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[mnb]

I was wondering if at least for enablement purposes, I can write in the detailed description "US Patents Nos. 1-7,777,777 (the latest patent number whatever it is) are hereby incorporated by reference herein." Is there a specific rule proscribing that? Please comment away.

[JimIvey]

First, I don't see a benefit from doing that.

Second, what do you do if one patent defines "a" to mean "one or more" and another defines "a" to mean "exactly one?"  In other words, with nearly 8 million patents incorporated by reference into your own, how can you be sure that there aren't directly contradictory definitions for a term you use, vitiating any teaching that your application might have otherwise provided?  Even if you define important terms yourself, incorporating contradictory definitions by reference would very likely render your defined terms vague or at least ambiguous.

Then, there's the whole issue of the X patents.

I wouldn't do it.  I don't see any good and a whole lot o' bad coming from it.

Regards.

[JustAnotherExaminer]

Make sure to put them on the IDS too.

[mnb]

if you declare stuff in the app, it is the same as ids no? i dont think i have to put stuff in ids and even if i do, i say patents 1-7,777,777 or have a macro in word to do it. so i dont think thats a prob.

also, in order to get around different meanings, you can just say something along of all the terms are defined as in the app and anything contradictory does not override this definition.

anything else?

[DogDayPM 9er9er9er]

if you declare stuff in the app, it is the same as ids no? i dont think i have to put stuff in ids and even if i do, i say patents 1-7,777,777 or have a macro in word to do it. so i dont think thats a prob.

also, in order to get around different meanings, you can just say something along of all the terms are defined as in the app and anything contradictory does not override this definition.

anything else?

Mention of references in the application does not cover your duty to disclose; you must also list them in an IDS.

As you say, this is "no problem" since you'll write a macro dump them into WORD for you.

I'm not positive, but I think there are about 25 slots for US references per page of an IDS list filing.

So, your IDS will be just a tad over 300,000 pages.  Since it'd be a hassle to file electronically (because you'd have to break it up into a whole bunch of separate PDFs due to the data size), you should probably file it by paper.  You'll need about 620 reams of paper, which will run you about $3700.  Shipping weight is about 3000 lbs, so you might want to take several quotes on the job, you know, shop around, etc.  Oh yeah, almost forgot - you should probably budget about $450 for toner.

[mnb]

as far as i know, i think you fulfill your duty of disclosure if you mention the known prior art in the app and filing ids in that case is not required no? it may be suggested but since the applicant disclosed it i dont think 1.98 should be a prob no? i cannot be accused of hiding anything since i disclosed everything. Or for example, if i have a web related invention, can i incorporate by reference every granted patent from 1950 an on?

besides this paper technicality, what other problems are existent?

[dablueman]

besides this paper technicality, what other problems are existent?

Umm...perhaps pissing off every person that will have to review your application.

[mnb]

is there anything in mpep, USC, CFR or case law that prohibits me from doing this? any potential loopholes?

[DogDayPM 9er9er9er]

as far as i know, i think you fulfill your duty of disclosure if you mention the known prior art in the app

"As far as I know" and "I thought we were fulfilling the duty".  Good luck with that.  Aren't you working in a firm?  Might want to verify with the managing partner or committee that the malpractice insurance is paid up.   

[mnb]

I am not doing this practice. Yet. I started the thread with "I was wondering".

I want to know if there is a time limit or a number limit on incorporation by reference? Or can I incorporate an entire patent class? What are the potential substantive legal pitfalls?

[DogDayPM 9er9er9er]

I am not doing this practice. Yet. I started the thread with "I was wondering".

Yeah, I caught that point.  But you're a practitioner who's unclear on how to fulfill the duty of disclosure and apparently incurious about it even though someone has told you a list in your spec won't fulfill the duty. 

Admittedly, 1.56 is poorly written in this regard because it says disclosure in accordance with 1.97 and 1.98 satisfies the duty, but it doesn't say it's the only way to satisfy the duty, and says nothing about what does not fulfill the duty.  But the PTO's position is very explicit in that 1.97 and 1.98 are the only acceptable way to meet the obligation, and also specifically states that a listing of the references in the application does not do so. 

As far as time/# limits on incorporation by reference, I've never seen any limits stated.  Pitfalls are already listed by Jim/dablueman.  And to dablueman's point, if you eventually decide you should cite all 7 million (or, for a class, 20,000 or so) references in an IDS, well, you can be sure that the examiner who draws that IDS is going to be certain they find what they need to never grant you a patent. 

[dablueman]

What are the potential substantive legal pitfalls?

1) A guaranteed 112, 2nd rejection on the definitions of the incorporated references unless you define each and every word you'll use in the claims as well as all terms that you could add later to overcome art. Also you'll have to review all those patents to make sure the terms you use in your definitions don't themselves have contradictory definitions in the incorporated references.

2) As DogDay pointed out, a malpractice suit.

3) Potential referral to Office of Discipline and Enrollment, and if you're an attorney then your state's bar, for abuse of process.

P.S. Why in the world are you even thinking of doing this?
P.S.S. Expect the examiner to not react kindly to you doing this. For instance, an examiner that knows the rules well will turn it back on you and will invoke §1.57(e) "The examiner may require the applicant to supply a copy of the material incorporated by reference. If the Office requires the applicant to supply a copy of material incorporated by reference, the material must be accompanied by a statement that the copy supplied consists of the same material incorporated by reference in the referencing application." Enjoy trying to get the client to pay the bill for the number of hours it would take you to do that.

[dablueman]

And to dablueman's point, if you eventually decide you should cite all 7 million (or, for a class, 20,000 or so) references in an IDS, well, you can be sure that the examiner who draws that IDS is going to be certain they find what they need to never grant you a patent. 

Think of all the people that are on time contraints that would have to review all those pages of IDS: the application intake people that review for formalities, the examiner, his/her SPE, quality control, the Board's formality checker's, the Board, the Court of Appeals...everyone.

I didn't say the examiner would retaliate and never grant a patent. However, if you've already killed the examiner's production that biweek with a stunt like this, I'd expect a very complete review of the application for adherence to the rules.

http://www.ipo.org/AM/Template.cfm?Section=Home&Template=/CM/ContentDisplay.cfm&ContentID=8721

Check out slide 10, bullet 2, of the above presentation given by the patent office on how to make the examiner your friend.

[ChrisWhewell]

I was wondering if at least for enablement purposes, I can write in the detailed description "US Patents Nos. 1-7,777,777 (the latest patent number whatever it is) are hereby incorporated by reference herein." Is there a specific rule proscribing that? Please comment away.

The answer is no.

[DogDayPM 9er9er9er]

I was wondering if at least for enablement purposes, I can write in the detailed description "US Patents Nos. 1-7,777,777 (the latest patent number whatever it is) are hereby incorporated by reference herein." Is there a specific rule proscribing that? Please comment away.

The answer is no.

Hiya Chris, glad to see you chiming in.  But which question were you answering "no"?  As in, "no" that won't help enablement; or, "no", there is not a specific rule proscribing such conduct?

Moochas grassias, (time to mow I guess), etc.