As part of its ongoing efforts to reduce its workload instead of expanding to meet increased demand, the U.S. Patent and Trademark Office (USPTO) announced a new proposal for the patent application review process. Under the new proposal, patent applicants would be required to provide the USPTO with the most relevant information related to their inventions in the early stages of the review process.
Apparently, the current obligation to inform patent examiners of all information known to be material to patentability of the invention claimed by the applicant is just not enough. Now, they don’t want to have to read anything. With the proposed changes, patent examiners would not have to review documents that do not directly relate to the claimed invention, or that duplicate other information already submitted.
In a bad case of blaming the victim, the USPTO says it “has observed that applicants sometimes provide information in a way that hinders rather than helps timely, accurate examination. For example, some applicants send a very large number of documents to the examiner, without identifying why they have been submitted, thus tending to obscure the most relevant information. Additionally, some applicants send very long documents without pointing out what part of the document makes it relevant to the claimed invention.” The USPTO claims that the proposed rule change is designed “to discourage submission of information that is unimportant or does not add something new for the examiner to consider.”
Gee, I wonder why an applicant would want to send along references that may not directly relate to the invention? I’m sure this has nothing to do with the fact the applicant risks losing the entire patent in litigation under some claim of “inequitable conduct” (the standard greeting that any two patent lawyers use upon meeting) if they happen to forego sending some tangentially related reference.
In summary from the USPTO:
To encourage submission of relevant information to the patent examiner promptly and in a way that brings the most important information to the attention of the examiner, the USPTO is proposing to eliminate all fees associated with submitting an IDS. Under the proposal, applicants in most cases would be permitted to send up to twenty documents without additional explanation, if these documents are provided to the USPTO before the examiner sends a first communication to the applicant.
Were an applicant to submit more than twenty documents, or wait until after the patent examiner’s first communication has been sent, the applicant would face increasing requirements to provide more detailed information about the documents and how they relate to the claimed invention. Applicants could be required to point out what part of the document makes it important, to identify specific claims to which a document applies, to clarify how a document adds new information not already considered by the examiner, or explain why the claims are patentable in light of the information provided.
So, under the proposal, applicants would still be able to send in as many documents as they choose. However, they will suffer the dire consequences of piling up mounds of prosecution history estoppel.
What’s next, applicants will have to draft their own Office Actions and rejections and then be held accountable if they make a difficult judgment call or “mischaracterize” an issue?
