©  2007 Michael E. Kondoudis

This post is a slight departure from previous posts on this blog in that it focuses on communications between prosecutors and clients rather than communications between prosecutors and the U.S. Patent and Trademark Office.

The duty of candor that every applicant and patent practitioner owes to the U.S. Patent and Trademark Office (USPTO) has been of increased attention since the Federal Circuit issued its opinion in McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 06-1517 (2007). For now, I will leave the debate about the practical effects of that decision to others. Instead, this post focuses on ways a practitioner can advise and remind a client of this important duty.

A Review of the Duty of Candor (Rule 56)

The filing of a patent application in the USPTO imposes an obligation on all persons involved with the prosecution of that application to satisfy a duty of candor. This duty of candor is articulated by Section 1.56 of Title 37 of the Code of Federal Regulations (commonly referred to as Rule 56) and requires that all information “material to patentability”  must be cited to the USPTO. Information is “material to patentability” when (1) it is not cumulative to information already of record in the application, and (2) either: establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or refutes, or is inconsistent with, a position the applicant has taken in (i) opposing an argument of unpatentability relied on by the Office, or (ii) asserting an argument of patentability.

A failure to satisfy this duty can have severe consequences, including the unenforceability of any patent that issues from the application. I submit, therefore, that it is only prudent to expressly advise clients of this continuing duty, and to do so at multiple stages of prosecution. The following are examples of the different form paragraphs I find useful.

1. Upon Filing Of An Application

Please be advised that every applicant for a U.S. patent has a duty of candor and good faith in dealing with the United States Patent and Trademark Office. This duty extends to all persons involved with the filing and prosecution of an application and requires, during the pendency of the application, the submission of all known information that is material to the patentability of any claim. Accordingly, if you are presently aware of any information that may be material, please let us know so that we may submit that information in an Information Disclosure Statement (IDS). Also, if you become aware of any information that may be material, please let us know as soon as practicable after it is discovered so that we may submit that information in an IDS. A copy of the rule setting forth this duty, along with a memorandum about the duty of disclosure, are enclosed for your convenience and future reference. If you have any questions about this duty, please let us know so that we may answer them for you.

2. After A First Or Non-Final Office Action Has Issued

We remind you that information material to patentability must be cited to the U.S. Patent and Trademark Office. Since an Office Action has been issued in this application, any information cited at this time will be considered as a matter of right only if accompanied by either (i) a government fee or (ii) a statement that the information was first cited in any foreign counterpart, or first discovered, within the last three months. Accordingly, if you are or become aware of any information material to patentability that has not yet been cited, please inform us as soon as possible.

3. After A Final Office Action Has Issued

We remind you that information material to patentability must be cited to the U.S. Patent and Trademark Office. Since a final Office Action has been issued in this application, any information cited at this time will be considered as a matter of right only if accompanied by both (i) a government fee and (ii) a statement that the information was first cited in any foreign counterpart, or first discovered, within the last three months. Accordingly, if you are or become aware of any information material to patentability that has not yet been cited, please inform us as soon as possible.

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington DC
www.mekiplaw.com

Share This

Email Subscriptions

I know that RSS feed readers/aggregators aren’t for everyone. So, I am pleased to announce the addition of the option to subscribe to this blog via email. Just enter your address and follow the directions. Then sit back and my latest posts will be delivered to your inbox.

Comments

In response to several requests, I have modified the rules for leaving comments. From now on, those who wish to comment will not be required to provide a name and e-mail address. Keep the comments coming.

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington
www.mekiplaw.com

Share This

©  2007, Michael E. Kondoudis

The Policy of “Compact” Prosecution

Patent prosecution before the U.S. Patent Office is conducted under a policy of “compact” prosecution. Under this policy, prosecution of an application is generally designed to conclude with the Examiner’s consideration of one response to one non-final Office Action. That is, a second Office Action, responding to an applicant’s reply to a first Office Action, is usually final, unless an applicant places the application in condition for allowance. Stated goals of this policy of “compact” prosecution are to provide applicants with prompt and complete examination of their applications. To achieve these goals, the policy imposes specific obligations on Examiners. As the Office itself has explained, “[t]he Office’s policy of compact prosecution requires that both examiners and applicants provide the information necessary to raise and resolve the issues related to patentability expeditiously.” (Official Gazette of 07 November 2003).

The Office’s Obligations

A first Office Action on the merits should ordinarily identify every issue that stands between the applicant and allowance of the application. (See The Manual of Patent Examining Procedure (MPEP) §707.07(g)). And, the Office Action should do so by presenting the best case against patentability. (See, for example, MPEP §§2164.04 and 2106II). In theory, this provides an applicant with the opportunity to respond to each issue so that, if each issue is successfully rebutted or otherwise addressed, the application would be condition for allowance. Conversely, if the applicant not successful, the application should be in condition for appeal. A failure to provide the best case such that a new rejection, new art, and/or expanded arguments are required in a subsequent Office Action generally precludes the finality of that subsequent Office Action. (See MPEP §706.07(a)). In practice, this prevents piecemeal prosecution of the application, which the MPEP instructs should be avoided. (MPEP §707.07(g)).

The obligations imposed on Examiners by the U.S. Patent Office’s policy of compact prosecution have important practical ramifications. Firstly, in each Office Action, each claim should be reviewed for compliance with every statutory requirement for patentability, even if one or more claims are found to be deficient with respect to some statutory requirement. Additionally, whenever practicable, an Office Action should indicate how rejections may be overcome and how objections and informalities may be resolved. The rationale is that a failure to follow this approach can lead to unnecessary delays in the prosecution of the application. (See, for example, MPEP §2106II).

These obligations can be of strategic value in prosecution and should not be discounted. The following are just a few examples of ways an applicant may use them.

Examples of Using the Policy of Compact Prosecution

1. The Office Action merely asserts that claims are not enabled

* * * * *

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under the first paragraph of 35 U.S.C. §112 are respectfully requested.

In the event that the Office maintains this enablement rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office articulate, one the record and with specificity sufficient to support a prima facie case of non-enablement, the factual basis on which it is alleged that it would be beyond the level of ordinary skill in the widget art to make and use the claimed invention without undue experimentation. (MPEP §2164.01).

2. The Office Action applies the cited art only against the independent claims

Lastly, it is noted that the Office Action fails to specifically address even the expressly recited features of the pending dependent claims. Under the Office’s policy of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. (MPEP §707.07(g)). It is submitted that the present application is not sufficiently informal, does not present an undue multiplicity of claims, or exhibit a misjoinder of inventions, so as to reasonably preclude a complete action on the merits. Thus, it is submitted that the Office’s failure constitutes a failure to expeditiously provide the information necessary to resolve issues related to patentability that prevents the Applicant from, for example, presenting appropriate patentability arguments and/or rebuttal evidence. (See The Official Gazette Notice of November 7, 2003). Additionally, it is submitted that the Office’s failure needlessly encourages piecemeal prosecution, which is to be avoided as much as possible. (MPEP §707.07(g)). Accordingly, in the event that the Office maintains the rejection of any of the dependent claims, Applicant respectfully requests, in the interests of compact prosecution, that the Office apply art against each feature of each rejected dependent claim, on the record, and with specificity sufficient to support a prima facie case of anticipation (or obviousness).

3. The Office Action makes only a general allegation that a claim feature is taught (or suggested) by cited art

An Office Action contends that a claim feature is taught by a patent to Smith but does not identify where/how the feature is taught. And, a careful review of that patent, however, reveals no such teaching. An appropriate response might be:

The Office Action contends that Smith teaches the aforementioned feature of “a widget” of independent claim 1. (Office Action, page 3). This contention is respectfully traversed.

Initially, it is noted that the Office has not identified where in Smith an alleged anticipatory teaching is to be found. Additionally, FIG. 1 of Smith, cited by the Office Action in support of the contentions that Smith teaches the features that immediately precede and follow the subject feature of “a widget,” as well as the written disclosure associated with that FIG. 1, are silent as to the subject feature. Still further, Applicant has carefully reviewed the remainder of patent to Smith, and finds no teaching of “a widget.” Thus, for at least this reason, Smith cannot anticipate independent claim 1.

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §102 are respectfully requested.

In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.

The Law Office of Michael E. Kondoudis
Patent Attorney Washington DC
www.mekiplaw.com

Share This

©  2007, Michael E. Kondoudis

This is the second of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office.

Limitation

It is my belief that a prosecution history that avoids use of the term “limitation” when referring to a claim feature is of greater value in litigation than one in which a prosecutor has used this term. Based on my experience, for some reason, judges and juries seem to attach increased significance to the word “limitation” in legal arguments; perhaps it is because the very word “limitation” has a narrowing connotation that makes it easier for them to adopt a narrower claim construction. For this reason, when I have the option, I prefer not to use the term “limitation,” regardless of how the Examiner characterizes claim elements. Instead, I submit that a better choice is to use the term “feature,” a term that is rather benign and equally as accurate as “limitation.” So, for example, I might write:

The Office Action contends that the widget of the Smith patent meets the aforementioned feature of independent claim 1.

* * * * *

For at least these reasons, the Smith patent cannot teach at least the feature of independent claim 1.

Applicant’s Admitted Prior Art (AAPA)

Many applications, not incorrectly or improperly, discuss known art when explaining the need for the solution provided by a claimed invention. Typically, these discussions, located in the background section of the application, are fair game to apply against the claims of the application. And, when cited by an Examiner, these discussions are commonly characterized as “Applicant’s Admitted Prior Art (AAPA).”

Even if this characterization by the Examiner is not incorrect, a practitioner, as an advocate for an applicant, can produce a far more valuable prosecution history by using a more benign characterization of any such discussion. Like the term “limitation,” based on my experience, for some reason, judges and juries seem to attach increased significance to the word “admitted.” So, when possible, I usually characterize art discussed in an application as “conventional.” Thus, for example, I may write:

Claim 1 stands rejected under 35 U.S.C. 102 as anticipated by the widget discussed in the background section of Applicant’s disclosure (hereinafter “the conventional widget”).

* * * * *

The Office Action contends that the conventional widget includes the aforementioned feature of independent claim 1.

The Examiner

There are two schools of thought about referring to “the Examiner” in communications to the patent office. One says it is a better practice to not make an Applicant’s arguments personal by personally challenging an Examiner’s positions. The other school says it is acceptable. I subscribe to the former school because I do not believe that a patentability argument will be any more effective when it is made personal. In fact, if there is any effect of making a response personal, I submit that it would most likely be detrimental. So, when I have the option, I choose to use alternative sentence/argument constructions that do not require reference to “the Examiner,” such as “the Office Action” or “the Office.” So, for example, I may write:

The Office Action rejects claim 1 as anticipated by …

or

The Office Action states …

or

The Office contends …

Of course, every rule has an exception. When thanking the Examiner or when an Examiner has taken the time to suggest a solution to a rejection or objection, I submit that it can only be advantageous to acknowledge this effort. In doing so, I may write:

The Office Action objected to claim 5 on formal grounds. In response, Applicant has amended this claim in the manner kindly suggested by the Examiner.

or

The Office Action objected to paragraph [0032] of the Specification for an informality. In response, Applicant has amended this paragraph to improve its idiomatic English form in view of the Examiner’s comments.

Prior Art

It is my belief that use of the phrase “prior art” in prosecution yields a less valuable prosecution history than one which avoids use of this phrase. The primary reason is that the phrase “prior art” is a phrase of art that arguably constitutes an admission of the status of asserted art as prior art, undermining any later argument to the contrary. Thus, when the option is available, I use the alternative phrases “cited art” or “asserted art.” This phrase is equally as accurate and persuasive, but without the potential liabilities associated with the use of the phrase “prior art.” As is the case with the term “reference,” there is no rule that asserted art must be called “prior art,” so why not select the least disadvantageous alternative term?

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington DC
www.mekiplaw.com

Share This