Q) Investigating Deceptive Intent

by patentbar on August 7, 2008 · 28 comments

in Exam Questions

“I had a question asking about what situation does the PTO still investigate violotations of 37 CFR 1.56. I think the answer is in MPEP 1448”

1448 FRAUD, INEQUITABLE CONDUCT, OR DUTY OF DISCLOSURE ISSUES

The Office no longer investigates and rejects reissue applications under 37 CFR 1.56. The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications.

…Form paragraph 14.21.09 should be used where the examiner becomes aware of a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant independently of the record of the case, i.e., the examiner has external knowledge of the judicial determination. Form paragraph 14.22 should be used where, in the application record, there is (a) an explicit, unequivocal admission by applicant of fraud, inequitable conduct or violation of the duty of disclosure which is not subject to other interpretation, or (b) information as to a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant. External information which the examiner believes to be an admission by applicant should never be used by the examiner, and such external information should never be made of record in the reissue application.

{ 28 comments… read them below or add one }

1 mymrhNo Gravatar August 9, 2008 at 8:51 pm

I have this one on my today’s test. I believe the key is to understand (a) and (b) below. Also, know “external information…. should never be used by exmainer”

a) an explicit, unequivocal admission by applicant of fraud, inequitable conduct or violation of the duty of disclosure which is not subject to other interpretation, or

(b) information as to a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant. External information which the examiner believes to be an admission by applicant should never be used by the examiner, and such external information should never be made of record in the reissue application.

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2 asahuNo Gravatar August 19, 2008 at 4:08 pm

so are a) and b) both correct, or is it only a) ?

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3 patentbarNo Gravatar August 19, 2008 at 4:37 pm

a) and b) are from the MPEP, not answer choices. Maybe someone knows the phrasing of this question and possible answer choices.

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4 tttgasNo Gravatar August 19, 2008 at 4:49 pm

I believe the first reply is not entirely correct. While an examiner should never use external information which the examiner “believes” to be an admission by the applicant, an examiner can use external information of a judicial determination of fraud, inequitable conduct, or violation of duty of disclosure in a rejection during reissue (via form paragraph 14.21.09).

MPEP 1448 does indeed explain that the PTO no longer “investigates” deceptive intent in a reissue. But, it does provide for a rejection on fraud, inequitable conduct, or violation of duty of disclosure issues in the “special circumstance” where there has been either (1) an admission or (2) a judicial determination of such (since there is no need to investigate).

Admission (use form paragraph 14.22)
– Limited to information “in the application record” (examiner cannot use external information of an admission)
– The admission must be explicit, unequivocal, and not subject to other interpretation
– The applicant can rebut by:
(1) providing a reasonable interpretation that would not lead to a conclusion of fraud
(2) arguing that the “admission” was not in fact an admission

Judicial Determination
– Can be from external information, “independently of the record of the case” (use form paragraph 14.21.09)
– Or from information “in the application record” (use form paragraph 14.22)
– I haven’t read anywhere that says this is rebuttable

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5 matt30No Gravatar May 10, 2009 at 12:07 pm

I gopt a version of this question yesterday on my exam

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6 Emily M.No Gravatar February 13, 2010 at 9:48 pm

I got a version of this question yesterday. I believe it asked in what circumstance it would be appropriate for the examiner to make a rejection based on fraud/violation of duty of disclosure. I picked the answer that said that the examiner had knowledge (not in the record) of a judicial determination of fraud or violation of duty of disclosure. I can’t remember most of the incorrect choices but one was that the applicant admitted that in related litigation, the other party had made allegations of fraud, etc.

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7 SNo Gravatar June 5, 2010 at 6:47 am

I seem to have had a similar exam as Emily. I think I saw a lot of questions and answers has hers.

I had this with the same fact pattern.

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8 Chemist62No Gravatar March 17, 2010 at 2:55 pm

The way I read all this is that the USPTO will not itself conduct an investigation. The only time they act on it is if the applicant itself admits or if there is a finding by a court.

All this fraud stuff is incredibly hard to nail down.

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9 SPNo Gravatar July 22, 2010 at 10:56 pm

Got this question in today’s bar exam. One of the choices is examiner’s “internal” knowledge of judicial determination of fraud. One of the choices is applicant’s own admission of fraud.

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10 DamienNo Gravatar November 21, 2010 at 8:07 pm

Second Emily, got this today, went with same answer

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11 AnneNo Gravatar January 19, 2011 at 10:09 pm

Got this one today.

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12 RodneyNo Gravatar January 25, 2011 at 5:34 pm

Got this one today (Emily M’s question from 2-13-10) – I answered the same as she did,

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13 VeNo Gravatar January 27, 2011 at 7:11 pm

Got this one. Wasn’t sure about the answer Emily picked ((b) examiner had knowledge of judicial determination) and (a) competitor brought up inequitable conduct question in litigation. Ended up going with (a)

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14 epepNo Gravatar March 7, 2011 at 11:48 am

It came down to (a) and (b) for me as well. The tiebreaker for me involved the concrete nature of one of the two.

I think one of those said that something had been alleged by a competitor.. maybe A? B said that it had been found by the court.

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15 ELSNo Gravatar March 7, 2011 at 11:51 am

Same here between (a) and (b). Went with b (found by court).

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16 patenttipsNo Gravatar March 17, 2011 at 5:11 pm

The correct answer involved:

Examiner aware of a judicial decision of fraud….invalid patent by fraud.

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17 HNo Gravatar March 31, 2011 at 4:34 pm

I agree that the correct answer is the one about the examiner being aware of a judicial decision of fraud. The other answer about it being admitted or brought up in other litigation is incorrect b/c “external information which the examiner believes to be an admission by the applicant should never be used by the examiner.” – MPEP 1448

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18 FredsNo Gravatar June 2, 2011 at 12:06 am

Looks like PTO has a Parol Evidence rule going on in 1448. Yeah, judicial notice of party’s deceptive intent is adopted w/o investigation by PTO per 1448.

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19 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 12:28 pm

In addition to the ones above, for light reading :
also look at 2001.06 (c) where there is a section on litigation involving inequitable conduct and that it must be disclosed to the office.

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20 BigBadVoodoDaddyNo Gravatar July 1, 2011 at 12:29 pm

Sections 2010 and 2012 in the MPEP are more pertinent sections for this kind of discussion in my opinion anyways.
thanks

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21 maggieNo Gravatar October 23, 2011 at 7:20 pm

Q: In what circumstance it would be appropriate for the examiner to make a rejection based on fraud/violation of duty of disclosure.
(A) Examiner’s “internal” knowledge of judicial determination of fraud
(B) One of the choices is applicant’s own admission of fraud.
(C) Competitor alleged inequitable conduct question in litigation.

??? Answer: Examiner being aware of a judicial decision of fraud

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22 maggieNo Gravatar October 23, 2011 at 7:59 pm

There are sections for Protest, Reissue and Reexam regarding this topic and I think the overarching message it this topic is not to be decided by USPTO examiner, rather it is one that is for the courts.

Which I think makes (A) correct.

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23 maggieNo Gravatar October 24, 2011 at 11:57 am

Checked by Ben at VA (8) Judicial things override everything – if the examiner has independent knowledge from judicial review that something is fishy, it is grounds for fraud or indecent conduct.

24 RandomNo Gravatar October 15, 2012 at 8:43 pm

Got this one today, answer had “judicial determination” like Maggie said on 8/24/2011.

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25 philNo Gravatar April 3, 2013 at 4:20 pm

Here is the answer (MPEP 1448):

1) Judicial determination must be EXTERNAL
2) ADMISSION must be unequivocal and INTERNAL

So MAGGIE, A is wrong because his knowledge of the judicial determination is “internal”, (A) Examiner’s “internal” knowledge of judicial determination of fraud

B is RIGHT because his knowledge of the admission is internal, (B) One of the choices is applicant’s own admission of fraud.

The PTO may change the answer choices on the exam but just remember the two rules stated above and you can answer any variation of this question.

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26 zNo Gravatar April 3, 2013 at 6:10 pm

phil, this is incorrect. The correct rules are:

1) Judicial determination can be either external or internal
2) Admission can only be internal, not external

“Internal” means it is in the application record. “External” means it is outside the application record. The difference between “internal” judicial determination and “external” judicial determination is simply which form paragraph the examiner is supposed to use.

“Internal” judicial determination is described where the MPEP says “Form paragraph 14.22 should be used where, in the application record, there is…(b) information as to a judicial determination of fraud, inequitable conduct or a violation of the duty of disclosure on the part of the applicant.” (MPEP 1448).

“External” judicial determination is described where the MPEP says “Form paragraph 14.21.09 should be used where the examiner becomes aware of a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant independently of the record of the case, i.e., the examiner has external knowledge of the judicial determination.” (MPEP 1448).

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27 InaweekNo Gravatar August 18, 2013 at 7:21 pm

Based on 1448, (B) One of the choices is applicant’s own admission of fraud. is also correct. Can anyone help clarify please?

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28 NicolaNo Gravatar August 19, 2013 at 11:00 am

It appears that the “admission” here has to be internal to the record, within the prosecution record. See Z’s entry above.

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