Rule 56 is a significant obstacle blocking patent quality reform. Patent quality is defined as a patents ability to withstand a validity challenge brought on prior art evidence. Rule 56 discourages applicants from looking for and submitting prior art evidence. Rule 56 is obsolete and adverse to patent quality.
If applicants had the opportunity to investigate and provide prior art themselves, patent quality would improve.
The Duty to Disclose was first implemented on March 1, 1977. Prior to this date there was no verbiage that called for submitting information. The rule arose to address fraud. The rule attempts to compel the submission evidence.
Is fraud still an issue in 2022? Inter-Parties Review encourages the invalidation of patents including those obtained by fraudulently hiding evidence. If fraud is no longer an issue, then Rule 56 is obsolete.
What is in fact a problem today are granted patents being overturned in IPR proceedings because of evidence that is relatively easy to uncover. There is no longer an advantage gained by hiding evidence. On the other hand, there is damage when not informed of evidence that surfaces later.
The threat of inequitable conduct distorts the issue of applicants submitting evidence on their own behalf. The threat of inequitable conduct affects the submission of evidence.
There are two prior art submission strategies that adhere to Rule 56. Because the objective is to avoid inequitable conduct, both are sound legal advice. On the other hand both are counterproductive to the purported spirit of the rule and the concept of strong patents.
The rule states:
The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability.
The filing strategies are:
- File with no prior art documentation;
- File and submit dozens or hundreds of documents.
There are two problematic terms in the underlined section that constrain the applicant from summiting prior art: all & material.
A thorough patentability search, for competitive reasons strives to find all evidence, without being cumulative, relating to an invention described in a technical disclosure. The PTO for multiple and various reasons does not provide thorough patentability searches. This is evidenced by the very existence of IPRs.
The idea of incentivizing applicants to submit more inclusive evidence with their applications has been proposed in the past. This idea sounds reasonable. In theory the applicant is strengthening their application and precluding evidence from emerging later. A person rewarded for locating evidence is unlikely to bury a reference but missing a reference is possible. In this scenario, Rule 56 allows for accusations of inequitable conduct. You can’t make an applicant file the results of a patentability search. Indeed, because of Rule 56, it is not a good idea. The threat of inequitable conduct disincentivizes applicants from intentionally looking for and providing information.
Secondly, a searcher selects references for technical reasons. Materiality is a legal question. What is or is not material does not enter into the searchers reasoning because the searcher is not qualified to make that determination. A searcher selects references to show technical information that is publicly known, as it relates to a specific invention. That is all. What is material is specific to claims. The definition of materiality is very narrow. It is easy to imagine situations where no references in a patentability search meet the definition of material. Yet, patentability references represent average skill in the art. Is that not be material? Inserting a legal question into the act of proffering technical information seems inconducive to incentivizing the applicant to engage in that very act.
Rule 56 was conceived 45 years ago to address a problem that is no longer relevant. Patent quality, despite the more critical eligibility issues, is very relevant still today. Rule 56 is supposed to compel the submission of evidence. The rule has the opposite effect.
In 1977 technical source material was limited and access to that information was by hand. It was easy to hide information. That is not true today. Despite the vastly greater volume of information, finding that information is also vastly more efficient. It is far harder to hide information today, if you wanted to do that, than in 1977. The information would need to be really obscure.
Suppose applicant incentives had been included in the AIA. I suspect there would have been far fewer successful IPRs over this time.
Weak patents are an unintended consequence of antiquated Rule 56. It needs to be cancelled.