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[dab2d]

I was wondering how they do it? It seems that they would have a lot of inventors with a lot of published art that may or may not be relevant? Does someone go through every publication they have for every application they submit.

What about the duty of others? It would seem that their patent department would have to send every related PA that they have come across. How would they handle such a thing?

Is there a pass when entities become numb because of the vast number of applications that they process? Is showing a good faith effort to comply enough, even if you do no submit everything that you could possibly submit.

[George White]

Not a direct answer to your post but maybe relevant. I worked at a large company of the size class of IBM. A couple of years ago they told engineers to stop using engineering/inventors notebooks. Also, browsing through patents is discouraged.

--George

[bleedingpen]

I was wondering how they do it? It seems that they would have a lot of inventors with a lot of published art that may or may not be relevant? Does someone go through every publication they have for every application they submit.

What about the duty of others? It would seem that their patent department would have to send every related PA that they have come across. How would they handle such a thing?

Is there a pass when entities become numb because of the vast number of applications that they process? Is showing a good faith effort to comply enough, even if you do no submit everything that you could possibly submit.

They go for cumulative effect by submitting plenty of the most relevant references. 

[smgsmc]

Not a direct answer to your post but maybe relevant. I worked at a large company of the size class of IBM. A couple of years ago they told engineers to stop using engineering/inventors notebooks. Also, browsing through patents is discouraged.

--George

This statement has me baffled.  What's the point?  Usually corporations have to keep bugging scientists/engineers to maintain notebooks.  What if you need to establish date of inventorship?  Or, what if you had to prove you actually performed the work (a big issue after the Hendrik Schoen scandal)?

[smgsmc]

I was wondering how they do it? It seems that they would have a lot of inventors with a lot of published art that may or may not be relevant? Does someone go through every publication they have for every application they submit.

What about the duty of others? It would seem that their patent department would have to send every related PA that they have come across. How would they handle such a thing?

Is there a pass when entities become numb because of the vast number of applications that they process? Is showing a good faith effort to comply enough, even if you do no submit everything that you could possibly submit.

I have several megacorp clients.  They don't do anything special.  On rare instances, the in-house counsel will bring my attention to references to be cited in an IDS.

[Robert K S]

Not a direct answer to your post but maybe relevant. I worked at a large company of the size class of IBM. A couple of years ago they told engineers to stop using engineering/inventors notebooks. Also, browsing through patents is discouraged.

I too question the utility of either piece of advice.  I won't say it couldn't make sense in any context, or that it might not have some meaning if elaborated upon, but in so simplistic a form, such an instruction would be the opposite of what my advice would be.

[George White]

Regarding my baffling comment: I was not providing advice just noting what one large company has done. I imagine the reason for discouraging engineers from spending a lot of time browsing patent literature is to minimize the case of treble damages being asked for due to a copy of a patent being found on one engineer's  (out of thousands) hard drive in discovery.

Regarding the no-notebook policy: there aren't many interferences and it is hard to prove diligence every min. between conception and reduction to practice. But it might be very easy to find an inventor's own words saying she was giving up on a particular approach - thus irretrievably abandoning the invention.

-George

[Robert K S]

Interesting misconception.  You don't need to document every minute to prove diligence.  1.131 affs are winnable, and the first step is proving conception with documented evidence.

[ChrisWhewell]

Minefield.   Practitioners X,Y are materially involved in successful prosecution of patent x,xxx,xxx in 1995 for use of gold(III) oxide in catalyzing reaction Q in which a hydroxy group is oxidized to ketone, the Jones reference being cited in an IDS.  In 2005 X,Y work on another case relating to oxidation involving an alcohol but the Jones reference did not show up on the search conducted by outside search firm Z and is not cited in new case.   Patent issues and opposing counsel later ponders lack of citation of Jones reference.......

The ability to recall the contents of every reference one has ever cited or seen cited by the Ex. in every case is definitely an asset, one that all other practitioners in countries foreign to the US will likely never need to exercise.

Brings up an interesting question - if say a German patent attorney is aware of a reference and is somehow materially involved in the prosecution of a US case, can the German atty's failure to cite a reference cause a problem later ?   My guess is yes, if they're materially involved and it can be shown that they withheld.

[dab2d]

I was thinking that one approach would be to submit everything each of the inventors have worked on. However, I don't want to be a accused of burying the reference....

Do you, in effect, have to do a prior art search of your company's PA for every patent app you file?

[ChrisWhewell]

With all the supposed "harmonization" of patent laws, rules attendant to "globalization" of the world, why did the lawmakers overlook harmonizing Rule 56 ?   Inadvertent oversight ?   The little devil who sometimes appears on my left shoulder told me it was intentional.

I'm a little surprised there's not practitioner's movement in the US to get that thing "harmonized", as a matter of practicality.

[ChrisWhewell]

I'm a little surprised there's not practitioner's movement in the US to get that thing "harmonized", as a matter of practicality.

Its because practitioners are too busy to participate in any such "movement" - they're busy burning clients' and their own time rifling through old IDS's in keeping with their Duty.

[jeffkatz]

Speaking of inventors notebooks, rather than buying a physical book, I was wondering if it is permissible to use something like Google Docs which keeps a revision history-

https://docs.google.com/support/bin/answer.py?answer=190843?

Thanks.

[JimIvey]

Speaking of inventors notebooks, rather than buying a physical book, I was wondering if it is permissible to use something like Google Docs which keeps a revision history-

https://docs.google.com/support/bin/answer.py?answer=190843?

Thanks.

I don't see why that wouldn't work.  It's all about how probative it is in court.  I assume it's really hard to hack into Google to fake the revisions and dates, so I think it would probably work well.

At the same time, don't place too much emphasis on dates of conception.  In fact, under the new law, dates of conception are much less significant, if relevant at all.  I suspect such notebooks will still have some relevance to prove who invented what, not so much when it was invented.

Regards.