[Federal Register Volume 62, Number 183 (Monday, September 22, 1997)]
[Notices]
[Pages 49471-49474]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 97-25068]



[[Page 49471]]

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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.

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SUMMARY: Recent decisions by the Untied 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 Mr. 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 
[email protected] or [email protected]. 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 
[email protected], 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 [email protected], or by mail addressed to 
Office of the Solicitor, Box 15667, Arlington, VA 22215.

SUPPLEMENTARY INFORMATION:

I. Background

    The official record detailing the persecution 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 consist 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

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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 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 (CFR) 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 CFR 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 CFR 
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 CFR 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 CFR 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 
CFR 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 CFR 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 CFR 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:

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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 CFR 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 CFR 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 CFR 1.109, be discontinued? If so, 
please explain why you believe this is desirable. If not, should 37 CFR 
1.109 be amended to make it mandatory that reasons for allowance must 
be provided by the examiner? (Currently, according to 37 CFR 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 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 nonobviouseness 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 CFR 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 transactions 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 responses 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

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    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 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: September 16, 1997.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 97-25068 Filed 9-19-97; 8:45 am]
BILLING CODE 3510-16-M