A 1000 Page IDS? What’s At Stake in Microsoft v. i4i Case

By Gene Quinn
February 16, 2011

When the United States Supreme Court decides Microsoft v. i4i, which should happen sometime before the Court recesses in June 2011, we may have a very different patent landscape.  By now most probably are aware of the fact that the Supreme Court has been asked by Microsoft and a swarm of amici to reduce the standard of proof necessary to invalidate patent claims.  By definition a patent claim that is easier to challenge is one that is weaker, so don’t be fooled by the pretenders who dismiss this case as meaningless and charge the patent community with crying wolf.  Anyone who isn’t willing to admit that lowering the presumption of validity will have extremely negative implications for innovators as a result of weaker patent rights is either not paying attention, isn’t very knowledgeable about patent law or simply has an agenda.

But what are the consequences?  In addition to weaker patents making it easier for competitors to ignore patent rights and engage in infringing activities, there is a real possibility, if not probability, that it will become harder to come by funding for start-up technology companies that are seeking to build on an innovative foundation through the use of proprietary (and patented) technology.  Investors love patents because they provide a competitive advantage, which allows companies that invest in developing innovation to realistically have an opportunity to recoup funds expended on research and development and turn a profit.  It will also create an enormous burden on the USPTO and tax the already inadequate IT systems.

Those companies that are urging the Supreme Court to make a change don’t need the patent system any more because they have an enormous competitive advantage due to their market dominance, which translates into an overwhelming percentage of the market share in their industries.  Companies like Microsoft no longer really innovate, and could easily get by with significantly weaker patents.  Sure, they get patents but most of what they protect are incremental advances.  They also get sued with some frequency, so making it easier to challenge patents comes with no downside from a business perspective, only upside.

Over the last several decades Microsoft has famously been chasing those first to the market, sometimes catching and surpassing them while other times barely treading water.  No one argues that big companies like Microsoft are innovators because they are not.  They copy and sometimes make better, but innovation of paradigm shifting technologies, the ones we supposedly want because they are worthy of the mantle of a patent, are made by start-up companies that are not married to a particular product line, way of thinking or overburdened with bureaucratic red tape that prevents good ideas from getting a green light.  So the negative consequences of a weak patent system matters not to those that already dominate, but for those who innovate and don’t already enjoy market domination.

One of the proposals the Supreme Court will consider is that prior art considered by the patent examiner, or perhaps at least submitted to the Patent Office, be afforded a higher lever of deference; a clear and convincing standard applying to when claims are to be invalidated using that “considered” prior art.  A lower standard, a preponderance standard, would apply when prior art is not considered by the patent examiner.  This is ridiculous.  Those who do patent searches find hundreds if not thousands of patents that are dismissed and never included in any search report because they are not relevant, marginally relevant or cumulative with respect to what has been found.  So in truth every patent that comes up during a patent search has been considered, perhaps not appropriately so in hindsight, but to focus on those patents that make it to the patent search report and are actually checked-off and read by the patent examiner ignores the truth about patent searching.  It also refuses to give the Patent Office appropriate deference it is due under the law for the decisions it makes.

But what else is at stake?  The United States Patent and Trademark Office is already overburdened with a slightly less than ridiculous level of patents in the backlog.  There has been modest progress made within the system thanks to Team Kappos, but without funding and resources there is only so much even the creative Kappos can do.  But what if the law were to change in a way that causes patent prosecution to come to a grinding halt?  What if the law were to change so that applicants had to file tremendous amounts of new paperwork with the Patent Office and then fight tooth and nail to get examiners to consider that voluminous information?  We are likely to find out what will happen and it is not good.

If the standard changes you can bet that every patent attorney and patent agent who is working on an invention with real commercial promise will submit a voluminous information disclosure statement (IDS), or perhaps voluminous and multiple information disclosure statements.  An IDS is how we tell the Patent Office about material we know to exist and believe is relevant.  So to make sure that everything known is “considered” the USPTO had better be ready to accept dump truck sized disclosures.  In fact, that is already happening.

At the Innovation Alliance conference on January 21, 2011, I asked USPTO Director David Kappos what burden would be placed on the Patent Office as a whole and the examining corps in particular if the Supreme Court does what we expect it will do, which is lower the burden.  I asked the question in leading fashion, pointing out that everyone expects patent attorneys to simply file inordinately large information disclosure statements.  His response was, in part, to point out that a 1000 page IDS in an application could become the rule and the Office is already dealing with just such an application.  Kappos explained:

I am quite concerned, and my colleagues here from the USPTO share the concern, that if the burden of proof were lowered we would indeed, almost certainly, be facing a tremendous influx of very marginal value, perhaps no value, prior art that would put a lot more pressure, and unneeded pressure, on our examing corps and all of our delicate systems at the USPTO without adding value to the examination process. I think it would pretty clearly be incumbent upon applicants to protect their innovations by trying to get pathologically relevant art, irrelevant art frankly, in front of the agency in order to be able to protect their clear and convincing standard. It would be very nature for that to happen and I wouldn’t hold anything against anyone from doing that if the law motivated them to do it. I do not think it would be good for our agency. I think it would be a real problem.

I was talking to some folks at the PTO the other day and they were telling me about a thousand page IDS that we are dealing with in one particular matter. A thousand page IDS. This is the information disclosure statement, not all the prior art. The prior art occupies boxes. I think we could well be looking at a lot of thousand page IDS-es in the future as a result of the possible changes here.

A 1000 page IDS?  With dozens of references disclosed per page, even if each reference is only 20 pages (which seems a low-ball estimate) you can easily see that the amount of data pushed into cases will grow to a ridiculous level.  Of course, in the less than 20 hours of time that patent examiners get on average to deal with a file they won’t read those references.  For crying out loud they won’t be able to read the IDS which just provides citations.  Patent attorneys will struggle with patent examiners to make sure they check the box as having considered the critical patents, and that fight alone won’t be an easy one.  We will enter uncharted waters in terms of the relationship dynamic between patent attorney and patent examiner, with attorneys asking or even demanding for things no patent examiner could ever do.  The Patent Office IT systems also have absolutely no hope of standing up to the data demand.  The IT systems are famously laughable; even President Obama himself has pointed that out specifically.  Truthfully, the data that will be pushed at the Patent Office as a result of a lowering of the burden would tax even the most sophisticated IT systems, so imagine what it will do to the USPTO IT systems.

Several years ago Harry Moatz, who is the Director of the Office of Enrollment and Discipline, released word that patent attorneys who filed extremely large information disclosure statements would be investigated as engaging in unethical behavior.  The statement by Moatz was really irresponsible given the development of the law of inequitable conduct, but a threat from the ethics police is always something one needs to be considered.  Director Kappos suggested he, and therefore the Patent Office as a whole, will not hold anything against any patent attorney or agent that does what they think is necessary to address changes in the law.  That is a good thing indeed, particularly since more 1000+ page information disclosure statements will likely become the norm.

It is impossible to know for sure, but it is reasonable to assume that the 1000+ page IDS Kappos referred to might be in response to what the Supreme Court will likely do.  The Supreme Court doesn’t seem to like to apply changes in the law prospectively, even radical changes as this would be.  So if they do lower the burden the changes will be applied retroactively and affect (and infect) issued patents and pending patent applications.  With that in mind, those with patent applications pending might want to anticipate the worst and file “everything made by man under the sun” information disclosure statements.  That way you will be protected if the Supreme Court says there is a reduced standard for invalidating patent claims when prior art was not submitted to the Patent Office.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 33 Comments comments.

  1. Mark Nowotarski February 16, 2011 4:26 pm

    1000 page IDS? How quaint. How about an 800 GB IDS instead.

    After all, if your are going to be thorough, you might as well be thorough.

  2. Fair is Fair February 16, 2011 8:23 pm

    I’m waiting to see what the Supremes decide, as I need to file an IDS this calendar year for one of my inventions which is being practiced by a few of the “big boys.”

    While I had planned on including approximately 15-25 references as I normally do, rest assured that if the standard is lowered, I’m ready to explode that to at least 200-300 references.

    While I’ll feel sorry for my examiner, I will nonetheless fight tooth and nail for the IP rights I’m entitled to.

    I will not let others steal what is rightfully and legally mine.

    ps Gene–would any such changes be retroactive; e.g. apply to all previous patents (and apps?) filed prior to the decision?

  3. Gene Quinn February 16, 2011 10:13 pm

    Fair-

    You definitely need to fight for what is yours. Keep an eye on this case for sure.

    In terms of retroactivity, while the Supreme Court can do whatever they want absent being overruled by an Act of Congress it seems extremely likely that any changes would be retroactive and apply to previously granted patents. I cannot remember the Supreme Court (or Federal Circuit for that matter) ever issuing a patent ruling and only having the ruling prospective. With property rights at issue that is exactly what should happen, but what they pretend (and sometimes outright say) is that the change is not really a change at all, but that it has always been that way although some Courts/Judges have gotten it wrong previously. Talk about intellectual dishonesty. Anyway, the short of it is plan for any change to be retroactive. If you will have an issued patent prior to a ruling by the Supreme Court you probably want to file an omnibus IDS. If you already have a patent you might want to ready a reexamination request or reissue application and prepare the “everything made by man under the sun” IDS for filing in the reexam.

    -Gene

  4. Gene Quinn February 16, 2011 10:52 pm

    Mark-

    Can you imagine what the IDS page count will be for pharmaceuticals and biotech inventions? The high tech Silicon Valley gadget makers can afford to lose a patent here and there given there are so many that cover any one innovation. For manufacturing, pharma, biotech and other areas where an innovation is covered by one patent or you milk one disclosure for a few patents. Can you imagine how prosecution will change in those one patent per innovation areas in order to maximize the strength? Yikes!

    -Gene

  5. Bobby February 16, 2011 11:39 pm

    Gene,
    You’ve mention the pharmaceutical industry in your previous article, but it just seems unlikely that they will be threatened by the preponderance standard. While they may have all of their eggs in one basket, it seems that it’s a rather sturdy basket from what I can see. If you have some evidence to the contrary, I’d be interested.

  6. Copyright Attorney February 17, 2011 2:34 am

    Here is a similar story

    Someone charged with violating a patent can avoid liability by showing that the patent is invalid (meaning that the invention does not meet the statutory criteria for obtaining a patent). The question is whether that invalidity must be proven by clear and convincing evidence.

  7. Blind Dogma February 17, 2011 8:42 am

    Bobby,

    Again you ask for evidence while never providing the same to back up your views.

    You state “but it just seems unlikely that they will be threatened by the preponderance standard.” – which really cements your ignorance. You must not have any clue to the levels of money at play – especially – in the pharma world. What evidence do you have to back up your “it just seems unlikely” position?

    As a policy note, I want the blogosphere to know that I have cut off Bobby from the Kool Aid, but it appears that his anti-patent friends are still buying him glasses of my delicious beverages. And while I cannot take responsibility for such third party actions, I can make a public announcement that friends don’t let friends become Bobby.

  8. Fair is Fair February 17, 2011 10:52 am

    Thanks Gene.

    May I ask you what an omnibus IDS is (Google’s not bringing anything useful up)? Haven’t heard of that before.

    And do you know whether a(nother) IDS can be entered in the case of a 3rd-party reexam request?

    If so, seems like that’d be a good way to go (letting them pay the fee) if you’re expecting one being filed anyway.

  9. Michael February 17, 2011 10:55 am

    “1000 page IDS? How quaint. How about an 800 GB IDS instead. ”

    That would be nice. Unfortunately, you just can’t file an IDS that way, even e-filing. Instead, you fill the form out on the computer, page by page, with a maximum of fifty entries in each category (US Patents, US Applications, Foreign art, Non-Patent Literature), and then you fill out another, and another, and another, and another… Then when they are submitted, each form has to be uploaded individually, and every single non-patent or foreign patent document has to be uploaded individually.

    The longest I have submitted so far (and it was pharma) included a little over 400 references, and since most of them were non-patent or foreign patent literature, it took all day just to get all the IDSs and their associated references uploaded to the USPTO. I would love to just be able to submit an 800 GB file that had all the citations!

  10. Ron Hilton February 17, 2011 11:16 am

    This is more of an indictment of the whole broken IDS concept (fox guarding the henhouse) and the absurd extremes to which “inequitable conduct” case law has gone. Requiring the patentee to provide prior art references involves a huge conflict of interest and is fundamentally the wrong approach. Wielding the club of inequitable conduct in a vain attempt to make it workable only makes matters worse (e.g. the 1000-page IDS). Prior art search is fundamentally the responsibility of the patent office, and of those such as the patentee’s competitors or accused infringers who are naturally motivated to turn over every stone in search of relevant prior art and also more likely to find it based on their subject matter expertise. They would never file a 1000-page IDS, but would want to make sure that only the very best references that could be used in a rejection would come before the examiner. Some will say that such a thorough prior art search is too costly. That is why it should only be undertaken in cases of litigation, or pursuant to a top-tier examination in a reformed multi-tier patent systems, with an appropriately higher fee to cover the higher cost. The standard of evidence is a secondary issue, and merely serves to highlight the underlying fundamental weakness in the prior art search regime of the current patent system.

  11. Blind Dogma February 17, 2011 11:58 am

    Michael,

    Then when they are submitted, each form has to be uploaded individually

    You can actually combine multiple IDS forms into a single PDF file. You may have to scan the USPTO file to a “simple” PDF format in order to avoid any of the automatic features that some USPTO forms have, but the scanned versions can be easily combined and do upload cleanly to the USPTO.

    Ron,

    I am pleased to see that you recognize that “Prior art search is fundamentally the responsibility of the patent office” which is a big step for you. The next step is to recognize the actual issue being discussed here and it centers around the very much undefined Office term “considered.” As has been pointed out, the term “considered” usually conveys the notion that the contents of the item (being “considered”) have been not only read,but understood.

    I feel a bit like the parent telling the child that there is no such thing as the tooth fairy or the Easter bunny, but “considered” simply does not have that in-dpeth meaning at the Office. So while the Supreme Court may be getting to the pont of making a decision that certain rights earned by an applicant in the attainment of a patent only have the force (that has been an established and expected right for several decades) over art “considered” by the Office, the disconnect between what the Supreme’s may think of “considered” and what is in reality the practice of the Office regarding the meaning of the word “considered” will in fact and already has started the submission of massive IDS listings.

    And while “inequitiable conduct” remains a concern – that concern is a red herring here (you are quite incorect that this is “more of an indictment of the whole broken IDS concept – this problem can be squarely pegged to the C&C versus preponderance issue). The plain and simple truth is that attorneys – under their legal duty to be zealous advocates for their clients – will have an obligation to drive in the dumptrucks of IDS’s in order to preserve the rights that clients have had and will continue to expect to have. Exposing clients to the near endless possiblity of future lawsuits during the enforcement efforts of the earned patent simply cannot be excused when the prophylactic of massive IDS dumps remove that risk.

    This is a classic example of the law of unforseen consequences actually being seen beforehand. The fact that attroneys have already started engagin in this behavior should be a shock to no one.

  12. TINLA IANYL February 17, 2011 11:58 am

    In addition to Michael’s observation, it appears there is a page limit or size limit on the individual references. I’ve had to break many references up (e.g., books, file histories of parent apps, etc.) into parts (individual chapters, individual filings, etc.) because the single file, when uploaded, was too large. I’ve even had to file multiple IDSs simultaneously to get everything filed. And that’s just from the unintended consequences of McKesson. & Co. Add i4i, and it gets even worse.

  13. Bobby February 17, 2011 12:05 pm

    BD,
    I’m well aware of the level of money involved in the pharma world, but from what I’ve seen, pharma patents don’t get invalidated often, at least not ones covering conventional pharmaceuticals themselves (so I’m not counting delivery mechanisms or diagnostic methods here), and most of the legal issues seem to stem from when FDA approval takes too long and an extension is sought or when FDA approval doesn’t get through. Now, how I would make sense of why this appears to be the case would be because pharmaceutical patents cover pharmaceuticals or the process to make them, both of which are very specific, and because of how narrow the coverage is going to be, the likelihood of evidence that would make the patent obvious is quite small.

    I’m not excluding the possibility that pharma patents are constantly invalidated and this fact happens to just be well hidden, but if pharma isn’t actually at a significant risk here, then pharma won’t have to be extra careful.

  14. Paul F. Morgan February 17, 2011 12:11 pm

    “a 1000 page IDS in an application could become the rule” ??
    First of all, most applicants do not have nearly that many references to cite, and are not willing to pay for a pre-filing prior art seach of that magnitude. Secondly, if they do have many references in hand, they might as well already be filing them in an IDS to avoid possible inequitable conduct accusations in the unlikely event the resultant patent is ever litigated. Thirdly, the legal fiction and farce that examiners have time to actually look up and read that many references has to be ended somehow.

  15. Public Searcher DIP February 17, 2011 12:57 pm

    Question…

    A good searcher regularly does a manual review (of the figures or at least the front page) of one to six thousand patents when doing a mechanical patent search. Only fifty to sixty are reviewed in depth (those that make the first cut). And of those, only ten or so are normally provided to the search requester (those making the second cut).

    Currently, those ten which survived the second cut would be drafted around and they would be submitted to the PTO via an IDS. If the Supremes do their black magic, should we then submit the fifty or sixty from our first cut, or should we submit the one to six thousand? Technically, they were all ‘considered’.

    (I don’t really want my name changed from Searcher DIP to Lister DIP!)

    BTW – with regard to the pharma patents… The big pharma (+bio +chem) companies are the only patenting companies that have top shelf patent searchers in-house. The mechanical and electrical companies do not generally have in-house search teams. The quality of their patent claims is likely a direct result.

  16. Blind Dogma February 17, 2011 1:05 pm

    Paul,

    You are confused. You think that the IDS itself must be a well thought out and come from a thoroughly seached (and expensive) procedure.

    It does not.

    You are also confused by focusing on the inequitable conduct angle. As I mentioned to Ron, we are talking about two very different drivers of actions here.

    You also do not seem to grasp that the change in C&C to mere preponderance directly impacts the likelihood of litigation. Yes – the possibility of litigation is extremely small – as I have noted in other contexts regarding system costs – but that is simply not the issue. The issue is preserving the rights that exist now, If one merely rests on the extremely small sample size actually discussed by an examiner during examination, or the somewhat larger typical IDS, than one is in for a rude surprise when the C&C standard disappears.

    Lastly – you fail to understand what I post at 11:58 AM. It seems that I have to break the news to you as well that there is no Easter Bunny. “Considered” by the USPTO simply does not mean “the legal fiction and farce that examiners have time to actually look up and read that many references“. All is means is that the references have been made available for consideration by the Office, and the Office, in its official (read that as legal) capacity of performing its job, has actually done its job – the Office does not have an official definition of “considered”. You are correct that it would be a farce to think that an Examiner could thoughtfully read and understand all the referecences – even at today’s smaller IDS levels – in the time allotted for examination. It isn’t like the “consideration” as farce line is something new, Paul, the point is that the change from C&C to mere preponderance will (and already has started to) blow this practice to gargantuan proportions.

    Again, this action is perfectly forseeable – and even as Kappos has commented – perfectly reasonable for an attorney to do to protect the rights of his client. I would go so far as to say that given what Kappos has said, it may become a matter of malpractice to not provide extremely bloated IDS submissions.

  17. Paul F. Morgan February 17, 2011 1:37 pm

    Dear “patent searcher DIP” Thanks for supporting my point, by noting that big pharm companies
    “are the only patenting companies that have top shelf patent searchers in-house. The mechanical and electrical companies do not generally [even] have in-house search teams.” [Not even to discuss the level of completeness of prior art citations by all the foriegn applicants who comprise 1/2 of all U.S. applicants.]
    As to your question about citing preliminary raw search results from a mere pre-filing art search [vs the prior art documents that make your cut as actually relevant or more relvant than others] the practical answer may depend on how long you normally hang on to WRITTEN records of the former, or not. If your regular and reasonable practice is not to distribute and not to keep such raw data after your formal seach report, then unless you have an encyclopedic memory of everything you have ever quickly looked at in a seach, then there is not going to be any such raw data list existing for any later litigation – only your final search report itself. Unless of course your client asks for it.
    P.S. Does anyone seriously believe that the Sup. Ct. is going to buy into a theory that an invalidating reference buried among 20,000 others in a 100 page IDS, never actually considered by an examiner, is going by itself to create or save a higher standard of “clear and convincing evidence.”? This is not about inequitable conduct.

  18. Gene Quinn February 17, 2011 2:04 pm

    Fair-

    I think I have coined the term “omnibus IDS” and have referred to it also as an “everything made by man under the sun IDS,” as a play on the patentable subject matter legislative history from Congress. When I talk about an omnibus IDS I just mean one that discloses everything, including the kitchen sink.

    With obviousness you can combine references together to achieve a rejection. With obviousness becoming easier to prove thanks to KSR and now the Federal Circuit cases that seem to be literally interpreting KSR in ways the combination of references to find the result “common sense” is an increasing worry, particularly in the mechanical arts. If you have a mechanical invention (i.e., tangible gadget) it seems likely to predict that more and more could be combined to support an obviousness rejection. Given that prior art not considered/submitted may get a fresh look during litigation you will want to disclose as much as you possibly can. The duty is to disclose that which is material that you know about, with materiality defined by the USPTO as meaning it would lead to a good rejection. The Federal Circuit view of materiality is whether it would be interesting to an examiner to know (this may change soon). In any event, the duty to disclose sets the minimum disclosure and what should happen if the Supremes make a change is that patent attorneys will not disclose just what they are required to disclose to satisfy the duty, but they will disclose far more, perhaps even disclosing all the patents in particular classes.

    Some in the change have said that most clients won’t pay for a search necessary to disclose so much, and that is true. I would disagree, however, that if you have the patents you disclose them. Most times disclosure is generous because you don’t want to run the risk of under disclosure, but I think everything found that is in any way relevant, even tangentially, will be disclosed. Things that relate to solving the same problem but not truly relevant to the structure will likely be disclosed, when today they would likely not be disclosed.

    -Gene

  19. Ron Hilton February 17, 2011 2:25 pm

    Here is the causal chain as I see it:

    – USPTO has insufficient resources to do a complete prior art search.

    – USPTO requires applicants to submit IDS disclosing prior art to be used against their own application.

    – It is not in the applicant’s self-interest to uncover more prior art than the USPTO would have likely found on their own.

    – Examiners find IDSes generally unhelpful and rely more on their own search anyway.

    – OED raises threat of “inequitable conduct” to compel applicant to produce a more thorough IDS.

    – Applicants pad IDS with every single reference they glanced at no matter how marginally relevant.

    – Examiners find voluminous IDSes even less helpful and just rubber-stamp them as “considered” by the USPTO.

    – OED raises threat of “inequitable conduct” for overly-long IDSes as obscuring the most relevant references.

    – Practitioners resort to medium-length IDSes to avoid the OED threats for IDSes that are too short or too long.

    – Courts threaten to relax evidentiary standard for prior art that was not “considered” by the USPTO.

    – Fearing malpractice claims by applicant for being subjected to the relaxed standard in court, practitioners bulk up IDSes even more and hope that the latter OED threat was hollow.

    Note that only the last two links the chain have anything to do with Microsoft vs. i4i. This is a festering problem that all started with a flawed solution to the problem of search adequacy. The whole thing is MADNESS. But the stauch defenders of the status quo will continue to resist any fundamental reform to attack the root cause, and instead wring their hands at the latest symptom in a long chain stemming from one very bad idea.

  20. anonymousAgent February 17, 2011 2:32 pm

    Clients won’t pay for the search? So just do a ROUGH search that gets you hundreds of documents. Finding hundreds of documents is EASY – what costs $$$ is NARROWING IT DOWN to the meaningful one.

    So CARPET BOMB so even if the needle is in the ‘haystack,’ its ‘in there’ for the congressionally-mandated C&C status to come back. To IDS hundreds of results shouldnt be that bad – pay some paralegal in India to $5-10/hour fill out the forms, and then upload the huge form. Its EASIER just to dump them all back at the Examiner than to take a risk of ‘missing one.’

    If the applicants are losers (and they are), the Examiners are MUCH MUCH bigger losers – they have to sign off on all of that crap, and the “point” system (to the best of my knowledge) gives them NO EXTRA CREDIT for huge IDSs.

    If I’m an Examiner, I am forced to just sign off on all of that crap if I want to see my kids by 8 PM.

  21. Bob_the_Builder February 17, 2011 2:52 pm

    Here’s an idea – the US could join, oh, say, the REST OF THE WORLD, and eliminate the duty of disclosure. But then we wouldn’t have to keep filing RCE’s in related applications when references are cited in of the the potentially-related applications.

  22. Blind Dogma February 17, 2011 2:58 pm

    Gene,

    The duty is to disclose that which is material that you know about, with materiality defined by the USPTO as meaning it would lead to a good rejection

    You speak of duties and quite frankly are being fair enough, especially as you pointout that such is minimum. But “duty” is not the only permissible driver for inclusion of material on an IDS. In fact, the rules plainly indicate that the IDS vehicle is the path to use in order to make sure art you want considered is considered by the Office. Thus is an open invitation to submit more thant what mere duty may call for.

    As I pointed out to Paul, the cost aspect is a red herring. Honestly, there will be very little thought (and really minimal expense) necessary to have a standing omnibus IDS (or a host of them).

    I wanted to also share these rules:

    37 CFR 1.97(g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.

    37 CFR 1.97(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).

    In other words, an IDS is the prefered way of making sure that art is considered by the Office without creating any estoppel or IC concerns. Even the slim concern of burying a jewel needle in a haystack seems eviscerated with the Kappos comment to Gene’s very germane question. Of course, the way around this slim concern is to expressly list everything in either alphabetical or time order – thereby absolving any liability for purposeful placement of a reference that may be more germane than others. It is important to remember that practicioners only invite trouble when they comment on the relative merits of prior art (such evaluation is stricly the examiner’s job). And as someone has mentioned, as these Omnibus IDS’s become actuality (even before the C&C change), the largest impact will be to the examiners who must process these. The rules clearly mandate that they do process them, so they will not be able to say “No”.

    Does anyone know how long it takes to “consider” a 20,000 long list of IDS references? Even at 1,000 an hour, you are left with ZERO time for an actual examination.

    For all the Amici lining up behond Microsoft, the adage comes to mind: Be careful what you wish for.

  23. Blind Dogma February 17, 2011 3:06 pm

    But the stauch defenders of the status quo will continue to resist any fundamental reform to attack the root cause

    If by that comment Ron, you are proposing a path along the lines of the moves of Tafas, let me remind you that those moves are illegal. The Office problem cannot be off-loaded onto the applicant.

  24. Gene Quinn February 17, 2011 3:09 pm

    Bob_the_Builder-

    You would think that with all the desire to become like everyone else this would be one way to harmonize that the patent bar and applicant community would embrace. I think it makes sense given the inability to get a standard announced by the PTO that the Federal Circuit will buy into.

    Unfortunately, if the Supremes lower the presumption of validity I don’t think we will care any more about duty of disclosure. Inequitable conduct would become a thing of the past with everyone so over disclosing to enjoy as broad a presumption as possible.

    -Gene

  25. IANAE February 17, 2011 3:15 pm

    Does anyone know how long it takes to “consider” a 20,000 long list of IDS references? Even at 1,000 an hour, you are left with ZERO time for an actual examination.

    That’s not even enough time to initial them all on the IDS form. And really, the proper way to file an omnibus IDS is to list every patent from 1 to whatever we’re up to now, make a bunch of copies of that, paste the current application number at the top, and send it by mail for every application you file so you don’t have to pay someone to fiddle with EFS all day.

    Of course, no judge will ever consider that many references “considered”, so your IDS will be worthless for that purpose. The only meaningful criterion for whether a reference was “considered” hard enough to up the standard of proof would be whether the examiner applied it or explicitly “made it of record” in an office action. Which makes it not a very meaningful concept, since those are the five references you’ve amended the claims around or already have an argument on file for.

    It really only makes sense to have one standard of proof. Still, the absolute best protection you could have against any prior art reference in any system is that the examiner has already identified the reference as problematic, you fixed that problem during examination, and the court can only construe your claim more narrowly. I’ll take that over “clear and convincing” any day of the week.

  26. Blind Dogma February 17, 2011 3:33 pm

    Of course, no judge will ever consider that many references “considered”

    Funny thing about that though – it isn’t up to the judge. It is up to the Office as they have “defined” that word, and no judge has the ability to redefine that word.

    The only meaningful criterion for whether a reference was “considered” hard enough to up the standard of proof would be whether the examiner applied it or explicitly “made it of record” in an office action

    That would be nice – but that’s not the law. It is, however, one thing that is suggested in the Lemley amicus brief. Are you surprised? I don’t think so.

    Finally, I am glad that what you will take has even less consideration than anything discussed on these boards today. Your “friend of patents” status not withstanding.

    As it is, the current state of the law practically mandates the Omnibus IDS. And given that that issue is not before the Supreme Court in the Microsoft v i4i case, and is not an item that needds to be addressed inorder to solve that particular issue anything the Supremes do say about it will be mere dicta and will not change the law as it now is.

    It will be, however, amusing to see what type of response you can generate without twisting law to the point that Gene bans you.

  27. IANAE February 17, 2011 3:53 pm

    Funny thing about that though – it isn’t up to the judge. It is up to the Office as they have “defined” that word, and no judge has the ability to redefine that word.

    Of course it’s up to the judge. The term “considered” doesn’t have to mean the same thing on the IDS form as it does in the context of a judicial determination of the appropriate standard of proof. In any event, why would the court ever defer to an administrative agency on the subject of what the law is? You’ll note that they don’t seem to defer to the PTO on the question of what art is material, nor should they. It’s the PTO who should defer to the court.

    As it is, the current state of the law practically mandates the Omnibus IDS.

    It pretty much does, and we can all agree that it does nobody any good. I do think, however, that you might (and should) have inequitable conduct issues if you know some individual references to be more relevant than baseline (maybe they were in the ISR or your client was aware of them) but you still submit an indiscriminate list of 8 million PTO publications. Your client should definitely budget to defend against such an inequitable conduct charge if he decides to litigate.

    It will be, however, amusing to see what type of response you can generate without twisting law to the point that Gene bans you.

    Sure, if by “twisting the law to the point that Gene bans [me]” you mean “actually reading the case law to the point that Gene gets annoyed”.

    It’s his blog. He can do what he wants, and I’m sure he’ll always have people like you crowing about his intellectual honesty and my lack of same. I’m prepared to live with that. It’s the internet, after all.

  28. Ron Hilton February 17, 2011 6:13 pm

    “If by that comment Ron, you are proposing a path along the lines of the moves of Tafas, let me remind you that those moves are illegal. The Office problem cannot be off-loaded onto the applicant.”

    That’s exactly my point. The IDS is a bad idea for the same reason that the ESD was a bad idea. It attempts to offload the search problem from the Office to the applicant, at least in the overly-broad way that the duty of disclosure has been imposed in terms of inequitable conduct.

    To be specific, what I would propose would be a significant fee increase to cover the cost of a more thorough search, to be performed by the Examiner or outsourced by the Office to a search firm with subject matter expertise, or to the industry at large through a program such as Peer-to-Patent (or a commercial version of the same, such as Article One Partners).

    However, recognizing that such an exhaustive search is not needed for the vast majority of patents that sit uncontested on the shelf, I favor a multi-tier system in which the higher fee would only apply to the top tier, such that patents at that level would merit the strongest IP rights, including the C&C evidentiary standard for invalidation.

  29. Jon Shields February 17, 2011 6:38 pm

    “It also refuses to give the Patent Office appropriate deference it is due under the law for the decisions it makes.”

    I don’t see how the Patent Office should get ANY deference for decisions it does NOT make. If the patent office does not examine or consider a piece of prior art in any way, it by definition could not have decided whether the claims were obvious in light of the prior art in question. A patent office decision made after only examining a subset of the relevant prior art says NOTHING about the obviousness or non-obviousness of the claims with respect to prior art it does not examine.

    This is not a problem for clearly unrelated prior art, since that would not invalidate a claim even with the preponderance standard in litigation.

    “In addition to weaker patents making it easier for competitors to ignore patent rights and engage in infringing activities, there is a real possibility, if not probability, that it will become harder to come by funding for start-up technology companies that are seeking to build on an innovative foundation through the use of proprietary (and patented) technology.”

    Yes — it might be harder to come by funding for startup technology companies that are seeking to build on patented technology where the patent might be invalidated with the preponderance standard that the patent office does not examine. … And?

    Throughout your posts on this topic, there seems to be the hidden implication that whatever “weakening of patent rights” happens, it will affect all patents uniformly. As in, the “probability” that a patent will be invalidated (or that litigation will commence) will be lowered by some constant amount for all patents. That is not the case — strong patents (that would easily survive the preponderance standard against non-examined prior art) would not be so affected.

  30. Richard Belzer February 17, 2011 10:55 pm

    I think it would be helpful to inform this discussion if there were credible, objective estimates of the paperwork burden involved in preparing IDSs — both under existing law and under your hypothesized alternative if the Supreme Court rules as you expect (or fear). The PTO’s current burden estimates for the IDS are comically poor; these estimates have been formally challenged (references on request); but the PTO refuses to do a better job of estimation because it is not a high priority. This is short-sighted all around. If you want the Court to take seriously the full costs of its actions, then you must take seriously the paperwork burden so that the Court can do so. Same goes for Congress, BTW. No one on Cap Hill will publicly praise paperwork burden, and most will refuse to support legislation that magnifies it. (See, e.g., the kerfuffle over Form 1099 reporting in the hearth care law.)

    But no one seems to make this connection when dealing with regulations, with the MPEP, with patent reform legislation, or with the courts. It’s quite baffling.

  31. Blind Dogma February 18, 2011 12:27 am

    Richard,

    You have a friend in Dave Boundy who tirelessly crusaded on such similar principles.

  32. Gene Quinn February 18, 2011 9:36 am

    Richard-

    Excellent points. I’ll see what I can come up with.

    Does anyone have the latest AIPLA economic study?

    -Gene

  33. Bala Krishnan September 6, 2012 5:22 am

    MaxVal recently launched a FREE tool online – http://www.maxval-ip.com/patent-tools-ids-generator.html

    IDS Generator is a web-based tool that helps you fill out an IDS form quickly, accurately, and efficiently. Simply enter patent or publication number(s) or copy and paste from a document (Word or Excel) and this amazing tool will generate a USPTO-approved EFS-ready document for you.

    This should save some time. Feel free to use and let us know your comments.