Monday, January 05, 2009

On the duty of inquiry

Just_n_examiner discusses the duty of inquiry: This means that an applicant is obliged to actually read the references that they decide are relevant enough to submit in an Information Disclosure Statement.

Of the problems facing an examiner with an IDS (1449): With an IDS, all I've got is a document image (so no text searching) that the applicant has told me is material to the patentability of their application, but with no clue as to why. I can't consider it in the same way as other documents in the search files, because I have no way of knowing why it's relevant without reading it, at least in part. When there are hundreds of references, or references that are very large, this can be a problem. I'm not sure how an examiner is supposed to handle one of those mega-IDSs and consider all of the cited references "in the same manner as other documents in Office search files are considered" while maintaining their production numbers.

One commenter wrote: There is a program called "IFW Prior Art". Mine is a yellow icon on my desktop. Check your examiner's tool kit and if it is not there check your program files or call the help desk to get it loaded.

In "IFW Prior Art" you just type in the application number and it pulls up all the 892s and 1449s in the file. You can look at each by itself or at the end it gives you a list you can cope and paste into EAST.

The Oct. 08 issue of JPTOS has an article on the duty to disclose: Duty to Disclose: Dayco Products v. Total Containment - Tom Brody

Michael Kirk talked about a duty of inquiry in the context of mandatory IDSs:

For those applicants that have not received a first action on the merits from the
PTO by the time the PTO’s Strategic Plan would go into effect, the PTO proposes to
impose what it describes as a “limited duty of inquiry” on such applicants (as to
documents within their possession) and a mandatory IDS. The PTO’s stated focus of the
information to be submitted will be non-patent literature that is related to the claimed
invention, including information used to draft the application, information used in the
inventive process and information concerning improvements and state-of-the-art.
Applicants are to submit the required information, with an explanation of relevancy for
citations of patents over twenty and of non-patent literature over twenty. This mandatory
IDS procedure is intended by the PTO as a way to transition those applications already on
file into a separate search and examination procedure similar to those contemplated under
the PTO’s Four-Track system.

In 2002, James Toupin had a slide:

Requirement for applicant to
explain relevancy of prior art when
more than 20 citations.
• Also, a “duty of inquiry”.
• Goes beyond current duty of
candor under Rule 56.
• Extremely burdensome to

[Toupin argued Tafas on behalf of the USPTO].

See also:

Illogical first Office Actions?


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