Statement of the Honorable Gerald J. Mossinghoff to the U.S. Patent and Trademark Office: Notice of Public Hearing and Request for Comments – Issues Related to the Identification of Prior Art During the Examination of a Patent Application

July 1, 1999 – Firm News

Statement of the Honorable Gerald J. Mossinghoff
to the U.S. Patent and Trademark Office
Regarding the 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)

July 14, 1999

Introductory Comments

We commend the U. S. Patent and Trademark Office ("PTO") for conducting public hearings on the subject of searching sufficiency since the quality and reliability of patents issued by the PTO are directly dependent on whether or not the most pertinent prior art was considered by the examiner in the course of his or her examination. Before addressing the specific questions proposed by the PTO in its announcement of these hearings, it would be useful to reflect on the meaning of the term "search," and the assumptions underlying in the PTO's questions that the meaning of this term is well understood or that it has a single meaning. While the searching done by patent examiners within the PTO is fairly well circumscribed by production goals imposed on the examiners, no such limitations exist in the commercial world. In the commercial world, the duration and scope of a search is limited only by the economic value of the intellectual property rights being evaluated.

In the case of filing a patent application of unknown value, the budget available for searching may range from a few hundred dollars to as much as a thousand dollars, or more. At the other extreme, in a major litigation where rights of great value are involved, the "search" encompasses both conventional database searching — paper and electronic — and the litigation discovery process itself, in which experts and other individuals with relevant knowledge are personally questioned for the purpose of locating prior art or other material information that would impact the validity of the patents in suit. This process can literally absorb millions of dollars and take years.

When patents are invalidated in court on the basis of prior art not "considered" by the examiner, there is seldom any mention in court opinions of the amount of time or money invested in locating the prior art that was not before the examiner. Was it located after a simple search of patent files and simply missed by the examiner? Was it located after weeks of searching through obscure publications located in major libraries such as the Library of Congress and elsewhere? Was it located after years of searching databases and deposing parties and other witnesses in a litigation? Was the prior art undocumented prior use or sale by others than the applicant that was by definition not available to the examiner? The point is that if enough money is invested, a party can almost always locate some prior art that was not available to the PTO, and therefore was not "considered" by the examiner.

Given this background, the term "search" in the PTO Questionnaire should be given a definition of some limited scope, such as "a reasonable patentability search of some reasonable fixed duration." A search of this duration — for example, of eight hours or less — is about what we understand a patent examiner can carry out and still meet appropriate PTO production goals. A search of this duration, no matter how skilled the searcher who carries it out, cannot be depended upon to locate all relevant prior art in every instance, although it should locate the most relevant art easily located in obvious searching locations, particularly in the U.S. patent files. More importantly, a search of this limited nature certainly will not prevent patents from being invalidated in litigation due to the discovery of material prior art not considered by the patent examiner.

Another factor that must be considered is the problem posed to the PTO by the development of new technologies. Within the PTO are many examiners who are truly experts in their respective fields of technology. These examiners become experts by spending years examining the same technology, thereby learning in detail all of the relevant prior art. Based on their expertise, these examiners can locate the most relevant prior art even in the limited time available to them. Furthermore, these examiners often accumulate private collections of the most relevant prior art to facilitate the examination of related patent applications as they arrive for examination.

Unfortunately, when new technologies develop, the examiners are at a disadvantage in that they have not yet had time to learn of the relevant prior art or develop any searching shortcuts. Thus, the advantage of experience in the art that the examiner has in developed technologies does not apply as well to new technologies. The PTO should take this circumstance into account and devote more time and effort to train examiners in new technologies and to seek out databases or other collections of information in these new technologies so that its examiners can overcome this disadvantage.

Therefore, all questions asked in the PTO Notice must be interpreted with the caveat that the "search" mentioned in the questions is a limited search of the type that a typical examiner could conduct and still meet his or her production goals, rather than a "search" of extended duration within a generous or virtually unlimited budget. Taking into account these comments, let me now address the questions raised in the hearing announcement.

1. Is the most pertinent prior art being considered by patent examiners during the examination of a patent application?

Given the limited time the PTO examiners have for conducting a search, our experience is that the examiners are doing a reasonably good job of locating relevant prior art.

2. Do applicants submit the most pertinent prior art that they are aware of in connection with a filed patent application?

Applicants normally submit the most pertinent prior art of which they are aware when a patent application is filed or during its pendency. It is clear from the PTO Rule 56, 37 CFR §1.56 as well as case law that the single most important action that an applicant can take to enhance the quality of his or her patent application is to disclose all known prior art that is "material to patentability."[1] We always advise applicants of this, and we believe they fully understand it. Accordingly, we believe that applicants understand that it is clearly in their best interest to disclose all known relevant prior art.

3. Are the current rules and procedures for obtaining prior art during the examination of a patent application adequate and effective?

We believe that Rule 56 is clear and normally results in appropriate disclosures of prior art to the PTO.

4. Are prior art searches typically conducted before filing a patent application with the PTO?

Whether or not a search is conducted in any given case is determined by (a) the available budget for filing an application, and (b) the degree to which the applicant is aware of the current state of the art. In many cases, corporations are very active in selective fields. Thus, they are well aware of the state of the prior art in their field, much of which may be their own material. In these situations, there is little or no economic value in conducting a search and applications may be filed without any formal search. Also, if there are imminent statutory bases involved, there may be insufficient time to conduct a novelty search in a given case.

5. Please indicate whether information disclosure statements are frequently submitted.

In our experience, information disclosure statements are normally submitted, disclosing U. S. patents, foreign patent documents, PCT publications, and non-patent literature.

6. Should applicants be required to conduct a prior art search and submit corresponding search results, including where they search, to the PTO when filing a patent application?

The Court of Appeals for the Federal Circuit has stated[2] that as a general rule there is no duty to conduct a prior art search. Accordingly, we believe that an applicant should not be required to conduct a prior art search. As far as disclosing whether a search has been conducted, such a disclosure would appear not to be in the interest of the applicants in view of the presumed need to define exactly what is meant by the term "search," how much time was invested, and whether any guarantees are provided as to whether all prior art in the relevant areas was searched. Rather, the burden of carrying out a conventional patentability search should remain on the PTO.[3]

7. Should applicants be required to submit all prior art relied upon during the drafting of the claims of a relevant application?

Applicants are required to submit all material information of which they are aware under Rule 56, 37 CFR §1.56. If prior art was "relied upon" during the drafting of the applicant's claims, it is difficult to see how that prior art was not material to the patentability of the claims.

8. Should applicants be required to submit all non-patent literature directed to the same field of invention attributable to, authored by, or co-authored by applicant?

The phrase "same field of invention" is overly broad and if used in a PTO regulation would, in my view, create undesirable confusion with the current standard, which has been adopted by this Federal Circuit, namely, "material to the patentability" of one or more claims. Moreover, if the inventor or inventors were prolific writers, a requirement to identify, and presumably submit copies of, all of their writings could be counterproductive to a thorough examination.

9. Please identify any types of non-patent literature documents applicants should be required to submit to the U. S. PTO in connection with any given patent application.

Applicants are required under Rule 56, 37 CFR §1.56, to submit any type of non-patent literature of which they are aware that is material to the patentability of the claims in their applications.

10. If you believe that the most relevant prior art is not being identified during patent examination, please identify any suggestions to obviate the problem.

We believe that, given the searching limitations imposed by the PTO, the most relevant art is generally identified during patent examination. However, we strongly recommend that the PTO seek out industries involved in areas of rapidly advancing technology to obtain assistance in identifying the most relevant databases or other locations in which the examiners should look for relevant prior art.

11. Please discuss any related matters not specifically identified in the above questions."

The United States has a patent system that is founded on the Constitutional mandate to promote the progress of the useful arts by securing to inventors the exclusive right to their respective discoveries. This mission has been delegated to the PTO and has been interpreted as the obligation to issue "valid" patents. This obligation has never been interpreted to include a "guarantee" that the patents would be valid for all time and in all circumstances. In fact, the reissue and reexamination provisions of the law presuppose that imperfect patents may be issued from time to time because some material prior art was not considered during the original examination. Thus, the PTO mission to issue "valid" patents must take into account the fact that only a limited search can reasonably be conducted in each case.

We believe that the PTO should strive to conduct the best search possible within the restricted time budget allocated to examiners. To be most effective, this search should utilize modern computer database searching. Further, the PTO should communicate with industries or associations involving the latest technology such as biotechnology or software to make sure that it has access to the most relevant databases.

Imposing further burdens on the applicant in this regard would not be appropriate. The applicant already carries an extremely onerous burden with the duty of disclosure rules in place at present. Pressing this duty further with a requirement to search or to disclose specific searching results would most likely result in a myriad of legal problems that would surely work against applicants and against the relatively high percentage of patents held valid at the present time.




In summary, we believe that the PTO is generally doing a fine job in carrying out its mission of issuing "valid" patents, taking into account limitations in the real world. The PTO, no matter how much money it spends, how many examiners it hires, or how hard it tries, will never be 100% successful in issuing patents that cannot be invalidated in court by prior art not considered during examination. This fact should be realized by the PTO and accepted by the public.

The main problem of the PTO is in dealing with newly developing technologies. In this area the PTO should focus on communicating with industry and industry groups and technical experts familiar with these new technologies (1) to identify the most relevant databases and sources of relevant prior art information, (2) to collect non-patent literature and other materials particularly pertinent to new technologies to facilitate examiner searches, and (3) to hire and train examiners in the areas of new technology. Such training should include field trips by examiners to corporations or educational institutions involved in the development of new technologies.

We applaud the PTO for holding these important hearings, and we would be pleased to assist the PTO in all appropriate ways in carrying out its important mission.



[1] An applicant's failure to disclose prior art that he or she knows of and that is material to the patentability of a claim or claims is deemed to be inequitable conduct that can render a patent unenforceable. But there is legitimate concern that the allegations regarding such conduct are not always well founded. As stated by the Federal Circuit in Burlington Industries v. Dayco Corporation, 849 F.2d 1418, 1422, 7 U.S.P.Q. 2d 1158, 1161 (Fed. Cir. 1988):


"[T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague. Reputable lawyers seem to feel compelled to make the charge against other reputable lawyers on the slenderest grounds, to represent their client's interests adequately, perhaps. They get anywhere with the accusation in but a small percentage of the cases, but such charges are not inconsequential on that account. They destroy the respect for one another's integrity. . . . A patent litigant should be made to feel, therefore, that an unsupported charge of 'inequitable conduct in the Patent Office' is a negative contribution to the rightful administration of justice."

[2] FMC Corp. v. Hennessy Industries, Incorporated, 836 F. 2d 521, 5 USPQ 2d 1272 (Fed. Cir. 1987).

[3] Requiring an applicant's attorney to conduct a patentability search could greatly complicate the malpractice exposure of patent attorneys without any offsetting benefit. So many exceptions would need to be crafted that determining whether a search was or was not required could create a host of unnecessary issues.