Information Disclosure Statements 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

Transcription

1 Information Disclosure Statements

2 THE BASICS

3 What is an IDS? An IDS is a paper submitted to the U.S. Patent and Trademark Office by an Applicant providing a list of documents having potential relevance to a given pending application.

4 Why File an IDS? The duty of disclosure requires that all Applicants advise the USPTO of any prior art of which they, or any individual designated in 37 CFR 1.56(c), are aware.

5 Who Is Designated in 37 CFR 1.56(c)? (1) Each inventor named in the application; (2) Each attorney or agent who prepares or prosecutes the application; and (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

6 What Is Prior Art? Prior art is a general term for any form of information that might be relevant to a claim. Prior art can include many types of documents: Published patents and patent applications; Non-patent literature: Journal articles, Newspaper articles, Internet articles, Research papers, etc. Foreign Office Actions

7 Where Do We Get Prior Art? Common sources include: Patentability Searches, Search Reports in related foreign applications, and Third party submissions. References are commonly cited in the specification. Clients routinely send references with their new case order letter.

8 Does Prior Art Have to Be in English? The documents can be in any language, but a concise English language explanation must be provided for each non-english language document. Alternatively, if there is a foreign Office Action (in English) that explains the relevance of the non-english document, that will also suffice.

9 What is a concise English explanation? A copy of an English language equivalent (i.e., an English language family member of a patent document); An English translation of any relevant parts thereof, such as the Abstract or Claims so long as they are descriptive of the relevant portion of the reference; A statement explaining the relevance of the document; OR An English-language search report or office action citing the document (or an English translation of a foreignlanguage search report/office action).

10 PCT Documents (cont.) National Stage (371) Applications Usually new 371 applications are filed with the International Search Report (ISR), and any references cited in the ISR are submitted in an IDS at the time of filing. When filing subsequent IDSs, check to ensure that all ISR references were cited at the time of filing. If not, you may need to file a full IDS in order to have the references considered by the Examiner during prosecution.

11 PCT Documents (cont.) The ISR uses category symbols to identify citation types and possible relevance: X = Particularly relevant if taken alone Y = Particularly relevant if taken with another Y-document A = Technological background O = Non-written (e.g. oral) disclosure P = Intermediate document, published after priority date but before filing date of application; used in combination with X, Y, A (e.g. XP) T = Theory or principle underlying the invention E = Earlier patent document, but published on, or after the filing date D = Cited in the application L = Cited for other reasons

12 PCT Documents (cont.) References cited in the ISR under Category A may not be considered relevant by the Applicant(s). Thus, Applicant(s) may not want these references cited in an IDS.

13 New Cases For new cases with an ISR (International Search Report): If the client sends a copy of the ISR without enclosing the references, we will try and acquire the documents on our end UNLESS the document is an NPL (non-patent literature) document. To reduce costs, try to avoid filing an IDS without all the necessary references from the ISR. Try to avoid filing an incomplete IDS which includes some of the references cited in the ISR but which does not include ALL of the references cited in the ISR (possible exception, Category A references)

14 STATUS OF APPLICATION

15 Application Status Matters The status of an application (i.e., where we are in prosecution ) affects how IDSs are processed and what needs to be included with the filing. Depending on the stage of prosecution, the USPTO requires different IDS documentation. Certain prosecution steps are major turning points affecting IDS rules and procedures: First Action on the Merits Final Action, Ex Parte Quayle or Notice of Allowance Payment of the Issue Fee

16 Application Status If uncertain as to the status, check the application Status in PAIR to ascertain where in prosecution the application stands. If there is a First Action Prediction tab, note the estimated First Action date on the Bibliographic Data printout.

17 Application Status (cont.)

18 Action on the Merits The USPTO holds us to a higher standard after they have sent a first Office Action on the merits ; so it is important to understand what this is.

19 Action on the Merits (cont.) An action on the merits is an Office Action issued by the Examiner which substantively addresses the application. Non-final Office Action; Ex Parte Quayle; OR Notice of Allowance.

20 Restriction/Election A Restriction/Election of Species Requirement does NOT count as an action on the merits. No changes in procedures, since there are no specific requirements. Process the IDS in the usual manner and then return the file to the File Room as promptly as possible. This will ensure the file is available to others when needed.

21 Before First Action on the Merits IDS Filing First Action on the Merits Final OA, Ex Parte, or NOA Payment of Issue Fee Issuance CERTIFICATION & PTO IDS Filing Fee NOT REQUIRED!!

22 After First Action on the Merits First Action on the Merits IDS Filing Final OA, Ex Parte, or NOA Payment of Issue Fee Issuance EITHER CERTIFICATION OR PTO Filing Fee REQUIRED (Applicants who cannot certify must pay the filing fee)

23 After Final OA, Ex Parte or NOA First Action on the Merits Final OA, Ex Parte, or NOA IDS Filing Payment of Issue Fee Issuance BOTH CERTIFICATION AND PTO Filing Fee REQUIRED

24 After Final OA, Ex Parte or NOA (cont.) If the Applicant cannot certify (i.e., the documents have been known for more than three (3) months), the procedures vary based on relevance : If the references are RELEVANT to patentability, Applicant must file a Request for Continued Examination (RCE) with the IDS: prior to paying the Issue Fee; or with the response to the Final Office Action to ensure that the references are considered by the Examiner and made of record. If the client indicates that the references are NOT RELEVANT to patentability, then no IDS is technically required (it is possible to simply place the references in the USPTO file without the Examiner s consideration).

25 After Payment of Issue Fee First Action on the Merits Final OA, Ex Parte, or NOA Payment of Issue Fee IDS Filing Issuance PROCEDURES VARY BASED ON RELEVANCE Confirm Relevance! The client is the one who determines if documents are relevant (i.e. material to patentability ). Sometimes the attorney or client may decide that references cited in a Foreign Search Report or Office Communication are NOT relevant to patentability.

26 After Payment of Issue Fee (cont.) If the client indicates that the documents are relevant (i.e., material to patentability ): BOTH CERTIFICATION AND PTO Filing Fee ARE REQUIRED You must file a Quick Path IDS (QPIDS), which is: A Petition to Withdraw From Issue, together with A conditional RCE. File as quickly as possible to give the USPTO time to process the Petition before the patent issues.

27 After Payment of Issue Fee (cont.) If the documents are deemed not relevant to patentability: After payment of the Issue Fee, you can still place the references in the USPTO file without consideration (under 37 CFR 1.97(i)). Such documents will NOT be considered by the Examiner since prosecution has ended. Such documents will simply be placed in the file. Even though such documents are not of record, placing them in the file can be useful in the event of any future law suit challenging the patent.

28 After Issuance First Action on the Merits Final OA, Ex Parte, or NOA Payment of Issue Fee Issuance IDS Filing IDS MUST BE FILED UNDER 37 CFR 1.97(i) OR 1.501(a) Filing of an IDS is per attorney/client discretion. 37 CFR 1.97(i) Documents will not be considered by Examiner or made of record, but placed in file. 37 CFR 1.501(a) Documents may be examined, but this type of filing requires attorney approval.

29 After Issuance (cont.) What if the patent has issued and references are discovered that are considered to be relevant to patentability? You can file an IDS under 37 CFR 1.501(a) WARNING! Have the attorney review the client s instructions since this may cause litigation ramifications later. 37 CFR 1.501(a) permits any person at any time during the period of enforceability of a patent to cite to the USPTO, in writing, prior art consisting of patents and printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim(s) of the patent. Otherwise, you must consider some post-grant procedure.

30 Summary of IDS Requirements IDS Filing NO CERT NO FEE First Action on the Merits Final OA, Ex Parte, or NOA Payment of Issue Fee Issuance First Action on the Merits IDS Filing EITHER CERT OR FEE Final OA, Ex Parte, or NOA Payment of Issue Fee Issuance First Action on the Merits Final OA, Ex Parte, or NOA IDS Filing BOTH CERT AND FEE Payment of Issue Fee Issuance First Action on the Merits Final OA, Ex Parte, or NOA Payment of Issue Fee IDS Filing QPIDS OR IDS (CFR 1.97) Issuance First Action on the Merits Final OA, Ex Parte, or NOA Payment of Issue Fee Issuance IDS Filing IDS (CFR 1.97) OR IDS (CFR 1.501(a))

31 QUESTIONS