Issue 06/35 | July 18, 2006
USPTO Proposes New Information Disclosure Requirements

On July 10,2006, the U.S. Patent and Trademark Office proposed several changes relating to submissions of Information Disclosure Statements, including

  • Before a first Office action on the merits, requiring additional disclosure for English language documents over twenty-five pages, for any foreign language documents, or if more than twenty documents are submitted (documents submitted in reply to a requirement for information or resulting from a foreign search or examination report would not count towards the twenty document limit);
  • Permitting the filing of an IDS after a first Office action on the merits only if certain additional disclosure requirements have been met; and eliminate the fees for submitting an IDS.
  • Updates to the additional disclosure requirements would be required as needed for every substantive amendment.
  • Revising the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.

To be ensured of consideration, written comments must be received on or before September 8, 2006. No public hearing will be held.

According to the Notice of Proposed Rulemaking, one goal of the changes proposed in this notice is to enable an examiner to identify the most relevant prior art in an efficient and expeditious manner, even when an IDS containing a large number of documents is submitted:

It appears that applicants sometimes file large collections of information for the examiner's review without having first reviewed the information themselves for relevance in the mistaken belief that such action is permitted under the current rules. If irrelevant information is filtered out before an IDS is filed, the examiner will be able to focus upon the more relevant information, and perform a more efficient, effective examination.

The Office has surveyed, across all technologies, 3,084 small entity applications and 9,469 non-small entity applications, covering a six-week period of allowed applications to determine the appropriate threshold number of cited information. Approximately eighty-five percent of the sample included twenty or fewer submitted documents, while eighty-one percent of applications included fifteen or fewer submitted documents. Thus, the Office has determined that for IDSs submitted prior to a first Office action on the merits, a threshold of twenty documents best balances the interests of the Office and of the applicants.

For applications in which twenty or fewer documents have been cited in one, or more IDS prior to a first Office action on the merits, an explanation would be required only for English-language documents over twenty-five pages, and for non-English-language documents of any length.For applications in which more than twenty total documents have been cited in one, or more, IDS prior to a first Office action on the merits, an explanation is also required for each cited document. The required explanation must identify information in each document that is relevant to the claimed invention or supporting specification.

More extensive disclosure requirements would apply to IDS submissions after a first Office action on the merits. An applicant would be required to provide a non-cumulative description as well as an explanation, or a copy of a recently issued foreign search or examination report, for each document submitted after a first Office action on the merits. Where an IDS is filed after the mailing date of a notice of allowability or a notice of allowance under § 1.311, applicant would be required to provide an appropriate patentability justification, which includes the explanation and non-cumulative description required after a first Office action, and reasons why the claims are patentable over the cited document(s).

Applicants would also be required to submit a non-cumulative description for IDSs submitted after a first Office action and after allowance. A non-cumulative description is one that "describes a disclosure in the cited document that is not present in any other document of record."

If an applicant presents unusually long documents, foreign-language documents, or a large number of documents, the proposed amended rules require that in appropriate cases applicants must provide additional disclosure, such as an identification of a portion of a document that caused it to be cited, and an explanation of how the specific feature, showing, or teaching of the document correlates with language in one or more claims. In those rare instances, where the specific feature, showing, or teaching cannot be correlated to a claim limitation, correlation to a specific portion of the supporting specification would be required.

An applicant may opt to provide written consent to the filing of a protest by the third party, thus shifting the explanation burden back to the third party.

The current requirements under §§ 1.97 and 1.98 for submitting an IDS after a notice of allowance are proposed to be revised by providing two windows, one before, or with, and one after, payment of the issue fee. Submission of an IDS during either of these two windows will require compliance with heightened additional disclosure requirements (compared to those required for submissions after a first Office action but prior to a notice of allowance or notice of allowability), which will depend upon whether a current claim is unpatentable in view of the information.

The fee requirement under § 1.17(p) for submitting an IDS is proposed to be eliminated. Under the proposed rules, an applicant wishing to submit an IDS after a first Office action on the merits and before the mailing date of a notice of allowability or a notice of allowance under § 1.311 could only do so if applicant meets the certification requirements under § 1.97(e)(1) (that the information was discovered as a result of being cited by a foreign patent office in a counterpart application and is being submitted to the Office within three months of its citation by the foreign patent office), or applicant complies with applicable additional disclosure requirements.

Two factors would be considered by an Examiner in order to determine whether a document needs a more thorough review:

(1) That the document has been applied in a rejection, or specifically commented on by an examiner, in a case drawn to the same or similar subject matter; or

(2) that the document has been particularly described by the applicant and its relevance to the claimed invention and/ or supporting specification clarified.

According to the Notice, "This practice reflects the practical reality of patent examination which affords the examiner a limited amount of time to conclude all aspects of the examination process."

For more information on this topic, please contact William F. Heinze (bill.heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

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