Wednesday, October 18, 2006

Robert Clarke on the proposed rules change on continuing applications

Further to a discussion of a post on PHOSITA, Robert Clarke made the following observations:

I did say that the Office was still considering the comments and suggestions and that there were many more comments than ever before. I also indicated that no final decisions had been made on the package.

I said the proposed rules were determined previously to be "significant" (not substantive) so we should assume that if the Office went forward with similar final rules they will continue to be treated as significant. One aspect of a "significant" rulemaking is an up to 90 day review at OMB. The review at OMB can result in a return of the package from OMB to the PTO. Note these are standard rule making issues for any "significant" rule making and is not linked to the particular package.

After publication as a final rule there would be at least a 30 delay in the effective date.

I also indicated that the IDS rule could become final prior to the Continuation/Claims proposals.

Given that Director Dudas had already indicated at the IPO annual meeting that no final decisions had been made, the only new "info" on the claims/continuing application proposals provided was how a "significant" rule making differs from a non-significant one.

I think the more critical part of my talk was to highlight the following existing duty from the preamble of the IDS package:

One goal of the changes proposed in this notice is to enable an
examiner to identify the most relevant prior art in an efficient and
expeditious manner, even when an IDS containing a large number of
documents is submitted. The changes proposed in this notice accomplish
this by requiring in certain circumstances additional disclosure about
documents cited in an IDS. Applicants and their representatives are
reminded that the presentation of an IDS, like any other paper filed in
the Office, is subject to the provisions of Sec. 10.18. The reasonable
inquiry mandated by Secs. 10.18(b)(2) and 10.18(b)(2)(i) requires
that information in an IDS be reviewed to assure its submission does
not cause unnecessary delay or needlessly increase the cost of
examination. Failure to review can also implicate obligations of
registered practitioners under Secs. 10.23(b) and (c), and Sec.
10.77(b). Likewise, when an IDS includes several documents of marginal
relevance, combined with other evidence suggesting that the marginally
relevant information was submitted with the intent to obscure material
information, this may run afoul of the duty of candor and good faith
set forth in Sec. 1.56(a). In such circumstance, an inference that the
applicant or their representative attempted to cover up or conceal a
material reference could be drawn. See Sec. 10.18(b); and see Molins
PLC v. Textron, Inc., 48 F.3d 1172, 1184, 33 USPQ2nd 1823, 1831 (Fed.
Cir. 1995) ("burying a particularly material reference in a prior art
statement containing a multiplicity of other references can be
probative of bad faith").


Separately, IPBiz is still trying to figure out what was "news" in the July 28 "news of the week" story in Science by Eli Kintisch. See 88 JPTOS 743 (Sept. 2006) for a discussion of both the errors in the Kintisch article and issues in the rulemaking on continuing applications.


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