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CAFC Judges Should Be Require to Examine Patent Applications

On Friday, May 28, 2010, USPTO Director David Kappos gave five suggestions for practitioners on the Director’s Forum (i.e., the Kappos blog). The first two suggestions caught my attention because they are things that I have been writing about for quite some time. First, set up an interview.  Second, set for your arguments and be prepared to discuss what makes the invention new and distinguished over the prior art.

It would be wonderful if such things could occur in the prosecution of every case, but unfortunately the Federal Circuit has effectively prevented that from happening and forced upon the USPTO and the practicing patent bar a game of hide the ball, which benefits no one.  With Congress not stepping up to the plate any time soon to do anything useful for the patent system there may be only one hope left; namely to get the CAFC judges to examine patent applications, sitting by designation, so they can better understand the mess they have created.

Wouldn’t it be great if during an interview we could actually tell the examiner what the invention is and how we think it differs from the prior art? Unfortunately, all practitioners know that doing that would unnecessarily narrow and likely ultimately destroy any patent that would ever issue. In fact, Miranda-like warnings should be issued to patent attorneys, patent agents, inventors and patent owners before filing a patent application, before submitting any paper in writing and certainly before an interview with the patent examiner. The warning should go something like this:

You have the right to remain silent. Anything you do say can and will be used against any issued patent for the entirety of the patent term. The Federal Circuit ignores Rule 56 and the inequitable conduct test has devolved into one where we ask if anything was said that later turns out to be incorrect.  If you happen to be wrong with respect to anything you have said you will spend millions defending an otherwise valuable innovation and have the patent striped from you.  Of course, this only occurs if tell the examiner something, do a patent search, put anything in writing or make any arguments during prosecution.  So for goodness sake PLEASE REMAIN SILENT and say as little as possible.

Yes, I know, a little long and not exactly something that slides off the tongue, but it sure was fun to write.  But not nearly as fun, nor as cathartic, as what is about to come.  So just sit right back and… well… you know the rest…

As you well know, in 1991 the United States Patent and Trademark Office modified Rule 56 in order to remove the reasonable examiner standard and encourage applicants to provide the best and most relevant prior art; namely prior art that could support a valid rejection. Despite the USPTO’s best efforts, and a decade of the Federal Circuit applying Rule 56 as so modified, over about the past 10 years (significantly increasing over the last 5 years) the Federal Circuit has ignored the USPTO right to engage in rulemaking associated with the process of filing a patent application.

Accordingly, the Federal Circuit has decided in its infinite wisdom that all those substantively involved in the prosecution of the patent application need to not only abide by the duty of candor required by Rule 56, but also submit any reference that an examiner might find intellectually interested.  In other words, the Federal Circuit has its own standard for what needs to be disclosed, Patent Office be damned!  On top of that it seems pretty clear that a mistaken statement (not fraud or anything malicious) is all that is required to demonstrate inequitable conduct if you happen to draw the wrong 3 judge panel; wrong being characterized from the vantage point of the patentee/innovator.

Now, we know that examiners don’t have time to read all the references located in the Patent Office search let alone the references the applicant submits.  That is why they put a check-mark next to the patents they have actually considered.  What better evidence/admission could there be that patent examiners don’t even look at everything that is relevant?  But NO, the CAFC couldn’t let that little piece of factual reality influence them as they continue to prefer to live in the same neighborhood as Peter Pan, off somewhere in Never Never Land.

At best patent examiners will glance at a few references, but this is in no way intended as an indictment of patent examiners.  They are overworked and have woefully inadequate time to do their jobs, at least if we want to continue to pretend that the patent examination process is a no stone unturned search that leads to a presumably valid patent.  For crying out loud, even a high quality search and patentability assessment will typically cost only $2,500, maybe double that if you want a worldwide search.  During litigation many millions are spent locating prior art.  Do you think that with millions versus hundreds or a few thousands of dollars more prior art might be found?  OF COURSE IT WILL BE!!!!  With 15 hours on average let’s not pretend that the patent examiners read everything, consider everything or would be anything other than overwhelmed by the ridiculous amounts of information some of the CAFC judges want applicants to disclose.

Despite the reality of prosecuting patent applications the Federal Circuit, in its infinite collective wisdom, says that you have to submit everything.  Inequitable conduct law might as well quote from the legislative history of the 1952 Patent Act — submit “everything made by man under the sun.”  That pretty much defines the current obligation, and excuse me for noticing that is is ridiculous and demonstrates an acute unfamiliarity with the patent process.

Yet, as grown adults we play along with the fiction because we must.  But the fiction gets pretty thick.  We (mainly I mean the CAFC) pretend the examiner has enough time to read the entire application, including the specification and all the claims, plus all of the prior art (even the stuff in foreign languages and languages they don’t speak), craft multiple office actions, read or at least glanced at applicant submissions in response to said office actions, issue a final rejections, consider things submitted after final rejection and maybe issue an examiner’s advisory action.  Oh yes, I failed to mention restriction requirement determinations, reading affidavits submitted and conduct an interview.  All in 15 hours!  Really?

The backlog is crazy out of control and it is negatively impacting the US economy.  The signal most important thing for digging into the backlog is to once and for all put an end to the game of hide the ball shell game that goes on during patent prosecution.  The Patent Office can and should mandate cooperation, and if there is no cooperation then there should be consequences… BUT IF AND ONLY IF Congress gets on the stick and legislates the Rule 56 view of inequitable conduct and actually defines the theory as a fraud based theory, which required pleading with fraud level of specificity and which specifically legislates out mistakes and negligence from supporting a desperate infringers attempt to kill the entire patent.

While it should be obvious, allow me to point out clearly that a mistake is NOT on purpose, something that turns out to be incorrect later is NOT necessarily fraudulent when said, and just because you get something wrong DOES NOT mean you lied; it actually just means you were wrong.

Given that Congress is not likely to do anything with patent reform, concerning themselves alternatingly with bickering over inconsequential things and destroying the US economy, I have little hope that things will get better.  Having said that, what would DEFINITELY make things better would be if Federal Circuit judges were required to sit by designation and examine patent applications.

If the judges of the CAFC were required to go through the process and stick with the same time constraints as real patent examiners and have to work with real patent attorneys who hide the ball thanks to the law handed down by the Federal Circuit they would see just what a mess patent prosecution has become, and mostly as a result of cases and law created by the Federal Circuit.  It is time for the judges to have to live with the law they create.  That would certainly give them a much different perspective and might actually take the application of the law out of the theoretical ideal and ground it in some semblance of reality!

It is truly a shame that such commonsensical suggestions by Director Kappos are simply not feasible, at least not at the moment.  And yes, I know that the judges of the Federal Circuit are not going to sit by designation examining patent applications, but they should!  I also know that Congress won’t act, which is just flat out disheartening.  But Kappos is not without power.  Whether the Federal Circuit likes it or not, the Patent Office has the authority to make rules relative to the efficient administration of the patent application process.  So if the USPTO wants cooperation simply make an initial interview required. Call it a preliminary interview, because it should happen before the examiner first action, and make this preliminary interview and any associated submission confidential.  Seal it and don’t make it a part of the file.

Yes, cooperation is great, but it should not come at the risk of having nothing to show in the end.  Frank, open and honest conversations can and should be held off the record prior to the first action on the merits.  This will allow the applicant to focus the examiner and lead to a far more speedy prosecution, while at the same time keeping the information from the prying eyes of those on the Federal Circuit who would prefer to allow fear of inequitable conduct to propagate the ridiculous game of hide the ball that has in no small part contributed to an epic backlog.

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4 comments so far.

  • [Avatar for EG]
    EG
    June 2, 2010 07:45 am

    Gene,

    You’re on point that the Federal Circuit has take the “lion share” of the mess created with what is the standard for “inequitable conduct.” In fact (and I’ve said this before many times), the 2006 case of Digital Controls v Charles Machine Works alerted us to the fact that there are at least 4 standards (including Rule 56) and that while Rule 56 is at least the minimum, it isn’t THE STANDARD for avoiding “inequitable conduct.”

    But there’s another culprit here that pulls the puppet strings on the standard for “inequitable conduct” and its initials are SCOTUS. SCOTUS’ “uncompromising duty of candor and good faith” standard from Automatic Precision is the gloss hangs over all this “inequitable conduct” jurisprudence. This SCOTUS standard is so unrealistic and unattainable that it reaches the point of absurdity. Unless SCOTUS decides to reign this nonsensical standard for the “duty of candor” (perish the thought!), and stops pummeling the Federal Circuit, the only hope we have now is legislative to keep “inequitable conduct” from totaling devouring our patent system.

  • [Avatar for Tom Brody]
    Tom Brody
    June 3, 2010 02:37 pm

    My lengthy article on DUTY TO DISCLOSE documents the various and several standards for this duty:

    Brody, T. (2008) Duty to Disclose:Dayco Products v. Total Containment in The John Marshall Law School Review of Intellectual Property Law vol. 7:325-375.

    The editor of JPTOS liked this article when he saw it, and my article was reprinted in JPTOS October 2008, volume 90, issue.

  • [Avatar for Dan]
    Dan
    June 3, 2010 04:33 pm

    I agree that the CAFC is part of the problem, but you can’t excuse the Examiners. The Examiner write bad rejections making the rejections difficult to interpret. I have had multiple interviews with an examiner believing that I understood the rejection and getting the same response. The SPE got involved and was finally able to explain the rejection in terms that the Examiner had never put forward. Examiner’s also don’t take the time to understand what the invention is even if they claim they understand it. There are too many examiners who have a preconceived notion of what the invention is and refuse to believe otherwise even in the face of irrefutable evidence. This happens way too often in biotech and until the Examining Corp provides the right rejections the first time it will never get better.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 3, 2010 04:50 pm

    Dan-

    Yes, there is plenty of blame to go around.

    Do you have any suggestions on what might work better? Is it that the Jr. Examiners do not know the technology? Are they unfamiliar with the MPEP/law? Are they just unable to articulate their rejections?

    -Gene