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Should patent attorneys start explaining, in advance, why their claims are patentable?

The Supreme Court might well go along with one of the arguments being made in the pending i4i v. Microsoft case about the presumption of validity to be given to an issued patent. In that event, patent attorneys might want to re-think a cherished “best practice” in the prosecution of patent applications, namely that an attorney should never argue why claims are patentable before getting a specific rejection from the patent examiner.

(Hat tip: Dennis Crouch’s Patently-O blog.)


Some amici in Microsoft v. i4i make an interesting argument

Some amici in Microsoft v. i4i have argued that, under the Administra­tive Procedure Act (APA), a decision by a patent examiner to allow a patent is entitled to deference by the courts only if the written record affirmatively indicates that the examiner’s decision was the result of reasoned decisionmaking.

The SAP et al. amicus brief, at page 3, quotes a 1983 Supreme Court opinion interpreting the APA to require that

[T]he agency must examine the relevant data and articulate a satisfactory explanation for its action, including a rational connection between the facts found and the choice made.

(Emphasis added, citation and internal quotation marks omitted; see also pages 14-15 of the brief, addressing the same point.)

Stanford Law professor Mark Lemley, writing on behalf of 37 law, business, and economics professors, argues at page 15 of his brief that:

Courts should defer only to actual PTO decisions about the relevance of prior art made on the record. Thus, a higher burden than preponderance of the evidence should apply only to prior art or arguments actually discussed in writing by a patent examiner in an office action.

(Emphasis added.)

This is a pretty compelling argument, it seems to me, especially after Dickinson v. Zurko, where the Court signaled that the USPTO was just as subject to the APA as any other agency.

Examiners might have to start providing detailed statements of reasons for allowance

If the Court accepted the argument, patent examiners technically wouldn’t be required by statute to provide statements of reasons for allowance. But remember that the USPTO has an institutional incentive to have its work product upheld as valid.

If you ask me, it’d be a good bet that the USPTO would make it mandatory for examiners to provide statements of reasons for allowance, precisely so that courts in litigation would defer to the examiner’s decision.

(Currently, section 1302.14 of the Manual of Patent Examining Procedures permits examiners to provide a statement of reasons for allowance but does not require them to do so.)

Patent attorneys might want to start providing their examiners with text resources for drafting reasons for allowance

I was trained that, in submitting prior-art references as part of an information disclosure statement, you should never, ever summarize or, God forbid, characterize a prior-art reference. If you did, you could be accused of trying to mislead the examiner by leaving something out or by accidentally mis-stating a point.

Nor should a patent attorney, I was taught, ever anticipate a rejection by arguing in favor of patentability before getting a specific rejection from the examiner. If you did, you could needlessly narrow the possible scope of the claims by premature prosecution history estoppel.

But suppose that the Supreme Court were to adopt the line of thinking set out in the above-quoted amicus briefs. That is, suppose that the Court limited the clear-and-convincing-evidence presumption of patent validity to those cases in which the patent examiner explained her reasons for allowing the patent application to issue.

In that event, the better course for a patent attorney, when submitting prior-art references with an information disclosure statement, might be to draft a proposed statement of reasons for allowance, using language that an overworked examiner could easily adopt or adapt as her own.

To accomplish this, here’s one possible approach that a patent attorney might take when submitting an information disclosure statement with prior-art references:

(a) For each prior-art reference, briefly summarize, in short, numbered paragraphs, what you believe to be the relevant portions — and also explain why you believe the claims are patentable over the reference.

In essence, give the examiner some pre-written text that she could adapt into a statement of reasons for allowance.

But don’t get greedy: you don’t want to offend the examiner with an over-reaching statement, nor get her in trouble with her supervisor for going along with such a statement.

(b) Include a reasonably-prominent disclaimer with language such as:

The summaries and arguments below reflect the undersigned attorney’s current understanding of the cited prior-art references and their significance to the claims. Of course, the summaries and arguments are not intended as a substitute for the examiner’s own careful consideration of each reference and each argument.

(c) Include a statement such as this:

In the next Office action, if the examiner finds particular ones of the summaries and arguments below to be persuasive, he or she is respectfully requested to affirmatively so indicate. This could be done, if desired, by referring to the corresponding specific paragraph number(s). Doing so will help provide a written record of the evidence and reasoning underlying the examiner’s decision.

The examiner might cite one or more of your paragraphs by number. More likely, she’d just paraphrase whatever parts of your language she agreed with. Either way, you’d have at least some explanation of reasons for allowance, which should boost your chances at receiving greater deference from a court.

The resulting business risks are likely to be worth it in many cases

This is a more-aggressive approach than many patent attorneys are comfortable with. But it seems to me that it will often be a risk worth taking. I know that in many cases, I’d suggest to the client that it’s be more important to have a written record that showed reasoned decisionmaking by the patent examiner, than to fret about the hypothetical possibility of an inequitable-conduct accusation or of premature prosecution history estoppel.

{ 3 comments… add one }
  • Patrick 2011-03-14, 11:47

    “I was trained that … you should never, ever summarize or, God forbid, characterize a prior-art reference. If you did, you could be accused of trying to mislead the examiner by leaving something out or by accidentally mis-stating a point.”

    I was taught the same thing, for the same reasons…. Of course, if you’re not actually trying to mislead the examiner, and if you’ve studied the reference in enough detail, you shouldn’t need to worry about such things.

    However, isn’t much of what you’re suggesting required in an ESD for accelerated examination? If you’re going to take this pro-active approach, why not go the full 9 and get your client a patent in 12 months?

  • D. C. Toedt 2011-03-14, 12:48

    @Patrick, I agree completely that if you’re careful and really are trying to help the examiner, characterizing references can be an acceptable risk.

    (That ties in with a lesson I had pounded into my head by the business people at the software company where I was the GC: In business, you have to be willing to take some risks.)

    But depending on the client, you might not want to incur the expense of the required prior-art search and then of preparing an examination support document.

    It’s easy to envision keeping the number of claims within the thresholds set out in 37 CFR 1.265 (5 independent claims, 25 total claims). With the approach I’m proposing, even without an ESD, you can still provide the examiner with drafting resources that she can adapt for a statement of reasons for allowance.

    (As to staying within the 5 / 25 limits on claim numbers, I’ve always had a bit of a bias against presenting a lot of claims in any case. When I draft claims, I almost invariably do so in a real-time collaboration with the inventors; we focus very intensely on getting the claim language as “just right” as we can. When you do that, it seems to me that a few carefully-crafted claims can give the client more long-term value than a prolixity of claims with a zillion different variations on the sme basic claim elements.)

    Thanks for stopping by.

  • MrFlippy 2011-03-28, 03:25

    Mr. Lemley gets it exactly wrong. The art that winds up being considered by the Examiner is ALWAYS a small subset of the art that *could* be considered. Part of the “reasoned decisionmaking” that an Examiner goes through is deciding which of the multitude of references to set forth and base the rejection upon.

    Since the volume of art that could be considered is endless, lowering the standard for art that is not considered will essentially poke holes in the buckets of all patentees. It will subject patents that were legitimately issued over the “best available references”, which is the standard for examination (and not “all of the available references”) to endless challenges under a lower standard that will make examination a useless exercise.

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