Comments on: Q) Investigating Deceptive Intent

By: SP

SP — Fri, 23 Jul 2010 02:56:38 +0000

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.

By: S

Sat, 05 Jun 2010 10:47:01 +0000

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.

By: Chemist62

Chemist62 — Wed, 17 Mar 2010 18:55:59 +0000

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.

By: Emily M.

Emily M. — Sun, 14 Feb 2010 01:48:56 +0000

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.

By: matt30

matt30 — Sun, 10 May 2009 16:07:59 +0000

I gopt a version of this question yesterday on my exam

By: tttgas

tttgas — Tue, 19 Aug 2008 20:49:04 +0000

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

By: patentbar

patentbar — Tue, 19 Aug 2008 20:37:12 +0000

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

By: asahu

asahu — Tue, 19 Aug 2008 20:08:53 +0000

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

By: mymrh

mymrh — Sun, 10 Aug 2008 00:51:11 +0000

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.