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Duty to Disclose (and Duty of Inquiry)

Dennis at Patently-O recently wrote a post about the applicant's duty of inquiry. This means that an applicant is obliged to actually read the references that they decide are relevant enough to submit in an Information Disclosure Statement.

I can't disagree with this; if I have to read it, you should have to read it; this seems only fair to me. Plus, how is the attorney to know that the reference is material to patentability if they haven't read it? (Except perhaps for those cases where the reference has been cited by the examiner during prosecution of a closely related application.)

Anything that would help to ensure that the references submitted with an IDS really were relevant would be a great help to examiners. The trend today seems to be towards more and more extensive IDSs, usually with less and less relevant art cited. It's not uncommon now to receive an IDS with nothing but copies of Office actions from related applications. All well and good, but most of the time those applications are only very peripherally related, and so the Office actions cited are not at all relevant, and a waste of time.

Can't really blame the attorneys, though; they're just following the guidance of the courts, and the courts seem to be continuously expanding the boundaries of what might constitute 'material to patentability'. The result (to my experience) is that examiners are getting more IDSs citing more references that are, on average, less relevant.

So, what do you do when faced with one of those monster IDSs citing hundreds of references, some of which might be hundreds or thousands of pages long? It takes a long time to consider all of those references, of course.

Well, the MPEP seems to be pretty unequivocal on the subject.

"An information disclosure statement filed in accordance with the provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner assigned to the application." -- MPEP 609

"The information contained in information disclosure statements which comply with both the content requirements of 37 CFR 1.98 and the requirements, based on the time of filing the statement, of 37 CFR 1.97 will be considered by the examiner. Consideration by the examiner of the information submitted in an IDS means that the examiner will consider the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search." -- MPEP 609.05(b)

OK, but what exactly constitutes the 'same manner as other documents in Office search files'?

Usually, if I've performed a search, then I can at least go straight to the places in the documents that contain the search terms and get a good idea of the relevance of the reference. I can also perform a text search for other terms of interest if I think it's warranted.

With an IDS, all I've got is a document image (so no text searching) that the applicant has told me is material to the patentability of their application, but with no clue as to why. I can't consider it in the same way as other documents in the search files, because I have no way of knowing why it's relevant without reading it, at least in part. When there are hundreds of references, or references that are very large, this can be a problem. I'm not sure how an examiner is supposed to handle one of those mega-IDSs and consider all of the cited references "in the same manner as other documents in Office search files are considered" while maintaining their production numbers.

Others in the patent field don't seem to expect examiners to review the references in great detail. When the courts are handing down inequitable conduct decisions for burying references in a large IDS, obviously somebody doesn't think examiners will fully consider all of the references cited in large IDSs.

Now if the courts really wanted to help examiners out, it would be great if they would hand down some decisions more clearly [i.e., narrowly] defining what's actually 'material to patentability', instead of continuously expanding that definition, and thereby encouraging requiring attorneys to submit larger and larger [but less and less relevant] IDSs.

I'm not holding my breath.

Full post as published by Just a Patent Examiner on December 02, 2008 (boomark / email).