August 2004

Louis Zarfas
Editor-in-Chief
JPTOS

Re: 37 CFR 10.23(c)(7) Duty to Disclose to the Office Claims Potentially Interfering with Patented Claims, and Complying with the 35 USC 135(b) Bar

Dear Mr. Zarfas:

I enjoyed reading Messrs. Ghatt and Graham's article in the August, 2002 edition of the JPTOS, which is entitled "Brasseler IV Case Comment: Is the Court Imposing New Duties on Patent Counsel," ⁽¹⁾ and I appreciate their views on the Brasseler IV case. However, for the benefit of the patent bar, I note the following important ethical issues that Ghatt and Graham's article failed to address.

Ghatt and Graham's article refers in its hypothetical to the patenting of a gadget and the corresponding impact of attorney inactions vis-a-vis duties of candor and disclosure when filing an application for another to "an almost identical gadget." ⁽²⁾ However semantically picky, I take exception to the description of patenting of a thing, such as a "gadget," since the semantic inaccuracy leads to improper legal analysis. Patent claims define subject matter, not gadgets, and that is an important distinction when identifying legal issues. ⁽³⁾ In particular, that is an important distinction when applying the law to the hypothetical fact pattern at pages 643-44 in Ghatt and Graham's article.

In the hypothetical fact pattern, Ghatt and Graham's article discusses the impact of company A's lack of disclosure of the "almost identical gadget" patented by company A's competitor more than one year prior to the filing date of company A's application in light of the attorney's duty of candor to the Office. However, the discussion in Ghatt and Graham's article relating to the hypothetical fact pattern fails to address (1) the 35 USC 135(b) issue of applying for a patent more than one year after the issuance of another's patent on "an almost identical gadget," and more importantly, the 37 CFR 1.604(b), 37 CFR 1.607(c), and 37 CFR 10.23(c)(7) duties to notify the Office when presenting claims defining the same patentable invention as patented claims. ⁽⁴⁾ Presenting claims defining a gadget when a competitor had obtained a patent with claims defining "an almost identical gadget" should have automatically brought to mind the issue of potentially interfering claims and the legal and ethical issues related thereto, when thinking in terms of claims defining subject matter instead of in terms of patenting of a gadget. I presume that it was the authors thinking in terms of a "patented gadget" instead of in terms of a patent having claims defining subject matter, which is what led to their failure to identify these important legal issues. That is why I take exception to the semantic inaccuracy.

Respectfully,

Richard A. Neifeld
Neifeld IP Law, PC