3510-16

DEPARTMENT OF COMMERCE

Patent and Trademark Office

Notice of Public Hearing and Request for Comments on Procedures for Recording Patent Prosecution File Histories.

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of Hearing and Request for Public Comments.

SUMMARY: Recent decisions by the United States Supreme Court and the United

States Court of Appeals for the Federal Circuit highlight the crucial role a prosecution

history plays in determining the validity and scope of a patent. See, e.g., Warner-

Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. Ct. 1040, 41 USPQ2d 1865 (1997);

Markman v. Westview Instruments, 52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995),

aff'd, 116 S. Ct.1384, 38 USPQ2d 1461 (1996); Vitronics Corp. v. Conceptronic Inc.,

90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). In response, the United States Patent

and Trademark Office (PTO) requests public comments on issues associated with procedures

for recording complete and accurate patent prosecution history records. Interested

members of the public are invited to testify at the hearing and to present written comments

on any of the topics outlined in the supplementary information section of this notice.

DATES: A public hearing will be held on November 18, starting at 9:00 a.m. and

ending no later than 5:00 p.m. If sufficient interest warrants, an additional public

hearing will be held in an alternate location, for example, in California, or by

televideo conference.

Those wishing to present oral testimony at the hearing must request an

opportunity to do so no later than November 3, 1997.

To ensure consideration, written comments must be received at

the PTO no later than November 18, 1997. Written comments and transcripts of the

hearing will be available for public inspection on or about December 1, 1997.

ADDRESSES: The November 18, 1997 hearing will be held in the Commissioner's

Conference Room located in Crystal Park Two, Room 912, 2121 Crystal Drive,

Arlington, Virginia. Those interested in testifying or in submitting written comments

on the topics presented in the supplementary information, or any other related topics,

should send their request or written comments to the attention of Mary Critharis

addressed to Commissioner of Patents and Trademarks, Box 4, Patent and Trademark

Office, Washington, DC 20231; or John M. Whealan addressed to Office of the

Solicitor, Box 15667, Arlington, VA 22215. Written comments may be submitted by

facsimile transmission to Mary Critharis at (703) 305-8885 or John M. Whealan at

(703) 305-9373. Comments may also be submitted by electronic mail through the

Internet to mary.critharis@uspto.gov or john.whealan@uspto.gov. Written comments

will be maintained for public inspection in Crystal Park Two, Room 902, 2121 Crystal

Drive, Arlington, Virginia. Written comments in electronic form may be made

available via the PTO's World Wide Web site at http://www.uspto.gov. No requests

for presenting oral testimony will be accepted through electronic mail.

FOR FURTHER INFORMATION CONTACT: Mary Critharis by telephone at

(703) 305-9300, by facsimile at (703) 305-8885, by electronic mail at

mary.critharis@uspto.gov, or by mail addressed to Commissioner of Patents and

Trademarks, Box 4, Washington, DC 20231; or John M. Whealan by telephone at

(703) 305-9035, by facsimile at (703) 305-9373, by electronic mail at

john.whealan@uspto.gov, or by mail addressed to Office of the Solicitor, Box 15667,

Arlington, VA 22215.

SUPPLEMENTARY INFORMATION:

I. Background

The official record detailing the prosecution of a patent application in the United

States Patent and Trademark Office (PTO) is more than just a historical record.

During the life of a patent, the prosecution record defines the scope of the claimed

invention and the patent owner's rights. Thus, the written record must clearly

explain the rationale for decisions made during the examination of a patent application,

including the basis for the grant. Moreover, once a patent has been granted, the

official record will be closely scrutinized by potential licensees, competitors who must

avoid infringing the claimed invention, or even those attempting to invalidate the

patent. In the event of litigation, the record will serve as a primary basis for court

determinations of issues regarding the validity or scope of the patent.

The written record created during the prosecution of a patent application,

commonly referred to as the "file wrapper" or "file history," consists of all

correspondence between an applicant and the PTO. The file history typically consists

of the patent application as originally filed, the cited prior art, all papers prepared by

the examiner during the course of examination, and documents submitted by the

applicant in response to the various requirements, objections, and rejections made by

the examiner. In addition, the file history should contain a written record of all oral

communications addressing patentability issues between the examiner and applicant.

Examiners and applicants share the responsibility for the clarity, accuracy, and

completeness of the file wrapper.

Recent decisions by the United States Supreme Court and the United States

Court of Appeals for the Federal Circuit emphasize the importance of clear and

complete prosecution histories in that they will look more closely at and place greater

weight on patent prosecution histories. See, e.g., Warner-Jenkinson Co. v. Hilton

Davis Chem. Co., 117 S. Ct. 1040, 41 USPQ2d 1865 (1997); Markman v. Westview

Instruments, 52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995), aff'd, 116 S. Ct.1384,

38 USPQ2d 1461 (1996); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 39

USPQ2d 1573 (Fed. Cir. 1996). For example, in Warner-Jenkinson, the Supreme

Court explained the importance of the prosecution history of a patent in determining

infringement under the doctrine of equivalents. 117 S. Ct. at 1049-51, 41 USPQ2d

at 1871-73. Specifically, the Court acknowledged that when the prosecution history

reveals that a patent owner amended the claims by adding limitations to overcome the

prior art, the patent owner will be estopped from alleging infringement under the

doctrine of equivalents as to that amended limitation. Id. at 1051, 41 USPQ2d at

1873. Subsequently, the Court held:

Mindful that claims do indeed serve both a definitional and a notice

function, we think the better rule is to place the burden on the patent-

holder to establish the reason for an amendment required during patent prosecution....Where no explanation is established, however, the court

should presume that the PTO had a substantial reason related to patent-

ability for including the limiting element added by amendment.

Id. The emphasis on the written record, including the prosecution history, to

interpret the claims is further illustrated by the Markman and Vitronics decisions. In

Markman, the Federal Circuit held claim interpretation is a question of law to be

determined by the court based on three sources: the claims, the specification, and the

prosecution history. 52 F.3d at 979, 34 USPQ2d at 1329. Along the same lines,

the Federal Circuit in Vitronics opined that intrinsic evidence, which includes the

claims, the specification, and the prosecution history, is the "most significant source"

of evidence to be used when interpreting claims. 90 F.3d at 1582, 39 USPQ2d at

1576. In explaining that the claims, the specification, and the prosecution history make

up the "public record" upon which the public is entitled to rely, the Federal Circuit

stated:

[T]he [prosecution] history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of

the claims. As such, the record before the Patent and Trademark

Office is often of critical significance in determining the meaning of the claims.

90 F.3d at 1582, 39 USPQ2d at 1577. The Federal Circuit held that when the public record "unambiguously describes the scope of the patented invention," reliance on extrinsic evidence such as expert testimony is improper. 90 F.3d at 1583, 39 USPQ2d at 1477.

The PTO imposes written recording requirements on both the examiner and

applicant. These requirements are designed to furnish the patent applicant, as well as

the public and the courts, with sufficient information to make informed decisions. As

the agency charged with granting valid patents, the PTO is actively concerned with the

development of clear and complete prosecution histories. For this reason, the PTO is

interested in obtaining public opinion as to whether the current rules and procedures

pertaining to recording prosecution histories are sufficient to provide complete and

clear records.

II. Issues for Public Comment

Interested members of the public are invited to testify and present written

comments on issues they believe to be relevant to the discussion below.

Questions following the discussion are included to identify specific issues upon which

the PTO is interested in obtaining public opinion.

A. Current Procedures for Recording Patent Prosecution Histories

The emphasis on preparing complete, clear, and accurate file histories is

prevalent throughout the patent rules which form title 37 of the Code of Federal

Regulations (C.F.R.) and the guidelines of practice embodied in the Manual of Patent

Examining Procedure (M.P.E.P.). Recognizing the importance of the written

prosecution record, PTO rules and procedures stress the need for examiners to

communicate clearly the basis for all rejections and objections so that the issues can be

identified early and the applicant can be given an opportunity to respond. See 37

C.F.R. 1.105 (1996); M.P.E.P. 707.07 (6th ed. 1995, rev. 2, July 1996). To meet

this goal, Rule 105 explicitly states that "[t]he examiner's action will be complete as to

all matters." 37 C.F.R. 1.105. This requires the examiner to treat all claims on their

merits, provide authority and support for each ground of rejection, and respond to all

arguments and points raised by applicants.

The M.P.E.P. instructs examiners to provide clear and complete Office actions

throughout the examination process. For instance, when making rejections

such as lack of an adequate written description, the examiner's position should

be fully developed and contain detailed reasons rather than a mere conclusion. See

M.P.E.P. 706.03 (6th ed. 1995, rev. 2, July 1996). Moreover, upon entering an

obviousness rejection under 35 U.S.C. 103, the examiner should set forth in the Office

action the relevant teachings of the prior art relied upon, the differences between the

claimed invention and the applied references, and an explanation as to why the claimed

invention would have been obvious to one of ordinary skill in the art. M.P.E.P.

706.02(j) (6th ed. 1995, rev. 2, July 1996). Furthermore, in making a final

rejection, all outstanding grounds of rejection should be fully developed and clearly set

forth to the extent that the remaining issues are readily apparent. M.P.E.P. 706.07

(6th ed. 1995, rev. 2, July 1996).

Concurrent with the examiner's duty to provide clear and fully developed Office

actions, Rule 111 mandates an applicant's response to be complete in order to promote

an early and full determination of the issues. 37 C.F.R. 1.111 (1996). Current

procedure requires that the response by the patent applicant "must distinctly and

specifically point out the supposed errors in the examiner's action and must respond to

every ground of objection and rejection in the prior Office action." 37 C.F.R. 1.111.

Moreover, the requirements of Rule 111 dictate that applicants clearly point out the

patentable novelty believed to render the subject claims allowable over the referenced

teachings. 37 C.F.R. 1.111. See M.P.E.P. 714.02 (6th ed. 1995, rev. 2, July 1996).

Furthermore, to ensure a clear and complete file record, examiners are given the

authority to require correction if a response is not complete. See M.P.E.P. 714.03 (6th

ed. 1995, rev. 2, July 1996). In limited situations, an examiner is authorized to make

changes directly to the written portions of the filed application to correct obvious errors

such as spelling and minor grammatical errors. M.P.E.P. 1302.04 (6th ed. 1995, rev.

2, July 1996). Other obvious informalities such as changes to the abstract may be

corrected by a formal examiner's amendment which is placed in the file wrapper and a

copy is mailed to applicants. Id. Amendment or cancellation of claims by formal

examiner's amendment is permitted when passing an application to issue provided that

the changes have been authorized by applicant or applicant's representative. Id.

A complete prosecution history should clearly reflect the reasons why the patent

application was allowed. According to Rule 109, an examiner may set forth reasons

for allowance when the record, as a whole, is unclear as to why the application is

allowable over the prior art. 37 C.F.R. 1.109 (1996). Thus, the examiner must make

a judgment of the record to determine whether reasons for allowance should be

set out in that record. However, the M.P.E.P. cautions examiners to exercise great

care in recording reasons for allowance so as not to misconstrue the claims. M.P.E.P.

1302.14 (6th ed. 1995, rev. 2, July 1996). If desired, an applicant may comment on

an examiner's statement of reasons for allowance. Although an applicant's comments

are entered in the application file, they will not be commented upon by the examiner in

charge of the application. See id.

Another facet of patent prosecution in which written records are extremely

important is the recordation of interviews conducted between examiners and applicants.

Examiner interviews concerning patent applications and other matters pending before

the PTO serve to clarify the issues in an application and materially advance the

prosecution of a case. The substance of an interview must be made of record in the

application by means of an Interview Summary Form completed by the examiner and

placed in the file wrapper. M.P.E.P. 713.04 (6th ed. 1995, rev. 2, July 1996). In

addition, a complete written statement disclosing the substance presented at the

interview must be filed by the applicant when reconsideration is requested in view of

an interview with an examiner. 37 C.F.R. 1.133 (b) (1996). However, the

examiner and applicant can agree that the Interview Summary Form satisfies

applicant's obligation under Rule 133. M.P.E.P. 713.04.

A complete and accurate recordation of the substance of an examiner interview

should include the following: an identification of the claims and prior art discussed; a

description of proposed amendments; the general thrust of the applicant's and

examiner's arguments; and the results of the interview. Id. Although

the recordation of the arguments presented at the interview need not be lengthy or

highly detailed, the general nature of the principal arguments should be readily

apparent. Id.

The PTO is interested in ensuring that complete and accurate file histories are

created and maintained. Public comments are invited to assist the PTO in identifying

any improvements that can be made to increase the clarity and completeness of prosecution histories. The tenor of the following questions should not be taken as an indication that the PTO has taken a position on or is predisposed to any particular approach to creating and maintaining complete and clear file histories.

1. Do you believe that the current rules and procedures pertinent to recording prosecution histories are sufficiently clear and effective? If not, please:

(a) identify aspects of the rules and procedures that you believe lack clarity or

do not facilitate the creation of adequate records;

(b) identify any changes to the rules and procedures that you believe would improve the clarity and completeness of file histories; and

(c) discuss potential advantages and hardships that patent applicants and examiners would face if particular changes were adopted.

2. Do you believe that examiners are correctly and uniformly applying the existing rules and procedures governing the recording of file histories? If not, please:

(a) provide or summarize examples in which you believe examiners have not

maintained complete file histories;

(b) identify additional steps that can be taken by the PTO and applicants to clarify the prosecution history; and

(c) discuss possible advantages and drawbacks to the proposed changes.

3. Do examiners generally notify applicants when an amendment fails to point out the patentable novelty of applicant's invention, as required by 37 C.F.R. 1.111? If so, do you believe that examiners should continue to notify applicants of their failure to include a statement of novelty?

4. Is language such as "to further define and clarify the invention" sufficient to satisfy Rules 111 and 119 of 37 C.F.R. which require the applicant to point out how each amendment distinguishes the claims over the cited prior art? If not, please explain why applicants should be required to recite positively the rationale behind every claim amendment.

5. Should examiners be required to recite positively the reasons for amendments to claims when claims are amended by way of a formal examiner's amendment drafted pursuant to M.P.E.P. 1302.04? If so, do you believe this would discourage the practice of examiner amendments? Also, what effect would such a requirement have on the patent prosecution process?

6. Should the current practice of having examiners prepare reasons for allowance, as outlined in 37 C.F.R. 1.109, be discontinued? If so, please explain why you believe this is desirable. If not, should 37 C.F.R. 1.109 be amended to make it mandatory that reasons for allowance must be provided by the examiner? (Currently, according to 37 C.F.R. 109, setting forth reasons for allowance is not mandatory on the examiner's part.) If so, in which of the following instances should examiners be required to set forth reasons for allowance:

(a) in all allowable patent applications; or

(b) when the record, as a whole, is unclear as to why the patent application is being allowed.

7. Do reasons for allowance recorded by examiners contain accurate and precise interpretations regarding the novelty or nonobviousness of the claims?

If not, please:

(a) explain the experiences you have had that led you to your conclusions; and

(b) identify what you believe should be included in or omitted from an examiner's reasons for allowance.

8. What would prompt an applicant to comment on an examiner's statement of reasons for allowance?

9. If an applicant disagrees with an examiner's reasons for allowance,

should applicant be obligated to respond? If so, should applicant's failure to file a

statement commenting on the examiner's reasons for allowance be deemed an

admission that applicant acquiesces to the reasoning of the examiner? (Currently, pursuant to 37 C.F.R. 1.109, failure to comment on the reasons for allowance does not imply that the patent applicant agrees with the reasoning of the examiner.)

10. Is the current practice of placing applicant's comments to reasons for allowance in the application file without further comment by the examiner adequate? If not, how and why should the current practice be changed?

11. Does the present system of recording examiner interviews by means of interview summary records, as outlined in M.P.E.P. 713.04, provide a complete record of the substance of the interview? If not, please:

(a) explain the experiences you have had that have led you to your conclusions; and

(b) describe additional changes to the interview summary practice you believe

would be desirable.

12. Should applicants be obligated to record the substance of every examiner interview, regardless of whether reconsideration is sought?

13. Should an examiner and applicant be permitted to agree that a written

record of the substance of an interview by the applicant is not necessary?

14. Should the PTO require that telephonic and/or personal interviews between examiners, applicants, and attorneys be taped by electronic devices and transcribed into a written medium to be included in the file wrapper? If so, please:

(a) identify which type of interviews should be recorded by electronic devices;

(b) indicate whether transcriptions should be distributed to applicants;

(c) explain how this should be implemented;

(d) identify who should bear the cost; and

(e) discuss potential advantages and drawbacks to electronic recording of examiner interviews.

In the alternative, should applicants be permitted to request recording of examiner interviews by electronic devices? If so, please:

(a) identify which type of interviews applicants should be permitted to

request recording;

(b) indicate whether transcriptions should be distributed to applicants;

(c) explain how this should be implemented;

(d) identify who should bear the cost; and

(e) discuss potential advantages and drawbacks to applicant-requested electronic recording of examiner interviews.

B. Other Issues

Parties may address related matters not specifically identified in the above topics. If this is done, parties are requested to:

1. Label that portion of their response as "Other Issues";

2. Clearly identify the matter being addressed;

3. Provide examples, when appropriate, that illustrate the matter addressed;

4. Identify any relevant legal authorities applicable to the matter being addressed; and

5. Provide suggestions regarding how the matter should be addressed by the

PTO.

III. Guidelines for Oral Testimony

Individuals wishing to testify must adhere to the following guidelines:

1. Anyone wishing to testify at the hearings must request an opportunity to do so no later than November 3, 1997. Requests to testify may be accepted on the date of the hearing if sufficient time is available on the schedule. No one will be permitted to testify without prior approval.

2. Requests to testify must include the speaker's name, affiliation and title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Parties may include in their request an indication as to whether the party wishes to testify during the morning or afternoon session of the hearing.

3. Speakers will be provided between five and fifteen minutes to present their remarks. The exact amount of time allocated per speaker will be determined after the final number of parties testifying has been determined. All efforts will be made to accommodate requests for additional time for testimony presented before the day of the hearing.

4. Speakers may provide a written copy of their testimony for inclusion in the record of the proceedings. These remarks should be provided no later than November 25,

1997.

5. Speakers must adhere to guidelines established for testimony. These guidelines will be provided to all speakers on or before November 11, 1997. A schedule providing approximate times for testimony will be provided to all speakers the morning of the day of the hearing. Speakers are advised that the schedule for testimony will be subject to change during the course of the hearings.

IV. Guidelines for Written Comments

Written comments should include the following information:

1. Name and affiliation of the individual responding;

2. If applicable, an indication of whether comments offered represent views of

the respondent's organization or are the respondent's personal views; and

3. If applicable, information on the respondent's organization, including the

type of organization (e.g., business, trade group, university, or non-profit

organization) and respondent's position, including type of experience (e.g.,

attorney handling patent prosecution and/or patent litigation, patent agent prosecuting

patent applications, or judge deciding patent issues).

If possible, parties offering testimony or written comments should provide their

comments in machine-readable format. Such submissions may be provided by

electronic mail messages sent over the Internet, or on a 3.5" floppy disk formatted for

use in either a Macintosh or MS-DOS based computer. Machine-readable submissions

should be provided as unformatted text (e.g., ASCII or plain text), or as formatted text

in one of the following file formats: Microsoft Word (Macintosh, DOS, or Windows

versions) or WordPerfect (Macintosh, DOS, or Windows versions).

Information that is provided pursuant to this notice will be made part of a public

record and may be available via the Internet. In view of this, parties should not

provide information that they do not wish to be publicly disclosed or made

electronically accessible. Parties who would like to rely on confidential information to

illustrate a point are requested to summarize or otherwise provide the information in a

way that will permit its public disclosure.

Dated:___________, 1997 _____________________________

Bruce A. Lehman

Assistant Secretary of Commerce and

Commissioner of Patents and Trademarks