Thursday, December 20, 2007

Crafty strategy needed for new IDS rules at USPTO?

PatentHawk notes the following about the proposed new rules on information disclosure statements (IDSs):

In many instances, the proposed IDS rules will create a prior art search dilemma for patent prosecutors. The new rules require extensive analysis of cited art, reportage that characterizes the claims and thus invites prosecution estoppel, hence hampering enforcement potential, particularly applying the doctrine of equivalents. In a field crowded with art, to minimize cost while maximizing patentability under the new IDS rules, a crafty prior art strategy is imperative.

The proposed IDS rules require for an "explanation" of any prior art citation over 25 pages, or over 20 cited references:

An “explanation” of a document would include, for each reason for which the document is being submitted:
1. An identification of:
(i) The specific feature(s), showing(s), or teaching(s) that caused a document to be cited, and
(ii) a portion(s) of the document where the specific feature(s), showing(s), or teaching(s) may be found (e.g., by page and line number); and
2. A correlation of the specific feature(s), showing(s), or teaching(s) to corresponding specific claim language, or to a specific portion(s) of the supporting specification, if the document is cited for that purpose.

Correlating prior art to "specific claim language" is a recipe for declaring a claim construction. During enforcement, prosecution estoppel looms large as an outcome of meeting the "explanation" requirement.

Separately, ZDNet has another Microsoft "horror story":

From my read of a Microsoft Patent application just published today, technology is being proposed that will make it impossible for users who download multimedia files to play these files unless advertising messages inserted within these files are viewed.

In other words, no circumvention, no skipping a la the TiVo model.

The title of the Patent application in question lays down the gauntlet of what is being proposed here: “Enforcing Advertising Playback For Downloaded Media Content.” If you want to look it up, it is 20070294772.


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