The U.S. Patent and Trademark Office (“PTO”) complains that it is overwhelmed by the onslaught of patent applications, and seeks to shift to the applicants the burden of finding prior art and distinguishing the claims from it. Two PTO regulations1 provide for applicants to provide a “support document” under certain circumstances.
Currently pending legislation, the Patent Reform Act of 2007,2 includes a provision that would allow the PTO to make a similar requirement for all patent applications. However, we believe that such a solution is fundamentally flawed and that a better answer would use information technology to support the mission of the agency that is mandated to promote the progress of useful arts.3 This would be analogous to the deployment of the automatic telephone exchange, after anticipated growth of the switchboard phone system couldn’t be supported without recruiting every woman in America to work as a telephone operator.
On October 18, 2007, PatentCafe announced that they would be beta testing a software system for generating an examination support document.4 Dubbed 37CFR.com, it is described as a workflow system using artificial intelligence including latent semantic analysis that would enable a worker to meet the “complicated” requirements for an Examination Support Document, namely, to
* Identify the most closely related US patent classifications for every claim.
* Search every claim to identify the prior art references “deemed most closely related”.
* Identify in the cited prior reference any limitations to each claim in the applicant’s patent.
* Explain the patentability of the current claim over the cited reference.
* And compile the detailed report, along with the required USPTO forms.”
We are concerned that nothing in the proposed regulations or statute would prevent some item in an Examination Support Document submitted by the applicant from being used in litigation as an admission, to narrow unintentionally what would otherwise be the scope of a patent claim.5 And it would be increasingly likely that even an inadvertent error in characterizing the prior art could be misconstrued as “inequitable conduct.”
Accordingly, we urge that the PTO itself provide the Patent Examining Corps with information support tools to generate results equivalent to the Examination Support Document.
1. Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg. 36323 (June 26, 2006) (providing in certain circumstances for applicant to submit an Accelerated Examination Support Document if an expedited examination is sought) and Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 Fed. Reg. 46716 (Aug. 21, 2007)(Claims and Continuations Final Rule, providing for an Examination Support Document if more than 5 independent or a total of 25 claims are presented for any invention). Although implementation of the Claims and Continuations Final Rule was deferred by the effect of a preliminary injunction issued October 31 by the U.S. District Court for the Northern District of Virginia, its ultimate fate is undetermined as we write this in late November 2007.
2. The Patent Reform Act is a pending bill which passed the House of Representatives as H.R. 1908 on September 7th and S.1145 which has passed the Senate Judiciary Committee.
3. U.S. Constitution, Art. 1, §8, cl. 8.
4. First Software Application for USPTO Rules Compliance, IPFrontline. URL: http://www.ipfrontline.com/depts/article.asp?id=16409&deptid=8 (downloaded 11/27/2007). We have been informed that since October 31, the 37CRF.com system is to focus on the Accelerated Examination Support Document described in the June 2006 Federal Register notice.
5. See, e.g., Gillespie v. Dywidag Systems Int’l, USA (no. 20006-1382) (Fed. Cir. 2007).