Dennis pointed out that the Director has in Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280_paper_13_20250519 made it very difficult to obtain institution if a petition is based on art that was listed on an IDS even if it was not actually applied by an examiner, unless the art was listed on a “voluminous” IDS.  That is a step back from the more real-world approach that had included examining whether the reference had actually been applied.

Dennis points out that avoiding “voluminous” (whatever that means) IDSs should help insulate patents from institution.  Also reducing length is a statement by the Office that signing an IDS certifies that the practitioner has reviewed every reference listed.  Specifically, In its Guidance on Use of Artificial Intelligence-Based Tools, the Office the Office expressed a concern that, while AI can be used to populate IDSs, doing so posed “the danger of increasing the number and size of IDS submissions to the USPTO, which could burden the Office with large numbers of cumulative and irrelevant submissions.” 89 Fed. Reg. at 25615-16. As a result, it noted the duty of reasonable inquiry included “reviewing each piece of prior art listed on the form” to determine if it was compliant with 37 CFR 11.18(b). Id. at 25616. Thus, review is required and clearly irrelevant and marginally pertinent information should be removed to avoid filing a paper for an improper purpose. Id.

That approach, interestingly, is somewhat similar to what OED Director Moatz suggested maybe 20 years ago, which was heavily criticized by practitioners as unrealistic.  I am not sure the Office’s statement about reviewing each reference has achieved as much publicity now as it did back then, so stay tuned.

I recently wrote a paper on this topic and gave a CLE and thought it would be useful to pass it along.  It is here.

It goes through in a step-by-step way the way to approach fessing up to a mistake, as well as analyzing the different approaches that jurisdictions take to the issue. For example, some view the duty as arising from the need to keep a client reasonably informed, while others view it as part of a conflict-of-interest analysis. That matters because breach of the duty depends on which source applies: if it’s to keep the client reasonably informed, it’s basically triggered by knowing the client has a malpractice claim, but if it’s a fiduciary duty that is the source, then it’s triggered by the lawyer’s interest conflicting with the client’s.

Anyhow, it also addressed the critical issue of talking to your carrier and addresses a couple of related cases where lawyers’ duties were triggered by other sources.