Is It Time for a Rule 11 for the Patent Bar?

Abstract

The failure of the patent bar to be professionally candid in its dealings with the PTO is one of the reasons behind the patent quality problem in the United States. Although PTO regulations impose a duty of candor on both the patent applicant and his or her attorney, this duty of disclosure is limited to matters already known by the parties. There is no duty imposed to become educated about the technology that underlies a claimed invention; indeed, there are rational reasons why a patent applicant might seek an uneducated attorney and order him or her not to attempt to overcome any initial ignorance. An educated representative who knows the underlying technology is more likely to know an invalidating prior art reference which would have to be disclosed to the PTO. Similarly, a prior art search done by the representative may also lead to the discovery of a disqualifying example of prior art. A strong argument can be made that the most rational approach — particularly for a applicant who recognizes the weakness of the claims being made — is to require a patent attorney to be technologically ignorant as there is always a chance that the patent office will fail to discover a prior art reference during its search.The patent bar today operates in a way that is similar to the methods used by litigating attorneys until the 1980s. The courts of the time faced an increasing flood of inappropriate suits that were not justified by fact or law. The cost of allowing the suits to be screened by the court itself (through summary judgment, for example) became increasingly cost-prohibitive. Consequently, a heightened screening requirement was imposed on the attorneys who were filing claims or defenses. Under FRCP 11, the attorney was required to engage in a reasonable inquiry about both the law and facts before anything was filed and would be subject to sanctions should there be a failure to do so. This article argues that, to avoid the extraordinary expense of using litigation to invalidate patent claims that were anticipated, the PTO regulations requiring candor should be modified to require all applicants and patent attorneys to engage in reasonable prior art searches before a patent application is filed.