In this Issue:

:: The U.S. Patent and Trademark Office (USPTO) Proposes Changes to Information Disclosure Statement (IDS) Requirements

:: Proposed Revision of U.S. Patent and Trademark Office (USPTO) Patent Fees for 2007

The U.S. Patent and Trademark Office (USPTO) Proposes Changes to Information Disclosure Statement (IDS) Requirements

The USPTO has issued a notice of proposed rule making changing the requirements for filing IDS submissions under the applicant’s duty of disclosure. In a Federal register Notice published on July 10, 2006, ) the USPTO asks for public comments on proposals that will require patent applicants to explain the relevance of documents cited in an IDS if the IDS contains more than 20 documents or any document is over 25 pages long. The USPTO states that the purpose of the proposed changes is to improve quality by having the applicant help ease the burden on the Office associated with the examiner’s consideration of large amounts of information submitted during examination. Public comments are due by September 8, 2006.

The following is a summary of the proposed changes.

·         The requirements for filing IDSs will vary depending upon in which stage of prosecution the IDS is submitted.

o        First Time Period- before first action or within three months from filing or entry into the national stage

·         For all references if more than 20 references are cited cumulatively, for any reference over 25 pages long, and for any non-English language reference an explanation must be provided. An explanation is defined as an explanation of the feature or teaching that causes the document to be cited and a representative portion of the document where the feature or teaching can be found, and a correlation of the feature or teaching to specific claim language or portion of the specification 

·         Documents cited from a foreign search report where a copy of the report is submitted will not be counted and an explanation is not required

o        Second Time Period- between the first office action and the mailing of the notice of allowability or notice of allowance or NIRC

·        For all references submitted during this period an explanation (as defined above) and a non-cumulative description must be provided. A non-cumulative description is defined as a description of how each document is not cumulative to any of the other submitted documents by a showing of a specific feature or teaching that is not found in any other document of record.

·       Documents cited in a foreign search report are exempt if accompanied by a certification that the communication from the foreign office was within the last three months

o        Third Time Period- after the notice of allowance but before or with the issue fee payment

·         For all references submitted during this period an explanation and non-cumulative description (as defined above) as well as a patentability justification must be submitted. A patentability justification is defined as an explanation why the independent claims are patentable over the reference(s) being submitted considered together and in view of any information already submitted or; why an amendment causes claims admitted to be unpatentable over the references submitted is now patentable over the references considered together and in view of any references already of record.

o        Fourth Time Period- after payment of the issue fee and before issuance

·         In addition to the requirements for the third time period the IDS must be accompanied by a petition to withdraw the application from issue before it will be considered

·        These requirements may be retroactive. That is, for any IDS the examiner has not considered at the time the rules are enacted, that IDS must be in compliance with the new rules before it will be considered. If not in compliance, the PTO will either indicate the IDS has not been considered, or give the applicant one month to put the IDS into compliance. The USPTO has not decided whether to make the proposed rules retroactive or not.

·       With each amendment, any explanation of the references previously submitted must be reviewed and updated or a statement that updating is not needed must be submitted. Failure to comply with this requirement may result in the amendment being held non-responsive.

·       The PTO emphasizes that under existing rule 37CFR 10.18 practitioners are required to review information submitted in an IDS to assure its submission does not cause unnecessary delay or cost of examination. Failure to review could result in practitioner sanctions.

·        A translation of any non-English document of any length must be submitted if such a translation is in the possession of any person covered under the duty of disclosure.

·         The fee requirements for IDSs are eliminated

·         37 CFR 1.56 is revised to provide a “safe harbor” for individuals covered under the duty of disclosure if the individual in good faith took reasonable steps after reasonable inquiry to comply with the additional disclosure requirements. The PTO also states that the courts are not bound by this rule but hope the courts will take it into consideration.

·         If the applicant receives a large number of prior art references from a third party, the applicant may opt to provide written consent to the third party to file a protest, thus shifting the burden of submitting and explaining the references to the third party.

·         Any IDS references submitted in an RCE must comply with the requirements of the second or third time period, whichever is applicable.

·         The above time periods restart when a continuation, divisional, or C-I-P is filed.

·         Submission of IDSs during reexamination proceedings would follow similar time periods and requirements.

·         Examiners are not required to consider references cited in the specification, if applicant wants a reference considered, it must be in an IDS.

·      Mere statements that an entire reference is relevant are insufficient and may result in the reference not being considered. Applicants must specifically correlate the feature of the reference that causes the reference to be cited to language in the claims or specification. For example: Rotary pump 32 in figure 1 of the Smith patent correlates to the rotary pump in claim 1 of the application. 

·       The time period for third party submissions of prior art under 37 CFR 1.99 is extended from two months after publication to six months after publication.

Other Changes Included in this Proposal 

·         A foreign priority claim may be made in an application after payment of the issue fee if time permits before issuance via a petition

·         A reexamination may be withdrawn from publication by filing a petition.

·         Reexamination or reissue may not be used to change the order of inventor’s names, change spelling, or update an inventor’s name. Procedures are provides to make these type changes in both pending, abandoned applications, and issued patents.

Summary supplied by Nicholas P. Godici.

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Proposed Revision of U.S. Patent and Trademark Office (USPTO) Patent Fees for 2007

The United States Patent and Trademark Office is proposing to adjust certain patent fee amounts to reflect fluctuations in the Consumer Price Index (CPI). Under the Consolidated Appropriations Act of 2005 the Director is authorized to adjust these fees annually by the CPI to recover the higher costs associated with doing business. Read the full account from the June 5, 2006 Federal Register here.

Summary supplied by Craig M. Schultz.