INFORMATION OVERLOAD AT THE U.S. PATENT AND TRADEMARK OFFICE: REFRAMING THE DuTY OF DISCLOSURE IN PATENT LAW AS A SEARCH AND FILTER PROBLEM

ABSTRACT The United States Patent and Trademark Office (USPTO) receives more prior art submissions by patent applicants than its patent examiners have the capacity to process. Although applicant prior art submissions are highly likely to contain references material to prosecution, evidence suggests that overburdened examiners often fail to utilize references submitted by applicants in their examination of patent applications. The information overload suffered by patent examiners has deleterious effects on patent quality, since examiners fail to identify and apply the references most relevant to the examination of patent applications. The vision of patent examiners as perfect filters of patentability and of information as always benefiting the public good is both idealistic and unrealistic. Despite their expertise, patent examiners are human and fallible, vulnerable to the effects of information processing overload and the cognitive biases attendant to decision-making by a boundedly rational actor. Failing to address these problems will likely result in frustrated applicants, overburdened patent examiners, and reduced patent quality. This Article proposes to solve both the plague of inequitable conduct allegations in litigation and the administrative burdens of complying with the duty of disclosure by refraining disclosure obligations for the information age. Reframing the duty of disclosure in this fashion would require no modifications to statutory provisions, few alterations to administrative rules and regulations, and only modest changes to existing case law. Thus, the approach suggested in this Article is both legally conservative and administratively feasible. TABLE OF CONTENTS INTRODUCTION I. THE GENESIS OF INFORMATION OVERLOAD AT THE USPTO A. The USPTO Overwhelmed 1. The Overwhelming Effects of the Duty of Disclosure i. The Utility of the Duty of Disclosure ii. The Under-Utilization of Disclosed References 2. The USPTO's Response B. The Inequitable Conduct Doctrine's Effects on the Disclosure of Information 1. The Mercurial and Unforgiving Inequitable Conduct Doctrine 2. The Expanded Universe of Potentially Material References 3. Cost Control and Risk Management II. DEFINING INFORMATION OVERLOAD AS A SEARCH AND FILTER PROBLEM A. Information Overload and Regulatory Unreasonableness 1. Defining the Problem 2. Resolving Regulatory Unreasonableness B. Reframing the Duty of Disclosure for the Information Age 1. Modernizing the USPTO's Treatment of Cited References i. Automatically Establishing a Primary Search Pool of References ii. Automatically Providing Information Regarding Related Applications iii. Eliminating the Requirement for Examiners to Individually Consider Each Reference iv. Providing a Mechanism for Applicants to Request Individual Consideration of Specific References 2. Revising the Process for Citing References i. Current Procedures for Citing References ii. Proposed Procedures for Citing References C. Addressing Hurdles to Change 1. Administrative and Technological Feasibility 2. Legal Hurdles III. PATENT QUALITY AND THE LIMITS OF THE LAW A. Expanding the Duty of Disclosure B. Providing Disincentives for Excessive Disclosure C. Abrogating the Duty of Disclosure D. Litigation-Focused Proposals CONCLUSION INTRODUCTION The United States Patent and Trademark Office (USPTO) receives more prior art submissions by patent applicants than its patent examiners have the capacity to process. (1) Although applicant prior art submissions are highly likely to contain references material to prosecution, evidence suggests that overburdened examiners may tend to ignore references submitted by applicants in their examination of patent applications. …