Information Disclosure Statement Requirements in the US: Japanese Practitioners perspective

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Information Disclosure Statement Requirements in
the US Japanese Practitioners perspective

• Kay Konishi, MIYOSHI and MIYOSHI
• AIPLA Mid-Winter Institute January 2005, Orlando

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Contents

• Duty to disclose for us
• Our real practice on IDS
• Changing situation
• Our further proposals

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1.Duty to disclose for us- Nature of the duty to
disclose -
NO inequitable conduct Duty of candor
-Defense raised in a patent infringement
case -No determination whether violated during
prosecution -subject to retroactive investigation
Equity/ Fairness basis
Huge Penalty
CFR 1.56 CFR 1.97 CFR 1.98
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Duty to disclose for us - What to disclose? -
Duty continues during the pendency of the
application

• CFR 1.98
• If NON-English reference
• Concise explanation of the relevance
• English translation, if possessed or
• readily available

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1. Duty to disclose for us - Lots of Myths -

• Semiconductor Energy Laboratory Co., Ltd.v.
• Samsung Electronics, Ltd., 204 F.3d 1368 (Fed.
  Cir. 2000)
• Partial translation problem (SEL case)
• Relevant application problem (Dayco case)

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2. Our real practice- When filing U.S.
application-
Patent

• We submit possibly material information known to
  us as of U.S. filing date, such as
• reference cited in Background section of the
  patent application
• Prior art found in the search conducted by the
  applicant
• AND, we have to start the surveillance.

cf. Japanese requirement to cite prior art
reference (Art.36)
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2. Our real practice- Characteristics of
Japanese companies-

• ALL patent applications filing in U.S. have
  corresponding
• Japanese patent application (Non-English)
• Many concurrent (might be relevant)
  applications
• derived from the same inventorship
• Translation problem is inevitable
• Less possibility to enforce in U.S.
• (Less possibility to be attacked due to
  deficiency in IDS)

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2. Our real practice- Characteristics of
Japanese companies-
COST
RISK
Current our practice is If in doubt, just
submit IDS AFTER filing, we submitted notice
of rejection/ search report and cited references
almost AUTOMATICALLY, even if NO doubt.
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2. Our real practice- Statistics (contd)-
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2. Our real practice- Statistics (contd)-
gt20
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2. Our real practice- Statistics (contd)-
Domestic!
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2. Our real practice- Statistics (contd)-
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2. Our real practice- Translation practice
(contd)-
Company A
If non patent literature (NPL), NO translation
Notice of rejection
Cited references (Patent publication)
Notice of rejection (translation)

• possessed or readily available translation
  (English abstract)

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2. Our real practice- Translation practice
(contd)-
Company B
If non patent literature (NPL), MAKE translation
Notice of rejection
Cited references (Patent publication)
Notice of rejection (translation)

• possessed or readily available translation
  (English abstract)

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2. Our real practice- Translation practice
(contd)-
Company C
Regardless of language, NO submission of
translation
Notice of rejection
Cited references (Patent publication)
Notice of rejection (translation)

• possessed or readily available translation
  (English abstract)

SEL case..
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2. Our real practice- Translation practice
(contd)-
When ENGLISH search report (PCT/EP) issued
If non patent literature (NPL), NO translation
Search report with X/Y/A
Cited references (Patent publication)
Translation

• possessed or readily available translation
  (English abstract)

PCT utilization 15.2
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2. Our real practice- Request for Examination
practice in Japan-
U.S. Patent
3 yrs 2 yrs substantial examination in Japan
Wait and see till the U.S. application
granted. AFTER U.S. patent issued, submit the
request for substantive examination for original
Japanese application.
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2. Our real practice- After NOA practice -
Patent
NOA
Issue date is unknown
We submit with translation necessitated upon
receiving of -Prior art publications cited by a
foreign patent office -Search report ??? OA?
termination of prosecution ?
Duty to disclose during the pendency
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2. Our real practice- After payment of issue fee
-
Patent
NOA
Issue date is unknown
payment
File RCE ONLY for submitting IDS
NO issue fee refunded
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2. Our real practice- Continuing Application
practice -
Patent
parent
Company D
Cited references
child
Cited references
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2. Our real practice
Big issue is
COST REDUCTION
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3. Changing situation- Two requirements -
COST REDUCTION for user
WORKLOAD REDUCTION For Offices
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3. Changing situation - Two aspects of duty to
disclose after the application filing -

• To provide the Examiner with information to
  examine the application efficiently

Solution 1 On-line Dossier Access System
2. Equity/ Fairness
Solution 2 Reduction of burden of Inequitable
conduct
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3. Changing situation - Solution 1 Dossier
Access System -
Substantive Patent Law Treaty (SPLT) approach
Tri-lateral office approach (USPTO/JPO/EPO)
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3. Changing situation - Solution 1 Whats
Dossier Access System ?-
References Office Action (Notice of Rejection)
Mutual exploitation of search results,
and Reduction of burden of the IDS!
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3. Changing situation - Solution 1 Whats
Dossier Access System ?-
Dossier Access System mutual access system for
electronic packages held by each Office -Limited
production pilot of Trilateral Data Access for
published dossier and dossier document access
on Nov. 2004. -Extending the TDA to support the
machine translation possibilities. -List of
references, the references and the OAs
22nd Memorandum of Understanding on Trilateral
cooperation (Nov. 2004)
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3. Changing situation - Solution 2 Proposals
to the U.S. Patent Law -
National Academy of Sciences Report
2003 -Possibility to remove Subjective Elements
from Litigation -best mode requirement, -willful
infringement -inequitable conduct
COST REDUCTION
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3. Changing situation - Solution 2 Proposals
to the U.S. Patent Law -
AIPLA Special Legislative Initiatives Committee
Proposals 2004 -Focusing on eliminating
subjectivity in U.S. Patent Law e.g.,
knowledge and intent -To eliminate the best mode
requirement
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4. Wed like to suggest - Possible change in
Rule (1.56, 1.97)-
Duty to disclose during the pendency

• Little possibility where intent to deceive is
  found
• No case law that inequitable conduct was found
  after allowance.

Duty to disclose until notice of allowance
If we found material information after allowance,
we file re-examination conditionally upon
enforcement of the patent to reinforce it.
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4. Wed like to suggest- English translation of
Japanese references-
Wed like to make sure that current rule (1.98)
reads English translation should be submitted,
only if possessed or readily available
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4. Wed like to suggest

• -Extension of three month term for submitting IDS
  
• for Foreign applicants
• - NO fee for submitting IDS
• Presumption of NO intent to deceive
• NO IDS for NOT continuing BUT possibly
  relevant
• application

We need translation!
TRIPS Art.3 (National Treatment), Art.4
(Most-Favored-Nation Treatment)
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4. Wed like to suggest
In near future NO IDS upon receiving Office
Actions of JPO and EPO
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Thank you for your kind atttention!
Kay Konishi MIYOSHI MIYOSHI konishi_at_miyoshipat.c
o.jp