Noonan’s Corner Office: IDS Rule Changes

By Kevin Noonan.

The U.S. Patent and Trademark Office, having encountered open hostility to some recent proposals, is again trying to address the issues of patent pendency and quality by proposing new rules regarding Information Disclosure Statements.

An Information Disclosure Statement is a document through which an applicant can fulfill (in part) the duty of disclosure under Rule 56 of Patent Office regulations. Using an IDS, an applicant can identify and submit copies of prior art references, including U.S. patents, U.S. and foreign patent applications (including international applications) and scientific references, as well as other documents such as product manuals, advertisements, and any other printed publication. Although there are no separate requirements that an IDS must be filed, the Office does impose a fee for filing an IDS after the first action on the merits, and will not consider an IDS filed after a final rejection or notice of allowance without good cause. There is currently no limit on the number of documents that can be submitted with an IDS.

The new proposals do away with the fees associated with “late” filing of an IDS. However, the proposal will permit an applicant to submit no more than 20 references without explanation. If more than 20 documents are submitted, the applicant will be subject to “increasingly more stringent” requirements to explain the significance of the documents. These requirements will also apply to applicants who submit “very long” documents (a term that is not very precisely defined).

The latest proposals seek once again to shift the burden for examination from the Examiner to the applicant, and to require increased assertions on the record regarding patentability over the prior art. It appears that the Office has no confidence that the examining corps, properly supported in both numbers and resources, can perform its tasks properly and efficiently. In response, the Office continues to produce proposals that are inconsistent with the reality that the inequitable conduct “defense” will certainly inhibit if not preclude applicants’ counsel from providing precisely the sort of information the proposal is designed to seek.

Note: Kevin Noonan is a partner at MBHB LLP in Chicago.

Links. http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/focuspp.html

http://www.uspto.gov/web/offices/com/sol/notices/71fr38808.pdf

Dennis Crouch

crouch@mbhb.com Sent from my mobile phone (please excuse the thumbspeak and typos).

16 thoughts on “Noonan’s Corner Office: IDS Rule Changes

  1. Has anyone (including USPTO Examiners) read MPEP Chapter 2000? Compare it with the discussion of the proposed IDS rule changes in the Federal Register and you will see the USPTO is taking a completely opposite approach for 1.56 Individuals citing information in patent applications.

  2. I am preparing a talk on the proposed IDS changes to give to attorneys at my firm (I’m a trainee in Europe). What I’m sure I’ll be asked is “how likely are these changes to be implemented and how soon might they be implemented?”

    Could anyone here offer an opinion on this point? (The 1.1.07 possibility is noted.)

    In my view the 25 page limit before an “explanation” is required for a citation in advance of first Office Action on merits seems too low (at least from one working in biotech).

  3. Continuing from my previous post…When an applicant is determining what prior art is material, they are usually looking at the prior art in light of their invention, not necessarily what they have claimed. That is, an Examiner may find a piece of prior art material in rejecting a claim, whereas the applicant may not believe the prior art to be very relevant to the invention. Therefore, the applicant’s view of what is material about a piece of prior art may be very different than what an Examiner would find relevant. It concerns me that Examiners may rely soley upon the applicant’s statements, to determine what is material, rather than reading the prior art for themselves. In doing so, Examiners may pass up even more relvant prior art than they do at present.

  4. I am a former Primary Examiner and an attorney. I have go back and forth with this issue, but ulimately, I do not see how Examiners will derive much benefit from these proposed requirements. Requiring the applicant to provide a statement of relevance may have been useful years ago, but with the current search technology, I don’t see how it will help very much with examination. If an Examiner receives a 500 patent IDS, for example, it is easy enough to copy those patent numbers into the EAST search system and perform a text or image search. If an applicant submits a large amount of non-patent literature, than some description of the relvance may be useful. However, this does raise a concern. In my experience, an Examiner takes a broader view of what is relevant than does the applicant.

  5. Answering Blaise Mouttet: I agree, but would add something.

    1. The quality of search in the EPO, on a clear claim, is first class, and miles better than anything a private inventor and attorney can do at comparable cost. Can’t comment on search quality in USPTO.

    2. Take the case of a medical device company that WATCHES the emerging flow of A (patent application) publications relevant to its business. In such a situation, an EPO Examiner will find the relevant bunch of references that Applicant knows about already, but seldom improves on them. This is my point.

    3. If you were sole proprietor on an innovation company, with a heavy budget for research, would you not watch A publications, at least so as to avoid wasting money, if not to track what the competitors are doing? Makes sense, doesn’t it? That, of course, is the reason why Patent Offices A publish their applications. And, if you watch them as they emerge, you know as much as the Examiner.

    4. I realise that in USA there is a reason (willful infringement) actively NOT to watch A publications. For an outsider, that seems just a little strange, and something the legislator could address in the Patent Reform Act of 2007.

  6. This may be a little off topic but I would like to comment on MaxDrei’s statement that the applicant rather than the Examiner knows the art. I am a former Examiner and before I was an Examiner I worked as a technician in the field that I examined. Based on my experience most engineers and inventors usually (but not always) know what the company they work for are doing and maybe a little bit about what a few of their competitor’s are doing but usually they are VERY ignorant about the entire scope of their field. And usually it is the attorney not the inventors that write the claims. Now who do you think knows more about the scope of a particular art

    a) an attrorney who may deal with dozens of different technologies or

    b) a patent examiner focusing on the same specific technology all the time

    For all the crap that Examiners get for being below the level of ordinary skill many Examiners would wipe the floor with attorneys AND inventors when it comes to broad knowledge of their arts. The problem is the few Examiners who are bad or inexperienced are REALLY bad and inexperienced and give a bad name to the rest.

  7. Would an examiner’s job be easier if references had to be submitted in an electronically searchable form? That might make it a lot easier to find relevant art in a submission of 500 documents.

  8. Now all we need is for the Patent Office to propose a rule that prohibits examiners from applying the 50 column reference that discloses 15 embodiments as “clearly anticipated” with no other explanation.

  9. Comment from Europe. Why is it that prosecution at the USPTO is utterly unlike prosecution anywhere else in the world. One factor might be this: In USA, you only need one good claim in your issued patent. The rest can all be bad, and it doesn’t impede your enforcement. To the contrary, in ROW, the presence of just one bad claim seriously impedes your program of enforcement, so you take care to go to issue with valid main claims.

    Thus, in USA, you grab all you can slip past the USPTO (taking care that your conduct is equitable)whereas in ROW you take to issue only what you can defend against validity attacks afterwards.

    In this way, quality is self-correcting in ROW, but not in USA.

    Readers might respond that quality in ROW currently is nothing to boast about. Whether or not that is so, legislators should be striving for a system that does give Applicants an incentive after issue to take to issue only “quality” claims. After all, it is the Applicant, not the Exr, that knows the art, and knows what claim is credible. Applicant is a grown up individual, capable of deciding on the balance between claim width and claim validity. Can’t see the new IDS system helping much.

  10. The simple solution is to just go back to the pre-92 practice of requiring a summary of each reference.

    Having to make the call on what is cumulative or not leaves the prosecutor wide open to inequitable conduct charges.

    As with most recent PTO proposals, this one sucks. I guess I’m a troglodyte, but the PTO worked pretty well for the better part of the 20th century without the politically and media-influenced nonsense going on how.

    What they need to focus on is hiring and training better examiners. The current batch sucks.

  11. I wonder if there will also be an increased number of filings with the DC district court for petitions improperly denied by the commissioner for matters not generally appealable to the BPAI?

    Maybe the APA may be a route to take for some clients.

  12. I’m not going to try to defend the specifics of the proposed rule changes. However, there is a feeling both amongst the examining corps and upper management that something must be done to discourage applicants from filing IDSs with several hundred references and burying the single 102(b) reference in the middle. Consideration of 300-500 articles on everything from how to make a monoclonal to a myriad of post-filing articles from newspapers extolling the value of some unrelated chemical compound is simply not possible. I have examined several cases where attorneys regularly file this many references. Are there sometimes 102(b) references in the middle? You betcha. Is it realistic to think that every claim is actually patentable over all 300 references? No way.

    So the intent of the proposed rule changes is to force applicants to stop these preposterous filings. I am not saying that the proposed mechanism is realistic, but might have seemed to the rule-makers as a reasonable way to solve the problem.

  13. I’d like to take notice to a statement from your posts that seems to resonate throughout the topics pertaining to the shortcomings of the PTO.

    “The latest proposals seek once again to shift the burden for examination from the Examiner to the applicant”.

    Allow me to preface my comment with the statement signed by every applicant in the Oath or Declaration required upon submission of a patent application.

    “l believe I am the original, first, and sole inventor (if only one name is Iisted below) or an
    original, first, and joint inventor (if plural names are Iisted below) of the subject matter
    which is claimed and for which a patent is sought on the invention entitled

    I acknowledge the duty to disclose all information known to me to be material to
    patentability as defined in Title 37, Code of Federal Regulations, Section 1.56.”

    As an Examiner, I’d like to turn you and your reader’s attention to the fact that the Examining Corps has become “the wall” upon which applicant’s throw their ideas; and based on what sticks build from that, or if nothing “sticks” the applicant then attempts to nail the idea (which has about as much substance as Jello ™) to the wall.

    An Examiner is the surveyor of the land of intellectual property, and too many applicant’s want their property lines to run right along and on top of those who’ve gone before them They know it or should know it in light of their sworn testimony, and if they honestly didn’t, and the Examiner is able to blatantly show them using a single reference, the matter should be closed there and then end of prosecution.

    Yes. Applications where the independent claims are clearly rejected using a single reference are made final at that point period! That’ll get the Applicant’s and their Attorney’s thinking about that which is truly novel in their invention. If the Applicant didn’t disclose this reference, then they didn’t know all there was to know about the field they looked to make a contribution in, end of story.

    Now. . . as an Examiner, I don’t need to read five lines of text to tell me about the rectangular section; having a bottom, a first set of two side walls having equal lengths extending vertically from said bottom and opposite one another, a second set of two side walls having equal lengths longer than said equal lengths of said first set of two side walls, also extending vertically from said bottom, opposite one another and perpendicular said first set of two side walls, a top portion opposite said bottom . . . . . .

    . . . . . . aaaaaaaaarrrrrrrrrrrrrggggggggggggggghhhhhhhhhhhhh it’s a %#$* ing RECTANGLE !!!!

    N-O-W- . . . there’s no place for my frustration, this is my job, this is what I signed on for. . . if I don’t like reading five lines that describe a rectangle then I should get out. Fair enough!

    But by the same token, if the rest of the world doesn’t like how long it’s taking the Examining Corps to get to their application then quit gumming up the works. Take your best shot, if it’s a hit, great, if not, learn from it and let us move to the next patiently waiting Applicant.

  14. There will certainly be much to consider in the new IDS rules as, in my opinion, this will definitely change the way most practioners conduct their practice.

    The “long” prior art reference is anything more than 25 pages and the explanation of the significance of the documents is something that (i) cannot be cursory and (ii) requires the practitioner to parse each claim and identify the portions of the most relevant reference known to the practitioner that shows the claimed feature – effectively a reverse claim mapping similar to the EDS that must be submitted under the proposed designated claim rules (for which the AIPLA estimated the average cost to prepare would be $25K). The increasingly more stringent requirements as prosecution advances go all the way to the point of forcing the practioner to admit that an existing claim is not patentable over a prior art reference if the practioner wants to submit that piece of art after a notice of allowance/payment of issue fee (remember, if the new continuation rule changes are adopted, you may not have a free continuation/RCE in which to refile in order to make such a submission)

    The more significant issue, however, is the fact that these rule changes as proposed would apply to all IDSs filed in all currently pending cases and the rule changes give the Examiner the permission to both reject an IDS submitted before a first office action as being non-compliant (thereby kicking the applicant into the more stringent “explanation” requirements that apply for an IDS submitted after a first office action) or stop considering an IDS because the IDS is found to contain cummulative references (again kicking the applicant into the more stringent “explanation” requirements as now a first office action will have been issued).

    For any cases where the practitioner has followed currently accepted practice of submitting everything potentially relevant out of an abundance of caution or where just one of the prior art references is longer than 25 pages (a likelihood that the PTO conveniently forgets to review in asserting that 85% of cases have no more than 20 references in an IDS), the only way to avoid having to comply with the more stringent “explanation” requirements will be to file a continuation application to reset the IDS submissions and start over again with a new IDS with fewer than 20 references, each reference or partial reference being less than 25 pages and then abandoning the parent application.

    While this will potentially raise an issue of inequitable conduct (how did you go from 75 references to only 15, counselor?), the change to rule 1.56 offers some cover in that you if are making a good faith effort to comply with the rules then you are presumed to have met your duty of candor (little chance that such PTO handwaving would ever truly tame the litigation hounds on inequitable conduct). Still, the inequitable conduct issue is, on balance, less problematic than the incredible expense and damage in terms of prosecution history estoppel that may be incurred in order to comply with the new IDS requirements.

    All in all, the rules are consistent with the already implemented rule changes for petition to expedite rules and the proposed continuation, designated claim, and now IDS rules that will likely all be made effectve as of the same date (probably 1.1.07). These new rules will certainly do wonders to resolve the pendency problem at the PTO by forcing a large percentage of existing cases to be refiled before the effective date of the rule changes (thereby eating up their one continuation as a matter of right) and resetting the pendency clocks for all of those cases. Together with all of the last ditch continuation cases and divisional cases that will need to be filed to preserve rights before the continuation rules are effective, the PTO will have a banner year in terms of fee collections for what will likely be several hundred thousand applications submitted before the new rules are effective. The only thing the PTO will need to do is to increase staff at the BPAI to handle the flood of appeals that will end up being the only option available to applicants trying to navigate the myriad of pitfalls created by this brave new world of patent rules.

  15. The comments of the patent attorney in the Background of the Invention are helpful in a prior art search, and should be encouraged.

  16. The proposed rule changes, with very little fanfare and somewhat incongrously, also include new rule 1.48(k) to permit changing the order of inventors, correcting the spelling of an inventor’s name, or updating an inventor’s name when it has changed. This is a welcome addition, because the petition fee to make such changes is reduced from the $400 fee for a peition under rule 1.182 to a $130 fee for a petition under rule 1.48.

Comments are closed.