The following article was sent in by Lisa A. Dolak , an Angela S. Cooney Professor of Law, Syracuse University College of Law and Practice Center Contributor.
A recent legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.” It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination.
The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges. Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to provide patent owners a forum for effectively purging the taint associated with undisclosed or misrepresented information, it raises a number of questions, including questions relating to potential disciplinary consequences for practitioners.
Under the proposal, the USPTO would be charged with evaluating the information presented in a request for supplemental examination under the familiar reexamination standard: “whether [it] raises a substantial new question of patentability”, and it would have three months to make that determination. The consequence of a USPTO determination that any of the information in the request for supplemental examination raises a substantial new question of patentability would be a reexamination proceeding which differs from the usual ex parte reexamination in two principal respects. First, the patent owner (who filed the request for supplemental examination in the first place) would be barred from submitting a statement. Second, and significantly, the restriction limiting reexamination to consideration of “patents and printed publications” would not apply, and “information” is not otherwise limited or defined in the proposal.
Accordingly, supplemental examination could be used, presumably, not only to bring to the attention of the USPTO non-print prior art (such as pre-critical date sales and public uses), but also non-prior art information of the kind the Federal Circuit has held to be material, such as:
- unpublished notes taken by a non-inventor co-employee at a poster presentation;
- a non-prior art article relevant to whether the claims at issue were enabled;
- a third-party’s patent application (in the inventor’s possession) and information regarding the third-party’s model of his own invention (which the inventor had seen);
- “intentional falsehoods, misrepresentations, and nondisclosures” relating to inventorship;
- a false statement in a Petition to Make Special;
- unjustified claims to small entity status.
Except in certain circumstances, the legislation would strip the courts of the power to hold patents unenforceable for inequitable conduct in cases where the patentee had previously secured via supplemental examination USPTO consideration of the information the patent challenger alleges was withheld or misrepresented. Thus, a patent owner who identifies information that was (or arguably was) incorrect, not considered, or inadequately considered during original (or another prior) prosecution could effectively take the issue of inequitable conduct relating to that information off the table before filing suit or taking other steps to enforce the patent.
The proposal is commendable in several respects. For example, it could protect innocent patent owners and practitioners against baseless, but costly and damaging, charges of prosecution misconduct. And it could shield innocent patent owners from the consequences of practitioner misconduct, and innocent assignees and exclusive licensees from being left with an unenforceable patent as a result of negligent or intentional candor violations.
Nothing in the proposed legislation requires the USPTO to consider whether the information submitted in a supplemental examination request was withheld or misrepresented with deceptive intent during the first or prior prosecution. Deceptive intent is simply not relevant. Thus, patent owners could use the supplemental examination procedure to head off everything from frivolous potential inequitable conduct allegations to utterly meritorious charges that a patent was secured through outright fraud. In this regard, the proposal reflects a viewpoint that all that matters is validity. However, its design raises a number of questions, including questions with potential ethics- and discipline-related implications.
For example, how much detail would/should the USPTO require the patent owner to provide in its request for supplemental examination? The purpose of the proposal is to create an opportunity for the USPTO to consider information that the patent owner believes (or believes that a potential infringement defendant might assert) should have been considered by the USPTO in the original or another prior examination. To fulfill this purpose, the request should be required to present that information fairly and in enough specificity to facilitate the USPTO’s evaluation of its effect on the patentability of the claims of the patent.
The issue of what patent owners should have to say is complicated, however, by the fact that supplemental examination would not be limited to patents and printed publications. A patent or printed publication reveals (at least to a person of ordinary skill in the art) its scope and content on its face; it speaks for itself, in that regard. And while some supplemental examination requests would disclose patents and printed publications, patent owners could be expected to use the procedure to bring to the attention of the USPTO all kinds of other information, prior art and non-prior art.
For example, patent owners would likely seek to disclose pre-critical date sales and public uses, information relating to inventorship, unpublished notes, materials relevant to enablement, office actions and other documents from co-pending applications, litigation papers and proceedings, representations to foreign patent offices, and facts pertinent to the interests and relationships of affiants, statements made in petitions to make special, and the small-entity status of applicants and patent owners. Depending on the circumstances, some of these might “speak for themselves” like patents and printed publications. In other situations, however, the USPTO would not be able to make a call regarding the impact of the information on patentability without some elaboration by the patent owner.
Assume, for example, that the information pertains to a pre-critical date sale. At a minimum, the USPTO would need the date of the sale (or at least a statement that it occurred more than a year before the filing date of the application in the United States), its location (whether or not it occurred in the U.S.), and a description of what was on sale. Sales outside the U.S., or that occurred within a year before the filing of the application per se cannot raise a substantial question of patentability, and the USPTO would need to know what product or service was on sale in order to determine its relevance under 35 U.S.C. § 102 or 35 U.S.C. § 103. Depending on the circumstances, additional facts might matter. For example, the USPTO might need to know the circumstances of the sale and/or the identities and relationship of the parties. If the sale was transnational, further details might be required to facilitate the USPTO’s determination of whether it was or was not “in this country.” The stage of development of the invention at the time of the sale (or as of the critical date) might make a difference. These are just examples of the kinds of disclosures the patent owner might need or might volunteer to make in a supplemental examination request.
The point is that some supplemental examination requests would include detailed descriptions of products, events, and other facts. This, in turn, raises other questions, including whether the USPTO would – or should – initiate disciplinary investigations based on information disclosed in supplemental examination requests?
Consistent with the design of the proposal, many requests for supplemental examination would presumably not implicate the patent owner or its prosecution counsel in any wrongdoing. However, there may be situations in which the content of the request would inherently raise an issue of misconduct on the part of the patent owner (or its predecessor in interest) or the prosecuting attorney or agent. For example, the request might disclose unfavorable test data, and the conditions of the testing strongly suggest that tests in question must have been done at the same time as the testing that generated the favorable data the then-applicant relied on to secure the patent in the first place. Or suppose that the disclosure of pre-critical date sales activity in a supplemental examination request makes it clear that the failure to disclose the activity during original prosecution constituted a candor violation. Or what if a supplemental examination request is based on a previously-uncited, but highly material, rejection in a co-pending application contemporaneously prosecuted by the same attorney who prosecuted the patent undergoing supplemental examination? And, besides situations that imply that misconduct may have occurred, some requestors might outright (on purpose or by accident) state facts demonstrating that the applicant or its prosecution counsel knowingly violated its/his/her disclosure obligations.
Would (could) the USPTO simply ignore the “bad facts” presented in the request? The USPTO’s Office of Enrollment and Discipline (“OED”) is charged with “[i]nvestigat[ing] grievances alleging unethical conduct by registered patent attorneys and agents” in operation. It has the authority to investigate and punish inequitable conduct and other violations of the USPTO Code of Professional Responsibility (“USPTO Code”), including, for example, the prohibitions in 37 C.F.R. §§ 10.23(b)(4) and 10.23(c)(10) against “[e]ngag[ing] in conduct involving dishonesty, fraud, deceit, or misrepresentation” and “[k]nowingly violating or causing to be violated the requirements of § 1.56 or § 1.555”. Consistent with its mission and authority, could OED legitimately ignore apparent violations of the USPTO’s regulations relating to candor and professional responsibility disclosed in requests for supplemental examination? At what cost to the integrity of the system?
The legislative proposal expressly preserves the USPTO’s power to regulate the conduct of those who practice before the Office and to investigate and impose sanctions for misconduct. In fact, it would change the existing law restricting OED from suspending or excluding practitioners if the conduct in question occurred more than five years before OED initiates disciplinary proceedings. In cases “where fraud, concealment or inequitable conduct is involved”, it would toll the disciplinary statute of limitations “until information regarding the fraud, concealment, or inequitable conduct is made known to an officer or employee of the [USPTO] . . ..” That the bill advancing the creation of a new system for securing USPTO consideration of information that might otherwise ground an inequitable conduct allegation includes a proposal to toll the disciplinary statute of limitations until the USPTO learns of the potential misconduct indicates the drafters’ intent to hold practitioners accountable for candor violations and militates in favor of USPTO OED scrutiny of supplemental examination requests.
Critics might argue that such scrutiny is inappropriate because, as OED asserts, “[t]he disciplinary system is designed to protect the public, not punish practitioners.” When it comes to the patent system, however, “the public”, includes more than just the patent owners whose interests registered practitioners are duty-bound to advance. It includes the courts, the competitors and potential competitors of patent owners, and the investors, employees, consumers for whose benefit the patent system was established. It is from this holistic perspective that the proposal for supplemental examinations should be evaluated.
Tags: ex parte reexamination, Federal Circuit, inequitable conduct doctrine, patentability, Reexamination, Supplemental examinations, USPTO
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