Michael C. Deane

92 Texas L. Rev. 439

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The United States Patent and Trademark Office (USPTO) relies on applicant-submitted disclosures to aid examiners in deciding whether a patent should issue from a patent application.  However, the legal doctrines governing those disclosures have not resulted in an ideal system.  The problem stems from the fact that both underdisclosure, resulting from no duty to actively search for prior art, and overdisclosure, resulting from the constantly shifting standards of inequitable conduct, have come to be legally accepted.

Mr. Deane proposes a rule change in the Manual of Patent Examining Procedure (MPEP) that harnesses the patent applicant’s private incentives related to disclosure as seen in the recent Supreme Court decision, Microsoft Corporation v. i4i Ltd. Partnership. That decision held that if the USPTO had no opportunity to review a prior art reference during prosecution, a defendant opposing a patent in litigation will be afforded a jury instruction that tells the jury of this fact and further suggests to the jury that the presumption of validity is harder to sustain if the USPTO had not considered a new reference presented by the defendant.

Mr. Deane proposes a system that attempts to tie this jury instruction to the practice of disclosure at the USPTO and deny a defendant opposing the patent the jury instruction for certain references, chosen and marked by the patent holder during the prosecution of the patent application.  Mr. Deane proposes that the USPTO could have an optional rule whereby patent applicants point out a certain number of prior art references (Mr. Deane proposes up to three) that the examiner will guarantee to scrutinize.  Those references, along with other references actually used by the examiner, as evidenced by the patent prosecution history, would not be subjected to the otherwise factually-determined jury instruction proffered by i4i.  Therefore, for those references the applicant chooses, the patent holder would reduce uncertainty in litigation, obtain summary judgment more easily, and facilitate pretrial settlement discussions.  By increasing the patent applicant’s incentives to disclose prior art through these procedural mechanisms, the USPTO can achieve a better system of disclosure that potentially results in shorter prosecution time and stronger patents that can survive litigation.