The failure to require the patent bar to be completely candid in its dealings with the U.S. Patent and Trademark Office (“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 he attorney, this duty of disclosure is limited to matters already known by the parties. The regulations impose no duty 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 of an invalidating prior art reference that 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 disqualified example of prior art. A strong argument can be made that the most rational approach – particularly for an applicant who recognizes the weakness of the claims being made – is to require a patent representative to be technologically ignorant, as there is always a chance that the PTO 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 a modified version of Rule 11 of the Federal Rules of Civil Procedure, the attorney was required to engage in a reasonable inquiry about both the law and facts underlying any claim or defense before filing anything with the court and would be subject to sanctions if he failed to do so. This article argues that, to avoid the extraordinary expense of using litigation to invalidate patent claims that were anticipated or obvious, the PTO regulations require candor from all applicants and patent attorneys should be modified to require those prosecuting patents to engage in reasonable prior art searches before filing a patent application.
Ralph D. Clifford, Is It Time for a Rule 11 for the Patent Bar?, 53 IDEA 351 (2013).