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[patentatt]

In this presentation from Sep. 2007, former OED director Moatz stated that the "inquiry reasonable under the circumstances" language in (then) Rule 10.18 requires persons to read every single page of every single reference submitted with an IDS:

http://www.patentlyo.com/patent/MoatzHarry_presentation.pdf

The issue is discussed more in this presentation from the Oblon firm:

http://www.oblon.com/sites/default/files/news/409_0.pdf

As far as I know, that language from then Rule 10.18 still exists in Rule 11.18 today.  I don't think the rule has relevantly changed.

Question:

1. did the PTO alter the "inquiry reasonable" language in Rule 10.18 (now 11.18) in any way to address the above issue?
2. if they didn't, is it still the Office's position that we have to read every page of every reference in an IDS?
3. has anyone done anything to address the huge burden outlined above?  or did the issue just disappear quietly into the night?

[klaviernista]

I personally haven't seen any updates on this issue.  But given question 1 (in your other post), I think you would be well served to read each and every word of the references you are thinking about submitting (or not).  The post issue fee period is the one time where I will actively try to consider the materiality of a reference and decide whether to submit it in an IDS.  In all other cases (at least pre-thereasense), I would look through a reference but would submit it if it was at least "potentially" relevant. 

Post Therasense, I think that practitioners have a lot more leeway to characterize references as irrelevant.  In my view, that case essentially established an "I made a mistake defense" to inequitable conduct.  Whether or not the PTO (particularly OED) will take the same view is another matter, of course.

[JimIvey]

I'm not finding a Rule 10.18, at least not one on the USPTO web site, which presumably include any rule in force since September 2007.  See here.

If the rule that requires a practitioner to read each and every page of a cited reference is 37 CFR 11.18, I don't believe that to be a reasonable interpretation of the rule.

If a reference is, indeed, a "paper" submitted by the Applicant, 11.18(b)(ii)-(iv) require that the paper be legally and factually correct.  What if a reference is arguably "material" but is factually inaccurate?  You commit an ethical violation if you don't cite it and if you do cite it.

The only reasonable application of that rule to references cited in an IDS is that the copy submitted must be true, correct, and complete.  To the extent that the Applicant makes any representations whatsoever about such a reference is that the copy is an accurate one of a reference that might be material under Rule 1.56.

I don't believe the rules required that the practitioner read each and every page of a cited reference except as required to ensure that any copy submitted is true and correct.

I'd feel better about ignoring the thoughts of the USPTO if the person speaking didn't have authority to de-register me.  Oh well....

Regards.