In Re Morris Epstein

PLAGER, Circuit Judge,

with whom COWEN, Senior Circuit Judge, joins,

concurring.

I join the opinion of the majority. I write because there is an anomaly here. Logic would dictate that when an applicant seeks a grant of property¹ from the government the applicant bears the burden of establishing entitlement to that grant. That, however, is not the rule in patent law; the rule is that the burden of persuasion is on the PTO to show why the applicant is not entitled to a patent. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed.Cir.1992) (Plager, J., concurring); In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057, 88 S.Ct. 811, 19 L.Ed.2d 857 (1968); see also In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections.”).

Perhaps the explanation lies in the way that the statute is written: “A person shall be entitled to a patent unless — ”. 35 U.S.C. § 102 (1988). Whether a different rule would prevail if the statute said, “To be entitled to a patent, an applicant shall establish ...” is a question that purists can debate. Whatever the ease, the rule is now well established.

In an attempt to relieve the PTO of the full impact of this rule, there are various other rules that require the applicant to tell what he knows and to deal in good faith with the PTO. See, e.g., 37 C.F.R. § 1.56 (1993). But there are problems in enforcing these requirements, and their efficacy may be questioned. As a practical matter, the primary corrective for the anomaly is the practice referred to as the “prima facie case.” The name is a misnomer, although the practice and the classic meaning of prima facie have similarities. Under the PTO practice, the PTO may meet its burden of persuasion initially by showing reasons why the applicant is not entitled to a patent. This shifts the burden of production (of evidence) to the applicant to show why the PTO is wrong — to rebut the prima facie case. One function of the PTO’s prima facie case practice is to force the PTO examiners to set forth specific objections, which can be met by the applicant, and not just to make a general rejection.²

As this case illustrates, another function is to relieve the PTO of the responsibility to know all there is to know about everything. It is not unreasonable to expect the applicant to know more about the prior work in the relevant art than the PTO examiner. Is it unreasonable to require the applicant to do the necessary legwork to assure the PTO that legitimate questions about that prior work are answered? The alternative — argued here by the applicant — is to require the PTO examiners to do any investigation suggested by available information. Since more and more information is now available on computer databases, that could require a staff of investigators far in excess of the resources currently available to the PTO. At bottom, the issue in this case is who is to bear the cost of further investigation when further investigation is thought warranted.

The solution agreed to by the panel, and with which I concur, is at least for now to allow the PTO to use its immediately available data sources to identify legitimate questions that need answering, and then to place upon the applicant the burden of finding those answers.³ In legalese this means that the PTO has met its burden of production, and now the burden of production or going forward shifts to the applicant. The ease with which the PTO can do this in some measure may undercut the rule placing the initial burden on the PTO, and that may be as it should. The practice could also be subject to abuse, and become a way to stall or harass applicants. That is something against which the PTO and this court will have to guard. This case perhaps illustrates both the paradigmatic case and the limits of that practice.

1 . 35 U.S.C. § 261 (1988) ("Subject to the provisions of this title, patents shall have the attributes of real property.”); see also Charles Reich, The New Property, 73 Yale LJ. 733 (1964).

2 . I here use "objections” and "rejection" in their common meaning, not as the technical terms defined in the Manual of Patent Examining Procedures § 706.01 (1994).

3 .As the majority points out, applicant’s arguments concerning the reliability of the computer abstracts — specifically, that the installation dates for the computer programs were inaccurate, the computer programs, as installed, differ from those described in the abstracts, the computer programs may have been subject to a veil of secrecy when installed' — were unsubstantiated. Accordingly, applicant failed to sufficiently satisfy this burden.