In our last post, Materiality and a Legitimate Paranoia, we argued that egregious holdings in cases can compel an applicant and his attorney to submit a gargantuan amount of art in order to avoid a charge of inequitable misconduct. The McKesson decision was particularly effective in inducing Applicants everywhere to cite enormous numbers of Office Actions on their 1449s. Although this type of disclosure effectuates the problem, perhaps it is the field in which we practice, regardless of case interpretation, which ultimately leads to this excess disclosure in the first place. I was browsing through biotech patents that issued on 9/29/2009. Overwhelmingly these patents contained pages upon pages of cited references—considerable even after excluding cited Office Actions. I am guessing that the excess disclosure has something to do with the fact that these were biotech patents. Research in the area of biotechnology produces an enormous pool of publications, containing slight variations and nuances over previously published work. As such, the determination of materiality becomes more of an art than a science. With the penalty of inequitable misconduct ever-present, Applicants tend to cite generously.
37 CFR § 1.56 reads, “A patent by its very nature is affected with a public interest. 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. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”
However, the excess citation of references does not yield the most effective patent examination. Citing over 100 plus references does not help an Examiner to narrow in on the most closely related art. On the other hand, from an Attorney’s point of view, given the dire consequences of inequitable misconduct, an Applicant is loathe to take the risk of under citation. Perhaps patent offices such as those in Europe and Australia are on to something…