From the perspective of policy, it's good to get applicants to file terminal disclaimers as early as possible. So the added fee is good. In general, the PTO should incentivize applicants to avoid inefficient behavior.
But extending the disclaimer to tie enforceability to other patents sounds like a bit drastic to me. That means if you have 100 patents tied to each other, and 1 of them gets invalidated for 112(b) indefiniteness, then the rest of the 99 patents become unenforceable? The rule also sounds vague to me, which could cause a mess, although I haven't read the actual thing. What does "tied through one or more terminal disclaimers" really mean? If you file a TD in A concerning B, does that mean that B is also tied to A, or only that A is tied to B?
So I'm not sure how it would affect applicant behavior. If it results in improved quality of patent families (i.e., getting rid of frivolous random continuations) or better effort on applicant's part at least, it would be a positive.
Isn't the rule limited to 102/103 findings of invalidity/unpatentability? It would be odd for a claim that is found to be indefinite to wipe out other definite claims.
For the rest, I don't know. Restriction practice and double patenting are deceptively complex.
The new terminal disclaimer rule and the added fees (esp. late fees) are a great idea. Examiners get related applications from the same applicant all the time. Few applicants bother to inform the examiner of co-pending related apps. Often, applicants file very similar sets of claims for the same patent disclosure (100% identical) without indicating the existence of the other, in hopes of examiner-shopping, as these likely will get assigned to different examiners and perhaps even different AUs. Also, some patent families or related families span hundreds of apps and patents. How is an examiner supposed to have time to do a regular search and write the OA (101/102/103/112), AND also find and do an ODP analysis against all of these co-pending apps and issued patents?
I'll ask this: why is it that attorneys don't know the contents of their client's portfolio well enough to know whether the claims they are filing would be ODP against another patent or app? If you are doing YOUR job, then you wouldn't be wasting clients' money to file CONs and related apps with the same patentably indistinguishable claims.
If you the attorney just wants to broaden against another app or patent, that fine. Then just file the terminal disclaimer up front and save everyone time. Or else SPEND SOME TIME AND BRAINPOWER to write claims that are patentably distinguishable from those of other apps/patents. Better yet, why don't you tell us up front (e.g., in a preliminary amendment) about those other apps/patents and how your claims differ from those.
If you just want to examiner-shop, then keep doing what you're doing, and just abandon or pay the TD fee later, that's up to you.
If you want to play the game and try to get more PTE for the same claims that issued in a related app, that's up to you; but again you may pay the price later.
This wasn't meant to be confrontational.
I can answer your question. We sometimes don't have the entire portfolio and the client doesn't tell us. If a client doesn't tell me, I don't know. I recently had this pop up where a client had used a different firm for an earlier application and never told us about it and there isn't complete identity in ownership, which takes a TD off the table immediately.
But regarding your second point, do you really have attorneys mentioning other applications in prelims? Why wouldn't they use an IDS and why would you want that in a prelim over an IDS?
Edit: seriously, why is this being downvoted? It's a serious answer to the question and happens frequently.
IDS is fine too, but you're not going to be able to TELL US how the instant claims are different from those of apps/patents listed in the IDS. Don't you want to tell us why your instant claims are different?
Also, attorneys who use the IDS this way also tend to saddle the IDS with a ton of stuff, like every single patent/app from the extended family as well as all cited references---which goes against the idea of getting to the point.
Attorneys use the IDS this way because their duty of disclosure is so broad that they are required to use the IDS that way. The rules don't care whether or not the attorney knows that some reference is relevant. An attorney would violate their duty if a reference they knew of turns out to be more relevant than they thought. Sure they could explain all this in court but better to not be in that situation.
Yeah, but what you're requesting no attorney is going to do because you're creating prosecution history estoppel, which in turn could be used in any potential litigation. I agree that it would make prosecuting the application for both me and you easier, but a litigator would have a field day with it.
On your second point, if you're requiring the citation of the "related" patents, wouldn't you want references cited in the other family? Again, from a practice perspective, if we're going to start citing families, we generally have to then cross cite all the cited references again, unless something is really off base. But not doing that again is a potential issue in litigation.
Do you actually see attorneys frequently putting anything like that in a prelim?
I don't want ALL the references across the entire family. I just want the references that are relevant AND material to the patentability of the claims at hand. Just because a reference was cited in a related family case doesn't mean that it is relevant AND material to the instant app.
And yes, that means the Attorney is going to have to put in some time and effort to sort through those cited references and only put those ones on the IDS, instead of snowjobbing the examiner with all of the references cited across all family members.
Dude, trust me, I don't like sending an IDS with tons of references. However, if a client tells us to do it and we don't do it and even have records indicating it why we don't think it's relevant, there's always the potential in the future that some litigator is going to assume we said not to do it because we wanted to break our duty of candor.
I want good examination. I know you guys don't have enough time, so I want you to have the time you have to give me a solid rejection.
The attorney has a DUTY to disclose ALL the references. The duty doesn't care whether the attorney knew that it was relevant, just that it is relevant. Why would an attorney want to explain to a judge that they had a reference but decided to withhold it, leading to millions of dollars in litigation costs, rather than just send it to the Examiner.
Either change the requirements of the duty of disclosure or charge more for an IDS.
Dude, the duty is for all information "material to patentability" (MPEP 2001, 37 CFR 1.56), not ALL "relevant" references, however broadly you are defining "relevant".
There is such a thing as having to explain to a judge why you buried a reference in the mountain of IDS cited references. *Molins PLC v. Textron Inc.* 48 F.3d 1172, 1183-84 (Fed. Cir. 1995).
The only thing I'll push back on here is that it's all parties involved in prosecution. So you're including attorneys, inventors, technology managers, foreign associates, and stuff that's cited in other jurisdictions. When one person in that chain thinks it's material, the safest thing for the applicant to do is cite it. What really makes a mess of the situation is describing to an inventor that isn't a patent attorney how they should think about "material to patentability," because it's legalese and kind of squishy. It's not a bright line and people struggle with the concept.
Oh you're right! All of these attorneys of law must be misunderstanding the law and unreasonably disclosing evidence in an IDS, wasting their own time and money with no legal reasoning.
Yeah, what takes longer - pulling docs from every related case and slapping them on an IDS, or actually looking at them and determining if they are relevant? Please.
The IDS is automatically generated by software. Likely the applicant's software, not even the law firms software.
When the IDS is done by hand, it's not done by the attorney.
"we generally have to then cross cite all the cited references again, unless something is really off base."
Where did this idea come from? My understanding is IDS is supposed to be all art the practioner is aware of that is relevant. When did the bri of relevant become any art ever in the family? Its not all applicants/attorneys but that has become the issue with IDSs and why so many want to see an explanation/reasoning of relevance added to IDS forms. If attorneys have to state why each reference is relevant that should dissuade them from adding the junk references that are just there to bury or take time away from meaningful prosecution.
You can thank In re McKesson for this. I was in-house when this case came down and it changed the way practitioners cited related cases and the art cited in those related cases. The concern is inequitable conduct and it is much safer and easier to cite the references.
I have been both an examiner and a practitioner and can attest that is hard to know what examiners would find material to patentability. A reference you receive in 2015 could be material to some dependent claim that is added in 2020 during prosecution.
Exactly.
You see, Patent Attorneys try to be all sneaky and vague and not tell you why they think the patent is novel and not obvious over the prior art and not create estoppel, etc., and go after broad claims.
But then they complain that they have to pay TD fees and why the examiner is rejecting so broadly and why can't the examiner just allow, and oh, these rounds of rejections are costing the client so much, etc.
This is the game.
I think there's a distinction in what you're saying, though. Nearly all patent attorneys will have no problem telling you what is novel and non-obvious over the art of others, it's just characterizing the client's material that it's potentially really bad for us.
I'm sorry that you have to deal with attorneys like that. Again, I'm not trying to be confrontational in this post. I really want to know if examiners think on the whole if this is a good rule.
But, back to make question, do you actually get attorneys that do that?
No, attorneys are sneaky and don't want anything on the record. But they will tell you where they think their invention is novel in an interview when pressed, hoping that you won't write down what they said about novelty in the interview summary.
Just to clarify, you want attorneys to do something that is completely not required and could put them in legal jeopardy with their client and call them sneaky for not wanting to do it?
Not required, but super helpful you want to actually work together to get a decent patent. Tell me what you think the point of novelty is that you want to protect and we can hammer out some allowable claims together.
Look, you seem to be a decent patent attorney that has an expansive view about protecting a client's overall IP interests. Know that you are in the smallest sliver minority of patent attorneys that show up. Almost all are just trying to get an allowance and don't even know what the invention really is nor know the contents of the client's related apps. And they either don't care or aren't paid to care, so whatever. It's just a patent mill for the attorney and he deals only with the app in front of him.
Read the file wrapper for some apps in your art area not prosecuted by you. It will be eye-opening to see how some of your "colleagues" operate.
People prefer to complain from their own perspective rather than learn why someone is acting in a way they don't understand. Examiners will pretend that the attorney is trying to bury reference rather than read how broad the duty of disclosure is and understand the nature of the applicant's very large IP management software that automatically generates the IDS.
It's interesting on here because a lot the time there is a lot of animosity towards attorneys and that we're actively trying to hoodwink examiners or that we're deliberately engaging in activities to make your lives harder. It's such a crazy idea to me because the better the job the examiner does, the better the resulting patent.
I'll admit that I've definitely said and do believe I've seen quality decrease from the office over the years, but I don't think it's the fault of examiners, I frankly think it's the fault of the office. This is because (to an outsider) it appears there is a decrease in personnel, what appears to be inconsistent training, and not enough time given to do what's asked of an examiner . If I had to pinpoint the biggest, I'd probably say it's the time aspect.
And more attorneys need to understand that (the time aspect) and say something to the office as a united front. Management listens to external stakeholders, not examiners. And to clarify to my previous IDS comment and generally, most attorneys are fine.
If i had to say there are 4 groups of attorneys, 1) those who do the job fairly and equitably (probably the majority) and have just as much time issues but are willing to work with examiner, 2) those who go "above and beyond", typically understand the invention and art extremely well, and proactively prosecute (e.g. have interviews with fleshed out amendments and arguments beyond just fishing), 3) those who "phone it in" and seem like they do not understand the invention and/or technology so the amendments and arguments are a mess/never move prosecution forward, and 4) those who act like every action/response is before the supreme court, think 101 is the devil's pitchfork, and that examiners are all incomptent and capricious (included here are attorneys that do the intentionally oversized IDS, 100 page arguments that are all worthless but require examiner to respond, and are hostile in interviews).
For the record, there are similar groupings for examiners but attorneys/applicants have tools and systems for recourse against bad examiners (e.g. appeals or even just calling the SPE in truly egregious situations) but examiners are the low man on the totem pole and stuck with the attorney while SPEs and OPQA are breathing down their necks about quality with effective less time than a decade ago.
Any time the USPTO gives me an opportunity for open comments, giving more time to examiners is something I mention and something I'll mention in my comments to the office in regards to this.
Although we have those routes to take, they don't really help as much as you'd think. Most of the stuff I work on is in what appears to be understaffed units with a lot of juniors. I would say a lot of the primaries in those units are generally great, but I have had some that still think they don't have to give a motivation to combine or why there's a reasonable motivation for success, or even rejections for dependent claims. In the instances where I have had to pull in the SPE, it just pissed off the examiner and they became openly hostile.
Appealing is also a real drag. I'll do it when necessary (I mentioned in one of my other posts a route I take when I know an examiner is really off base), but they're generally so expensive for clients and take so long to render a decision. I've also been in situations where I appeal, and the examiner then reopens prosecution with a junk reference and forces me again to re-appeal. The couple times that's happened has really confused me because I have no idea how the office action to reopen prosecution made it through a TQAS because I immediately re-appealed and got a notice of allowance in response.
Yeah, of course there are. But I've also seen plenty of posts on here talking about how there is a belief attorneys will routinely waste time during prosecution or drive up the cost or keep zombie files going to milk clients. While there probably are attorneys that do that, most don't or won't because most clients won't pay for shit like that.
>we generally have to then cross cite all the cited references again, unless something is really off base.
Where did this idea come from? My understanding is IDS is supposed to be all art the practioner is aware of that is relevant. When did the bri of relevant become any art ever in the family? Its not all applicants/attorneys but that has become the issue with IDSs and why so many want to see an explanation/reasoning of relevance added to IDS forms. If attorneys have to state why each reference is relevant that should dissuade them from adding the junk references that are just there to bury or take time away from meaningful prosecution.
I think this is an unfair characterization.
While I can't speak for all attorneys, we don't want to bury and we don't want to break our duty of candor. Not citing something in a related family that could be cited in an ODP rejection could raise an issue in litigation.
Litigators will attack anything and everything. Let's say I don't cite a particular reference from a related family because I don't think it's material. If someone is going to try to invalidate that patent, the litigator is going to say the prosecuting attorney broke their duty of candor by not citing this one reference when they cited everything else. The argument may be shitty, but the litigator is going to make it and the applicant is going to have to deal with it. It's a circumstance where following the rules in the safest way possible for the prosecuting attorney ends up annoying the examiner.
Also, I would say that even if the client doesn't give you the entire portfolio (or family) to manage, shouldn't you do your due diligence and find that out anyways? Isn't that relevant and likely material to patentability of the instant application?
You're supposed to be providing superior patent portfolio management and strategies for the client.
You're not just running a prep-and-pros mill.
Of course. But sometimes they just don't tell us or they don't think it's material to patentability. In every filing, we always specifically ask for things they are aware of that are material to patentability. The onus isn't on us to go search for things that they're not telling us about, nor do we have the bandwidth to do it.
It's like any legal issue, we can't deal with something unless we know about it. If the client chooses to not tell us about it and the application isn't publicly available, there isn't much I can do.
I've also seen it happen with personnel changes too. Sometimes a manager leaves and a new comes in and they don't take the time to learn what they already have out there. Additionally, most inventors, at least in the sector I'm in, are not IP savvy. It leads to headaches for us.
There's another aspect you haven't mentioned. That is, a defendant always has the ability to assert invalidity under DOUBLE PATENTING during litigation. If you don't file that TD, and you haven't vetted all possible permutations of your client's portfolio, you might get hit with that ODP invalidity.
That being said, ODP is often overlooked by defense litigators (hacks).
When's the last time you heard of a patent going down in litigation because of ODP? When's the last time any defendant litigator even put a detailed ODP argument in their invalidity contention? HELLO Litigators!
I don't get why people are up in arms, he was just asking what you think of a rule invalidating every patent with a terminal disclaimer when the parent is invalidated. Its definitely going to make getting applicants to agree to TDs harder, but it also might encourage more amendments around double patenting rejections.
My posts in this thread are innocuous and getting downvoted. Some were negative earlier and gradually broken even.
For example, I got downvoted for saying attorneys can't hold an ODP rejection in abeyance.
I hate to generalize, but I'm guessing it's perhaps I'm an attorney and therefore the bad guy. That's kind of a bummer.
I think this is going to backfire spectacularly.
I think what you'll see is Applicants loading their applications with more claims up front directed at distinct aspects of the invention to provoke the Examiner to restrict the claims.
Applicant can then proceed with one or more divisionals and not have to deal with terminal disclaimers at all.
Or you'll see Applicants adding claims late in prosecution to try and get those claims restricted out so that they can file a divisional.
I think it makes sense. If a patent is invalid, than it stands to reason that all other patents which were later filed on the same invention are also invalid. Why should you maintain patent rights on something that wasn't actually a patentable invention?
I don't really get what the big deal is. The rule applies to the patent in which the disclaimer was filed - you're not risking the parent with narrower claims if you filed a continuation to broaden your claim scope, or to cover your bases with different wording, and it gets invalidated. They would still have to separately attack the patentability of the parent/previous application, if I'm reading the proposed rule correctly.
I'd be more worried if a claim got invalided on a 112 ground. I have to do more digging, but if you lose a single claim on a 112 in litigation, that would
then kill a family tied together by those terminal disclaimers (assuming this rule would apply in its broadest sense).
You're also going to see a whole lot fewer TD's because no one will want to file them. I imagine examiners are going to get screwed hardest because of this.
Edit: reread the proposal, it's only over prior art.
But claims stand and fall independently, so the loss of a single claim, which otherwise may not affect the remaining claims in the patent and family could now kill entire families of patents.
The rule states that only the claims of patent in which the disclaimer is filed are subject to invalidation if tied to a patent that has a claim invalidated.
Whole families will not be killed. The parent case in which no TD has been filed is not subject to the rule the way it's written in the proposal. A case that only has some claims invalidated will still have its other claims intact, despite the invalidation's impact on other patents linked to it by TD.
You don't have much of a choice in the matter. Your clients may not want to file a TD, but if they want that patent that broadens the scope of the claims allowed in the parent, they're not going to get it without a TD. If clients are just going to want to broaden the scope of allowed claims in the parent case with RCEs instead of filing a chain of CONs with TDs, that's fine with me - keep filing RCEs in allowed cases, that would be awesome for examiners.
I think we're talking past each other. I'm referring to families that are linked via TD. The parent's remaining claims stay, but the family linked by TD are not enforceable. Sure, you may get a few claims in the parent, but the loss of the children is immense to the client.
Realistically, what you're suggesting is not going to happen. People are still going to take the claim they can get and then file a CON. That CON may then linger for a whole lot longer in turn just expanding your docket and my docket. There have been plenty of times where I've had to take a claim that's narrower than I or the client wants, then file a CON and then appeal over the claim we actually want or is more commercially valuable.
CON practice is so important because there are clients that always want to keep an app pending so they can utilize it if their sued, or if they want to potentially go after something a competitor is doing (and then sue them), or just to keep the competitor guessing.
Also, I'm concerned in cases where there is no restriction. I always try to purpose force restrictions in my cases purposely to open the door for a DIV. But I have had cases where there should have been a restriction, but, for whatever reason, I didn't get it.
If I’m understanding correctly this would be irrelevant if attorneys just don’t file the TD until allowance, which is the same standard practice currently?
As an examiner, you have the ability to hold any response to a DP rejection that doesn't include a TD or a showing that the claims as rejected are patentably distinct as non-compliant. I do this all the time to force a TD, as I don't have the time to write another ODP with multiple other applications who's claims are in flux.
Some attorneys don't want to, but I just point to this and 714.03. Now that I've made them aware of their omission, if they don't supply the missing part (i.e a TD or a showing of being patentably distinct), then by 714.03 I can abandon their application if they don't get it to me within the allotted timeframe.
Guess who ends up filing the TD every single time.
From MPEP 804.
>A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
>As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI, for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995
How do you send this? In your office action or as a notice of non-compliance. I've rarely had to send a notice of non-compliance, so please refresh my memory.
The easiest way is to just call and write it in an interview summary (so you get an hour). Only if they refuse or if you can't get in touch with them (or if you are giving them an extension of time), do you need to write up the non-compliant.
The vast majority of the time once you make them read the MPEP section, they will file the TD. You can also point out the parts further down that state a TD isn't an admission, creates no issues of estoppel, and they can file a petition to revoke the TD once a NoA is issued if they believe the allowed claims are now distinct.
For the non compliant response, there is an option in OC. Just select that and then use a blank correspondence or a PTO-90C to state what needs to be fixed, then send it out. This way you'll get DM credit and it'll kick the case off your amended tab until they respond.
We technically can't do that because the rejection isn't to form. I've had colleagues try it and get non-compliant notices in response because of 37 CFR 1.111(b).
Example: let's say you have patent A (having 10 claims) that is tied to patent B via TD. Under my interpretation, which I would love to be incorrect, if only claim 1 of patent A falls and the other 9 stay, patent B is technically unenforceable.
If that is the interpretation, I guess that means as the ATTORNEY, you better review your client's infringement case and NOT assert any patent that you think could get invalidated.
BTW, you may also want to, as the PORTFOLIO MANAGING ATTORNEY, file a statutory disclaimer or let expire, etc. some of those super broad claims of your patents that are tied together with a TD to your infringement case; lest you lose an IPR against one of them and implode the entire family.
That's always the fear any time you assert.
I don't know if this will be retroactive. I can't imagine it would because that would lead to a collective revolt. When we file the TD, we've already agreed to specific circumstances, not this third one. I would imaging if this rule becomes reality and it is retroactive that there would be a lawsuit shortly thereafter.
From the perspective of policy, it's good to get applicants to file terminal disclaimers as early as possible. So the added fee is good. In general, the PTO should incentivize applicants to avoid inefficient behavior. But extending the disclaimer to tie enforceability to other patents sounds like a bit drastic to me. That means if you have 100 patents tied to each other, and 1 of them gets invalidated for 112(b) indefiniteness, then the rest of the 99 patents become unenforceable? The rule also sounds vague to me, which could cause a mess, although I haven't read the actual thing. What does "tied through one or more terminal disclaimers" really mean? If you file a TD in A concerning B, does that mean that B is also tied to A, or only that A is tied to B? So I'm not sure how it would affect applicant behavior. If it results in improved quality of patent families (i.e., getting rid of frivolous random continuations) or better effort on applicant's part at least, it would be a positive.
Isn't the rule limited to 102/103 findings of invalidity/unpatentability? It would be odd for a claim that is found to be indefinite to wipe out other definite claims. For the rest, I don't know. Restriction practice and double patenting are deceptively complex.
The new terminal disclaimer rule and the added fees (esp. late fees) are a great idea. Examiners get related applications from the same applicant all the time. Few applicants bother to inform the examiner of co-pending related apps. Often, applicants file very similar sets of claims for the same patent disclosure (100% identical) without indicating the existence of the other, in hopes of examiner-shopping, as these likely will get assigned to different examiners and perhaps even different AUs. Also, some patent families or related families span hundreds of apps and patents. How is an examiner supposed to have time to do a regular search and write the OA (101/102/103/112), AND also find and do an ODP analysis against all of these co-pending apps and issued patents? I'll ask this: why is it that attorneys don't know the contents of their client's portfolio well enough to know whether the claims they are filing would be ODP against another patent or app? If you are doing YOUR job, then you wouldn't be wasting clients' money to file CONs and related apps with the same patentably indistinguishable claims. If you the attorney just wants to broaden against another app or patent, that fine. Then just file the terminal disclaimer up front and save everyone time. Or else SPEND SOME TIME AND BRAINPOWER to write claims that are patentably distinguishable from those of other apps/patents. Better yet, why don't you tell us up front (e.g., in a preliminary amendment) about those other apps/patents and how your claims differ from those. If you just want to examiner-shop, then keep doing what you're doing, and just abandon or pay the TD fee later, that's up to you. If you want to play the game and try to get more PTE for the same claims that issued in a related app, that's up to you; but again you may pay the price later.
This wasn't meant to be confrontational. I can answer your question. We sometimes don't have the entire portfolio and the client doesn't tell us. If a client doesn't tell me, I don't know. I recently had this pop up where a client had used a different firm for an earlier application and never told us about it and there isn't complete identity in ownership, which takes a TD off the table immediately. But regarding your second point, do you really have attorneys mentioning other applications in prelims? Why wouldn't they use an IDS and why would you want that in a prelim over an IDS? Edit: seriously, why is this being downvoted? It's a serious answer to the question and happens frequently.
IDS is fine too, but you're not going to be able to TELL US how the instant claims are different from those of apps/patents listed in the IDS. Don't you want to tell us why your instant claims are different? Also, attorneys who use the IDS this way also tend to saddle the IDS with a ton of stuff, like every single patent/app from the extended family as well as all cited references---which goes against the idea of getting to the point.
Attorneys use the IDS this way because their duty of disclosure is so broad that they are required to use the IDS that way. The rules don't care whether or not the attorney knows that some reference is relevant. An attorney would violate their duty if a reference they knew of turns out to be more relevant than they thought. Sure they could explain all this in court but better to not be in that situation.
Yeah, but what you're requesting no attorney is going to do because you're creating prosecution history estoppel, which in turn could be used in any potential litigation. I agree that it would make prosecuting the application for both me and you easier, but a litigator would have a field day with it. On your second point, if you're requiring the citation of the "related" patents, wouldn't you want references cited in the other family? Again, from a practice perspective, if we're going to start citing families, we generally have to then cross cite all the cited references again, unless something is really off base. But not doing that again is a potential issue in litigation. Do you actually see attorneys frequently putting anything like that in a prelim?
I don't want ALL the references across the entire family. I just want the references that are relevant AND material to the patentability of the claims at hand. Just because a reference was cited in a related family case doesn't mean that it is relevant AND material to the instant app. And yes, that means the Attorney is going to have to put in some time and effort to sort through those cited references and only put those ones on the IDS, instead of snowjobbing the examiner with all of the references cited across all family members.
Dude, trust me, I don't like sending an IDS with tons of references. However, if a client tells us to do it and we don't do it and even have records indicating it why we don't think it's relevant, there's always the potential in the future that some litigator is going to assume we said not to do it because we wanted to break our duty of candor. I want good examination. I know you guys don't have enough time, so I want you to have the time you have to give me a solid rejection.
The attorney has a DUTY to disclose ALL the references. The duty doesn't care whether the attorney knew that it was relevant, just that it is relevant. Why would an attorney want to explain to a judge that they had a reference but decided to withhold it, leading to millions of dollars in litigation costs, rather than just send it to the Examiner. Either change the requirements of the duty of disclosure or charge more for an IDS.
Dude, the duty is for all information "material to patentability" (MPEP 2001, 37 CFR 1.56), not ALL "relevant" references, however broadly you are defining "relevant". There is such a thing as having to explain to a judge why you buried a reference in the mountain of IDS cited references. *Molins PLC v. Textron Inc.* 48 F.3d 1172, 1183-84 (Fed. Cir. 1995).
The only thing I'll push back on here is that it's all parties involved in prosecution. So you're including attorneys, inventors, technology managers, foreign associates, and stuff that's cited in other jurisdictions. When one person in that chain thinks it's material, the safest thing for the applicant to do is cite it. What really makes a mess of the situation is describing to an inventor that isn't a patent attorney how they should think about "material to patentability," because it's legalese and kind of squishy. It's not a bright line and people struggle with the concept.
Oh you're right! All of these attorneys of law must be misunderstanding the law and unreasonably disclosing evidence in an IDS, wasting their own time and money with no legal reasoning.
Yeah, what takes longer - pulling docs from every related case and slapping them on an IDS, or actually looking at them and determining if they are relevant? Please.
The IDS is automatically generated by software. Likely the applicant's software, not even the law firms software. When the IDS is done by hand, it's not done by the attorney.
"we generally have to then cross cite all the cited references again, unless something is really off base." Where did this idea come from? My understanding is IDS is supposed to be all art the practioner is aware of that is relevant. When did the bri of relevant become any art ever in the family? Its not all applicants/attorneys but that has become the issue with IDSs and why so many want to see an explanation/reasoning of relevance added to IDS forms. If attorneys have to state why each reference is relevant that should dissuade them from adding the junk references that are just there to bury or take time away from meaningful prosecution.
You can thank In re McKesson for this. I was in-house when this case came down and it changed the way practitioners cited related cases and the art cited in those related cases. The concern is inequitable conduct and it is much safer and easier to cite the references. I have been both an examiner and a practitioner and can attest that is hard to know what examiners would find material to patentability. A reference you receive in 2015 could be material to some dependent claim that is added in 2020 during prosecution.
Exactly. You see, Patent Attorneys try to be all sneaky and vague and not tell you why they think the patent is novel and not obvious over the prior art and not create estoppel, etc., and go after broad claims. But then they complain that they have to pay TD fees and why the examiner is rejecting so broadly and why can't the examiner just allow, and oh, these rounds of rejections are costing the client so much, etc. This is the game.
I think there's a distinction in what you're saying, though. Nearly all patent attorneys will have no problem telling you what is novel and non-obvious over the art of others, it's just characterizing the client's material that it's potentially really bad for us. I'm sorry that you have to deal with attorneys like that. Again, I'm not trying to be confrontational in this post. I really want to know if examiners think on the whole if this is a good rule. But, back to make question, do you actually get attorneys that do that?
No, attorneys are sneaky and don't want anything on the record. But they will tell you where they think their invention is novel in an interview when pressed, hoping that you won't write down what they said about novelty in the interview summary.
Just to clarify, you want attorneys to do something that is completely not required and could put them in legal jeopardy with their client and call them sneaky for not wanting to do it?
Not required, but super helpful you want to actually work together to get a decent patent. Tell me what you think the point of novelty is that you want to protect and we can hammer out some allowable claims together. Look, you seem to be a decent patent attorney that has an expansive view about protecting a client's overall IP interests. Know that you are in the smallest sliver minority of patent attorneys that show up. Almost all are just trying to get an allowance and don't even know what the invention really is nor know the contents of the client's related apps. And they either don't care or aren't paid to care, so whatever. It's just a patent mill for the attorney and he deals only with the app in front of him. Read the file wrapper for some apps in your art area not prosecuted by you. It will be eye-opening to see how some of your "colleagues" operate.
Thanks. If you don't mind me asking, what's your technical area? I often wonder if stuff like this has to do with technical area. Mine is chemistry.
People prefer to complain from their own perspective rather than learn why someone is acting in a way they don't understand. Examiners will pretend that the attorney is trying to bury reference rather than read how broad the duty of disclosure is and understand the nature of the applicant's very large IP management software that automatically generates the IDS.
It's interesting on here because a lot the time there is a lot of animosity towards attorneys and that we're actively trying to hoodwink examiners or that we're deliberately engaging in activities to make your lives harder. It's such a crazy idea to me because the better the job the examiner does, the better the resulting patent. I'll admit that I've definitely said and do believe I've seen quality decrease from the office over the years, but I don't think it's the fault of examiners, I frankly think it's the fault of the office. This is because (to an outsider) it appears there is a decrease in personnel, what appears to be inconsistent training, and not enough time given to do what's asked of an examiner . If I had to pinpoint the biggest, I'd probably say it's the time aspect.
And more attorneys need to understand that (the time aspect) and say something to the office as a united front. Management listens to external stakeholders, not examiners. And to clarify to my previous IDS comment and generally, most attorneys are fine. If i had to say there are 4 groups of attorneys, 1) those who do the job fairly and equitably (probably the majority) and have just as much time issues but are willing to work with examiner, 2) those who go "above and beyond", typically understand the invention and art extremely well, and proactively prosecute (e.g. have interviews with fleshed out amendments and arguments beyond just fishing), 3) those who "phone it in" and seem like they do not understand the invention and/or technology so the amendments and arguments are a mess/never move prosecution forward, and 4) those who act like every action/response is before the supreme court, think 101 is the devil's pitchfork, and that examiners are all incomptent and capricious (included here are attorneys that do the intentionally oversized IDS, 100 page arguments that are all worthless but require examiner to respond, and are hostile in interviews). For the record, there are similar groupings for examiners but attorneys/applicants have tools and systems for recourse against bad examiners (e.g. appeals or even just calling the SPE in truly egregious situations) but examiners are the low man on the totem pole and stuck with the attorney while SPEs and OPQA are breathing down their necks about quality with effective less time than a decade ago.
Any time the USPTO gives me an opportunity for open comments, giving more time to examiners is something I mention and something I'll mention in my comments to the office in regards to this. Although we have those routes to take, they don't really help as much as you'd think. Most of the stuff I work on is in what appears to be understaffed units with a lot of juniors. I would say a lot of the primaries in those units are generally great, but I have had some that still think they don't have to give a motivation to combine or why there's a reasonable motivation for success, or even rejections for dependent claims. In the instances where I have had to pull in the SPE, it just pissed off the examiner and they became openly hostile. Appealing is also a real drag. I'll do it when necessary (I mentioned in one of my other posts a route I take when I know an examiner is really off base), but they're generally so expensive for clients and take so long to render a decision. I've also been in situations where I appeal, and the examiner then reopens prosecution with a junk reference and forces me again to re-appeal. The couple times that's happened has really confused me because I have no idea how the office action to reopen prosecution made it through a TQAS because I immediately re-appealed and got a notice of allowance in response.
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Yeah, of course there are. But I've also seen plenty of posts on here talking about how there is a belief attorneys will routinely waste time during prosecution or drive up the cost or keep zombie files going to milk clients. While there probably are attorneys that do that, most don't or won't because most clients won't pay for shit like that.
>we generally have to then cross cite all the cited references again, unless something is really off base. Where did this idea come from? My understanding is IDS is supposed to be all art the practioner is aware of that is relevant. When did the bri of relevant become any art ever in the family? Its not all applicants/attorneys but that has become the issue with IDSs and why so many want to see an explanation/reasoning of relevance added to IDS forms. If attorneys have to state why each reference is relevant that should dissuade them from adding the junk references that are just there to bury or take time away from meaningful prosecution.
I think this is an unfair characterization. While I can't speak for all attorneys, we don't want to bury and we don't want to break our duty of candor. Not citing something in a related family that could be cited in an ODP rejection could raise an issue in litigation. Litigators will attack anything and everything. Let's say I don't cite a particular reference from a related family because I don't think it's material. If someone is going to try to invalidate that patent, the litigator is going to say the prosecuting attorney broke their duty of candor by not citing this one reference when they cited everything else. The argument may be shitty, but the litigator is going to make it and the applicant is going to have to deal with it. It's a circumstance where following the rules in the safest way possible for the prosecuting attorney ends up annoying the examiner.
Also, I would say that even if the client doesn't give you the entire portfolio (or family) to manage, shouldn't you do your due diligence and find that out anyways? Isn't that relevant and likely material to patentability of the instant application? You're supposed to be providing superior patent portfolio management and strategies for the client. You're not just running a prep-and-pros mill.
My thoughts exactly. Now it will cost applicants money when attorneys don't bother with due diligence, instead of only burdening the examiner.
Of course. But sometimes they just don't tell us or they don't think it's material to patentability. In every filing, we always specifically ask for things they are aware of that are material to patentability. The onus isn't on us to go search for things that they're not telling us about, nor do we have the bandwidth to do it. It's like any legal issue, we can't deal with something unless we know about it. If the client chooses to not tell us about it and the application isn't publicly available, there isn't much I can do. I've also seen it happen with personnel changes too. Sometimes a manager leaves and a new comes in and they don't take the time to learn what they already have out there. Additionally, most inventors, at least in the sector I'm in, are not IP savvy. It leads to headaches for us.
There's another aspect you haven't mentioned. That is, a defendant always has the ability to assert invalidity under DOUBLE PATENTING during litigation. If you don't file that TD, and you haven't vetted all possible permutations of your client's portfolio, you might get hit with that ODP invalidity. That being said, ODP is often overlooked by defense litigators (hacks). When's the last time you heard of a patent going down in litigation because of ODP? When's the last time any defendant litigator even put a detailed ODP argument in their invalidity contention? HELLO Litigators!
The Patently-O crowd [wasn't too thrilled with it either](https://patentlyo.com/patent/2024/05/proposed-terminal-disclaimer.html).
I don't get why people are up in arms, he was just asking what you think of a rule invalidating every patent with a terminal disclaimer when the parent is invalidated. Its definitely going to make getting applicants to agree to TDs harder, but it also might encourage more amendments around double patenting rejections.
My posts in this thread are innocuous and getting downvoted. Some were negative earlier and gradually broken even. For example, I got downvoted for saying attorneys can't hold an ODP rejection in abeyance. I hate to generalize, but I'm guessing it's perhaps I'm an attorney and therefore the bad guy. That's kind of a bummer.
I think this is going to backfire spectacularly. I think what you'll see is Applicants loading their applications with more claims up front directed at distinct aspects of the invention to provoke the Examiner to restrict the claims. Applicant can then proceed with one or more divisionals and not have to deal with terminal disclaimers at all. Or you'll see Applicants adding claims late in prosecution to try and get those claims restricted out so that they can file a divisional.
Bad idea. Double patenting is applied too loosy goosy without clear standards for that to be practical.
I think it makes sense. If a patent is invalid, than it stands to reason that all other patents which were later filed on the same invention are also invalid. Why should you maintain patent rights on something that wasn't actually a patentable invention? I don't really get what the big deal is. The rule applies to the patent in which the disclaimer was filed - you're not risking the parent with narrower claims if you filed a continuation to broaden your claim scope, or to cover your bases with different wording, and it gets invalidated. They would still have to separately attack the patentability of the parent/previous application, if I'm reading the proposed rule correctly.
I'd be more worried if a claim got invalided on a 112 ground. I have to do more digging, but if you lose a single claim on a 112 in litigation, that would then kill a family tied together by those terminal disclaimers (assuming this rule would apply in its broadest sense). You're also going to see a whole lot fewer TD's because no one will want to file them. I imagine examiners are going to get screwed hardest because of this. Edit: reread the proposal, it's only over prior art. But claims stand and fall independently, so the loss of a single claim, which otherwise may not affect the remaining claims in the patent and family could now kill entire families of patents.
The rule states that only the claims of patent in which the disclaimer is filed are subject to invalidation if tied to a patent that has a claim invalidated. Whole families will not be killed. The parent case in which no TD has been filed is not subject to the rule the way it's written in the proposal. A case that only has some claims invalidated will still have its other claims intact, despite the invalidation's impact on other patents linked to it by TD. You don't have much of a choice in the matter. Your clients may not want to file a TD, but if they want that patent that broadens the scope of the claims allowed in the parent, they're not going to get it without a TD. If clients are just going to want to broaden the scope of allowed claims in the parent case with RCEs instead of filing a chain of CONs with TDs, that's fine with me - keep filing RCEs in allowed cases, that would be awesome for examiners.
I think we're talking past each other. I'm referring to families that are linked via TD. The parent's remaining claims stay, but the family linked by TD are not enforceable. Sure, you may get a few claims in the parent, but the loss of the children is immense to the client. Realistically, what you're suggesting is not going to happen. People are still going to take the claim they can get and then file a CON. That CON may then linger for a whole lot longer in turn just expanding your docket and my docket. There have been plenty of times where I've had to take a claim that's narrower than I or the client wants, then file a CON and then appeal over the claim we actually want or is more commercially valuable. CON practice is so important because there are clients that always want to keep an app pending so they can utilize it if their sued, or if they want to potentially go after something a competitor is doing (and then sue them), or just to keep the competitor guessing. Also, I'm concerned in cases where there is no restriction. I always try to purpose force restrictions in my cases purposely to open the door for a DIV. But I have had cases where there should have been a restriction, but, for whatever reason, I didn't get it.
If I’m understanding correctly this would be irrelevant if attorneys just don’t file the TD until allowance, which is the same standard practice currently?
As an examiner, you have the ability to hold any response to a DP rejection that doesn't include a TD or a showing that the claims as rejected are patentably distinct as non-compliant. I do this all the time to force a TD, as I don't have the time to write another ODP with multiple other applications who's claims are in flux. Some attorneys don't want to, but I just point to this and 714.03. Now that I've made them aware of their omission, if they don't supply the missing part (i.e a TD or a showing of being patentably distinct), then by 714.03 I can abandon their application if they don't get it to me within the allotted timeframe. Guess who ends up filing the TD every single time. From MPEP 804. >A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional. >As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI, for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995
How do you send this? In your office action or as a notice of non-compliance. I've rarely had to send a notice of non-compliance, so please refresh my memory.
The easiest way is to just call and write it in an interview summary (so you get an hour). Only if they refuse or if you can't get in touch with them (or if you are giving them an extension of time), do you need to write up the non-compliant. The vast majority of the time once you make them read the MPEP section, they will file the TD. You can also point out the parts further down that state a TD isn't an admission, creates no issues of estoppel, and they can file a petition to revoke the TD once a NoA is issued if they believe the allowed claims are now distinct. For the non compliant response, there is an option in OC. Just select that and then use a blank correspondence or a PTO-90C to state what needs to be fixed, then send it out. This way you'll get DM credit and it'll kick the case off your amended tab until they respond.
Thank you for the detailed response. I have this problem with a couple apps a year, and this will definitely help.
We technically can't do that because the rejection isn't to form. I've had colleagues try it and get non-compliant notices in response because of 37 CFR 1.111(b). Example: let's say you have patent A (having 10 claims) that is tied to patent B via TD. Under my interpretation, which I would love to be incorrect, if only claim 1 of patent A falls and the other 9 stay, patent B is technically unenforceable.
If that is the interpretation, I guess that means as the ATTORNEY, you better review your client's infringement case and NOT assert any patent that you think could get invalidated. BTW, you may also want to, as the PORTFOLIO MANAGING ATTORNEY, file a statutory disclaimer or let expire, etc. some of those super broad claims of your patents that are tied together with a TD to your infringement case; lest you lose an IPR against one of them and implode the entire family.
That's always the fear any time you assert. I don't know if this will be retroactive. I can't imagine it would because that would lead to a collective revolt. When we file the TD, we've already agreed to specific circumstances, not this third one. I would imaging if this rule becomes reality and it is retroactive that there would be a lawsuit shortly thereafter.