Yesterday, appellant in the en banc Therasense inequitable conduct case filed its merits brief (attached as pdf). It can now be anticipated that once again the Patent Office may weigh in with its classic response that it needs inequitable conduct to police practice – despite the fact that neither the European Patent Office nor Japan nor any other major office has a comparable practice.

Policing Shady Prosecution Practices: The answer that the PTO has had since the late 1970’s when it instituted the duty of disclosure as a “search tool” is that if the Office doesn’t have this policy, what discouragement is there to shady dealings by the public?

As part of a multi-year AIPLA blue ribbon “Lee Committee” studying inequitable conduct issues, it was pointed out that Germany and Japan provide the powerful incentive of a vigorous post-grant review system: A party is better off bringing prior art to the attention of the Office during prosecution vis a vis letting a third party come forward with such prior art for the first time in a post-grant proceeding. This approach is considered in two papers of the Lee Committee contributed by this writer, Inequitable Conduct and the Proper Roles of Patent Attorney and Examiner in an Era of International Patent Harmonization, 16 AM. INTELL. PROP. L. ASS'N Q.J. 38 (1988); Patent Simplification Sans Patent Fraud, 20 AM. INTELL. PROP. L. ASS'N Q. J. 211-230 (1992).

The PTO has Neglected its Post-Grant “Special Dispatch” Duties: In order for a post-grant review to have any major impact on miscreants there has to be a swift and sure post-grant review system. In the 1980 creation of the reexamination system, the intention of Congress was to have a one year post-grant review which was watered down to a statutory requirement of “special dispatch”.

The Sean Tu Study: For nearly thirty full years, the Office has made a mockery of “special dispatch”. As one manifestation, a recent study by Sean Tu has shown that even when the proceedings are concluded with a “NIRC” (notification of allowance), there is still an average 110 day delay until an ex parte reexamination certificate is issued – when it has been clear to the Office for many years that it could simply grant the reexamination certificate electronically instead of issuing a NIRC. Other units of the Patent Office each contribute their own periods of delay (although it is acknowledged that one of the bright spots of the Kappos Administration has been its efforts at reforms within the Board that should help to cut the backlog of reexaminations from that unit.)