Statement of Gregory J. Maier Presented For The American Bar Association Section of Intellectual Property Law

Re: PTO Notice of Public Hearing and Request for Comments on Issues Related To The Identification of Prior Art During the Examination of a Patent Application, (Federal Register, May 27, 1999, Vol. 64, No. 102)

These views represent the views of the Section of Intellectual Property Law. They have not been considered or approved by the House of Delegates or Board of Governors of the American Bar Association, and accordingly, should not be construed as representing the position of the Association.

T E S T I M O N Y

I am Gregory J. Maier, Chair-Elect of the American Bar Association Section of Intellectual Property Law. The views that I am going to present represent the views of the Section of Intellectual Property Law. They have not been considered or approved by the House of Delegates or Board of Governors of the American Bar Association, and accordingly, should not be construed as representing the position of the Association.

The Section of Intellectual Property Law, with more than 17,000 members, is the world's largest organization of intellectual property practitioners, and has sought to provide leadership to the intellectual property bar since its inception in 1894.

Consistent with its normal deliberative process, the Section has developed a response to the PTO's request for comments on issues related to the identification of prior art during the examination of a patent application. The Section's response was initially drafted and voted on by two of its committees acting together, then approved by the Section Council for submission to the PTO consistent with ABA policy. A written statement containing the details of the Section's position will be submitted before the deadline for such submissions.

My remarks today are intended as a brief summary of the Section's position, and any inconsistency between my remarks today and the written statement to be submitted by the Section should be resolved in favor of the written statement.

The PTO Request for Information implies that members of the public do not feel the PTO is doing its job properly. The Section does not agree with that general assumption. A general position on the workings of the PTO should be based on reliable data obtained by studies of court cases and reexamination records and other such information, not on comments by a few outspoken practitioners, or even on isolated instances in which pertinent art was not properly cited or applied. The Section realizes that PTO examiners are allowed only a limited time to search each claimed invention, and that limited searching time will be reflected, to some extent, in the quality of the patents issued. The Section is not aware of reliable data that indicates a general failure on the part of examiners at the U. S. PTO to consider the most pertinent prior art during examination of applications.

Many of the questions in the request for comment focus on the acts of patent applicants, particularly regarding conducting patentability searches before filing patent applications and on disclosing the results of those searches to the PTO. In addressing these questions, the Section wishes to make two points.

First, patentability searching before filing is, in our view, a purely discretionary activity that varies by applicant throughout the world, based on factors such as cost, filing deadlines and presumed knowledge of the prior art. The Section is not aware of any comprehensive study that has been conducted on patentability searching, but believes that there is no generally agreed upon patentability searching policy among applicants. Beyond that, we cannot comment with certainty.

Second, on the issue of disclosure of known prior art to the PTO, the Section views this issue in the context of all applicable law, and does not limit its consideration solely to the prosecution of patent applications, as does the PTO.

The U. S. law on the duty of disclosure to the U. S. PTO is unquestionably the harshest and most unforgiving law of its kind in the world. A U. S. practitioner who intentionally fails to disclose information, known to him to be material to the examination of a pending patent application, faces both unlimited financial liability and loss of his license to practice, not to speak of loss of his client and his reputation in the community.

As a result, the patent practitioner has extremely strong incentives to fully disclose any material information of which he is aware to the U. S. PTO. The practitioner has no incentive to conceal relevant information from the PTO, because every practitioner is well aware that any such action would, as a minimum, render the resulting patent fully unenforceable, and thus useless to his client.

It is the position of the Section that the burden placed on patent practitioners to fully disclose information to the U. S. PTO has already been maximized. It is unproductive to try to squeeze blood from a stone, or any more prior art from patent applicants, either directly or through their representatives.

Finally, it is respectfully submitted that the question in the Request for Comment as to whether applicants should be required to conduct a prior art search before filing, fails to take into account a basic principle of patent law - namely that any action or assertion made by an applicant can be used against him in a court of law. If an applicant were to assert that a prior art search was conducted, and if a pertinent reference or searching area were to be inadvertently overlooked, the applicant would surely be accused of attempting to mislead the examiner as to the thoroughness of his search, or with an intentional failure to fully search for and disclose material information. The result would be damaging to the patent system by providing further grounds for holding valuable patents invalid or unenforceable in court.

In contrast, there is no such liability attached to searches conducted by patent examiners. This fact, together with the fact that the applicant is already fully burdened by his onerous duty of disclosure, suggest that the patent system is best served if the PTO, as the government agency charged with the responsibility of issuing valid patents, focuses on enhancing the quality of its own searches.

Specific steps that the Section recommends to the PTO in this regard are as follows:

1) Work more closely with the JPO and EPO to make sure that foreign prior art is both available to U. S. examiners and is properly classified for reliable searching;

2) Enhance examiner training in rapidly advancing technologies so examiners can better understand the significance of prior art disclosed to them;

3) Cooperate with industries or other members of the public that are concerned about the quality of PTO searching to seek assistance with examiner training and in providing access to data bases of non-patent literature that would improve the quality of PTO searches.

In closing, on behalf of the ABA Section of Intellectual Property Law, I want to thank the PTO and its leadership for providing us with this opportunity to comment. I also want to assure the PTO that the Section stands ready to work with the PTO to take whatever steps it can to assist in improving the patent system.