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~ June 2003~
Federal Circuit Confirms the Requirement of Cross-Referencing
Related Patent Applications During Prosecution Before the U.S.
PTO
On May 23,
2003, the Federal Circuit rendered a Decision in Dayco
Products, Inc. v. Total Containment, Inc. (Appeal No.
02-1497), wherein the Court confirmed the requirement that
applicants must disclose to the U.S. PTO the existence of
copending applications that claim similar, but perhaps
patentably indistinct, subject matter.
In the
Dayco case, the patentee identified the existence of the
first application to the Examiner in charge of the second
application, but did not identify the second application to
the Examiner in charge of the first application. One of the
issues in the Dayco case was whether this failure to
cross-reference both applications rendered the
patents unenforceable.
The
Federal Circuit began its discussion by confirming that
there are two standards by which the materiality of a
reference can be determined. The first standard, which has
been applied consistently by the Federal Circuit for quite
some time, uses the “reasonable Examiner” standard, and
analyzes whether a “reasonable Examiner” would have
considered the information important in deciding whether to
allow the subject application. The Federal Circuit
explained that any information, not just prior art,
could fall within the class of “material” information that
the applicant is required to disclose to the Examiner.
The
Federal Circuit also recognized the 1992 Amendment that the
PTO made to Rule 56, which requires disclosure of material
information that establishes either “a prima facie
case of unpatentablity” or “refutes, or is inconsistent with
a position that applicant takes.”
Unfortunately, the Federal Circuit did not decide which
standard of materiality should be applied, since the Court
concluded that the information that was omitted in the
Dayco case (i.e., the existence of both
applications) is “material” under either definition.
With respect
to the failure to cross-reference both applications, the
Federal Circuit stated that the MPEP makes clear that “if an
inventor has different applications pending in which similar
subject matter but patentably indistinct claims are present,
that fact must be disclosed to the Examiner of each of the
involved applications.” MPEP §2001.06(b)(emphasis added
by the Court). The Court then explained that a second pending
application is highly material to the prosecution of a first
application where the second application could have
conceivably served as the basis for a double-patenting
rejection in the first application.
It is, of
course, impossible to determine whether any given Examiner
within the U.S. PTO could “conceivably” assert a
double-patenting rejection in any given application.
Accordingly, one could interpret the Dayco case as
requiring applicants to cross-reference all applications that
relate to similar subject matter, especially if the claims
pending in the applications could “conceivably” give rise to a
double-patenting rejection.
The Federal
Circuit also explained that the existence of copending
applications is “material” information since the Examiner in a
first application could be asserting a rejection that an
Examiner in a second application may find helpful in deciding
whether to allow the second application. The Federal Circuit
explained this point as follows:
Patent disclosures
are often very complicated, and different Examiners with
different technical background and levels of understanding may
often differ when interpreting such documents. Although
Examiners are not bound to follow other Examiners’
interpretations, knowledge of a potentially different
interpretation is clearly information that an Examiner could
consider important when examining an application. [Slip Op.,
pgs. 15-16]
The Federal
Circuit then explained that a rejection in a first application
is material to the examination of a second application,
because the applicant is asserting, in both cases, that all of
the claims are patentable. Therefore, the Federal Circuit
reasoned, the fact that one Examiner is rejecting the claims
in the first application is “inconsistent with” the positions
being asserted by the applicant to another Examiner in the
second application. Specifically, the Federal Circuit
explained that “a prior rejection of a substantially similar
claim [in the first application] refutes, or is inconsistent
with the position that those claims are patentable [in the
second application].
This holding
is particularly troubling, in that it forces applicants to
disclose in a second application the existence of a rejection
of similar claims in a first application handled by a
different Examiner even if the applicant completely
disagrees with the rejection asserted in the first application.
This is completely unreasonable, since many times rejections
asserted by U.S. PTO Examiners are baseless. |
