Duty of disclosure without disclosure being considered

Started by AbstractIdeal, 10-06-18 at 12:33 AM

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Rheo

Maybe he's not in the United States, or maybe it's none of your beeswax, AbstractIdeal. You aren't getting bossy are you?

EvilLost

@AbstractIdeal: What exactly is your objective here?

Strictly speaking, you seem to be correct. 1.56 MUST be fulfilled. ONE way to fulfill 1.56 is via 1.97/1.98. I don't know of any cases on this point, but a reading of 1.56 seems to imply that 1.97/1.98 are not required.


So what?

Its very easy to obtain a shit patent.

You should understand that "obtaining" a patent means almost nothing.  The first step in any patent infringement suit is to challenge the validity of the patent. The quality of the examination is directly proportional to the strength of the resulting patent. Complying with 1.56 without having references considered is no different than poorly drafted claims. It simply gives the opposition more ammunition in attacking your patent should you try to enforce it.


Most laypeople seem to think that "getting" the patent is the big step. Most patent professionals understand that a patents value is directly related to the strength of its drafting and prosecution. If the patent is poorly drafted or weakly prosecuted, then it probably isn't worth the paper its printed on.


lazyexaminer

MPEP 2010 explains that the Office does not enforce inequitable conduct issues, that is for the courts. So 1.56 is not not a condition of patentability investigated during examination. Other than academically, an examiner (such as snapshot or myself) has no interest in the duty of disclosure besides knowing when the IDS rules are satisfied.

And, the IDS rules are pretty easy to satisfy. In the worst case you might have to file an RCE.

If you want to make novel arguments about 1.56, 1.97 and 1.98, that's certainly your right. Maybe you'll be right. To me your reading of the rule makes little sense. The second sentence of 1.56(a) says: "The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability." If I read this thread correctly, you are proposing knowingly submitting the material in a way such that it will not be considered. If that's the case, the Office is not aware of and evaluating the teachings and the stated purpose of the rule will not be satisfied. Additionally, since you'd clearly be doing this knowingly, it does not seem that you'd be acting in good faith and candor.

But again, that's not my decision and I don't know what a court will say, so yeah maybe you'll be right. Or maybe your patent will be unenforceable. If you want to be the test case, be my guest.
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

AbstractIdeal

Quote from: lazyexaminer on 10-15-18 at 05:09 PM
MPEP 2010 explains that the Office does not enforce inequitable conduct issues, that is for the courts. So 1.56 is not not a condition of patentability investigated during examination. Other than academically, an examiner (such as snapshot or myself) has no interest in the duty of disclosure besides knowing when the IDS rules are satisfied.

Thank you for pointing that out. I wasn't aware of that, and some of the information I saw in the Federal Register when I was researching this indicated otherwise. I'm not going to bother looking into this, but I'm curious when that changed.

QuoteAnd, the IDS rules are pretty easy to satisfy. In the worst case you might have to file an RCE.

I agree that the IDS rules are usually pretty easy to satisfy, but there are a lot of situations where the best course of action is not clear. For example, if an international search report comes back with only "A"/background references that aren't really relevant, is it worth it to pay a fee to have that considered after a notice of allowance? Is it worth it to pay an RCE fee to have it considered? That answer could go either way, but if you don't understand the rules and implications for those choices, then you are working with incomplete information.

And I disagree with your implication that filing an RCE is not significant. At best, filing a QPIDS with a conditional RCE delays issuance of the patent by a few weeks. In very rare cases such as certain pharmaceutical patents, a few weeks' term could be worth millions of dollars. At worst, filing a QPIDS can lead to reopening prosecution based on a poor rejection, requiring an appeal, which can delay issuance of the patent for a few years. You don't get PTA for delays after three years that occur after filing an RCE, so the applicant is stuck with a shorter patent term due to no fault of their own.

Quote from: EvilLost on 10-15-18 at 03:28 PM
Complying with 1.56 without having references considered is no different than poorly drafted claims.

No, complying with 1.56 without having references considered means that there is only a presumption that the references do not invalidate the patent, as opposed to a strong presumption. ("The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not." MPEP 2003) Having that presumption be strong may be worth the IDS/RCE fee. I think you could reasonably take the position that filing the RCE is almost always worth it, but I don't think you can fully support that position without first establishing what the consequences are for not doing so.



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