IDS Practice; 2008 Patent Practice Miku H. Mehta, Patent Attorney Sughrue Mion, PLLC
Updates Legislation House already passed Patent Reform Act Senate plans to consider Patent Reform Act in February 2008 Rules New Route Summary Judgement hearing on continuation, claim and related application rules (possibly February) GSK v. Dudas New rules coming on Appeals and Markush Group Practice Court Cases Supreme Court currently reviewing patent exhaustion doctrine Quanta Computer v. LG Electronics 2
Proposed New IDS Rules USPTO Goals Improve quality/efficiency of examination Focus on relevant art and the beginning of examination High quality 1 st Office Action Minimize wasted steps 3
Time Period #1 Up to the first Office Action on the merits Must file Explanation with IDS for: 1. Document > 25 pages OR 2. Foreign language documents 3. All documents, if more than 20 documents are submitted 37 CFR 1.98(a)(3) Exceptions 1. Documents cited in foreign or international search and/or examination report 2. Documents submitted in response to an Examiner request for information 37 CFR 1.98(a)(3)(viii)(A) This requirement applies throughout all 4 of the time periods 4
What is an Explanation? Identify features in reference that were the basis for citation Correlate the identified features to the claim language 37 CFR 1.98(a)(3)(iv) How much detail? a level of specificity commensurate with the specifics of the features that caused the document to be cited. 37 CFR 1.78(a)(3)(vii) 5
Time Period #2 After the first Office Action, but before Notice of Allowance Non-cumulative description for each new reference submitted during Time Period #2 37 CFR 1.98(a)(3)(ii). Explanation requirements of Time Period #1 also apply to each document submitted during Time Period #2 Exception: explanation and the non-cumulative description not required for references cited in a foreign search or examination report submitted to USPTO. 37 CFR 1.98(a)(3)(viii)(B). Documents submitted in reply to a requirement for information 6
What is a non-cumulative description? Must describe how and why each newly cited reference is not merely cumulative of any other document already submitted. 37 CFR 1.78(a)(3)(v)-(vii) 7
Time Period #3 After Notice of Allowance, but before/with Issue Fee payment Requirements of Time Period #1 AND Time Period #2 must be met No exception for references cited in foreign search report or examination report Additionally: 1. A certification that the references were (a) first cited in a foreign office action not more than 3 months before the IDS filing date, OR (b) not cited in a foreign office action, and not known to any individual under 1.56 (c) more than 3 months before the IDS was filed 2. Patentability Justification. 37 CFR 1.78(a)(3)(iii)(B), (vi)(a). 8
What is a patentability justification? An explanation why independent claims are patentable over the new IDS references, OR Amendment and explanation why the claims, admittedly unpatentable over the IDS reference, is now patentable. 37 CFR 1.78(a)(3)(vi)(A)-(B). 9
Time Period #4 After issue fee payment but sufficient time before issuance Requirements of time period #1-#3 Petition to withdraw from issue 10
Claim Amendments and IDS Practice With each amendment other than an Examiner s amendment: 1. The Explanation must be reviewed and updated, OR 2. A statement provided stating that updating is not needed 37 CFR 1.98(a)(3)(ix). 11
Providing Translations to USPTO Non-English references Applicant must provide translation if translation is within the possession, custody, or control of, or is readily available to an individual under 37 CFR 1.56(c). No duty to translate 12
Graphical Summary of IDS Rules Start Before 1 st OA? >20 references total? N Explanation AND Non-cumulative description for EACH new document Y Y Explanation for EACH document N >25pp. OR foreign ref. not in FSR/FER? Y Explanation for Documents meeting these requirements N Before Allowance? N Patentability justification for EACH document Y End 13
Third Party Submission Problem third parties submits large amounts of information of a general nature Solution applicant can provide written consent to the third party submission, such that the burden is shifted back to the third party (i.e., third party protest under 37CFR1.291) 6 month window for filing submission under 37CFR1.99 14
Other proposed rule changes Reexamination fees Change of inventorship information; use of ADS (application data sheet) for non-reissue applications No new oath/dec needed in certain cases 15
Amendments after Allowance Bibliographic data to be indicated on the patent cover page Amendment to reference a joint research agreement Addition of a benefit claim (provisional, continuing application) or a priority claim (foreign priority), subject to any petition requirement, NOTE - if the patent does not publish with the priority claim, it must be corrected by certificate of correction. 37 CFR 1.55 Changing inventor order, name, or spelling Changing inventorship 16
Issues How will this affect the inequitable conduct standard? What about the safe harbor provision of proposed 1.56(f)? According to USPTO, the duty of disclosure has been met if an individual under 37 CFR 1.56(c) has made a reasonable good faith inquiry regarding the relationship of the IDS references See proposed 37 CFR 1.56(f). Courts are not bound by USPTO rules for the purpose in inequitable conduct determinations 17
McKesson v. Bridge Medical Brief Summary of Federal Circuit holding: Failure of applicant to submit the following materials was inequitable conduct Submit prior art in one copending application into another copending application examined Information one Examiner of the Office Action by another Examiner for a material and co-pending case Inform an Examiner who allowed one case of a Notice of Allowance issued in another copending case by the same Examiner Each failure was considered separately and independently Materiality and Intent threshold met based on reasonable Examiner standard CAFC rejected arguments that materials were cumulative, and said it is up to the Examiner 18
Practical Tips Develop management strategy for incoming prior art Anticipate increased cost for certain prior art Properly review prior art, and educate foreign associates to ensure timely submission and reduced costs 19