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Bringing coal to Newcastle March 20, 2009

Posted by Brian Schar in General, Patent prosecution, USPTO.

This week, the Federal Circuit decided Larson Mfg. Co. of South Dakota v. Aluminart Prod’s Ltd.  The district court had found inequitable conduct in part due to Larson’s failure to submit, in a reexamination proceeding of a first application, Office Actions that were issued in a continuation application claiming priority to the first application.  Larson had, however, notified the Reexamination Panel of the existence of the continuation application.   The Federal Circuit remanded this issue to the district court, rather than reversing outright.

Completely absent from the opinion was the fact that the Reexamination Panel had complete access to the file history of the continuation application through PAIR.  Other than checking a bureaucratic box, there was no practical reason for Larson to have to file Office Actions from the continuation in an IDS.  The USPTO was aware that the continuation application existed, and it could easily review the file history of the continuation using the system that it provides and maintains itself!  After Larson cited the fact that a continuation application existed (a fact also easily obtained from PAIR), its duty should have ended.

Larson provides yet more evidence that the IDS process is broken, and yet more evidence that the Federal Circuit simply doesn’t understand the process of patent prosecution enough to fix it.


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