Tuesday, September 09, 2008

PTO General Counsel Toupin Continues to Promote AQS for IPO Annual Meeting

Hal Wegner distributed an interesting presentation this morning from PTO GC James Toupin which confirms that (1) despite a potential "changing of the guard" in the coming elections, the PTO continues to push for the same reform measures, and (2) despite mounting criticism, the PTO continues to see no problems with the tactics used for instituting reform.

The presentation confirms yet again that allowance rates have been plummeting since 2003. Continuation filing rates have tripled since 1998 (including RCE's), while CIP filings continue to remain steady. Average first action pendency is at 25 months, while average total pendency is about 32 months. As usual, the applicants are mostly blamed for these problems.

What is interesting is the PTO's rationale for requiring mandatory IDS's (i.e., Applicant Quality Submissions (AQS)). According to the presentation, 37 C.F.R. 11.18 (b) requires that papers filed with the PTO are certified "to the best of the party’s knowledge, formed after an inquiry reasonable under the circumstances" to be for a proper purpose and nonfrivolous.

Now - get this - the PTO's position is that (1) “reasonable inquiry” includes reviewing prior art submitted, and (2) applicants should not make filings "to create unnecessary delay includes not filing continuations to keep application pending."

While the MPEP states that "reasonable inquiry" does not create any new duty on the part of an applicant to conduct a prior art search (MPEP 410), the PTO posits that this section was "written when applications were not published and patents were not online." Accordingly,

[The] USPTO may by rule impose obligations on applicants that would not be required under inequitable conduct doctrine. In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002), [and] [a]gencies are entitled to deference in promulgating rules notwithstanding prior court interpretations of statute independent of agency interpretations. National Cable & Telecommunications Assn v. Brand X Internet Services, 545 U.S. 967 (2005).
Download a copy of the presentation here (link)

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