INTRODUCTION

The USPTO (United States Patent and Trademark Office) often faces a critical issue where applicants often submit over-abundant prior arts that examiners can neither fully review nor adequately address, which negatively impacts patent quality and examination efficiency. It also proves that despite expert’s efforts, patent examiners are humans who are prone to biases in information perception and potential omission of valuable references. These references, which may be relevant to ongoing patent prosecution, frequently remain unexamined because of administrative demands and structural barriers. This information overload results in the compounding effect of decline in the quality of issued patents, dissatisfaction amongst the applicants and poor management of IPRs.

Currently, USPTO is facing a large information management problem. Where the agency used to experience challenges and difficulty getting enough information from the patent applicants, the agency now paradoxically receives an overload of submitted references that the patent examiners fail to manage, sort and properly examine. Applicants seeking a patent have to provide every detail that may be deemed relevant to the patentability of an invention for a variety of reasons based on the strict duty of disclosure and inequitable conduct. This requirement takes applicants to self-promoting writing, where one sees himself/herself as an author of an important document, and produces documents that may include material that is, combined at best or marginally related, at worst. Research shows that examiners rely on very few of such references that applicants submit. Studies indicate that examiner’s capacity to handle references are diminishing, and this is an actual information overload issue. In an effort to mitigate this problem the USPTO proposed rules stating that applicants must describe references submitted to them in a more detailed manner than had been proposed in previous rules. But these proposed rules had placed too much burden on applicants and were, in fact, postponed indefinitely. However, the fundamental challenge remains: How can the USPTO advance better ways of handling such a massive amount of information from the patent applicants without compromising on the thorough evaluation procedure?

INEQUITABLE CONDUCT DOCTRINE VIS-À-VIS DISCLOSURE OF INFORMATION

Inequitable Conduct Doctrine is a defence of patent law under which applicants can be sanctioned for the act of concealing or misrepresentation of facts which are deemed relevant in the patent prosecution process and in such a way, the applicant risks having the entire patent invalid. Thus, inequitable conduct doctrine in patent law is a doctrinal model; it poses some challenges to patent applicants. Of these judicial defences to patent infringement, one needs the applicant to provide all the possible material information to the USPTO. Indeed, the three pillars of the current doctrine of law, namely materiality, intent, and balancing, are prevalently unfavourable to patent applicants.

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The materiality standard is quite liberal where the courts require the asking of the demand the question whether a reasonable examiner taking into account surrounding circumstances would find that reference relevant. Ignorance may be equivalent to intention for which it is easier for a court not to side with the patentees during the weighing test. This results in creation of a litigious and uncertain environment for any patent applicant. An appreciation of the duty of disclosure must therefore go beyond prior art to encompass a range of activities. Each applicant is supposed to follow references from other similar patent applications, if any, including foreign applications, and even notations in the Office actions. For instance, a large patent application family can create hundreds of potentially material references, which would be a burden in terms of administration. Due to these risks of having a patent non-enforceable bar through inequitable conduct, applicants are overly cautious. They prefer to cite any reference that might be relevant to a patent when claiming novelty because it increases the chances of the patent application being rejected but at the same time when claiming novelty the examiner is likely to be overwhelmed by the amount of information cited. However, this approach, though very costly and time-consuming, is the only best way of managing risks given the current legal environment.

INFORMATION OVERLOAD & SEARCH AND FILTER PROBLEM

In order to solve these challenges some recommendations have been done like enlarging the disclosure duty with checking the prior art and characterizing references during the application. However, such proposals are premised on flawed logic. It is essential and unreasonable to require applicants to search and characterize references would be inefficient and risky. This change would cause increased administrative burdens and possibly legal risks for patent attorneys as characterising references could be construed as confessions as to their content, which could hamper the applications of the patents.

Another way involves deeply involving and offering penalties for excessive disclosure of information. The USPTO has contemplate standards that would compel applicants to categorize references longer than 25 pages or all the references which are in excess of 20. However, prosecution suggests what is clearly antithetical to the Federal Circuit’s direction that applicants should prefer underinclusive disclosure. This is made worse by the fact that inequitable conduct is more often than not a question of fact. The current system paints a picture in which almost any patent can be attacked on the basis of statements or omission contained in the file wrapper. Patent attorneys now work in an atmosphere where a tiny piece of paper can make a whole patent unenforceable. But to completely remove the duty of disclosure is also potential also dangerous as well. Although it might appear to clean it up the procedure, applying such an approach would probably diminish the quality of patents and is counter to the aims of courts, commentators, legislators, and the public.

At the present time, the Federal Circuit is prospectively reviewing the inequitable conduct doctrine with regards to its materiality, intent as well as the balancing framework. But advanced litigation proposals will not be sufficient to address the root causes. Even such alterations may enhance the measures of precision and equity in litigation, but they will not directly solve that problem of information abundance. It lies in the realm of administration, not law. The USPTO will need to refine how it takes and manages references from the applicants and enhance the quality of patents while lessening administrative pressures. This needs co-operation that distributes the task of providing quality patents between the patent office, applicants and the public. The remedy is in technology and knowledge processing. Instead of a creation of new layers of legal regulations, or raising the severity of sanctions for the violations, the efforts have to be directed towards enhancing the mechanisms of better and more rational analysis of the data contained in the patents. The overall objective is to design the approach so that it would be suitable for the presentation of a great deal of detailed information while offering the necessary mechanisms for analysis. What is more, this approach requires the patent disclosure process to be redesigned and reinvented. It affords a shift from the legalistic present-day model to a new one that is highly capable of providing a comprehensive and a more integrated model of handling more compound patent applications that are occasioned by the advancement in the field of technology and computing.

ADRESSING HURDLES TO INFORMATION OVERLOAD

Therefore, the proposed solution suggests by taking into fact that USPTO is overwhelmed by large amounts of information can be solved by changing the approach to the disclosure duty as a search and filter problem. This leads to one of the proposed solutions comprising a creation of primary search pool of references cited by the applicants and entering them into a specific search pool for the particular application. This can direct examiners toward a subset of pre-processed and relevant referencing without the necessity to go each document. In order to simplify the procedure more, the applicants should also be made to indicate any related U.S. and foreign patent case and searchable references – including non-patent as well as foreign references. This makes certain that material pertinent to the examination is also retrievable and may be incorporated into the examination without overwhelming the examiners.

Another approach is the two applications using cross-references to citations of other applications. References from related cases would be incorporated into the primary search pool by the USPTO eliminating the need for applicant to cross cite the material. This approach reduces the congestion of the applicant and examiner as they have their list of all the exams to be administered and all the exams to be conducted, respectively. The process also has to allow the applicants to request special consideration of particular references. This would make it possible for applicants to sort references well without burdening the examiners with too much information.

Another facet important for the USPTO is improvements to its information management systems. By the implementation of new advanced indexing and searching technologies in the office, it will be easy to contain the large number of references as well as improving on the examination efficiency of patents. These enhancements can be envisaged at a reasonable increase in prices which should not cause a stir among applicants in exchange for a decreased amount of paperwork and potential exposure to inequitable conduct charges.

CONCLUSION

In conclusion, the article regarding the information overload problem in the USPTO, proposes solutions that are designed to look at the duty of disclosure in a more practical way, abandoning the currently overloaded legalistic approach in favour of an efficient search-and-filter approach. They could be easily screened and made into a primary search pool to save time as well as to ensure the applicant- cited references are relevant. Improvement of information management systems through richer indexing and search capabilities would only scale back administrative burden further while continuing to deliver high quality patents. Increases in scale and minor changes to fees would render the approach realistic. This redesign would allocate workload efficiently between the USPTO, the applicants, and the public while adopting technology to support better examination of patents.

Author : Sulipta Surabhi, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

6. REFERENCES

Batabyal AA and Nijkamp P, ‘Is There a Tradeoff between Average Patent Pendency and Examination Errors?’ (2008) 17 International Review of Economics & Finance 150

Chung JJ, ‘Patent Pendency Problems and Possible Solutions to Reducing Patent Pendency at the United States Patent and Trademark Office’ (2008) 90 Journal of the Patent and Trademark Office Society 58

‘More Solutions to Reduce Patent Pendency: An Empirical Study’ (2009) 91 Journal of the Patent and Trademark Office Society 338

deGrazia C, Pairolero NA and Teodorescu M, ‘Shorter Patent Pendency Without Sacrificing Quality: The Use of Examiner’s Amendments at the USPTO’ (Social Science Research Network, 1 June 2019) accessed 21 November 2024

Frakes MD and Wasserman MF, ‘Procrastination at the Patent Office?’ (2020) 183 Journal of Public Economics 104140

Grier JD, ‘Chasing Its Own Tail - An Analysis of the Uspto’s Efforts to Reduce the Patent Backlog Comment’ (2008) 31 Houston Journal of International Law 617

IP A, ‘Doctrine of Inequitable Conduct and Indian Patent Law’ (Asia IP) accessed 21 November 2024

Loney M, ‘Circuit Overload’ (2015) 253 Managing Intellectual Property 25

Mejer M and van Pottelsberghe de la Potterie B, ‘Patent Backlogs at USPTO and EPO: Systemic Failure vs Deliberate Delays’ (2011) 33 World Patent Information 122

‘Patent Office Overload’ accessed 21 November 2024