedicated to strengthening and broadening the alliance between
indigenous peoples of the Amazon and groups who share their concerns for
the future of the Amazon and its peoples. IEN is a network of Native
American groups. SRISTI is a non‑governmental organization based in
India that works to strengthen the capacity of grassroots inventors,
innovators and entrepreneurs engaged in conserving biodiversity and
developing eco‑friendly solutions to local problems.

As explained in Part I below, traditional and informal knowledge
developed and maintained by indigenous and local communities is a
significant "prior art" resource for innovation, particularly in
pharmaceutical and other technologies based upon biological diversity
and biological resources. As Part II discusses, such prior art is
relevant in determining whether patent applications in such fields of
technology meet not only the statutory bar tests for printed
publications, patents and known use provided by subsections 102 (a) and
(b) of the Patent Act, 15 U.S.C. § 102, but also the test of subsection
(f), for situations in which the applicant is not the inventor.

Part III explains how the PTO's current approach leads to problems in
identifying such prior art, and in ensuring that the statutory bar is
properly applied. Part IV recommends improvements that the PTO could
make to procedures and practices within the framework of existing law.
These changes would significantly enhance the ability of patent
examiners to assemble and review the prior art relevant to an
application. At the same time, they would enhance recognition of the
contributions of indigenous peoples and non-Western cultures to
universal knowledge, enhance incentives for the conservation of
traditional knowledge systems and associated biodiversity, and encourage
equitable sharing of benefits between the users of traditional knowledge
and those who have created and maintained it.

## I. The Role of Traditional and Informal Knowledge in Technological Innovation 

A significant part of the intellectual base for innovation in certain
fields of technology has come from outside the formal Western
science-based research and development process. In particular, the
informal and traditional knowledge developed, elaborated and maintained
by indigenous and traditional societies has been an important resource
in technologies based upon the manipulation, adaptation or use of
biological resources.[^3] Traditional knowledge is valuable in several
ways. It informs resource management systems and practices of resource
use that often have relatively low impacts upon biological resources.
The existence of these systems and practices explains in part why these
peoples are the custodians of much of the world's richest stores of
biodiversity. Traditional knowledge also comprises extensive knowledge
of the practical uses of these resources, as sources of medicines,
foodstuffs, and other goods. As a result, traditional knowledge is
itself a valuable resource not only for these communities but also for
outsiders, including academic researchers, government agencies, and
commercial firms.

Traditional knowledge has been used in a number of industries as a
starting point for new product development in sectors such as specialty
food and beverages, pharmaceuticals, agriculture, horticulture, and
personal care and cosmetics. Relevant technology categories
include---but are not necessarily limited to---fuels, sugars, cleaning,
plant and animal husbandry, drugs and body treating compositions, foods,
fabrics and textiles, perfumes, multicellular organisms and their
unmodified parts, and chemistry, including carbon and organic compounds,
natural resins, molecular biology, microbiology, and analytical and
immunological testing.

The value of traditional knowledge is well demonstrated in the
pharmaceutical sector. A recent analysis found that "57% of the top 150
brand names prescribed during \[a six month period in 1993\] contained
at least one major active compound now or once derived or patterned
after compounds derived from biological diversity."[^4] Of the 35
plant-derived drugs included in the top 150, 33---or 94%---contained at
least one compound that "had or has a demonstrated use in traditional
medicine related to the primary therapeutic use for which a physician
might prescribe the drug."[^5]

For example, quinine was originally derived from cinchona bark, which
Amazonian indigenous peoples used as a remedy for malaria. Quinine and
its chemical analogs remain "the bulk of our antimalarial
armamentarium."[^6] Herbal remedies currently being researched for
pharmaceutical applications include qing hao su (artemisinin), a Chinese
traditional medical preparation from the leaves of the plant *Artemisia
annua*, which has antimalarial properties;[^7] the bark of the
rainforest tree *Alphitonia zizyphoides,* used by traditional Samoan
healers as a tonic;[^8] and *Homolanthus nutans,* from which Samoan
healers prepare an infusion used to treat viral hepatitis.[^9] A
preliminary analysis of 74 plant species used medicinally by traditional
Samoan healers revealed that "\[o\]ver 86% of the plants exhibited high
levels of pharmacological activity."[^10] Researchers have catalogued
2,095 plant species used medicinally by Native Americans.[^11]

The underlying mission of United States intellectual property law is
"\[t\]o promote the progress of science and useful arts."[^12] The award
and enforcement of the patent right is one way that the law pursues its
mission. But the financial rewards flowing from the award of exclusive
rights are an incident of the mission rather than an end in themselves.
The disclosure to the public of the basis for the invention, through
publication of the application upon award of the patent, is another
important mechanism---one which benefits a constituency beyond the
patent owner alone. The proper acknowledgment of prior art in the
application provides a complete and accurate history of the invention's
origin, which is valuable both as a resource for future innovators and
as recognition accorded to the predecessors whose intellectual labors
made the invention possible.

In this context, disclosure of traditional knowledge that forms part of
the prior art "promotes the progress of science and useful arts" in at
least two ways. First, by according recognition to knowledge created by
cultures whose contributions have often been unrecognized and even
denigrated, it provides a positive incentive for the maintenance of
traditional knowledge systems. Positive incentives are vital to stem the
rapid loss of these systems resulting from factors such as cultural
assimilation and the continuing destruction of local biological
resources and ecosystems with which they are intimately linked. Second,
creating positive incentives to maintain these knowledge systems in turn
can create an incentive for the knowledge holders to continue the
traditional practices by which they have maintained high levels of
biodiversity in their homelands over many generations. Indeed, this
linkage led the drafters of the Convention on Biological Diversity to
include a requirement that governments take steps to respect, preserve
and maintain traditional knowledge of such peoples; to promote the wider
application of such knowledge, contingent on the approval and
involvement of its holders; and to encourage the equitable sharing of
the benefits arising from utilization of traditional knowledge.[^13]

## II. Traditional Knowledge as Prior Art Relevant to the Statutory Bar of 35 U.S.C. § 102 

Section 102 of the Patent Act, 35 U.S.C. § 102, establishes a "statutory
bar" against the grant of a patent in certain specified conditions.
Several provisions of section 102 are particularly relevant to the
treatment of traditional knowledge as prior art.

Subsections 102(a) and (b) provide that a patent shall not be granted if
the invention was patented or described in a printed publication in
either the United States or a foreign country, either before the date of
the claimed invention or more than a year before the date of the patent
application. These subsections also provide that a patent shall not be
granted if the invention was "known or used by others in this country."
Unpublished or unpatented knowledge or use in a foreign country is not
relevant to patentability under these subsections.

Subsection 102(f) precludes the award of a patent when the applicant did
not invent the subject matter sought to be patented. Unlike subsections
102(a) and (b), subsection 102(f) contains no limitations as to
geographic scope. Consequently, any information---published or
unpublished, domestic or foreign---demonstrating that the applicant did
not himself invent the subject matter claimed in the application will be
material to patentability under subsection 102(f).

Patent applications whose claims merely duplicate processes known to
indigenous and local communities will thus fail the statutory bar of
subsection 102(f) and should be rejected. Similarly, traditional
knowledge may be material in examining applications containing claims
consisting in part of such knowledge. As described in Part III below,
current PTO procedures and requirements relating to prior art do not
adequately provide for examination of such applications.

Examiners must make a "thorough investigation of the *available* prior
art relating to the subject matter" of the claimed invention.[^14] Thus,
the primary qualifying factor in an examiner's consideration of section
102(f) prior art should be whether it is "available" to her. Prior art
will be available when an examiner can access it on her own through
written texts, data bases, published herbarium specimens or other
sources, or when it is provided by the applicant under the applicant's
duty to disclose to the PTO all information known by that individual to
be material to patentability.[^15] Part IV, below, suggests several
simple procedures for ensuring that such information is readily
available to examiners, thus reducing the extent to which applications
seeking to misappropriate traditional knowledge can slip through the
examination process.

## III. Problems With the Current Approach: Identifying Prior Art and Applying the Statutory Bar 

Recent controversies over United States patents based on traditional
knowledge have raised concerns that the patent system as it is presently
implemented does not adequately account for traditional knowledge as
prior art. The PTO has issued patents that are neither novel nor
non-obvious in the light of traditional knowledge. These patents allow
those who have no right to claim traditional knowledge to remove it from
the public domain, and they fail to acknowledge indigenous contributions
to world culture and knowledge. Their issuance has provoked sharp
protests by the peoples and countries from whom the knowledge or
resources were acquired.

A recent patent on turmeric provides a well publicized example. In 1995,
researchers at the University of Mississippi Medical Center obtained a
United States patent for the use of turmeric as a healing agent.[^16]
This patent aroused considerable public controversy, because turmeric
has been used to promote healing of wounds for generations by people in
India.[^17] Because the patent claims were for processes that were not
new, but were part of traditional Indian knowledge in the public domain,
the PTO canceled all six of the patent claims as a result of a
reexamination requested by India's Council of Scientific and Industrial
Research (CSIR).[^18]

The turmeric case demonstrates that traditional knowledge constitutes
prior art when a patent claim merely restates in whole or part processes
that have long been held within the knowledge systems of indigenous and
local communities. However, because the turmeric patent "slipped by"
examiners who were not apprised of, and did not seek out, the available
prior art, the burden was placed on the knowledge holders to protect
their traditional knowledge, through the reexamination process. Yet
developing countries and indigenous and local communities have limited
means for discovering that their resources are being improperly claimed
by United States commercial interests, and they have little chance of
learning about an application until after the patent has been awarded.
At that point, their least expensive and simplest recourse is to file
and prosecute a reexamination at the PTO. Yet participation in such
proceedings requires financial resources and access to legal expertise
that are not readily available to developing countries and their
inhabitants. Many indigenous and local communities in these countries
are poor and isolated. Thousands upon thousands of villages have rich
traditional knowledge systems attuned to local conditions, yet they lack
communication facilities, access to information, and expertise.

Moreover, the basis for reexamination is limited: examiners may only
consider newly discovered prior art patents and printed publications in
a reexamination proceeding. As a result, indigenous and local
communities in developing countries have no opportunity to bring
attention to unwritten knowledge, practices, and innovations that
demonstrate lack of novelty or non-obviousness. This is a significant
drawback because---given that many of these traditions are oral and
poorly documented in the extant scientific literature---published
accounts may not have existed at the time the original patent
application was filed.

In the turmeric case, a national scientific organization from a large
developing country with a substantial scientific community intervened.
The CSIR was able to produce a substantial body of publications that
documented the long-standing use of turmeric by local communities in
India. That fact demonstrated that (1) the examiner during the patent's
original prosecution failed to investigate all of the available prior
art relating to the subject matter and (2) the applicant failed to
disclose adequately all of the information that was material to
patentability.

The growing sense in developing countries that patent systems are not
fairly acknowledging contributions from their jurisdictions has led some
developing countries to adopt restrictions on access to knowledge and
biological resources. These restrictions could interfere with the very
progress of science that patent law is supposed to encourage. The
Philippines has enacted regulations strictly controlling access to
biological specimens, which some critics complain has unnecessarily
restricted scientific research and exchange. Two Brazilian states have
adopted laws requiring foreign researchers to sign contracts requiring
them to pay "bioroyalties" on any income they derive from local plants,
and the Brazilian Congress is considering similar legislation.[^19]

The controversy could affect international standards for intellectual
property as well. For instance, an important policy goal of the United
States is to promote multilateral agreement on the definition and
enforcement of strong intellectual property rights systems worldwide.
Major progress toward that goal is reflected in the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS) which
binds the 130-plus members of the World Trade Organization Agreement.
However, the growing resistance on the part of many developing
countries---based in part on perceptions among them that TRIPS standards
facilitate the efforts of industrialized countries to misappropriate
their traditional knowledge---has led to serious opposition to the
implementation or strengthening of the Agreement.

## IV. Recommendations

PTO examiners are obligated to access and evaluate prior art sufficient
to ensure that applicants receive patents only for their inventions, and
to prevent applicants from patenting subject matter that is broader than
what they actually invented. This part suggests modifications to
existing procedures that will respond to the problems identified in Part
III and enable examiners to carry out their mandate more effectively.

Part IV.A relates to PTO requirements for disclosures in patent
applications. It proposes a clarification of the disclosure rules in
order to ensure that applicants are supplying all information regarding
traditional knowledge that may be materially relevant to patentability.

Part IV.B specifies two routines that examiners can follow to gain
access to traditional knowledge that may be relevant as prior art.
First, as explained in Part IV.B.1, examiners should review all
databases and other known registries of traditional knowledge to ensure
that each aspect of an applicant's claims represents a truly inventive
step. Second, as discussed in Part IV.B.2, examiners should more fully
integrate the existing rules and guidelines governing international and
international-type searches into the normal examination process for
national applications.

Part IV.C proposes changes relating to plant patents. First, it proposes
additional disclosure requirements for applicants. Second, it proposes
an additional step in the examination procedure: where plant patents are
based on specimens that originated in developing countries, examiners
should routinely consult expert institutions to determine if herbarium
specimens exist that may be materially relevant to whether the claimed
plant is truly a new and distinct variety.

Part IV.D proposes that the PTO take the initiative to consider whether
and how to define principles for taking moral concerns into account in
patenting, particularly patenting of life forms.

### A. Elaboration of Disclosure Requirements 

As part of their "duty of candor and good faith," each individual
associated with the filing and prosecution of a patent application has
the duty to disclose to the PTO all information known by that individual
to be material to patentability.[^20] Among the categories of "material"
information is information that establishes, alone or in combination
with other information, a prima facie case of unpatentability.
Information is also material if it refutes or is inconsistent with a
position the applicant takes in asserting an argument of
patentability.[^21]

Such material information can include descriptions of traditional
knowledge from sources outside the United States contained in printed
publications available prior to the date of invention or more than one
year prior to the application date.[^22] It can also include any
information relating to traditional knowledge from any source
demonstrating that the applicant did not himself invent the subject
matter sought to be patented.[^23] And it can include information
regarding traditional knowledge from a source within United States
jurisdiction indicating that the invention was known or used more than
one year prior to the date of application or prior to the claimed date
of invention.

The PTO should establish the following four specific requirements to
help ensure that examiners have access to such material information.

#### 1. Applicants Must Disclose Traditional Knowledge Used in Invention 

Any traditional knowledge that the applicant used in the process of
discovering or creating the applied-for subject matter should
presumptively be considered material to patentability and therefore
should be subject to the requirement of disclosure. The disclosure
should not be limited to printed publications or patents. Instead, it
should also disclose other sources of material
information---particularly, unpublished traditional knowledge that may
qualify as section 102(f) prior art, as discussed in Part II above.

#### 2. Applicants Must Conduct Prior Art Searches of Traditional Knowledge

Because applicants will likely have conducted extensive research in the
country and communities where the knowledge is held, they will often
have more ready access to traditional knowledge prior art than will
examiners. Accordingly, it will generally be most cost-effective for
applicants themselves to conduct prior art searches concerning any
traditional knowledge or resources they utilize in their subject matter.
Such searches should include all relevant publications, including
databases, herbarium specimens, etc., that pertain to the traditional
knowledge, especially those publications prepared in the source country.
Searches should also review any orally transmitted traditional
knowledge, practices, or innovations of indigenous peoples relevant to
the subject matter, again consistent with section 102(f). The results of
these searches should be fully reported along with the patent
application.

#### 3. Applicants Must Disclose Country and Geographical Location of Knowledge and Related Resources

Applicants should disclose the country and exact geographical location
from which the knowledge or related resources (e.g. plants identified as
medicinal on the basis of traditional knowledge) were obtained. This
will help guide the examiner in his search for section 102(a) or (b)
prior art printed publications, including database searches.

Disclosure of the exact geographical source of living resources can also
be useful for evaluating the patentability as well as enablement with
respect to naturally based products, because the specific chemistry of
plants may depend on the local environment (especially the soil) from
which they originated. Additionally, such disclosures could assist the
examiner in the event it becomes necessary to corroborate or obtain more
information about non-published section 102(f) prior art that documents
traditional knowledge.

#### 4. Applicants Must Certify Their Compliance with Applicable Laws

Applicants who utilize traditional knowledge or resources in their
inventions should certify that the knowledge or resources were acquired
in full compliance with the local laws of the source jurisdiction. The
certification should include contact information for any local
authorities from whom authorization for exploitation of the knowledge
was obtained. In situations in which they believe it necessary to
corroborate a certification, examiners should also be able to request
the texts of any agreements the applicant entered into with local
authorities or communities that provided for benefits sharing or
acknowledgment of the contribution of indigenous and local communities
to development of the subject matter.[^24]

Such certification would assist examiners in evaluating whether the
applied-for subject matter was truly novel and nonobvious. Moreover, it
would provide examiners with the means to seek further information and
clarification from the local peoples and authorities from whom
traditional knowledge was acquired, should the examiner believe such
further information would assist him in the prosecution of the
application. This latter benefit would also comport with the enablement
requirements of 35 U.S.C. § 112. Because certification would serve to
assure those practiced in the art that they could learn where and how to
access the traditional knowledge or resources, the provision of
certified information by an applicant would be analogous to a
biotechnology applicant fulfilling the deposit requirements for
biological material pursuant to 37 C.F.R. § 1.801 *et seq*. and the
Budapest Treaty.[^25]

### B. Elaboration of Examiner Search Procedures 

In addition to changes in disclosure requirements, the examination
procedure could also be modified through several specific steps that
would more effectively screen patents that misappropriate traditional
knowledge. These include reviewing accessible databases and other
reference sources, integrating the guidelines for international and
international-type searches into normal examination procedure, and
consulting with expert institutions regarding plant patent applications.

#### 1. Examiners Should Review All Accessible Databases, Registries and Other Sources of Information on Traditional Knowledge 

When prosecuting a patent application, examiners are required to make a
"thorough investigation of the available prior art relating to the
subject matter of the claimed invention."[^26] The examination must be
complete with respect to the patentability of the invention as
claimed.[^27] A "complete" examination will thus include a review of all
traditional knowledge that may have contributed to the invention of the
subject matter, to ascertain whether all the claims for the subject
matter are truly novel and nonobvious.

Important gateways to such prior art are found in electronic databases
and registries containing data regarding traditional knowledge,
ethnobotany, ethnopharmacology, and the commercial use of biological
resources from developing countries.[^28] Database searches can serve to
alert patent examiners that prior art in the form of traditional
knowledge may exist that is material to the patentability of an
applied-for invention. Where necessary, examiners can then make further
inquiries of the applicant and/or governments and other entities in the
source countries.

The most comprehensive of the databases currently available to on-line
researchers is NAPRALERT, produced by the Program for Collaborative
Research in the Pharmaceutical Sciences, College of Pharmacy, University
of Illinois at Chicago. NAPRALERT contains a broad range of information
about natural products derived from plants. The database can be searched
to access information about plant pharmacology, biological activity,
ethno-medicine, plant chemistry, and microbial and animal extracts. It
is available on the worldwide web from STN Easy at
\<http://stneasy.cas.org/\>. One limitation of NAPRALERT as a source of
traditional knowledge prior art is that it is compiled from written
sources. Consequently, traditional knowledge that has been transmitted
solely in oral form will not be contained in the database.

Another relevant database is operated by Dr. James Duke of the USDA's
Agricultural Research Service. "Dr. Duke's Phytochemical and
Ethnobotanical Databases" provides search capabilities by plant,
chemical, activity, and ethnobotany categories. It is available at
\<www.ars-grin.gov/duke\>. Other phytochemical databases may be accessed
through the Phytochemical Society of North America's "Links to
Phytochemical Resources on the Web" site, located at
\<www.fin.edu/orgs/psna/links.html\>.

Databases that list traditional knowledge from specific geographical
regions are also becoming available. The "Prelude" database of
traditional veterinary medicine, part of the "Tropical Diseases
Webring," focuses on traditional knowledge of Africa. The website is
located at \<http://pc4.sisc.ucl.ac.be/prelude/prelude_HomePage.html\>.
Similarly, the World Bank hosts a searchable "Database of Indigenous
Knowledge and Practices" in Sub-Saharan Africa. The database can be
accessed at \<www.worldbank.org/afr/ik/datab.htm\>. Researchers can find
both of these databases through links contained in the Nuffic/CIRAN
International Indigenous Knowledge (IK) Network. The IK Network includes
databases listing numerous reference sources for international
indigenous knowledge, organized by broad subject matter. It is located
at \<www.nuffic.nl/ciran/ik.html\>. In addition, the Bioresources
Development and Conservation Program (BDCP) in Washington, D.C. has
developed a database that catalogues the medicinal use of plants by
indigenous peoples in Africa. BDCP expects to place its AFRICMED
database on-line in the near future.

The People's Biodiversity Registers (PBRs) program sponsored by World
Wildlife Fund India is endeavoring to create a system of databases that
will provide a record of local knowledge for the use of present and
future generations of Indian village community peoples, and to protect
local biodiversity and knowledge from misappropriation by outsiders. The
completed program is envisioned as a network of decentralized databases,
all linked to a consolidated national database.

The Society for Research and Initiatives for Sustainable Technologies
and Institutions (SRISTI) is another non-governmental organization from
India. For several years, SRISTI has been documenting information on the
innovations and creative practices of rural farmers. These have been
published in SRISTI's "Honey Bee" database, which SRISTI is considering
posting at least in part on the worldwide web. SRISTI's website is
located at \<http://csf.Colorado.EDU/sristi/\>.

The extent to which the SRISTI "Honey Bee" database and the PBRs are
publicly accessible is yet to be determined. Because of their concerns
about "pirating" of traditional knowledge, the managers of these
databases may be hesitant to make data freely available. However, it is
possible that the PTO could make arrangements so that the managers could
conduct prior art searches in response to PTO inquiries and then
disclose information sufficient to demonstrate the lack of patentability
of a given claim. The PTO should also explore ways of reciprocating by
making the information available in the patent files more readily
available to informal innovators, perhaps through expanded us of
Internet gateways.

As countries implement their obligations under the Convention on
Biological Diversity (CBD), it is anticipated that they will
increasingly rely upon databases as a means of identifying, preserving
and maintaining the knowledge, innovations and practices of indigenous
and local communities. More databases will thus likely become available
that will be useful to patent examiners conducting prior art searches of
patent claims relying in whole or part upon traditional knowledge. The
international Clearinghouse Mechanism of scientific and technical
information established under the Convention may provide a single
gateway to these various databases as well as the non-governmental
databases described above. It could therefore be useful for the PTO to
follow the implementation of the provisions of the Convention on
Biological Diversity regarding protection of traditional knowledge and
sharing of scientific and technical information, so that it can track
and link to CBD-related databases as they become operational.

The websites described above are listed in the Appendix attached to
these Comments.

#### 2. The Rules and Guidelines Governing "International-Type" Searches Should Be Integrated into the Examination Process for National Applications.

Examination procedures should be revised to integrate more effectively
the guidelines for international-type searches into the examination
process for patent applications. Those rules and guidelines treat
traditional knowledge prior art more flexibly than do PTO examiners
under their current practices.

Examiners must already perform an "international-type" search as part of
every examination of a national application.[^29] In practice, examiners
perform international-type searches only for applications that enter the
national stage from international applications. However, 37 C.F.R. § 1.9
defines a "national application" to include any U.S. application for
patent filed under 35 U.S.C. § 111, not only applications entering the
national stage from international applications. Consequently, the
international-type search must be performed on *all* U.S. patents filed
on and after June 1, 1978.[^30] Failure of examiners to perform such
searches constitutes a failure to perform a statutory duty.

An "international-type" search is an international search as defined
under the Patent Cooperation Treaty (PCT).[^31] Carried out on a
national application, it is similar to an international search.[^32]
Such a search is required as part of the United States' implementation
of the PCT.[^33] Like other international treaties ratified by the
United States, the PCT is the "supreme law of the land," on a par with
U.S. statutes.[^34] Consequently, the Rules of Practice in Patent Cases
incorporates by reference the relevant provisions of the PCT and PCT
Rules when discussing the terms of international and international-type
searches.[^35] Patent examiners prosecuting national applications are
thus obligated to use PCT-stipulated rules when fulfilling the
international-type search requirement.

According to Article 15.2 of the PCT, the objective of the international
search is to discover relevant prior art. For the purposes of Article
15.2, relevant prior art is everything that has been made available to
the public anywhere in the world by means of written disclosure, and
which can be of assistance in determining that a claimed invention is
novel or nonobvious.[^36] Oral disclosure, use, exhibition or other
means of disclosure are not relevant prior art for the purposes of an
international search unless substantiated by a written disclosure.[^37]
However, "\[t\]he date on which the written disclosure was made
available to the public may have been *after* the filing date of the
international application."[^38]

In the context of a domestic patent application claim based wholly or
partly upon traditional knowledge, this latter provision means that the
traditional knowledge qualifies as prior art when it has been published
in some form, even if that publication occurs after the application
date. Orally transmitted traditional knowledge in itself would not
qualify as prior art. However, it would qualify if it was collected in a
database or printed in a publication, even if the data did not become
available in that form until after the patent application had been
filed. In a sense, this feature of the PCT international-type search
rules helps put into effect the statutory bar of sub-section 102(f),
insofar as it is not subject to the same publication date restrictions
as is prior art under subsections 102(a) or (b).

### C. Modification of Disclosure Requirements and Examination Procedures for Plant Patents 

While they form a very small proportion of patents granted in the United
States, plant patents continue to provide some companies with an avenue
for acquiring rights relating to botanical resources, including those
belonging to indigenous and local communities. The Plant Patent Act, 35
USC § 161 *et seq.*, was intended to recognize and protect inventions of
the plant breeder who has worked "in aid of nature."[^39] Consequently,
when a plant patent applicant attempts to patent a newly found plant, he
must "particularly point out the location and character of the area
where the plant was discovered."[^40] The strict implementation of this
requirement is an important means for ensuring compliance with the
provision of the Plant Patent Act that prevents the award of a patent to
one who discovers a previously unknown variety that already exists in
the wild.[^41]

#### 1. The "Ayahuasca" Patent Controversy

The failure to implement this requirement adequately contributed to the
award of one of the most controversial United States plant patents in
recent memory. In 1986, an American entrepreneur obtained a U.S. plant
patent on a purported variety of the "ayahuasca" vine, *Banisteriopsis
caapi*, which he dubbed "Da Vine."[^42] In his application, he stated
merely that "\[t\]his plant was discovered growing in a domestic garden
in the Amazon rain-forest of South America." That vague disclosure
provided the patent examiner with no useful information whatsoever for
evaluating or verifying whether "Da Vine" originated from cultivated or
uncultivated stock, and whether it thus satisfied the prohibition
against patenting wild plants.

In fact, *B. caapi* grows wild throughout the Amazon basin, and is also
cultivated by dozens of indigenous tribes who inhabit the rainforest
there. Because the plant has been widely dispersed by generations of
indigenous peoples, it is not possible to pinpoint exactly where the
species originated, or whether individual plants that are growing in an
uncultivated state are descended from naturally occurring stock or stock
that was once propagated by humans. As a result, identical forms of the
plant can be found growing both wild and in or near the villages of
indigenous peoples. This phenomenon makes it extremely difficult or
impossible to ascertain whether a given form of *B. caapi* represents
cultivated or uncultivated stock.

If the examiner had required a sufficiently detailed disclosure, he
might have learned before the patent was granted that "Da Vine" was
identical to varieties of *B. caapi* that grow wild throughout the
region. With a basis for denying the application, the PTO could have
avoided the intense controversy that this patent aroused when Amazonian
indigenous peoples learned that a plant that is sacred and central to
the religions of many Amazonian tribes was the subject of a private
property claim in the United States.

#### 2. Applicants Should Provide a Full Accounting

To avoid future mishaps of this kind, applicants seeking plant patents
for putative new varieties of tropical species such as *B. caapi* must
provide detailed, specific accounts of the precise location where the
original specimen or parent stock of the plant was found, including the
circumstances under which it was discovered, consistent with 37 CFR §
1.163(a). The account should also include the date and full name of the
person or group from whom the specimen was acquired, and the detailed
circumstances surrounding its acquisition. This will aid examiners in
corroborating whether the subject matter is a wild plant. It will also
lessen the possibility that specimens were fraudulently or illegally
obtained. To that end, an applicant should attach to his disclosure an
affirmation or written statement from the source person that contains
the person's prior informed consent. Applicants should also provide a
certification that they complied with all laws of the source country,
and obtained all required permits or licenses, when they collected the
specimen and removed it from the source country. Additionally, they
should provide contact information for the relevant government
authorities in the source country who have jurisdiction over the
collecting and exporting of the subject plant, to make it easier for the
examiner to validate the information provided or obtain additional
information as needed.

Applications that do not fully disclose all information necessary to
evaluate whether the subject matter is truly new and distinct fail to
fulfill the applicant's legal "duty of candor and good faith."[^43] Such
applications should automatically be rejected, because if they are
approved, prior art in the form of printed publications may not be
available to support a reexamination request, leaving affected
indigenous peoples with no avenue for challenging a wrongly issued
patent.

#### 3. Prior Art Searches Must Include Herbarium Specimen Sheets

Although full disclosure of the above information by applicants will
help preclude granting some patents on tropical plants that do not
satisfy the Plant Patent Act's terms, examiners will still be faced with
the task of determining whether available prior art demonstrates that
the applied-for subject matter is truly a new and distinct variety of
plant. The claimed differences may be subtle and difficult to confirm.
For many Amazonian species, few or no scientific monographs have been
published that fully and accurately describe the species. In the case of
the "Da Vine" patent application, the most important claimed difference
was that the "new" variety had flowers of slightly different color than
typical forms. That claim was based on a comparison of the subject plant
to the only scientific monograph of *B. caapi* that existed at the time
of the application. But because neither the examiner nor the applicant
searched prior art in the form of specimen sheets of *B. caapi* housed
in the collections of major U.S. herbaria, the examiner did not discover
that identically colored specimens had been collected and reported by
scientists in the United States and South America well before the
application for "Da Vine" was filed.

In all instances where an applicant is attempting to obtain a plant
patent on a species that originated in a developing country, or that
occurs in both wild and cultivated states, the applicant should be
required to perform a prior art search of major herbaria in the United
States and the source country. The applicant should supply photocopies
of all specimen sheets that contain specimens or descriptions that are
similar to the claimed subject matter. Similarly, the examiner should
perform her own search of these sources to confirm the integrity of the
applicant's efforts and to discover any prior art sheets that the
applicant may have omitted or overlooked.

Herbarium sheets were recently accepted by the PTO as prior art
publications when it granted the reexamination of the "Da Vine"
patent.[^44] These sheets satisfy the criteria for prior art
publications because they are readily and routinely available for
consultation by scientists and lay people with a legitimate need,
including inspection for patent purposes, and they are housed in
collections that are cataloged by easily used systems.

Patent examiners can easily determine where sheets of a particular
specimen of tropical plant can be found by telephoning the Botany
Division of the Smithsonian Institution's Museum of Natural History and
asking the curators there which herbaria have the best collections of
the subject species. Specialists in plant taxonomy are a fairly small
community, and the people at the major herbaria know very well who works
on what and where the best collections for particular groups are.
Regarding the "Da Vine" patent, Dr. William R. Anderson, curator of the
University of Michigan Herbarium, has said,

> If the Patent Office had called the Smithsonian Botany Department and
> asked who could advise them about an Amazonian member of the
> Malpighiaceae \[the family to which *B. caapi* belongs\], they would
> have had my name and phone number in five minutes. If they had asked
> which herbaria in the United States have the best collections of South
> American Malpighiaceae, they would have gotten several suggestions:
> Michigan, the U.S. National Herbarium, New York Botanical Garden,
> Field Museum of Natural History, and Missouri Botanical Garden.[^45]

Although Dr. Anderson says that the best way to identify which herbaria
are relevant is still through "word-of-mouth," he adds that web sites
exist that can also guide researchers to the best contact persons at
major herbaria. These include Index Herbariorum, administered by the New
York Botanical Garden, at \<www.nybg.org/bsci/ih/searchih.html\>; and
the membership directory of the American Society of Plant Taxonomists,
at \<www.sysbot.org/members\>.

#### 4. Avoiding Abuse of the System is Good Policy

The rules and interpretations proposed here would increase the burden on
applicants who seek to patent the botanical resources of developing
countries. However, any increased burden would be offset by the benefits
derived from reducing the opportunity for abuse of the system, which is
presently significant. Such abuses interfere with the achievement of the
mission of the patent law---to encourage progress in science and useful
arts. The result of such abuses is the improper removal of information
from the public domain and the failure to recognize the contributions to
beneficial universal knowledge made by excluded groups that sorely lack
incentives to continue conserving and adding to their knowledge.

The political ramifications from these abuses can thwart policy
initiatives that are important to the United States government. The
ayahuasca case provides a useful illustration. The ayahuasca vine that
was the subject of the "Da Vine" patent is revered as a sacred plant by
indigenous peoples throughout the Amazon region. It has been likened by
them to the Christian cross or the Eucharist, and has been an essential
ingredient in their religious and healing ceremonies for generations.
When indigenous groups learned of the "Da Vine" patent's existence in
1994, they were insulted and outraged that their sacred symbol could be
commodified and privatized by a foreigner. Disinformation and confusion
about the legal implications of the patent were rife, and the
controversy eventually took on international proportions, involving the
U.S. Embassy in Ecuador, the Inter-American Foundation, and numerous
national and international environmental and human rights groups, amid
charges and counter charges of deceit, "bio-piracy" and terrorism.
Ultimately, the patent led to a setback for a significant United States
trade initiative, when the Ecuadorian legislature---influenced by
indigenous groups who feared the implications of a U.S. patent on their
domestic use of ayahuasca---voted to reject a proposed bilateral
intellectual property rights agreement with the United States. Had the
original examination of the "Da Vine" patent been prosecuted under
procedures such as those recommended here, these negative developments
could likely have been avoided.

### D. Consideration of Moral Concerns

The ayahuasca case raises additional concerns that go beyond the PTO's
treatment of prior art. As just noted, the "Da Vine" patent purported to
award private, exclusive rights over a plant that is sacred to
indigenous peoples throughout the Amazon region. Where the appropriation
and commodification of an important element of a widely held religious
system is inherently offensive to that system's adherents, the award of
a patent raises special moral concerns that cannot be readily addressed
under PTO procedures as they are currently defined.

Analogous problems with trademarks that are offensive on moral or
religious grounds have been addressed through statutory language and
specific decisions. At the international level, Article 27.2 of the
Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS) specifically provides that governments may make exclusions from
patenting on grounds of morality. As the PTO itself has noted, the
utility requirement of 15 USC § 101 permits it to deny patentability to
inventions deemed "injurious to the well being, good policy, or good
morals of society."[^46] In support of the principle that factors
outside the patent law itself can affect patentability, the PTO recently
rejected an application for a patent on a human-animal chimera on the
grounds that it impermissibly embraced a human being.[^47]

Rather than waiting for case-by-case controversies to arise, the PTO
should initiate consideration of how to design principles and procedures
that would better protect moral values in the context of patenting
living organisms. Such a review could be carried out through a process
analogous to the exercise underway regarding the treatment under
trademark law of official insignia of Native American tribes.[^48] Such
a review could help the PTO ensure that the United States' intellectual
property system maintains the proper balance between exclusive rights
and the public domain.

Respectfully submitted by,

Glenn M. Wiser

David R. Downes

Center for International Environmental Law

1367 Connecticut Ave., N.W., Ste. 300

Washington, D.C. 20036

Tel: (202) 785-8700

Fax: (202) 785-8701

Appendix: List of Database Websites

1.  Dr. Duke's Phytochemical and Ethnobotanical Databases,
    \<www.ars-grin.gov/duke\>

2.  NAPRALERT, \<http://stneasy.cas.org/\>

3.  Nuffic/CIRAN International Indigenous Knowledge (IK) Network,
    \<www.nuffic.nl/ciran/ik.html\>

4.  Phytochemical Society of North America's "Links to Phytochemical
    Resources on the Web," \<www.fin.edu/orgs/psna/links.html\>

5.  "Prelude" database of traditional veterinary medicine, Tropical
    Diseases Webring,
    \<http://pc4.sisc.ucl.ac.be/prelude/prelude_HomePage.html\>

6.  Society for Research and Initiatives for Sustainable Technologies
    and Institutions (SRISTI), \<http://csf.Colorado.EDU/sristi/\>

7.  World Bank, "Database of Indigenous Knowledge and Practices" in
    Sub-Saharan Africa, \<www.worldbank.org/afr/ik/datab.htm\>

21\.

COMMENTS TO USPTO REGARDING

"NOTICE OF PUBLIC HEARING AND REQUEST FOR COMMENTS ON ISSUES RELATED TO
THE IDENTIFICATION OF PRIOR ART DURING THE EXAMINATION OF A PATENT
APPLICATION"

PUBLISHED MAY 27, 1999

These comments are submitted by Andrew J. Anderson, Francis H. Boos,
Pamela R. Crocker, Carol Kukurudza, James D. Leimbach, David A. Novais,
Susan L. Parulski, Edith A. Rice, and Walter S. Stevens, all members of
the U.S. Practice Committee of the Eastman Kodak Company Patent Legal
Staff. These comments do not necessarily represent the views of the
Eastman Kodak Company.

[Questions 1-3:]{.underline}

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

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

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

COMMENTS:

We believe the rules for obtaining prior art during the examination of a
patent application are generally adequate, but at least within certain
technologies the procedures followed to obtain such prior art frequently
are not sufficient to have the most pertinent prior art considered.
These technologies include the fast emerging software, multimedia and
internet arts as indicated in the PTO request for comments.

Examiners typically only perform a patent database search, which may be
sufficient for established technologies, but which may not be sufficient
to enable the examiner to understand the basic state of the art within
the fast emerging technologies, as numerous pieces of non-patent prior
art exist that may be material to applications in these fields which
remain unknown to the examiner. To enable identification of pertinent
non-patent prior art in a timely manner to be considered during
examination where the applicant is not aware of such art, however, the
examiner's technical training and non-patent searching capabilities may
need to be improved and supported at an increased level (see comments to
Question No. 6).

To the extent an applicant is aware of potentially material non-patent
art, it is felt that compliance with current rules regarding duty of
disclosure should be sufficient to having such art considered by the
examiner. In the unfortunate instances where submission of known
material information is intentionally withheld, it is believed no change
in the current system would be more effective in minimizing such
occurrences than the current penalty of patent non-enforceability.

[Question 4.]{.underline}

Are prior art searches typically conducted before filing a patent
application with the USPTO? If not, please explain. If so, please
include the following in your response:

\(a\) An identification of the area(s) of technology where it is most
likely that a prior art search would be conducted;

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

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

COMMENTS:

Prior art searches are typically performed in our standard practice in
one form or another (either formal searching by professional searchers,
or in various manners by the inventors).

Such searching is generally performed in all areas of technologies which
we work in (e.g. photographic materials and equipment (cameras,
printing, photofinishing); digital imaging and printing equipment;
health imaging; inkjet and thermal printers; digital image processing
software).

Formal prior art searches conducted normally cover only United States
patent literature, but in some cases may be expanded to foreign patents
and other nonpatent literature.

Database and internet resource searches, when used, typically include
the following: Dialog \"U.S. Patents Full Text\"; USPTO \"U.S. Patent
Full-Text Database Full Text Manual\"; Derwent \"World Patent Index\";
Chemical Abstracts; \"Full Text European Patents\" (Dialg, STN,
Questel-Orbit); IBM Patent Database.

[Question 5.]{.underline}

Please indicate whether Information Disclosure Statements are frequently
submitted and, if so, which ... types of prior art documents are
included...

COMMENTS:

It is believed this information should be readily available to the PTO
based on their records. Our practice is to submit an IDS when we are
aware of any type of prior art which we believe may be material to the
examination. As we typically perform some type of prior art searching in
most cases, we typically include an IDS citing what we believe to be the
closest art based upon such searching. While such IDS's typically
include US and foreign patent documents, nonpatent literature is
included where it is known and believed to be material.

[Question 6.]{.underline}

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

COMMENTS:

There should be no formal requirement that applicants perform a prior
art search, or disclose where or whether or not a prior art search was
conducted. While it may be good practice for applicants to perform such
searching so as to be better prepared to draft an appropriate
application and not waste resources on non-patentable inventions, this
should be left to each applicant\'s discretion. An applicant\'s
continued obligation to comply with Rule 56 (submission of any known
information which would be material to patentability) should be the only
requirement with submission of prior art. As long as we have an
examination system there should continue to be a full independent search
performed by the PTO as part of such examination. To enable
identification of pertinent non-patent prior art in a timely manner to
be considered during examination, the examiner's technical training and
non-patent searching capabilities may need to be improved and supported
at an increased level. The imposition of a formal search requirement
where the search is done by other than the PTO would probably also
result in little improvement in the patent system, as there would be no
consistency in the searches (in terms of scope and quality) performed.
Further, a requirement to include indications of where the prior art was
searched may lead to improper reliance by the PTO with respect to the
adequacy of any search performed by the applicant in the indicated
areas. Finally, while the imposition of a formal search requirement is
not recommended, it should be noted that as applicants are already
paying for a SEARCH and examination by the PTO, any changes in the
examination process requiring searching to be performed by applicants
should be reflected in a lowering of patent application fees (so as to
not further increase the cost of patenting for applicants).

[Question 7.]{.underline}

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

COMMENTS:

Applicants are already required to submit any known information which
may be material to patentability. Under 37 CFR 1.56(b)(1), information
is material to patentability when it \"establishes, by itself or in
combination with other information, a prima facie case of
unpatentability of a claim\". Under 37 CFR 1.56 (a)(2) applicants are
encouraged to examine the \"closest information over which individuals
associated with the filing or prosecution of a patent application
believe any pending claim patently defines, to make sure that any
material information contained therein is disclosed to the Office\". Any
prior art relied on during the drafting of the claims of the application
will more than likely define the closest prior art over which the claims
define. Accordingly, it is believed to be good practice to submit such
art for consideration by the examiner as long as the prior art is not
cumulative.

An advantage of submitting this prior art to the Examiner is that the
Examiner would have a clearer idea of the scope of the prior art. This
is especially advantageous in areas where the applicants know of the
best prior art. A drawback is that this may unnecessarily increase the
number of prior art references submitted since prior art which is
cumulative in nature or merely represents well known background material
may be submitted.

Referring to 37 CFR 1.56 (b)(1), in considering prior art relied upon
during the drafting of claims, it is presumed that the claims as filed
are believed to define over this prior art when considered alone or in
combination with other information of which the drafter is aware of.
However, it is possible that the prior art relied upon during the
drafting of the claims may be more pertinent to the filed claims if
combined with information that the applicant is not yet aware of or a
patent which issues after the filing of the application. Therefore,
submitting this prior art would be beneficial in the context of
providing a thorough examination and a valid patent in that it would be
readily available for consideration by the examiner in the event that
new art turns up during prosecution.

[Question 8.]{.underline}

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

COMMENTS:

No. There is no limitation in the proposed requirement that the
nonpatent literature be material to the issue of patentability.
Currently, there is no duty to submit information which is not material
to the patentability of any existing claim. 37 C.F.R. 1.56(a). However,
under the express language of the proposed requirement, it is clear that
[nonmaterial as well as material]{.underline} nonpatent items must be
submitted by applicant as long as those items are attributable to,
authored by, or co-authored by applicant. This is so because the
proposed requirement apparently mandates that [all]{.underline}
nonpatent literature, without limitation, be submitted if the literature
is attributable to, authored by, or co-authored by applicant. In
addition, the language of the proposed requirement makes no provision to
exclude nonpatent literature that is merely cumulative. Currently,
information is not material and thus need not be submitted if it is
merely cumulative. 37 C.F.R. 1.56(b).

Submission of nonmaterial information benefits neither applicant nor the
Office. The Office will incur increased administrative costs by
processing and handling these nonmaterial items of information without
using the information to decide issues of patentability. Applicant will
also incur increased administrative costs and will derive no benefit.
Moreover, internal nonpatent information attributable to, authored by,
or co-authored by the applicant, which applicant apparently would be
required to submit even if nonmaterial, may contain trade secret
information. This trade secret information would then become part of the
public record and accessible by applicant's competitors. Clearly,
neither applicant nor the Office will benefit from submission of
nonmaterial information.

If the proposed requirement were re-written so as to be limited to
material nonpatent information, it is believed such requirement is
already present within the context of applicants' duty of disclosure
under 37 C.F.R. 1.56(a).

[Question 9:]{.underline}

Please identify any types of nonpatent literature documents applicants
should be required to submit to the USPTO in connection with any given
patent application (e.g., conference reports, corporate collections,
documents relied on in drafting an application, etc.).

COMMENTS:

For the reasons provided in response to Question 8, applicants should be
required to submit only those nonpatent literature documents that are
material to the issue of patentability.

[Question 10.]{.underline}

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

COMMENT:

The objective of the proposed requirements, as stated by the Office, are
to improve the searching for prior art in the fast-moving "emerging
technologies." In efforts to address this problem, the Office states it
is currently assembling a larger, more complete nonpatent literature
prior art collection in emerging technologies and is working on
providing patent examiners with better access to nonpatent literature in
new areas of technology. Such efforts are commended, and it is believed
the U.S. patent system would be better served by the Office's continued
and accelerated efforts in these regards, rather than codifying
burdensome new searching and information disclosure requirements on
applicants which may continue long-after the current need has passed. It
is believed that increased ongoing technology update training for
examiners would also be useful to assist keeping up with such
fast-moving emerging technologies. The cost of establishing increased
searching capabilities and technology training should of course be borne
by the end users of the patent system (i.e., applicants), but increased
fees should only result after current excess funds are not diverted away
from the PTO budget.

[^1]: 64 Fed. Reg. 102 (1999).

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

[^3]: These Comments use the shorthand term "traditional knowledge" to
    refer to the knowledge, practices, and innovations developed and
    held by indigenous and local communities. However, it is important
    to recognize that this "traditional" knowledge is not static but
    constantly evolving, and many "traditional" knowledge systems
    continue to produce significant innovation.

[^4]: *See* Francesca Grifo, et al., *The Origins of Prescription
    Drugs*, *in* [Biodiversity and Human Health]{.smallcaps} 131, 136
    (Francesca Grifo & Joshua Rosenthal eds., Washington, D.C.: Island
    Press 1997). The analysis included compounds from all biological
    sources, including animals, plants, fungi, and microorganisms. *Id.*
    at 137. The top 150 compounds were identified according to the
    number of prescriptions filled. *Id.* at 136.

[^5]: *Id.* at 137, 139.

[^6]: *See* Catherine A. Laughlin and Alexandra S. Fairfield, *Natural
    Products for the Treatment of Infectious Diseases*, *in*
    [Biodiversity and Human Health]{.smallcaps} 164, 176.

[^7]: *Id.* at 177.

[^8]: *See* Paul Alan Cox, *Indigenous Peoples and Conservation*, in
    [Biodiversity and Human Health]{.smallcaps} 207, 215.

[^9]: *Id.* at 214.

[^10]: *Id.*

[^11]: *Id.* at 216.

[^12]: U.S. Constitution, Art. 1, § 8, cl. 8. "The Congress shall have
    power. . . To promote the progress of science and useful arts, by
    securing for limited times to authors and inventors the exclusive
    right to their respective writings and discoveries."

[^13]: Convention on Biological Diversity, *entered into force* December
    29, 1993, 31 I.L.M. 818 (1992) text available at URL
    \<www.biodiv.org\>. Over 170 countries are Parties to the
    Convention; the United States has signed but not ratified it.

[^14]: 37 CFR § 1.104(a)(1) (emphasis added).

[^15]: *See* 37 CFR § 1.56.

[^16]: *See* Use of Turmeric in Wound Healing, U.S. Patent No.
    5,401,504, issued March 28, 1995.

[^17]: *See, e.g., India Prevents Patenting of Turmeric*, The Statesman,
    Aug. 23, 1997; Sanjay Kumar, *India Wins Battle with USA Over
    Turmeric Patent,* The Lancet 350:724 (1997).

[^18]: *See* Use of Turmeric in Wound Healing, U.S. Patent and Trade
    Office Reexamination Certificate B1 (3500th), April 21, 1998.

[^19]: See Anthony Faiolo, *Amazon Cash Crop*, The Washington Post, July
    9, 1999, at A21.

[^20]: 37 CFR § 1.56 (a).

[^21]: *Id.* § 1.56(b).

[^22]: 35 USC § 102(a)-(b)

[^23]: *Id.* § 102(f).

[^24]: Any invention based on biological material or traditional
    knowledge obtained in violation of applicable laws may also be
    subject to attack under the "tainted research doctrine." *See*
    Michael A. Gollin, Venable, Baetjer, Howard & Civiletti, LLP, "New
    Rules for Natural Products Research" (publication forthcoming).

[^25]: *See* Budapest Treaty on the International Recognition of the
    Deposit of Microorganisms for the Purposes of Patent Procedure.

[^26]: 37 CFR § 1.104(a)(1).

[^27]: *Id.*

[^28]: The data contained in computerized databases qualify as prior art
    publications under § 102(a) and (b). When evaluating whether a
    printed publication constitutes prior art under § 102, courts do not
    recognize a "dichotomy" between "printing" and "publication." *See*
    *In re Wyer,* 210 U.S.P.Q. 790, 793; 655 F.2d 221, 226 (C.C.P.A.
    1981) (citing *Philips Electronics & Pharmaceutical Indus., Inc. v.
    Thermal & Electronic Indus., Inc.*, 171 U.S.P.Q. 641, 646; 450 F.2d
    1164, 1170 (3d Cir. 1971)). Instead, they identify the "probability
    of dissemination" and the "public accessibility" of the item taken
    as a whole as the relevant questions. *Id.* Dissemination by
    printing or other mechanical reproduction is not in itself
    necessary. Rather, there must be a showing that the item in some way
    has "been available and accessible to persons concerned with the art
    to which the document relates." *Philips,* 171 U.S.P.Q. at 647, 450
    F. 2d at 1171, *quoted in Wyer,* 210 U.S.P.Q at 794, 655 F.2d at
    227. Thus, the court in *Wyer* focused on whether the item had been
    "properly classified, indexed or abstracted" in a publicly
    accessible repository of information. Under these principles,
    databases comprise prior art publications under § 102. Because they
    are generally available over the World Wide Web, they are both
    widely disseminated and readily accessible to the public. They are
    usually easily searchable through search engines available at the
    websites or provided by the searchers themselves.

[^29]: *See* 37 CFR § 1.104(a)(3).

[^30]: *See* *id.*; 37 C.F.R. § 1.9(a)(1).

[^31]: Patent Cooperation Treaty (PCT) of June 19, 1970, as amended and
    modified, to which the United States became a party on January 24,
    1978. Available at World Intellectual Property Organization web
    site, \<www.wipo.org/eng/main.htm\>.

[^32]: *See id.* art. 15.5(a).

[^33]: *See* *id.* art. 15.5(b).

[^34]: *See* U.S. Constitution art. 6 § 2; Restatement of Foreign
    Relations Law § 111 (1) (1986).

[^35]: *See, e.g.,* 37 CFR 1.413(c)(3).

[^36]: PCT Regulations rule 33.1(a) (WOPCR 1/40, Jan. 1, 1999),
    *available at* \<www.wipo.org/eng/main.htm\>.

[^37]: *Id*. rule. 31.1(b); PCT International Search Guidelines, PCT
    Gazette, chptr. VI § 1.2 (Special Issue No. 06/1998, Oct. 8, 1998),
    *available in* www.wipo.org/eng/main.htm\>.

[^38]: PCT International Search Guidelines, chptr. VI § 1.2 (emphasis
    added).

[^39]: *See* *Diamond v. Chakrabarty*, 447 U.S. 303, 312 (1980) (citing
    S. Rep. No. 315, 71st Cong., 2d Sess., at 6-8 (1930); H.R. Rep. No.
    1129, 71st Cong., 2d Sess., at 7-9 (1930)).

[^40]: 37 CFR § 1.163(a).

[^41]: *Id*; *see also* 35 USC § 161 (patent cannot be issued for a
    plant found in an uncultivated state)*.*

[^42]: *See* U.S. Plant Patent No. 5,751 (issued June 17, 1986).

[^43]: *See* 37 CFR § 1.56(a).

[^44]: *See* Order Granting Request for Reexamination, No. 90/005,307 at
    3 (May 28, 1999) (deciding that two herbarium sheets of *B. caapi*
    raise a substantial new question of patentability).

[^45]: Communication from Dr. William R. Anderson, July 15, 1999.

[^46]: United States Patent and Trademark Office, *Facts on Patenting
    Life Forms Having a Relationship to Humans*, Media Advisory 98-6,
    April 1, 1998. The Advisory cited *Lowell v. Lewis*, Fed. Cas. No.
    8568 (C.C. Mass. 1817), as quoted in *Tol-O-Matic, Inc. v. Proma
    Product-und Marketing Gesellschaft, M.B.H.*, 20 U.S.P.Q.2d 1332,
    1338; 945 F.2d 1546, 1552 (Fed. Cir. 1991). Based upon *Lowell*, the
    PTO concluded that "inventions directed to human/non-human chimera
    could, under certain circumstances, not be patentable because, among
    other things, they would fail to meet the public policy and morality
    aspects of the utility requirement."

[^47]: *See* Rick Weiss, *US Ruling Aids Opponent of Patents for Life
    Forms,* The Washington Post, June 17, 1999, at A2.

[^48]: *See* 46 Fed. Reg. 13,004 (Mar. 16, 1999); Pub. Law 105-330, §
    302 (1998). Similarly, the World Intellectual Property Organization
    has recently launched a program to study and evaluate similar issues
    at the global level, including extensive consultation with various
    constituencies. *See* World Intellectual Property Organization,
    *Main Program 11: Global Intellectual Property Issues*, Doc. No.
    A/32/WO/BC/18/2 at 105 (1998), *available at* \<www.wipo.org\>.